Ex Parte Nomura et al

Board of Patent Appeals and Interferences

Apr 29, 2009

10998950 (B.P.A.I. Apr. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MASAHIRO NOMURA,
IKUROU HASHIMOTO,
YOSHINOBU OMIYA,
SHINJI KOZUMA, and
MANABU KAMURA
__________

Appeal 2009-21321
Application 10/998,950
Technology Center 1700
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Decided:2 April 29, 2009
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

1 A hearing was conducted in this appeal on April 7, 2009.
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-2132
Application 10/998,950

Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-8. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.

INTRODUCTION
Appellants claim a high-strength cold-rolled steel sheet having various
properties. See, claim 1.
Claim 1 is illustrative:
1. A high-strength cold-rolled steel sheet, which is a DP (Dual Phase)
steel sheet of ferrite-tempered martensite type containing no more than 1
mass% of C (excluding 0 mass%), 0.05 to 2 mass% of Si, and 1 to 5 mass%
of Mn, having a tensile strength no lower than 550 MPa, and satisfying the
equation (1) below,

[Si]/[Mn] ≤ 0.4 … (1)

where [Si] denotes an [sic] Si content (in mass%) and [Mn] denotes an [sic]
Mn content (in mass%), the steel sheet being characterized by its surface in
which there exist Si-Mn complex oxides no larger than 5 µm in diameter of
the equivalent circle as many as 10 or more per 100 µm2 and the coverage of
oxides composed mainly of Si on the surface of steel sheet is no more than
10% of surface area.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Suzuki US 6,410,163 B1 Jun. 25, 2002
Kami US 6,702,904 B2 Mar. 9, 2004

Appellants appeal the following rejection:
1. Claims 1-8 are rejected under 35 U.S.C. § 103 as being unpatentable
over Kami in view of Suzuki.

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Appellants separately argue independent claims 1, 2, and 3.
Appellants do not advance any specific arguments regarding claims 4-8,
which ultimately depend on claims 1, 2, or 3. Therefore, claims 4-8 stand or
fall with claims 1, 2, or 3.
STATEMENT OF THE CASE
The Examiner finds that Kami discloses all the compositional features
of claims 1, 2, or 3 (Ans. 4-7). The Examiner treats the “Si-Mn complex
oxides” and the “cracks” features of claims 1-3 as being product-by-process
features (Ans. 5 and 7). The Examiner finds that though Kami fails to teach
the parameters of the pickling step, Suzuki discloses similar pickling time
and treating the annealed steel in an atmosphere with a dew point of -50 to 0
°C (Ans. 5-6). The Examiner determined that it would have been obvious to
combine Suzuki’s pickling and annealing parameters with Kami in order to
improve galvanizibility and coating adhesion (Ans. 6). Moreover, based on
the similarity between Appellants’ disclosed process and the process taught
by the combined teachings of Kami and Suzuki, the Examiner finds that the
“Si-Mn complex oxides” and “crack” features would have necessarily
resulted (Ans. 6-7).
Appellants contend that combined teachings of Kami and Suzuki fail
to suggest the “Si-Mn complex oxide” or “cracks” features (App. Br. 4-6).
Appellants contend that the combined teachings of Kami and Suzuki fail to
teach Appellants’ disclosed pickling time of “40 seconds or more” (App. Br.
5). Appellants contend that Suzuki teaches a pickling time of 1 to 20
seconds, which is below Appellants’ disclosed range (App. Br. 5).
Appellants contend that Experiment No. 39 of Table 3 in the Specification
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shows that for a 5 second pickling time, the Si-Mn oxide features do not
necessarily result (App. Br. 5-6).
Appellants further contend that because neither Kami nor Suzuki
discloses the pickling times disclosed in the Specification, there would have
been no reasonable expectation of successfully achieving the claimed “Si-
Mn complex oxide” or “cracks” feature (App. Br. 6).

ISSUE
Did Appellants show that the Examiner reversibly erred in
determining that the steel sheet resulting from the process suggested by the
combined teachings of Kami and Suzuki would necessarily possess the “Si-
Mn complex oxide” and “cracks” features recited in claims 1, 2, and 3? We
decide this issue in the negative.

PRINCIPLES OF LAW
Product-by-process claims are not specifically discussed in the patent
statute. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). The practice and
governing law have developed in response to the need to enable an applicant
to claim an otherwise patentable product that resists definition by other than
the process by which it is made. Id. For this reason, even though product-
by-process claims are limited by and defined by the process, determination
of patentability is based on the product itself. Id.
Where general conditions of a claim are disclosed in the prior art it is
not inventive to discover the optimum or workable ranges by routine
experimentation. In re Aller, 220 F.2d 454, 456 (CCPA 1955). However,
exceptions to this rule include if the results of optimizing a variable, known
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to be result effective, was unexpectedly good, or if a parameter optimized
was not recognized as a result-effective variable, In re Antonie, 559 F.2d
618, 620 (CCPA 1977).

