Ex Parte Kondo et al

Patent Trial and Appeal Board

Jun 2, 2017

12791486 (P.T.A.B. Jun. 2, 2017)

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
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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.
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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,
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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.
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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
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