Ex Parte Shiga et al

Patent Trial and Appeal Board

Feb 8, 2017

14241556 (P.T.A.B. Feb. 8, 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.
14/241,556 02/27/2014 Akira Shiga 12143-0048 6645
22902 7590 02/08/2017
TT ARK ^ RRODY EXAMINER
1700 Diagonal Road, Suite 510
Alexandria, VA 22314
HEVEY, JOHN A
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
02/08/2017 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 AKIRA SHIGA, MASAYUKI HORIMOTO,
YOSHIHIRO DAITOH, HIDEKIIMATAKA, YUSUKE USUI, and
TETSUYA OHASHI
Appeal 2017-001637
Application 14/241,556
Technology Center 1700
Before JAMES C. HOUSEL, DONNA M. PRAISS, and LILAN REN,
Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—4. We have jurisdiction pursuant to
35 U.S.C. § 6(b). We affirm.
1 In this decision we refer to the Specification filed Feb. 27, 2014 (“Spec.”),
the Final Office Action mailed July 23, 2015 (“Final Act.”), the Appeal
Brief filed Jan. 4, 2016 (“App. Br.”), the Examiner’s Answer mailed Sept.
20, 2016 (“Ans.”), and the Reply Brief filed Nov. 9, 2016 (“Reply Br.”).
Appeal 2017-001637
Application 14/241,556
Appellants’2 claimed invention is directed to a rolled steel bar or wire
rod for hot forging. Spec. 11. According to Appellants, the claimed
composition solves problems of the prior art regarding the properties of
bending fatigue resistance, surface fatigue resistance, wear resistance, and
machinability, through control of the amounts of Si, Mn, Cr, and Mo in the
composition, as well as the average ferrite grain size. App. Br. 8.
According to the Specification, “to increase machinability while increasing
bending fatigue strength, surface fatigue strength and wear resistance, it is
preferable to adjust the total amount of Cr and Mo contents” to satisfy the
formula 1.60 < Cr + 2 x Mo < 2.10. Spec. 119. The Specification also
provides that “the bending fatigue strength and surface fatigue strength of
steel are high” when “the variation of grains in steel is small” and “the ratio
of average ferrite grain size is not more than 2.0” based on the maximum
value among average ferrite grain sizes obtained in 15 visual fields to the
minimum value among average ferrite grain sizes obtained in 15 visual
fields. Id. 121.
Claim 1 is illustrative and reproduced below:
1. A rolled steel bar or wire rod for hot forging,
comprising:
a chemical composition comprising, by mass%,
C: 0.1 to 0.25%,
Si: 0.30 to 0.60%,
Mn: 0.50 to 1.0%,
S: 0.003 to 0.05%,
Cr: 1.50 to 2.00%,
2 Appellants identify the real party in interest as Nippon Steel and Sumitomo
Metals Corporation. App. Br. 3.
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Application 14/241,556
Mo: not more than 0.10% (including 0%),
Al: 0.025 to 0.05%,
N: 0.010 to 0.025%, and the balance being Fe and
impurities, wherein
the impurities contain P: not more than 0.025%, Ti: not
more than 0.003%, and 0 (oxygen): not more than 0.002%,
respectively, and wherein
fill defined by Formula (1) is 1.60 to 2.1 O; and
a structure consisting of a ferrite-pearlite structure, a
ferrite-pearlite-bainite structure, or a ferrite-bainite structure,
wherein
a maximum value/a minimum value of average ferrite
grain size, which is obtained by making a measurement in 15
visual fields each having an area of 62500 pm2 in a cross section,
is not more than 2.0:
fill = Cr+ 2 x Mo (1)
where each symbol of elements in Formula (1) is
substituted by a content (mass%) of a corresponding element.
App. Br. 21 (Claims Appendix).
The Examiner maintains the following grounds of rejection:
1. Claims 1^4 as unpatentable under 35 U.S.C. § 103 over JP ’062;3
2. Claims 1 and 2 as unpatentable for nonstatutory double patenting
over claim 2 of US 8,939,194;
3 Sumitomo Metal Ind. Ltd. (Applicant), JP 2009052062 (pub. Mar. 12,
2009) (“JP ’062”) (citations herein are to the English language machine
translation). An English language abstract of JP ’062 identifies Sumitomo
Metal Ind. Ltd. as the Applicant and Yoshihiro Ofuji as the inventor. The
Examiner identifies the reference as “Ofuji” in the Answer and Final Office
Action. Final Act. 3; Ans. 2. Appellants contend that the proper translation
of the inventor’s name is Yoshihiro Daitoh and identify the reference as
“Daitoh” in the Appeal Brief and the Reply Brief. App. Br. 5.
