Ex Parte Ohki

Board of Patent Appeals and Interferences

Apr 19, 2011

10897016 (B.P.A.I. Apr. 19, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/897,016 07/23/2004 Chikara Ohki 70456-042 1048
20277 7590 04/20/2011
MCDERMOTT WILL & EMERY LLP
600 13TH STREET, N.W.
WASHINGTON, DC 20005-3096
EXAMINER
ROE, JESSEE RANDALL
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
04/20/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte CHIKARA OHKI
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Appeal 2010-006050
Application 10/897,016
Technology Center 1700
________________

Before BRADLEY R. GARRIS, TERRY J. OWENS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-006050
Application 10/897,016
 
2
 
Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision
rejecting claims 4, 5, 8-11, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable
over Murakami (US 5,413,643 issued May 9, 1995). We have jurisdiction under
35 U.S.C. § 6.
We REVERSE.

Appellant claims a bearing's component which has been subjected to a heat
treatment method including a carbonitriding step to thereby form a carbonitrided
layer, wherein the grain size number of an austenite crystal grain exceeds 10 and
the component is formed with JIS SUJ2 steel (claims 4, 11).
Further details regarding this claimed subject matter are set forth in
representative claims 4 and 11 which read as follows:
4. A bearing's component, subjected to a heat treatment method
wherein said bearing's component is carbonitrided at a carbonitriding
temperature higher than an A1 transformation point of steel for said
bearing's component and then cooled to a temperature lower than the
A1 transformation point, and subsequently, using a heat treatment
apparatus that successively moves and heats each individual bearing's
component, reheated to a range of quenching temperature (T2) of no
less than said A1 transformation point and less than said carbonitriding
temperature to be quenched,
wherein grain size number of an austenite crystal grain exceeds
10,
said steel for said bearing's component, in an area except for a
carbonitrided surface layer, is JIS SUJ2, and
Appeal 2010-006050
Application 10/897,016
 
3
 
the temperature raising rate in heating to temperature T2
(quenching temperature) is set to be at least 3°C/min at a depth of
2mm from the surface of the bearing's component.
11. A bearing's component formed with steel for a bearing's
component, comprising a carbonitrided layer,
wherein in a microstructure of a quenching-tempering structure,
the grain size number of austenite crystal grain exceeds 10,
said steel for said bearing's component, in an area except for a
carbonitrided surface layer, is JIS SUJ2, and
said austenite crystal grain is formed with uniform grain size.
The Examiner finds that Murakami teaches a bearing component in the form
of an inner ring which is broadly disclosed as containing from 0.10 to 1.00% by
weight carbon, thereby satisfying the JIS SUJ2 steel limitation of the independent
claims, and which is subjected to a heat treatment including a carbonitriding step in
order to form a carbonitrided layer as recited in the independent claims (Abst.;
col. 2, ll. 34-69; Figs. 2(a)-2(c)) (Ans. 3-5, para. bridging 8-9). The Examiner also
finds that Murakami's above described component would inherently possess the
austenite crystal grain sizes required by the independent claims because Murakami
and these claims subject the same or similar metal to the same or similar process
(Ans. 5).
In contrast to the Examiner's above findings, Appellant argues that
Murakami contains no teaching or suggestion of subjecting the claimed steel to a
carbonitriding step (App. Br. 6-11; Reply Br. 1-5). According to Appellant,
Murakami discloses carbonitriding bearing components made from steel having a
carbon content of 0.10 to 0.80% by weight but not the claimed JIS SUJ2 steel
which contains 0.95 to 1.10% by weight carbon (id.).
Appeal 2010-006050
Application 10/897,016
 
4
 
Appellant's argument is persuasive.
The Murakami disclosure cited by the Examiner includes broad, alternative
language which might superficially appear to disclose carbonitriding steel having a
carbon content up to 1.0% by weight. However, for the reasons detailed by
Appellant, the Murakami disclosure as a whole would reveal to one with ordinary
skill in this art that carbonitriding is performed on steel having 0.10% to 0.80% by
weight carbon but not on the claimed JIS SUJ2 steel. Moreover, the Examiner's
rejection is not based on the proposition that an artisan would have found it
obvious to practice the carbonitriding step of Murakami on steel having 0.95 to
1.10% by weight carbon (i.e., the JIS SUJ2 steel of the independent claims). As a
consequence, this record provides no reasonable expectation that the retained
austenite characteristics desired by Murakami would be successfully achieved
when carbonitriding steel of the type claimed by Appellant.
For the above stated reasons, the Examiner has failed to establish a prima
facie case that Murakami teaches or would have suggested subjecting a bearing
component made from JIS SUJ2 steel to a carbonitriding step thereby obtaining a
carbonitrided layer and austenite crystal grain sizes exceeding 10 as required by
independent claims 4 and 11. It follows that we cannot sustain the Examiner's
§ 103 rejection of the appealed claims.

The decision of the Examiner is reversed.
REVERSED
bar