Ex Parte Kondo et alDownload PDFPatent Trial and Appeal BoardJun 2, 201712791486 (P.T.A.B. Jun. 2, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/791,486 06/01/2010 Kunio Kondo 31472/43075A 2792 4743 7590 06/06/2017 MARSHALL, GERSTEIN & BORUN LLP 233 SOUTH WACKER DRIVE 6300 WILLIS TOWER CHICAGO, IL 60606-6357 EXAMINER ZHU, WEIPING ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 06/06/2017 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): mgbdocket@marshallip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KUNIO KONDO, YUJI ARAI, and NOBUYUKI HISAMUNE1 Appeal 2015-007135 Application 12/791,486 Technology Center 1700 Before JEFFREY W. ABRAHAM, JULIA HEANEY, and JEFFREY R. SNAY, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35U.S.C. § 134 from the Examiner’s final rejection of claims 3—6. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We affirm. BACKGROUND Appellants’ claimed invention relates to methods for manufacturing a heavy wall seamless steel pipe. Abstract. Claims 3—6 are each independent claims. Claim 3 is representative, and is reproduced below from the Claims Appendix: 1 According to the Appeal Brief, the real party in interest is Nippon Steel and Sumitomo Metal Corp. App. Br. 2. Appeal 2015-007135 Application 12/791,486 3. A method of manufacturing a heavy wall seamless steel pipe having a wall thickness of 30 to 50mm for line pipe with a high strength and increased toughness, comprising the following steps (a) to (e): (a) forming a billet with a round cross section by continuous casting of molten steel that has the chemical composition, by mass%, that consists of C: 0.03 to 0.08%, Si: not more than 0.25%, Mn: 0.3 to 2.5%, Al: 0.001 to 0.10%, Cr: 0.02 to 1.0%, Ni: 0.02 to 1.0%, Mo: 0.02 to 1.2%, Ti: 0.004 to 0.010%, N: 0.002 to 0.008%, and 0.0002 to 0.005%, in total, of at least one selected from Ca, Mg and REM, and the balance Fe and impurities, optionally containing B: 0.0003 to 0.01%, V: 0 to 0.08%, Nb: 0 to 0.05% or Cu: 0 to 1.0%, and that P and S among impurities are not more than 0.05% and not more than 0.005%, respectively; (b) cooling the billet to the room temperature at not less than 6° C/min of an average cooling rate between 1400 and 1000° C; (c) heating the billet to a temperature between 1150 and 1280° C at not more than 15° C/min of an average heating rate between 550 and 900° C, then piercing and rolling, to make a seamless pipe; (d) cooling forcedly the seamless pipe to a temperature of not higher than 100° C at not less than 8° C/sec of an average cooling rate between 800 and 500° C, immediately after pipe making, or after isothermal treating at a temperature between 850 and 1000° C immediately in succession with pipe making, or after heating to a temperature between 850 and 1000° C after once cooling in succession with pipe making; and (e) tempering the seamless pipe at a temperature between 500 and 690° C. Claim 5 is substantially similar to claim 3, the main difference being that step (c) in claim 5 recites “isothermal treating the billet during not less than 15 minutes at a temperature between 550 and 1000° C, and heating to a temperature between 1150 and 1280° C., then piercing and rolling, to make 2 Appeal 2015-007135 Application 12/791,486 a seamless pipe.” Claims 4 and 6 are similar to claims 3 and 5, respectively, with the exception that these claims recite forming and treating a bloom or slab with a square cross section instead of a billet with a round cross section. The Examiner maintains, and Appellants appeal, the rejection of claims 3—6 under 35 U.S.C. § 103 as unpatentable over Ichinose2 in view of Onoe3 and Matsuo.4 OPINION We sustain the above rejection based primarily on the Examiner’s findings of fact, conclusions of law, and rebuttals to Appellants’ arguments, as expressed in the Final Action and Answer. The following comments are added for emphasis. The Examiner finds that Ichinose discloses a method of manufacturing a seamless steel tube that includes forming a round shaped ingot by continuous casting. Final Act. 2—3. The Examiner further finds that Ichinose discloses a composition of the steel pipe (step (a)), wall thickness (preamble), heating temperature (step (c)), cooling rate and temperature of the steel tube (step (d)), and tempering temperature (step (e)) that overlap the values for these parameters recited in claims 3—6. Id. at 2-4. The Examiner acknowledges that Ichinose does not disclose the cooling rate of the ingot (i.e., billet) recited in step (b), but finds that Onoe discloses casting a steel slab with a rapid cooling rate of not lower than 5° C/min down to 500° C. Id. at 4 (citing Onoe, 2:12—21). The Examiner finds that it would have been obvious to use Onoe’s cooling rate to cast the 2 Ichinose, JP 2000-178645, published June 27, 2000. 