FACTUAL FINDINGS (FF)
1. Appellants do not dispute that Kami’s steel sheet has the same
composition as recited in claims 1, 2, or 3 (App. Br. generally).
2. Appellants do not dispute the Examiner’s conclusion that:
[I]t would have been obvious to one of ordinary
skill in the art to have performed the pickling and
annealing processes of ‘163 [Suzuki] on the steel
of ‘904 [Kami] in order to have improved
galvanizability and coating adhesion. (Ans. 6).
(App. Br. generally).
3. Appellants do not dispute the Examiner’s determination that the “Si-
Mn complex oxides” and “cracks” features are product-by-process
features (Ans. 5-7; App. Br. and Reply Br. generally).
4. Appellants disclose that a surface of a steel sheet having good
chemical treatability (i.e., the Si-Mn complex oxides and cracks
features) is achieved by controlling the steel composition and by the
following:
. . . by pickling (that follows hot rolling) with
hydrochloric acid (1 to 18 mass%) at 70 to 90°C
for about 40 seconds or more (preferably 60
seconds or more) and continuous annealing in an
atmosphere with a dew point no higher than -40°C,
preferably no higher than -45°C.
(Spec. 19).

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5. Suzuki discloses high strength thin steel sheet suitable for automobile
bodies and methods of making the high strength steel sheet (col. 1, ll.
7-13).
6. Suzuki discloses that the methods of treating the steel sheet include
“Two-stage Heating-pickling” (col. 3, ll. 48-61).
7. Suzuki discloses that the steel sheet composition treated in the “Two-
stage Heating-pickling” process may comprise from “0.01 to 0.20 wt.
% Si” (col. 4, ll. 44-57; col. 5, ll. 45-57; col. 6, ll. 5-35).
8. Suzuki discloses that pickling may be conducted in a liquid having a
pH ≤ 1 (e.g., a hydrochloric acid (HCl) solution having a
concentration from 1 to 10 wt.%) at temperature from 40-90°C for a
period within the range of 1 to 20 seconds (col. 7, ll. 48-51, 58-60).
9. Regarding the pickling period, Suzuki discloses the following:
The pickling period should preferably be within
the range of from 1 to 20 seconds. A period of
under 1 second leads to an insufficient removing
effect of concentrates on the steel sheet surface by
pickling. A period of over 20 seconds is not
appropriate because the occurrence of roughing of
the steel sheet surface by over-pickling, a longer
manufacturing period, and a lower productivity.
(col. 19, ll. 42-48).

10. Suzuki discloses that the temperature and concentration of the
pickling liquid affects how aggressively the liquid removes the metal
(col. 19, ll. 18-40). A pickling liquid with a temperature higher than
90°C or a concentration greater than 10 wt.% causes roughening of
the metal by over-pickling. Id.
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11. Suzuki recognizes that pickling liquid concentration, temperature,
and time are inter-related variables that need to be controlled to
prevent roughening the metal surface.
12. Suzuki exemplifies pickling a steel sheet containing 0.01 wt.% Si
with a 5 wt.% HCl solution at 80°C for 40 seconds (col. 12, ll. 40-53).
13. Suzuki discloses heating in a heating-reduction atmosphere such that
the atmosphere gas has a dew point within the range of -50°C to 0°C
(col. 20, ll. 66-67, col. 21, ll. 1-15).
14. Suzuki discloses that an object of the invention is to produce a steel
sheet having excellent workability, coating adhesion, and corrosion
resistance (col. 3, ll. 21-31).

