Ex Parte Inoue et al

Patent Trial and Appeal Board

Jan 16, 2019

14369237 (P.T.A.B. Jan. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/369,237 06/27/2014
35811 7590 01/18/2019
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Hirotaka Inoue
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
SUG-14-1720 3850
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
01/18/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROTAKA INOUE, SHIGEHIRO TAKAJO,
HIROI YAMAGUCHI, SEIJI OKABE,
and KAZUHIRO HANAZA WA
Appeal 2018-003 605
Application 14/369,237
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 10-14. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2018-003605
Application 14/369,237
Claims 10 and 14 illustrate the subject matter of Appellant's 1
invention and are reproduced below:
10. A grain-oriented electrical steel sheet, linear strain
having been applied thereto by irradiation with a high-energy
beam, the linear strain extending in a direction that intersects a
rolling direction of the steel sheet, wherein
an area ratio of an irradiation mark within an irradiation
region of the high-energy beam is 2 % or more and 20 % or
less, an area ratio of a protrusion with a height of 1.5 µm or
more within a surrounding portion of the irradiation mark is 60
% or less, and an area ratio of an exposed portion of steel
substrate in the irradiation mark is 90 % or less.
14. A grain-oriented electrical steel sheet, linear strain
having been applied thereto by irradiation with a high-energy
beam, the linear strain extending in a direction that intersects a
rolling direction of the steel sheet, wherein
an area ratio of an irradiation mark within an irradiation
region of the high-energy beam exceeds 20 %, an area ratio of a
protrusion with a height of 1.5 µm or more within a surrounding
portion of the irradiation mark is 60 % or less, an area ratio of
an exposed portion of steel substrate in the irradiation mark is
30 % or more and 90 % or less, and an insulating coating is
formed after the irradiation with the high-energy beam.
Appellant requests review of the Examiner's decision to finally reject
claims 10-14 under 35 U.S.C. § 103(a) as unpatentable over Yamaguchi (JP
59-229419 A, published December 22, 1984, and relying on an English
Abstract dated March 13, 2017). Final Act. 2; App. Br. 2.
We therefore limit our discussion to independent claims 10 and 14.
1 JFE Steel Corporation is the Applicant/ Appellant and is identified as the
real party in interest. App. Br. 1.
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Appeal2018-003605
Application 14/369,237
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we reverse the Examiner's prior art rejection of claims 10-14
under 35 U.S.C. § 103(a) essentially for the reasons presented by Appellant
in the Appeal and Reply Briefs. We add the following for emphasis.
Independent claims 10 and 14 are directed to a grain-oriented
electrical steel sheet having properties after beam irradiation restricted to the
following requirements:
(a) the area ratio of irradiation mark(s) within an irradiation region of
the high-energy beam is 2% or more and 20% or less (claim 10), or exceeds
20% (claim 14);
(b) the area ratio of protrusion( s) with a height of 1. 5 µm or more
within a surrounding portion of an irradiation mark is 60% or less (both
claims); and
( c) the area ratio of exposed portion( s) of the steel substrate in an
irradiation mark is 90% or less ( claim 10) and 3 0% or more and 90 % or less
( claim 14 ). Spec. ,r 24 2.
According to the Specification, this "provide[ s] a grain-oriented
electrical steel sheet, on which magnetic domain refining treatment by strain
application has been performed, having an insulating coating with excellent
insulation properties and corrosion resistance." Id. ,r 8.
The Examiner finds that Yamaguchi "discloses a grain-oriented
electrical steel sheet comprising linear strains and an insulating coating
thereon" that differs from the claimed invention in that Yamaguchi "does not
2 We refer to the Substitute Specification made of record on January 7, 2017
as "Specification" or "Spec."
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Appeal2018-003605
Application 14/369,237
specify the area ratios as claimed." Final Act. 2; Yamaguchi Abst. 3 The
Examiner finds that the claimed steel sheets and Yamaguchi' s steel sheets
"are identical or substantially identical in structure or composition" and are
"produced by identical or substantially identical processes." Final Act. 2-3.
According to the Examiner, the process conditions for making Yamaguchi' s
steel Sample ( 1) are within the ranges of the process conditions disclosed in
the Specification for the Appellant's invention. Final Act. 3; compare
Yamaguchi's Table 1 (Sample (1 )) with Spec. i-fi-f48-5 l 4. Based on this
information and citing to In re Best, 562 F.2d 1252, 1255, the Examiner
asserts that one skilled in the art, absent a showing to the contrary, would
have reasonably expected that Yamaguchi' s process results in a steel sheet