3 Onoe et al., US 4,092,178, issued May 30, 1978. 4 Matsuo et al., JP 55-158226 A, published Dec. 9, 1980. 3 Appeal 2015-007135 Application 12/791,486 ingot in Ichinose “in order to obtain steel slabs containing nitrogen which precipitates as AIN in an amount not larger than 40% of the total nitrogen as disclosed by [Onoe] (col. 2, line 12-21).” Id. The Examiner also acknowledges that neither Ichinose nor Onoe disclose the heating rate recited in step (c). The Examiner, however, finds that Matsuo discloses heating a steel sheet at a heating rate of 40° C/hour, about 0.67° C/min, which is within the claimed range of “not more than 15° C/min.” Id. The Examiner determines it would have been obvious to a person of ordinary skill in the art to heat Ichinose’s ingot, as modified by the teachings of Onoe, at the heating rate disclosed by Matsuo “in order to crystallize AIN during recrystallization as disclosed by [Matsuo] (abstract and Table 2).” Id. Appellants argue that none of the applied references disclose step (c) of claims 3—6. App. Br. 10. Appellants acknowledge that Matsuo discloses a heating rate of 40° C/hour (approximately 0.67° C/min), but contend that this rate is used to heat a steel sheet rolled from an ingot, not the ingot (or billet, bloom, slab, etc.) itself as recited in the claims. Id. Appellants also assert that Matsuo heats the steel sheet to temperatures different from those recited in the claims. Id. We are not persuaded by Appellants’ arguments. With regard to the heating temperature, the Examiner finds that Ichinose, not Matsuo, discloses heating an ingot to temperatures that overlap the recited temperature range. Ans. 3. As to the argument that Matsuo’s heating rate is applied to rolled steel instead of an ingot, Appellants concede that there is no significance to heating a billet first, followed by rolling, versus piercing and rolling a billet, 4 Appeal 2015-007135 Application 12/791,486 followed by heating the rolled steel sheet. Hrg. Tr. 10:24—11:11 (stating that Appellants “would not argue that those are separate”). Appellants also argue that Onoe teaches Ti-ffee steel, and a person of ordinary skill in the art would not have been motivated to combine Onoe’s Ti-free steel with Ichinose, which discloses Ti-containing steels within, above, and below the claimed Ti ranges. App. Br. 10-11. Appellants argue that Onoe “teaches nothing about producing steel having excellent strength and toughness properties by means of fine TiCN of the present invention.” Id. at 11. Additionally, Appellants assert that there would have been no motivation to optimize the cooling of the Ti containing composition of the claims to ensure sufficient quantity of dissolved Ti while suppressing precipitation of a coarse-grained carbonitride regardless of whether there was some reason to prevent the formation and growth of the AIN nuclei in the different steel composition of Onoe. Id. (underlining omitted). Appellants’ arguments are unavailing. In responding to the Appellants’ arguments, the Examiner points out that Ichinose discloses a steel tube containing Ti in an amount that overlaps the claimed range, and displays excellent strength and toughness. Ans. 3^4. The Examiner further finds that Onoe and Ichinose each disclose steel slabs containing A1 and N, and therefore maintains the stated motivation to combine the teachings of the references. Id. at 4. The Examiner further states that “[t]he motivation to optimize the cooling rate of [Ichinose] in view of [Onoe] does not have to be the same as that of the instant invention.” Id. It is well settled that “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” KSR Int 7 Co. v. 5 Appeal 2015-007135 Application 12/791,486 Teleflex Inc., 550 U.S. 398, 420 (2007). We, therefore, agree with the Examiner that the stated reason for combining the teachings of Ichinose and Onoe does not have to be the specific problem addressed by Appellants. Ichinose and Onoe disclose steel slabs having A1 and N (Ichinose 1 8; Onoe 2:1—12), and Appellants do not dispute the Examiner’s finding that using Onoe’s cooling rate as part of Ichinose’s method would keep AIN precipitates below 40% of the total nitrogen, as disclosed by Onoe (Onoe 2:13—22). Therefore, the Examiner presented articulated reasoning with rational underpinnings to support the conclusion of obviousness. KSR, 550 U.S. at 418. Appellants’ arguments regarding the lack of Ti in Onoe are misplaced, as an obvious analysis “need not seek out precise teachings directed to the specific subject matter of the challenged claim.” Id. CONCLUSION For the reasons set forth above, we affirm the Examiner’s rejection of claims 3—6. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 6 Copy with citationCopy as parenthetical citation