ANALYSIS
Appellants contend that the combined teachings of Suzuki and Kami
would not have rendered obvious Appellants' disclosed process, such that
the claimed “Si-Mn complex oxides” and “cracks” product-by-process
features would not be inherent in the prior art. We do not agree.
Appellants disclose the process used to form the Si-Mn complex
oxides and cracks features involves pickling a steel sheet having a particular
composition for about 40 seconds or more in a 70°C to 90°C hydrochloric
acid bath followed by continuous annealing in an atmosphere with a dew
point no higher than -40°C (FF 4).
It is undisputed that Kami discloses a steel sheet having the claimed
compositional amounts. Suzuki teaches treating a steel sheet with a
composition that overlaps that claimed by Appellants. Suzuki discloses that
a two-stage heating-pickling process that includes pickling in a hydrochloric
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acid bath at a temperature of 40-90°C for period of time may be used to treat
the metal. Suzuki discloses that the period of time is preferably from 1 to 20
seconds.
Though Suzuki teaches a preference for a pickling time of 1 to 20
seconds, Suzuki further exemplifies that a 40 second pickling time may
produce acceptable results. Suzuki also discloses that the dew point of the
annealing atmosphere may be from -50°C to 0°C, which includes
Appellants’ disclosed -40°C dew point for the annealing atmosphere.
Suzuki further discloses that the pickling liquid concentration,
temperature, and time should be controlled to avoid roughening the metal.
In other words, Suzuki recognizes that pickling liquid concentration,
temperature, and time are result-effective variables for controlling the
amount of material removed from the steel sheet surface. Antonie, 559 F.2d
at 620.
Accordingly, the teachings of Kami and Suzuki, as a whole, would
have suggested to one of ordinary skill in the art to control the annealing
atmosphere dew point and pickling liquid concentration, temperature and
time, which would have included Appellants’ disclosed pickling process
parameters, in order to achieve a surface on the steel sheet that provides
excellent coating adhesion and workability as disclosed by Suzuki. Since
the process taught by the combined teachings of Kami and Suzuki appears to
be identical to that disclosed by Appellants, the Examiner has a reasonable
basis for determining that the “Si-Mn complex oxides” and “cracks”
product-by-process features of claims 1, 2, and 3 would have been inherent
from the combination.
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Appellants argue that Suzuki teaches 1 to 20 seconds as the pickling
time, which does not include Appellants’ 40 second pickling time used to
treat the steel sheet (App. Br. 5). Appellants contend that Suzuki’s example
using a 40 second pickling time treats a steel sheet with a composition
having a silicon amount outside the claimed silicon range (Reply Br. 5).
Appellants also contends that Suzuki uses an annealing atmosphere with a
dew point of -25°C, which is outside Appellants’ disclosed dew point range
of no higher than -40°C (Reply Br. 5). Appellants contend that because
Kami and Suzuki fail to teach the disclosed pickling time, there is no
reasonable expectation that the combined teachings of Kami and Suzuki
would have produced the claimed “Si-Mn complex oxides” or “cracks”
features (App. Br. 6).
Appellants’ arguments regarding the pickling time fail to recognize
that Suzuki discloses that pickling liquid concentration, temperature, and
pickling time are result-effective variables. Accordingly, determining an
optimum pickling time for a pickling liquid concentration and temperature
would have been obvious. Though Suzuki discloses that a 1-20 second
pickling time may be preferred and that “[a] period over 20 seconds is not
appropriate because of occurrence of roughing of the steel sheet surface by
over-pickling, a longer manufacturing period, and a lower productivity,”
Suzuki discloses that a 40 second pickling time may be acceptable.
(Suzuki, col. 19, ll. 45-49). Accordingly, it would have been within the skill
of an ordinarily skilled artisan to determine an optimum pickling time,
which includes Appellants’ disclosed time of 40 seconds or more. Suzuki’s
disclosure of a preferred 1 to 20 second pickling time does not teach away
from using a greater pickling time, where the side-effects (e.g., a longer
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manufacturing time or a roughened product) of such a greater pickling time
can be tolerated.
Though Suzuki exemplifies a pickling time of 40 seconds being used
with a steel sheet having a Si composition outside of the claimed
composition Si range, such a disclosure does not teach or suggest that the 40
second pickling time cannot be used with a steel sheet composition having a
silicon concentration falling within the claimed range. Indeed, Suzuki
discloses that the silicon content of the steel sheet may be from 0.01 to 0.20
wt.% and that a steel sheet having that composition may be pickled and
annealed (FF 7). This disclosure coupled with Suzuki’s teaching that the
pickling liquid concentration, temperature, and time is a result-effective
variable, would have led one skilled in the art to determine optimum
pickling conditions for a steel sheet composition including Appellants’
disclosed pickling time of 40 seconds or more.
Appellants’ argument regarding the dew point of the annealing
atmosphere is not persuasive that the Examiner erred because Appellants’
argument focuses on one specific example in Suzuki that a -25°C dew point
atmosphere may be used. However, Suzuki teaches that the range of dew
points of the annealing atmosphere may be from -50°C to 0°C. Plainly,
Suzuki’s annealing atmosphere dew point range overlaps the range disclosed
by Appellants (i.e., -40°C or lower). The broad teaching of Suzuki clearly
discloses a process for making the steel sheet that includes the claimed
annealing atmosphere dew points.
Appellants’ reasonable expectation of success argument fails for the
reasons noted above. Specifically, we agree with the Examiner that the
combined teachings of Kami and Suzuki would have suggested Appellants’
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disclosed process such that the steel sheet resulting from the process would
have reasonably been expected to inherently possess the claimed “Si-Mn
complex oxides” and “cracks” features. Appellants have not shown us that
the Examiner’s determination is erroneous.

CONCLUSION
Appellants did not show that the Examiner reversibly erred in finding
that the steel sheet resulting from the process suggested by the combined
teachings of Kami and Suzuki would necessarily possess the “Si-Mn
complex oxide” and “cracks” features recited in claims 1-3.

DECISION
We affirm the Examiner’s § 103 rejection of claims 1-8 over Kami in
view of Suzuki.

ORDER
AFFIRMED

cam

OBLON, SPIVAK, MCCLELLAND,
MAIER & NEUSTADT, P.C.
1940 DUKE STREET
ALEXANDRIA VA 22314

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