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Application 14/241,556
3. Claims 1 and 2 as provisionally unpatentable for nonstatutory
double patenting over claim 1 of co-pending US Application No.
13/982,594;
4. Claims 1—4 as provisionally unpatentable for nonstatutory double
patenting over claims 8—11 of co-pending US Application No.
13/880,484.
Ans. 2.
We affirm the stated rejections. Our reasons follow.
Double Patenting
Regarding the double patenting rejections, Appellants only state that
they “wish[] to defer a final decision on the double patenting rejections until
patentability is resolved in this appeal.” App. Br. 19. Because Appellants
provide no argument to rebut the double patenting rejections, we therefore
sustain the Examiner’s double patenting rejections.
Obviousness of Claim 1
Regarding the rejection of claim 1 over JP ’062, the Examiner finds
that JP ’062 “teaches a steel composition which overlaps the claimed ranges,
including a composition which overlaps the claimed ‘Formula (1)’ and value
‘fill.’” Final Act. 3. The Examiner further finds that although JP ’062 does
not specifically teach the ferrite grain size ratio required by claim 1, “the
reference teaches substantially the same composition and structure as the
instantly claimed steel” as well as “substantially the same method of making
and treatment parameters.” Id. at 4. As such, the Examiner finds that “it
would be expected to necessarily possess the same properties, including
those claimed.” Id.
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Application 14/241,556
Appellants contend that the Examiner erred in rejecting claim 1 over
JP ’062 because “achieving the average ferrite grain size limitation is
process specific and the specifics of the inventive processing used to meet
the claimed limitation concerning the average ferrite grain size are not taught
by [JP ’062].” App. Br. 12 (emphasis omitted). Appellants argue that the
comparison of a control composition to processing differences in Table 3
and paragraph 63 of the Specification “shows that, if the average ferrite
grain size limitation is not less than 2.0 as claim 1 requires[,] the properties
of fatigue strength, wear resistance and cutting (machinability) are not
obtained.” Table 3 is shown below.
Table 3 indicates the composition of the steel tested as A, B, or C
(compositions set out in Table 1) and the processing conditions (conditions
set out in Table 2). Spec. 1 63. According to Appellants, “the precise
control of the composition and processing must be maintained in order to get
the claimed average ferrite grain size ratio.” App. Br. 13 (emphasis
omitted). Appellants argue that “[JP ’062] does not even recognize the
control of the average ferrite grain size limitation of claim 1.” Id.
Appellants further argue that the Examiner reversibly erred in finding that
the average ferrite grain size limitation is inherently present in JP ’062 and
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Application 14/241,556
in shifting the burden to Appellants to demonstrate that it is not inherently
present. Id. at 14—15.
Appellants also contend that the Examiner reversibly erred in finding
the comparisons in the Specification insufficient to rebut obviousness. Id. at
15. Appellants assert that the graph submitted in the Evidence Appendix to
the Appeal Brief (below) shows “significant improvement in cutting edge
wear is obtained when practicing the invention, e.g., from values of greater
than 100 for alloys F and Q to values of around 80 for the alloys abiding by
the limitations of claim 1.” Id. at 16.
EVIDENCE- APPENDIX
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Steel compositions F and Q in the graph have excessive Si and Mn
content, respectively, compared to the limitations in claim 1, but meet the
ranges disclosed in JP ’062. Id. According to Appellants, even though JP
’062 “may suggest some of the effects as the invention attains when using Cr
and Mo[,]” JP ’062 does not disclose “the importance of controlling Si and
Mn with Cr and Mo for cutting edge wear resistance and this improvement”
shown in the submitted graph. Id. at 17. Appellants argue that the
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Application 14/241,556
composition overlap with JP ’062 found by the Examiner is outweighed by
(1) JP ’062 “not concerned with control of Si and Mn and/or the problem of
improving machinability and wear resistance[,]” (2) “comparative evidence
showing] that controlling Si and Mn is important as well[,]” and (3) JP ’062
“provides no expectation that the control of the claimed composition,
particularly in terms of Si and Mn and satisfaction of the claimed Formula 1,
would contribute to the improvements obtained by the invention.” Id. at 18.
