Ex Parte Oura et alDownload PDFPatent Trial and Appeal BoardNov 28, 201713881750 (P.T.A.B. Nov. 28, 2017) Copy Citation 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. 13/881,750 04/26/2013 Hiroshi Oura 414120US99PCT 3633 22850 7590 11/30/2017 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER WALCK, BRIAN D ART UNIT PAPER NUMBER 1736 NOTIFICATION DATE DELIVERY MODE 11/30/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): patentdocket @ oblon. com oblonpat @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROSHI OURA and NAO YOSHIHARA Appeal 2017-002659 Application 13/881,750 Technology Center 1700 Before PETER F. KRATZ, RAE LYNN P. GUEST, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-19. We have jurisdiction. 35 U.S.C. § 6(b). We reverse. 1 We refer to the Specification (“Spec.”) filed April 26, 2013; Non-Final Office Action (“Non-Final Act.”) dated October 23, 2015; Appellants’ Appeal Brief (“App. Br.”) dated March 18, 2016; Examiner’s Answer (“Ans.”) dated October 7, 2016; and Appellants’ Reply Brief (“Reply Br.”) dated December 6, 2016. 2 Appellants identify Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.) as the real party in interest. App. Br. 1. Appeal 2017-002659 Application 13/881,750 BACKGROUND The invention relates to high carbon steel wire rods which can be drawn into wires. Spec. ^ 1. According to Appellants, drawability of a steel wire rod is beneficially impacted by controlling its chemical composition, including amounts of titanium in the form of a solute, a nitride, a carbide, and a sulfide. Id. 10, 12-13. Appellants disclose that the amount of complexed titanium in the final product is impacted by certain manufacturing process conditions, including: the rate of cooling from 1500 to 1400 °C for solidification (id. 30); the temperature to which a billet is heated before hot rolling (id. 31); the temperature applied at the start of hot rolling (id. ^ 32); and the start temperature and cooling rate applied after hot rolling (id. ^ 33). Claim 1—the sole independent claim on appeal—is reproduced below from the Claims Appendix of the Appeal Brief (some indentation added for readability): Claim 1: A high carbon steel wire rod comprising, in mass%: C in a content of 0.6% to 1.5%; Si in a content of 0.1% to 1.5%; Mn in a content of 0.1% to 1.5%; P in a content of more than 0% and less than or equal to 0.02%; S in a content of more than 0% and less than or equal to 0.02%; Ti in a content of 0.03% to 0.12%; B in a content of 0.001% to 0.01%; N in a content of 0.001% to 0.005%, and iron and inevitable impurities, wherein: a solute boron content is 0.0002% or more; a solute nitrogen content is 0.0010% or less; the high carbon steel wire rod satisfies formulas (1) and 2 Appeal 2017-002659 Application 13/881,750 [sol.Ti]=[Ti]-[Ti withN]-[Ti with C]-[Ti with S]>0.002 (mass%) (1), [Ti with C] >0.020 (mass%) (2), where: [sol.Ti] represents a content of solute titanium dissolved in the high carbon steel wire rod; [Ti] represents a total Ti content in the high carbon steel wire rod; [Ti with N] represents a content of Ti in the form of a nitride in the high carbon steel wire rod; [Ti with C] represents a content of Ti in the form of a carbide in the high carbon steel wire rod; and [Ti with S] represents a content of Ti in the form of a sulfide in the high carbon steel wire rod. REJECTIONS I. Claims 1-3, 5-8, and 10-19 stand rejected under 35 U.S.C. § 102(b) or, in the alternative, under 35 U.S.C. § 103(a), as unpatentable over Kochi.3 II. Claims 4 and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Kochi. DISCUSSION The Examiner finds that Kochi describes a steel wire rod fabricated from a steel composition (SI) that includes all of the elements recited in claim 1 at concentrations within the recited concentration ranges. Non-Final Act. 4 (citing Kochi ]fl[ 57-58, Tables 1 and 2). The Examiner also finds that Kochi’s disclosed process for forming the above-mentioned wire is substantially the same as that which is disclosed by Appellants. Id. at 5; see 3 US 2007/0277913 Al, published December 6, 2007 (“Kochi”). 