Ex Parte Swiatek et al

Patent Trial and Appeal Board

Jul 11, 2017

12565809 (P.T.A.B. Jul. 11, 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.
12/565,809 09/24/2009 Glenn J. Swiatek RL-2154/090136 1223
ALLEGHENY TECHNOLOGIES INCORPORATED
1000 SIX PPG PLACE
PITTSBURGH, PA 15222-5479
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
07/13/2017 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):
maria.dunn@atimetals.com
ATIDocketing@ atimetals.com
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLENN J. SWIATEK and RONALD E. BAILEY
Appeal 2015-005381
Application 12/565,809
Technology Center 1700
Before PETER F. KRATZ, JEFFREY T. SMITH,
and ELIZABETH M. ROESEL, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1—20, 25—28, and 30—35. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants’ claimed invention is directed to a method of reducing
flatness deviations in an alloy article.
Claims 1 and 20, the only independent claims on appeal, are
illustrative and reproduced below:
1. A process for reducing flatness deviations in an alloy
article, the process comprising:
heating an alloy article to a first temperature at least as great
a martensitic transformation start temperature of the alloy;
Appeal 2015-005381
Application 12/565,809
applying mechanical force to the alloy article at the first
temperature, the mechanical force tending to inhibit flatness
deviations of a surface of the article; and
air cooling the alloy article to a second temperature no greater
than a martensitic transformation finish temperature of the alloy,
wherein the mechanical force is maintained on the alloy article
during at least a portion of the air cooling of the alloy article from the
first temperature to the second temperature.
20. A process for inhibiting flatness deviations in air-
hardenable high-strength steel articles selected from sheet and plate,
the process comprising:
heating an air-hardenable high strength steel article selected
from a sheet and a plate to a first temperature at least as great as a
martensitic transformation start temperature of the air-hardenable high
strength steel;
applying mechanical force to the article at the first temperature,
the mechanical force applied using an operation selected from the
group consisting of a roller leveling operation, a stretch leveling
operation, and a platen press leveling operation; and
air cooling the article from the first temperature to a second
temperature no greater than a martensitic transformation finish
temperature of the air-hardenable high strength steel;
wherein the mechanical force has a magnitude equal to or
greater than a yield strength of the alloy article at temperatures
between the first temperature and the second temperature, and
wherein the mechanical force is applied during at least a portion of the
air cooling of the article from the first temperature to the second
temperature.
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Appeal 2015-005381
Application 12/565,809
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Yoshie
Jones
Thompson
Benedyk
Pelissier
Raos
Igawa
US 5,454,883
US 5,518,557
US 4,881,392
US 5,911,844
US 6,451,137 B1
US 2005/0224129 A1
EP 0 481 378 A1
Oct. 03, 1995
May 21, 1996
Nov. 21, 1989
Jun. 15, 1999
Sep. 17, 2002
Oct. 13, 2005
Apr. 22, 1992
The Examiner maintains the following grounds of rejection:
1. Claims 1—5, 12—15, 18, 25, and 34 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jones in view of Benedyk.
2. Claims 6, 10, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jones in view of Benedyk and Igawa.
3. Claims 7—9 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones in view of Benedyk and Thompson.
4. Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones in view of Benedyk and Raos.
5. Claims 20, 30, and 35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Jones in view of Benedyk, Thompson, and Raos.
6. Claim 26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones in view of Benedyk and Pelissier.
7. Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones in view of Benedyk and Yoshie.
8. Claim 31 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones in view of Benedyk, Thompson, Raos and Pelissier.
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9. Claims 32 and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jones in view of Benedyk, Thompson, Raos and Yoshie.
We reverse the stated rejections. Our reasoning follows.
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
Rejection 1
The Examiner finds, inter alia, that Jones fails to “expressly teach the
fluid quenching is air cooling, as claimed” (Final Act. 2; see claim 1). The
Examiner finds that “Benedyk teaches fluid quenching can be performed via
oil quenching or air quenching (cooling) without liquid quenching” (Final
Act. 2; Ans. 2; Benedyk, col. 3,11. 42—56).
The Examiner maintains that (Final Act. 3; see Ans. 2—3):
It would have been obvious to one of ordinary skill in the
art at the time of invention to perform the fluid quenching of
Jones et al. via air quenching (cooling), without liquid
quenching since picking a method from a short list is prima
facie obvious, and the use of conventional materials to perform
their known functions in a conventional process is obvious In re
Raner, 134 USPQ 343 (CCPA 1962).
Appellants argue that Benedyk teaches the use of quenching with
water, oil, or air as equivalents quenching fluids for the quenching process
of Benedyk for increasing ductility and formability of the aluminum alloys
of Benedyk and the Examiner has not established that using an air quench in
place of the fluid (liquid) quenching during the martensitic phase
transformation of the steel alloy of Jones is an equivalent or alternative
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Application 12/565,809
known quenching method for the martensitic phase transformation of the
steel alloy of Jones so as to obtain the microstructure desired by Jones (App.
Br. 13; see App. Br. 7—13; 16—19; Reply Br. 3—13; Jones, col. 5,11. 31—46).
The Examiner counters that Jones does not teach liquid quenching but
rather teaches fluid quenching which does not exclude air (Ans. 12—13).
However, Jones teaches that “[djuring the time the quenching fluid is
circulated past the plate, the temperature is uniformly decreased and there
are no residual gas pockets adjacent the plate as there is a continuous flow of
liquid past all portions of the plate (emphasis added)” (Jones, col. 4,11.
34—37). Moreover, Jones teaches that “[i]f gas pockets are permitted to form
at any area of the plate, metallurgical characteristic will not be as desired
and the unwanted balnite, pearlite or ferrite pockets may form in the plate”
(col. 5,11. 43^47).
In light of the teachings of Jones, which support Appellants’
argument, we concur with Appellants that the Examiner has not carried the
burden to establish that one of ordinary skill in the art would have modified
Jones to employing air rather than liquid in the fluid quenching of Jones.
In an attempt to establish the obviousness of the claimed subject
matter, the Examiner has not carried the burden to fully address the
differences between the teachings of the applied prior art references from
each other in proposing their combination. Nor has the Examiner adequately
explained why, regardless of the differences, one of ordinary skill in the art
would have been led by the separate teachings of Benedyk and Jones to
make the modifications of Jones’ steel wear plate production method that are
necessary to yield a method that would correspond to the method required
by Appellants’ claim 1 and with a reasonable expectation of success in so
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doing. Consequently, the Examiner has not established an apparent reason
for the proposed modification of the process of Jones based on the combined
teachings of the applied prior art. As stated in KSR Int 7. Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007), ‘“[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness’” (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
Thus, the record indicates that the Examiner used impermissible
hindsight in rejecting the Appellants’ claims. See In re Warner, 379 F.2d
1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must
rest on a factual basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art”). Accordingly, we do not
sustain the Examiner’s Rejection 1.
The Examiner has not established how the additional references
applied in Rejections 2—9, which latter rejections are built upon the
combination of Jones and Benedyk as set forth in base Rejection 1, cure the
afore-discussed deficiency in Rejection 1 for reasons discussed above and as
argued by Appellants (Final Act. 4—12; App. Br. 20-37; see Reply Br.
13-33).
It follows that we reverse Rejections 2—9.
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CONCLUSION
The Examiner’s decision to reject the appealed claims is reversed.
REVERSED
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