having the claimed properties. Final Act. 3. Therefore, the Examiner
determined that "[a] prima facie case of obviousness exists." Id. at 3.
Appellant acknowledges that the process conditions for Yamaguchi's
Sample (1) fall within the disclosed process conditions. App. Br. 4; Spec. ,r
48. But, Appellant argues this does not necessarily mean that the properties
of Claims 10 and 14 are satisfied. App. Br. 3. In support of this argument,
Appellant points to Comparative Example 7 as having similar processing
conditions as the conditions for producing Yamaguchi' s Sample ( 1)
3 The Examiner and Appellant appear to cite directly to portions of the
reference. Final Act. 2 ( citing to sections ( 4) and ( 6) of the reference);
Reply Br. 3 ( citing to the last 7 lines between column 5---6 in Yamaguchi).
However, there is no full translation of this reference on the record. In
addition, neither the Examiner nor Appellant directs us to or identifies any
full translation of Yamaguchi. We therefore limit our consideration of
Yamaguchi to the English Abstract and Table 1 of the reference.
4 The noted portions of the Specification correspond to the paragraphs relied
upon by the Examiner from the published application to Inoue (US
2014/0360629 Al, published December 11, 2014).
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Appeal2018-003605
Application 14/369,237
( differing only on the beam diameter (0.40 mm (Yamaguchi's Sample (1 )) v.
0.50 mm (Appellant's Comparative Example 7)), but yielding a product that
does not have the claimed properties. App. Br. 4; Spec. 23 (Table 1 ).
Appellant asserts that Yamaguchi' s Sample ( 1 ), like Comparative Example
7, also does not have the claimed properties. App. Br. 4. Thus, Appellant
argues that the Examiner has not established that all of the claimed
characteristics are necessarily present in Yamaguchi's Sample (1). Reply
Br. 1-2.
We agree with Appellant that the Examiner committed reversible
error in the determination of obviousness. "Inherency [] may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citing Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991). That is, the fact that
a certain result or characteristic may occur or be present in the prior art is not
sufficient to establish the inherency of that result or characteristic. In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). "In relying upon the theory
of inherency, the examiner must provide a basis in fact and/or technical
reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art."
Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990).
As Appellant argues, the operational parameters of Comparative
Example 7 in the Specification are consistent with the operational
parameters for Yamaguchi' s Sample (1) but does not result in a steel sheet
with the claimed properties. App. Br. 4. Thus, Appellant contends that
Yamaguchi' s Sample ( 1) would also not yield a steel sheet with the claimed
properties. Id. Table 1 of the Specification presents numerous inventive
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Appeal2018-003605
Application 14/369,237
Examples where specific combinations of beam power, beam diameter, and
scanning rate are selected to obtain the desired steel sheet. The
Specification also recognizes that the operational parameters need to be
determined to achieve a desired steel sheet. Spec. ,r,r 48-56, 57 (discussing
how the beam diameter depends on factors such as the acceleration voltage,
the beam current, and the degree of vacuum). Thus, the key to Appellant's
argument is that specific combinations of operational parameters must be
selected to result in a desired steel plate and not that any random
combination of operational parameters, including the one taught by
Yamaguchi, would lead to the desired steel plate. See Table 1 ( compare
inventive Example 3 (with beam power of 150 W, beam diameter of 0.80
mm, and scanning rate of 10 mis) with inventive Example 9 (with beam
power of75 W, beam diameter of0.40 mm, and scanning rate of 5 mis)).
In view of this, the Examiner has not directed us to any portion of
Yamaguchi that would have suggested to one of ordinary skill in the art that
the operational parameters used in Sample ( 1) are specifically selected to
achieve the particularly desired properties recited in claims 10 and 14.
Consequently, the Examiner has not established that the steel sheets of
Yamaguchi and the claimed invention are produced by the identical or
substantially identical processes. Thus, the Examiner has not adequately
provided a basis in fact and/or an adequate technical explanation to
reasonably support the determination that the Yamaguchi' s steel plate
possesses the characteristics of the claimed invention.
Accordingly, we reverse the Examiner's rejection of claims 10-14
under 35 U.S.C. § 103(a) for the reasons presented by Appellant and given
above.
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Appeal2018-003605
Application 14/369,237
DECISION
The Examiner's prior art rejection of claims 10-14 under 35 U.S.C.
§ 103(a) is reversed.
REVERSED
7