Ex Parte Ohki

Board of Patent Appeals and Interferences

Sep 8, 2011

11118385 (B.P.A.I. Sep. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte CHIKARA OHKI
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Appeal 2010-010728
Application 11/118,385
Technology Center 1700
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Before BRADLEY R. GARRIS, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellant requests rehearing of our Decision (mailed July 27,
2011) wherein we affirmed the rejection of the sole claim under
35 U.S.C. § 103 over Murakami.
The Appellant argues that in view of Murakami’s disclosures that
when the rolling elements have the preferred 0.80-1.00 wt% carbon content
the amount of retained austenite in the surface layer portion is increased by
heat treatment with ease and low cost (col. 3, ll. 54-58), and that
carbonitriding plus quench hardening takes 4.5 hours (Figs 2(a), 2(b))
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Application 11/118,385

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whereas quench hardening without carbonitriding takes only 30 minutes
(Fig. 3(b)), and further because carbonitriding involves the use of a toxic
gas (NH3), one of ordinary skill in the art would not have been motivated to
subject Murakami’s JIS SUJ2 steel containing 1.0 wt% carbon (Spec. 10:30-
31) to carbonitriding (Request 3-4).
Murakami states that the quench hardening of the steel containing 0.8-
1.0 wt% carbon is a preferred embodiment (col. 2, ll. 57-60). 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).
Murakami more broadly discloses carbonitriding, quench hardening and
tempering steel containing 0.10-1.00 wt% carbon (col. 2, ll. 34-44). Thus, in
view of Murakami, carbonitriding, quench hardening and tempering
JIS SUJ2 steel containing 1.0 wt% carbon would have been prima facie
obvious to one of ordinary skill in the art. As explained in our Opinion
(pp. 4-6), the evidence relied upon by the Appellant is not effective, when all
of the evidence is considered anew, for indicating unobviousness. Thus, we
are not persuaded of error in our Decision.
The Appellant argues that our interpretation of Murakami is
inconsistent with our interpretation of Murakami in another appeal (2010-
006050) (Request 1-3). In view of that apparent inconsistency, and further
in view of our reliance upon Murakami’s disclosure at column 3, lines 39-46
(Decision 4), we denominate the affirmance as involving a new ground of
rejection, thereby providing the Appellant with the opportunity to submit
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evidence that one of ordinary skill in the art’s interpretation of Murakami
would have been contrary to our interpretation thereof in the present appeal.
Accordingly, we grant the Appellant’s Request for Rehearing to the
extent that we denominate our Decision as involving a new ground of
rejection, but we decline to make any other change to the Decision.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b).
37 C.F.R. § 41.50(b) provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
GRANTED, 37 C.F.R. § 41.50(b)

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