The Examiner responds that Appellants’ comparative examples A and
B are drawn to compositions with Si values outside that of [JP ’062] and the
instant claims. Ans. 4. The Examiner further finds that in addition to JP
’062 teaching compositions overlapping the claimed ranges including for Cr,
Mo, and fill, the reference “further teaches that the addition of such
elements is useful to improve fatigue strength, hardenability, and temper
softening resistance of steel ([JP ’062] para. 41,51) the same problems
sought to be addressed by the instantly claimed formula fill.” Id. (citing
Spec. 137). Regarding comparative examples for composition C, which
composition falls within the claimed ranges, the Examiner finds that the
average ferrite grain size falls outside the claimed range for processing
condition 1 and inside the claimed range for processing condition 2. Id. at
4—5. The Examiner additionally finds that the difference between the two
processing conditions is that a first heating at 1280 °C occurs for 2 hours in
condition 1 and 12 hours in condition 2, but Appellants do not identify a
difference between condition 2 and JP ’062 to distinguish JP ’062 based on
processing conditions. Id. at 5 (citing Spec. Table 2; JP ’062 || 65, 75, 91).
Regarding the portion of JP ’062 ’s ranges that are outside the claimed
ranges for Cr and Mo, the Examiner finds that
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Application 14/241,556
[t]he fact that [JP ’062] teaches certain compositional ranges
which are not exactly coextensive with the claimed ranges does
not negate the fact that the reference teaches a rolled steel with
substantially overlapping compositions, nor that it would have
been obvious to one of ordinary skill in the art to select from
the portion of the overlapping ranges in a steel drawn to solving
substantially similar problems, such as improving fatigue
strength, hardenability, and temper softening resistance of steel.
Id. (citing JP ’062 || 41, 51). The Examiner further finds that “[s]uch a
steel, selected from the overlapping portions of the compositional ranges,
with the same structure, and made in a substantially similar way, as taught
by [JP ’062], would be expected to possess the same properties, including
the claimed average ferrite grain size.” Id. at 5—6. The Examiner further
finds that “it is not the case that [JP ’062] teaches away from Si content
below 0.6% when Cr content is increased, but rather shows that the
compositional contents may be adjusted to obtain desired utilities from
within the entire scope of the ranges taught by [JP ’062], which overlap with
the claimed ranges.” Id. at 7 (citing exemplary embodiments e, f, o, r, and
H 41 and 51 in JP ’062). The Examiner finds that “it would have been
obvious to one of ordinary skill in the art to select from the portion of the
overlapping ranges in order to obtain desired utilities, including improved
fatigue strength, hardenability, and temper softening resistance of steel.” Id.
The Examiner further finds that the shearing performance disclosed in JP
’062 is a form of machinability and, therefore, “is necessarily linked to an
improvement in machinability.” Id. at 7—8 (citing JP ’062 H 1—4, 74).
Regarding the alleged criticality of fill values shown in the graph in
the Evidence Appendix, the Examiner finds “the values appear to be
generally consistent throughout fill values of 1.5 to 2.1” and “therefore fails
to show criticality commensurate with the scope of the claimed ranges of fill
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Application 14/241,556
equal to 1.6—2.1 [required by claim 1], nor 1.8—2.1 [required by claims 2 and
44].” Id. at 8.
In the Reply Brief, Appellants continue to argue that JP ’062 does not
disclose the average ferrite grain size limitation of claim 1 and that “the
specification clearly demonstrates [] that there are precise manufacturing
conditions to be followed in order to have the claimed average ferrite grain
size recited in claim 1.” Reply Br. 3. Appellants further assert that “the
manufacturing process required for the present invention is not disclosed in
[JP ’062] and it is error for the Examiner to take an inherency stance on the
average ferrite grain size limitation and say that it is present in the steel
disclosed in [JP ’062].” Id. at 4. Appellants argue that processing in
accordance with the Specification requires hot rolling at a heating
temperature of 1150 to 1200 °C, a heating time of at least 1.5 hours, and also
that water cooling not be performed before the finishing rolling. Id. at 4
(citing Spec. 152 and test conditions 2 and 7 in Table 2). According to
Appellants, the hot rolling conditions described in Table 2 of JP ’062 (Nos. 1
to 7) “do not satisfy the conditions described in paragraph [0052] of the
specification” and, therefore, the claimed average ferrite grain size “cannot
be said to be inherently present.” Id.
Appellants also contend in the Reply Brief that JP ’062 “does not
recognize that heating before blooming rolling has to be at least 10 hours”
because paragraph 65 of JP ’062 describes three conditions including
1280 °C for 5 hours and states “5 hours or longer is necessary” in paragraph
4 Should prosecution of this application continue, the Examiner should
consider whether claim 4, which depends from claim 2, further limits claim
2 in compliance with 35 U.S.C. § 112 (d).
