11118385 (B.P.A.I. Jul. 26, 2011)

Ex Parte Ohki

Board of Patent Appeals and InterferencesJul 26, 2011

11118385 (B.P.A.I. Jul. 26, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte CHIKARA OHKI ________________ Appeal 2010-010728 Application 11/118,385 Technology Center 1700 ________________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and CATHERINE Q. TIMM, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claim 1, which is the sole claim. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellant claims a method for heat treating a bearing part. Claim 1 is as follows: 1. A heat treatment method of a bearing part, comprising the steps of: Appeal 2010-010728 Application 11/118,385 2 carbonitriding steel for a bearing part at a carbonitriding temperature exceeding A1 transformation temperature; cooling the steel to a temperature lower than the A1transformation temperature; reheating the steel to a temperature for quenching that is not lower than said A1 transformation temperature but lower than said carbonitriding temperature; and quenching the steel, wherein said temperature for quenching is in a temperature range from 790°C to 815°C, and the steel for the bearing part is JIS SUJ2. The Reference Murakami 5,413,643 May 9, 1995 The Rejection Claim 1 stands rejected under 35 U.S.C. § 103 over Murakami. OPINION We affirm the rejection. The Appellant’s claim 1 requires carbonitriding a JIS SUJ2 steel bearing part. Murakami heat treats a steel roller bearing containing 0.01- 1.00 wt% C, 0.50-3.00 wt% Cr, 0.15-1.00 wt% Si, and 0.20-1.50 wt% Mn, remainder Fe and unavoidable impurities (col. 2, ll. 34-44). The Appellant states that JIS SUJ2 steel contains 1.0 wt% C, 1.5 wt% Cr, 0.25 wt% Si and 0.4 wt% Mn (Spec. 10:30-32). Thus, JIS SUJ2 steel falls within Murakami’s steel composition. Murakami teaches that the steel can be carburized or carbonitrided, quench hardened and tempered, or can be quench hardened and tempered without being carburized or carbonitrided (col. 2, ll. 36-40). In preferred embodiments steel containing 0.10-0.80 wt% C is carburized or Appeal 2010-010728 Application 11/118,385 3 carbonitrided, quench hardened and tempered, whereas steel containing 0.80-1.00 wt% C is quench hardened and tempered without being carburized or carbonitrided (col. 2, ll. 50-60). Murakami exemplifies carbonitriding, quench hardening and tempering a steel containing 0.42 wt% C (steel A), and exemplifies quench hardening and tempering, without carburizing or carbonitriding, JIS SUJ2 steel and a steel containing 0.96 wt% C (steel B) (col. 2, ll. 65-68, col. 6, ll. 40-66; col. 7, ll. 20-26). The Appellant argues, in reliance upon Murakami’s preferred embodiments, that Murakami performs a different heat treatment on steel containing 0.10-0.80 wt% C than on steel containing 0.80-1.00 wt% C, and that there is no suggestion in Murakami to apply to steel containing 0.80- 1.00 wt% C, such as JIS SUJ2 steel, the heat treatment which Murakami applies to steel containing 0.10-0.80 wt% C (Br. 4-5; Reply Br. 2-3). Murakami is not limited to its preferred embodiments. See In re Kohler, 475 F.2d 651, 653 (CCPA 1973); In re Mills, 470 F.2d 649, 651 (CCPA 1972); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Instead, all disclosures therein must be evaluated for what they would have fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d 961, 965 (CCPA 1966). The suggestion to apply Murakami’s carbonitriding, quench hardening and tempering to JIS SUJ2 steel, which contains 1.0 wt% C (Spec. 10:30-31), comes from Murakami’s disclosure that steel containing 0.1-1.00 wt% carbon can be heat treated by carbonitriding, quench hardening and tempering (col. 2, ll. 38-41). That disclosure would have led one of ordinary skill in the art, through no more than ordinary creativity, to apply to JIS SUJ2 steel the carbonitriding, quench hardening and tempering technique in Murakami’s Figs. 2(a)-2(c) which differs from Appeal 2010-010728 Application 11/118,385 4 the Appellant’s technique only in that the lowest temperature in the 820- 840 ºC quench temperature range is 5 ºC higher than the Appellant’s 815 ºC. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). The Appellant addresses that difference but does not appear to argue that Murakami would not have suggested using a temperature 5 ºC below the disclosed range (Br. 5).1 Murakami’s indication that large carbides are formed on the surface layer only if the steel’s carbon content is over 1.00 wt% (col. 3, ll. 39-46) would have provided one of ordinary skill in the art with a reasonable expectation of success in applying Murakami’s carbonitriding, quench hardening and tempering to JIS SUJ2 steel which contains 1.0 wt% C (Spec. 10:30-31). See In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“Obviousness does not require absolute predictability of success …. For obviousness under § 103, all that is required is a reasonable expectation of success”). The Appellant argues that the Appellant has provided evidence that carbonitriding, quench hardening and tempering JIS SUJ2 steel produces unexpected improvement in grain size, rolling contact fatigue life, Charpy impact value and fracture toughness compared to JIS SUJ2 steel which has 1 The Appellant’s argument appears to be that Murakami would not have suggested heat treating at 820 ºC JIS SUJ2 steel which has been carbonitrided (Br. 5). Appeal 2010-010728 Application 11/118,385 5 been quench hardened and tempered but not carbonitrided (Br. 7-8; Reply Br. 4-5).2 The Appellant’s evidence is deficient for the following reasons. First, the evidence does not provide a comparison of the claimed invention with the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). The basis for the prima facie case of obviousness is that Murakami would have led one of ordinary skill in the art to apply Murakami’s carbonitriding, quench hardening and tempering to any steel having a composition within the range to which Murakami indicates that heat treating technique is applicable (col. 2, ll. 38-44). JIS SUJ2 steel, as pointed out above, has such a composition. Thus, the proper comparison is to compare carbonitrided, quench hardened and tempered JIS SUJ2 steel to Murakami’s exemplified carbonitrided, quench hardened and tempered steel, i.e., steel A (col. 2, ll. 65-68; col. 6, ll. 34-48). The Appellant has not provided that comparison. Second, it is not enough for the Appellant to show that the results for the Appellant’s invention and the comparative examples differ. The difference must be shown to be an unexpected difference. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The Appellant has not stated what effect one of ordinary skill in the art would have expected carbonitriding to have on grain size, rolling contact fatigue life, Charpy impact value and fracture toughness 2 The Appellant’s Specification does not indicate that there is any benefit to using JIS SUJ2 steel as the steel which is carbonitrided, quench hardened and tempered, and the Appellant’s original claims do not mention that steel. Appeal 2010-010728 Application 11/118,385 6 and shown that the Appellant’s observed effect of carbonitriding on those properties would have been unexpected by one of ordinary skill in the art. Third, the evidence is not commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). The Appellant has not shown that the limited conditions in the experiments relied upon by the Appellant (Br. 4-5; Reply Br. 7-8) produce results representative of results obtained using the full ranges of carbonitriding temperatures and other conditions, cooling rates, reheating temperatures and rates, and quenching rates encompassed by the Appellant’s claim 1. We therefore affirm the Examiner’s rejection. DECISION/ORDER The rejection of claim 1 under 35 U.S.C. § 103 over Murakami is affirmed. It is ordered that the Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED tc