Ex Parte Oku et al

Patent Trial and Appeal Board

Oct 30, 2017

13376708 (P.T.A.B. Oct. 30, 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.
13/376,708 12/07/2011 Manabu Oku 12065-0097 1064
22902 7590 10/31/2017
CLARK & BRODY
1700 Diagonal Road, Suite 510
Alexandria, VA 22314
EXAMINER
KOSHY, JOPHY STEPHEN
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
10/31/2017 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MANUBU OKU, SADAYUKI NAKAMURA, and YOSHIAKI
HORI
____________

Appeal 2017-001511
Application 13/376,708
Technology Center 1700
____________
Before PETER F. KRATZ, JULIA HEANEY, and
JEFFREY R. SNAY, Administrative Patent Judges.

HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1–5 and 9–12 of Application
13/376,708. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 This Decision includes citations to the following documents:
Specification filed December 7, 2011 (“Spec.”); Final Office Action dated
Aug. 18, 2015 (“Final Act.”); Appeal Brief filed April 14, 2016 (“Appeal
Br.”); Examiner’s Answer dated Sept. 15, 2016 (“Ans.”); and Reply Brief
filed Nov. 7, 2016 (“Reply Br.”).
2 Appellants identify the real party in interest as Nisshin Steel Co., Ltd.
Appeal Br. 3.
Appeal 2017-001511
Application 13/376,708
2
BACKGROUND
The subject matter on appeal relates to a ferritic stainless steel for use
in heat exchangers, such as exhaust gas recirculation (“EGR”) coolers,
having a chemical composition consisting of specific content ranges for
carbon, silicon, manganese, chromium, niobium, and nickel, and a partially
recrystallized grain structure. Appeal Br. 7. According to Appellants’
Specification, the recrystallized grain structure is obtained by a final
annealing step, referred to as “recrystallization heat treatment,” which is
performed after cold rolling. Spec. ¶¶ 19, 36. The recrystallized grain
structure is sensitive to the recrystallization heat treatment temperature in the
final annealing step. See Spec. Table 2, presenting comparative data
showing percent of recrystallized grains following recrystallization heat
treatment at temperatures in the range of 850–950ºC (inventive examples)
and 1000–1075 ºC (comparative examples). By controlling the amount of
recrystallization in the final annealing step, Appellants seek to prevent
crystal grain coarsening during high temperature brazing, the method used
for joining the ferritic stainless steel members in an EGR. Spec. ¶ 1; Appeal
Br. 21.
Claim 1 is illustrative of the claimed subject matter:
1. A ferritic stainless steel material for brazing, having
partially recrystallized structure and a chemical composition
consisting of, in % by mass, C: 0.03% or less, Si: more than 0.1
to 3%, Mn: 0.1 to 2%, Cr: 10 to 35%, Nb: 0.2 to 0.8%, N:
0.03% or less, and the remainder being Fe and unavoidable
impurities, wherein area ratio in percent of recrystallized grains
formed by heating after cold working is from 10 to 80%.
Appeal Br. 45, Claims App’x.
Appeal 2017-001511
Application 13/376,708
3
THE REJECTIONS
1. Claims 1–5, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over US ’309.3 Ans. 4.
2. Claims 11–12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of US ’309 and Hartmann,4 or
in the alternative, Inaba.5 Id.
DISCUSSION
The Examiner finds that US ’309 discloses a ferritic stainless steel
having a composition that overlaps Appellants’ claimed ferritic stainless
steel. Ans. 4–5. The Examiner acknowledges that US ’309 does not
explicitly disclose its steel as having an “area ratio in percent of
recrystallized grains formed by heating after cold working … from 10 to
80%” as recited in claim 1. Ans. 5. The Examiner finds, however, that the
claimed area ratio of recrystallized grains is necessarily present because the
alloy of US ’309 has substantially similar composition and is subjected to an
annealing step having time and temperature conditions that are substantially
similar to the recrystallization annealing step of Appellants’ steel, and
additionally that the steps of heating, hot rolling, annealing, and cold rolling
described in US ’309 are substantially similar to those described in the
Specification. Ans. 5–6.

3 Hirata et al., US 6,383,309 B2, issued May 7, 2002 (“US ’309”).
4 Thomas Hartmann and Dieter Nuetzel, New amorphous brazing foils for
exhaust gas application, Proceedings of the 4th International Brazing and
Soldering Conference 110–118 (2009) (“Hartmann”).
5 Inaba, US 6,257,483 B1, issued July 10, 2001 (“Inaba”).
Appeal 2017-001511
Application 13/376,708
4
Appellants argue that the Examiner errs in concluding that the claimed
area ratio of recrystallized grains is necessarily present in US ’309. Appeal
Br. 15. Appellants rely on the comparative evidence in the Specification to
show that if the recrystallization heat treatment temperature is above 950ºC,
the grain area ratio for a given steel composition does not meet the claim
limitation. Appeal Br. 18, 21–22, citing Spec. Table 2. The annealing step
in US ’309 relied upon by the Examiner, in contrast, teaches temperatures up
to 1100ºC and does not teach any criticality in holding the temperature
below 950ºC. Appeal Br. 18. Further, Appellants note that the hot rolling
step taught in US ’309 is not similar to the process described in the
Specification, because US ’309 includes a controlled rough hot rolling step
that would affect grain orientation and the drawing properties of its final
material, whereas the process described in the Specification does not include
such a step. Appeal Br. 20, citing US ’309 3:20–29; Spec. ¶ 36.
Appellants’ arguments are persuasive of harmful error in the
Examiner’s findings as to inherency of the claimed properties of Appellants’
ferritic stainless steel. For the reasons explained by Appellants, the
Examiner has not shown by a preponderance of the evidence that US ’309’s
ferritic stainless steel having an elemental composition overlapping the
claimed amounts would inherently possess the area ratio in percent of
recrystallized grains recited in Appellants’ claims. The comparative data in
the Specification shows that only alloys that were treated at a
recrystallization heat treatment temperature of 950ºC or less possessed the
claimed grain area ratio (Spec., Table 2, Examples 1–11), and that alloys
having an elemental content within Appellants’ claimed range but which
were processed with recrystallization heat treatment over 950ºC did not
possess the claimed grain area ratio. Spec., Table 2, Examples 21–28.
Appeal 2017-001511
Application 13/376,708
5
Appellants therefore meet the burden of showing that US ’309’s ferritic
stainless steel does not inherently possess Appellants’ claimed properties.
See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the
claimed and prior art products are identical or substantially identical, or are
produced by identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product.”)
Additionally, the Examiner’s response that “it is expected that the
steel material of US ’309 has the property of 10–80% of its area occupied by
recrystallized grains as claimed in the instant claims” because of its
substantially similar composition and process (Ans. 10) does not provide the
requisite factual basis for the rejection and fails to rebut Appellants’ specific
showing that US ’309’s process is not substantially similar. Appeal Br. 15–
22. The Examiner does not respond to Appellants’ specific evidence
concerning sensitivity of the claimed recrystallized structure and grain area
ratio to the recrystallization heat treatment temperature. See Spec. Table 2.
Accordingly, we cannot sustain the rejection of claim 1. Our
conclusion also applies to the rejections of all independent and dependent
claims because they are similarly based on the erroneous inherency finding.
SUMMARY
We reverse the rejections of claims 1–5 and 9–12.

REVERSED