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Application 14/241,556
88. Id. (citing JP ’062 || 65, 88). For this reason also, Appellants assert
that the Examiner’s inherency position is in error. Id. at 5.
Appellants further contend that the Examiner erred “when equating
shearing performance to machinability.” Id. at 6. Appellants assert that
paragraphs 1—4 and 74 of JP ’062 cited by the Examiner “says nothing of
machinability.” Id. at 7. Appellants argue that because the Examiner has
not established “that shearing performance and machinability are one in the
same or the idea that if a material has good shearing performance it also has
good machinability ... it can only be reasonably concluded that the
improvements associated with the invention are unexpected when
considering the teachings of [JP ’062].” Id. at 7.
We find that the preponderance of the evidence supports the
Examiner’s findings for the reasons stated on pages 2—7 in the Final Action
and pages 2—8 in the Answer. We add the following for emphasis.
Appellants’ arguments are not persuasive because Appellants do not
dispute that JP ’062 discloses a first heating step of 1280 °C for 12 hours as
the Examiner finds. Ans. 5 (citing JP ’062 || 65, 75, 91). Appellants also
do not dispute the Examiner’s finding that the only difference between
processing condition 1 and processing condition 2 in Table 2 of the
Specification is that heating at 1280 °C occurs for 2 hours in condition 1 and
for 12 hours in condition 2. Id. Therefore, the Examiner’s finding that the
comparative examples in Table 3 of the Specification do not distinguish JP
’062 with respect to producing the average ferrite grain size required by
claim 1 {id. at 4—5) is supported by the record.
Appellants argument that JP ’062 does not disclose examples or “test
specimens” produced according to the method of the invention is not
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persuasive because a prior art reference is not limited to its examples. In re
Mills, 470 F.2d 649, 651 (CCPA 1972) (citation omitted) (“a reference is not
limited to the disclosure of specific working examples.”); see Merck & Co.
v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art]
patent discloses a multitude of effective combinations does not render any
particular formulation less obvious.”).
Appellants’ argument that the Examiner erred in equating shearing
performance described by JP ’062 with machinability as disclosed in the
Specification is not persuasive because the Examiner did not equate the two,
but, rather, stated that “sheering performance ... is a form of machining and
therefore the improvement in shearing performance is necessarily linked to
an improvement in machinability.” Ans. 7—8. Appellants state that “shear
performance in [JP ’062] means that the body, when being cut, is not likely
to develop a crack, and does not take account of the amount of wear of the
edge when cutting is being performed.” Reply Br. 6. Appellants’ argument
is insufficient to establish that shearing performance is not linked in any way
to an improvement in machinability. Appellants have not shown that wear
of the edge when cutting does not contribute to developing a crack in the
body when being cut. Moreover, paragraph 3 of JP ’062 refers to
“productive efficiency or cost” of the “cutting process” while paragraph 4
describes “the life of a shearing edge becomes remarkably short, and will
become easy to produce the problem that a crack occurs in an amputation
stump surface.” Both of these disclosures support the Examiner’s finding of
a link between machining and shearing performance such that JP ’062 can
be said to address the same problems sought to be addressed by the claimed
composition, including fatigue strength, hardenability, and temper softening
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Application 14/241,556
resistance of steel, which additional objectives Appellants do not dispute.
Ans. 4 (citing JP ’062 1141, 51; Spec. 137), 5, 7 (citing JP ’062 H 1^1, 74).
Appellants’ assertion that the cited paragraphs of JP ’062 “[do] not speak of
machinability” and “say nothing of machinability” (Reply Br. 7) appears to
note no identity of terminology between JP ’062 and the Specification,
rather than provide any analysis of the prior art disclosure as it would be
understood by a person having ordinary skill in the art.
Because the record supports the Examiner’s findings that (1) JP ’062
discloses a composition with overlapping ranges for the components,
including fill, (2) Tables 2 and 3 in the Specification show that the length of
time in the first heating step of condition 2 is responsible for producing the
average ferrite grain size required by claim 1, and (3) JP ’062 discloses a
first heating step with the same length of time as condition 2, the Examiner
did not reversibly err in finding that the required average ferrite grain size is
inherently present in JP ’062. 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.”); see In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990)
(“when the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”).
Whether an invention has produced unexpected results is a question of
fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). “[T]here is no
hard-and-fast rule for determining whether evidence of unexpected results is
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Application 14/241,556
sufficient to rebut a prima facie case of obviousness.” Kao Corp. v.
Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re
Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990) ("[e]ach situation must be
considered on its own facts."). However, a party asserting unexpected
results as evidence of nonobviousness has the burden of proving that the
results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir.
1997). Such burden requires Appellants to proffer factual evidence that
actually shows unexpected results relative to the closest prior art, see In re
Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), and that is
reasonably commensurate in scope with the protection sought by claim 1 on
appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens,
622 F.2d 1029, 1035 (CCPA 1980); In re Hyson, 453 F.2d 764, 786 (CCPA
1972). “[I]t is not enough to show that results are obtained which differ
from those obtained in the prior art: that difference must be shown to be an
unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
The extent of the showing relied upon by Appellants also must reasonably
support the entire scope of the claims at issue. See In re Harris, 409 F.3d
1339, 1344 (Fed. Cir. 2005).
We are not persuaded by Appellants’ evidence of unexpected results
for a number of reasons. First, Appellants have not established that any
results are unexpected. Rather than describing any surprising results with
respect to the comparative examples, the Specification tabulates the
performance of each example. Spec. Table 3. Table 3 does not adequately
indicate that the results obtained would have been unexpected. Moreover,
what would have been expected also is not explicitly conveyed by the
Specification. See Pfizer, Inc. v. Apotex, Inc., 480F.3dl348, 1369 (Fed.
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Cir. 2007) (A proper evaluation of a showing of unexpected results
considers what properties were expected). Second, it is only in the Appeal
Brief that Appellants state that the results are unexpected, but such a
statement by the attorney is not enough. See In re Geisler, 116 F.3d 1465,
1471 (Fed. Cir. 1997) (explaining that argument by counsel cannot take the
place of evidence). Third, Appellants have not compared the claimed
compositions to the closest prior art. Instead, Appellants direct us to the
comparative examples in the Specification that compare the claimed
composition to compositions outside of the claimed ranges (Steel A and
Steel B). App. Br. 12; Ans. 4. Appellants also direct us to the graph in the
Evidence Appendix which includes alloys F and Q, which Appellants assert
fall within the ranges of JP ’062 for Si and Mn, but do not constitute a
comparison with the closest prior art since JP ’062 also discloses
overlapping ranges with the claimed composition. App. Br. 16. Fourth,
Appellants have not directed us to any evidence that demonstrates
unexpected results for the full range of the compositions claimed. Instead,
Appellants direct us to Table 3 in the Specification which only provides
results for one composition (Steel C) that is within the claimed ranges of the
composition and the graph in the Evidence Appendix (App. Br. 23) which
shows cutting edge wear data for values of fill.
On this record, the Examiner has established by a preponderance of
the evidence that JP ’062 discloses the chemical composition of claim 1 and
that Appellants’ arguments and evidence are insufficient to rebut the
rejection of claim 1. Appellants do not separately argue the patentability of
dependent claim 3. Id. at 19. Therefore, claim 3 stands or falls with
independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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Obviousness of Claims 2 and 4
Regarding dependent claims 2 and 4, Appellants contend that “[t]he
graph in the Evidence Appendix clearly shows the criticality of the ranges of
fill that match the ranges of claims 2 and 4.” App. Br. at 17—18.
The Examiner responds that the alleged criticality of fill values shown
in the graph in the Evidence Appendix “appear to be generally consistent
throughout fill values of 1.5 to 2.1” and “therefore fails to show criticality
commensurate with the scope of the claimed ranges of fill equal to 1.6—2.1
[required by claim 1], nor 1.8—2.1 [required by claims 2 and 4].” Ans. 8.
We find that the preponderance of the evidence supports the
Examiner’s finding that Appellants’ graph does not demonstrate criticality at
each end of the claimed range. Appellants do not sufficiently establish any
significance to the fill value at 1.5 compared to values lower than 1.5, nor
do Appellants sufficiently establish any significance or criticality to the fill
value of 1.8 compared to values lower than 1.8. App. Br. 23 (Evidence
Appendix).
Conclusion
On this record, the Examiner has established by a preponderance of
the evidence that JP ’062 discloses the chemical composition of claim 1 and
Appellants have not adequately shown surprising or unexpected results
compared to the closest prior art or commensurate in scope with claim 1 nor
have Appellants demonstrated criticality of the fill ranges required by
claims 2 and 4.
ORDER
The Examiner’s decision to reject the appealed claims is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(v).
AFFIRMED
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