3 Appeal 2017-002659 Application 13/881,750 also Ans. 5 (“[Kochi’s] method of manufacturing is very similar, namely hot rolling at similar temperatures and then cooling the wire.”). On that basis, the Examiner determines that the recited amounts of solute nitrogen, solute titanium, and titanium complexed with carbide would have been inherent in Kochi’s wire rod. Non-Final Act. 5. Appellants argue that Kochi fails to disclose a manufacturing process involving S1 that is substantially the same as that which is disclosed in the Specification, such that “there is no reasonable basis that the wire rod of Kochi is expected to have, at least, the content of solute nitrogen and the content of Ti in the form of a carbide, recited in Claim 1.” App. Br. 7. Particularly, referring to Kochi’s Table 2, Appellants point out that Kochi is silent with regard to any step or rate of cooling from 1500 to 1400 °C, reports a heating step prior to hot rolling to a temperature of only 1151°C, and is silent with regard to a hot rolling start temperature. Id. at 8- 9. In contrast, Appellants disclose that each of the aforementioned manufacturing conditions impacts the amount of solute nitrogen or titanium carbide formed. See Spec. ^ 30 (controlling cooling rate from 1500 to 1400 °C to 0.8 °C or less “helps Ti to fix free nitrogen sufficiently”); id. ^[31 (heating billets to 1200 °C or higher before hot rolling “may help titanium to fix free nitrogen sufficiently”); id. TJ 32 (providing a hot rolling start temperature that is not lower than 850°C and not higher than 950 °C “helps titanium to fix free nitrogen sufficiently” and “helps carbides of titanium precipitate sufficiently”). Appellants additionally point to Comparative Examples 23-25 reported at Tables 2 and 3 of the Specification as further evidence that solute and complexed nitrogen and titanium in the steel composition are dependent 4 Appeal 2017-002659 Application 13/881,750 upon manufacturing process conditions. App. Br. 8-10. Comparative Examples 23, 24, and 25 correspond to wire rods formed from the same steel compositions as Examples 1, 4, and 7, respectively, but manufactured under different manufacturing process conditions, including different solidifying rates, pre-hot-rolling temperatures, and/or hot rolling start temperatures. See Spec. T| 38, Table 2. Comparative Examples 23 and 24 are shown to have yielded solute nitrogen concentrations that differ from those of Examples 1 and 4. See Spec. ^ 47, Table 3. Comparative Example 25 yielded a titanium carbide concentration that differs from that of Example 7. Appellants further rely on the Declaration of Hiroshi Oura, filed September 10, 2015, which states, inter alia, that heating billets to a temperature of only 1151 °C before hot rolling “will result in too much amount of solute nitrogen.” Oura Decl. ^ 9. The Examiner does not directly contest Appellants’ reading of Kochi. See Ans. 5 (“[I]n the instant case the same process steps are employed to produce the steel even if Kochi is silent as to some of the particular processing conditions disclosed in the instant specification.”). Nor do we find any mention in Kochi of a rate of cooling from 1500 to 1400 °C or a temperature applied at the start of hot rolling.4 4 The Examiner’s discounting of Appellants’ examples reported in the Specification on the basis that they do not compare the claimed invention with Kochi’s SI composition is misplaced. See Ans. 6, 8 (citing MPEP § 716.02 which concerns allegations of unexpected results). Appellants rely on their examples not as evidence of unexpected results, but as evidence that formation of titanium complexes with nitrogen and carbide depends on manufacturing processing conditions not specified in Kochi. 5 Appeal 2017-002659 Application 13/881,750 We are persuaded that Appellants have shown by a preponderance of the evidence that the resulting solute nitrogen, solute titanium, and titanium carbide concentrations are governed at least in part by selection of the above-discussed manufacturing process conditions, and that Kochi’s non disclosure of those conditions renders Kochi’s disclosure insufficient to support the Examiner’s inherency finding. Moreover, the Examiner fails to present any reasoning why one of ordinary skill would have found it obvious to provide a steel wire having the recited amounts of solute nitrogen, solute titanium, and titanium carbide. Accordingly, neither the anticipation nor the obviousness ground of Rejection I is sustained. Rejection II is premised on the same erroneous inherency finding and, therefore, also is not sustained. DECISION The Examiner’s decision rejecting claims 1-19 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation