Ex Parte Takeda et al

Patent Trial and Appeal Board

Jul 12, 2016

13995739 (P.T.A.B. Jul. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/995,739 06/19/2013 Mikako Takeda
22850 7590 07114/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
416798US99PCT 2134
EXAMINER
LUK, VANESSA TIBAY
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
07/14/2016 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
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MIKAKO TAKEDA, SHOHEI NAKAKUBO,
KAZUHIKO KIRIHARA and MASA YUKI ENDO
Appeal2015-003432
Application 13/995,739
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
decision rejecting claims 1, 2 and 5-20. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Independent claim 1 reads (emphasis added):
1. A steel wire material, comprising, by mass % based on
the total mass of the steel wire material:
C: 0.05-1.2%;
Appeal2015-003432
Application 13/995,739
Si: 0.01-0.5%;
Mn: 0.1-1.5%;
P: 0.02% or less (not including 0%);
S: 0.02% or less (not including 0%); and
N: 0.005% or less (not including 0%); with the remainder being
iron and unavoidable impurities, wherein
a scale with 7. 0 µm or less thickness is included,
F eO ratio inside the scale is 3 0-80 vol%, and
Fe2Si04 ratio is less than 0.1 vol%.
Appellants request review of the Examiner's rejection of claims 1, 2,
and 5-20 under 35 U.S.C. § 103(a) as unpatentable over Kuroda (US
2009/0229710 Al, published September 17, 2009). App. Br. 3; Final Act. 2;
Ans. 2-3.
Appellants do not argue any claim separate from the other. See
Appeal Brief, generally. Accordingly, we select independent claim 1 as
representative of the claimed subject matter before us on appeal. Claims 2
and 5-20 stand or fall with claim 1.
ANALYSIS
The Prior Art Rejection
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
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Application 13/995,739
Appellants' claims is unpatentable over the applied prior art for the reasons
presented by the Examiner. We add the following for emphasis.
Independent claim 1 is directed to a steel wire material comprising a
scale having a specific ratio for FeO and Fe2Si04 as well as a thickness of
with 7 .0 µm or less thickness.
We refer to the Examiner's Answer for the statement of the rejection.
Ans. 2-3. 1
Appellants argue Kuroda's Embodiment 4 discloses a scale thickness
of about 10 µm for a steel wire having a diameter of about 5 mm that is
inconsistent with the disclosed tested wire diameter of 5.5 mm having a
maximum oxide scale thickness of 7 .0 µm. App. Br. 4; Spec. ,-r 41; Kuroda ,-r
126. Appellants additionally argue it is unreasonable to arbitrarily select and
combine the conditions from Kuroda's Embodiments 3 and 4 to arrive to the
claimed invention because each embodiment addresses a different
characteristic (Embodiment 3 improves mechanical descaling property by
adjusting the amount and the composition of the scale while Embodiment 4
improves mechanical descaling property by adjusting the state of the crack).
App. Br. 4; Kuroda ,-r,-r 84--126.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 2-5. Appellants' arguments are premised on the
preferred embodiments of Kuroda for the scale thickness. It is well settled
that a reference may be relied upon for all that it would have reasonably
suggested to one having ordinary skill in the art, including non-preferred
embodiments. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
1 We rely on the statement of rejection as presented in the Examiner's
Answer for the purposes of this opinion.
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Appeal2015-003432
Application 13/995,739
(Fed. Cir. 1989) ("all disclosures of the prior art, including unpreforred
embodiments, must be considered") (quoting In re Lamberti, 545 F .2d 7 4 7,
750 (CCPA 1976)).
As noted by the Examiner, and acknowledged by Appellants, Kuroda
discloses a broader range of scale thickness for a steel wire which has
undergone hot rolling (about 5-20 µm). App. Br. 4; Ans. 2; Kuroda i-f 120.
While Appellants argue that Kuroda's preferred thickness of about 10 µm
exceeds their disclosed maximum oxide scale thickness of 7 .0 µm for a
similar 5 mm wire, the Examiner correctly noted claim 1 places no
restriction on the diameter of the steel wire. App. Br. 4; Ans. 4. Given
Kuroda's broader disclosure of scale thicknesses, Appellants have not
adequately explained why the preferred thickness of 10 µm is representative
of the scope of scale thicknesses disclosed by Kuroda. One of ordinary skill
would have appreciated Kuroda's broader disclosure of a scale thickness of
about 5-20 µm.
With respect to the argument concerning the combination of Kuroda's
Embodiments 3 and 4, we agree with the Examiner's finding that both
embodiments address making steel using substantially identical oxidation
process to produce the scale. Ans. 5; Kuroda i-fi-1107, 124. Moreover, as
noted by Appellants above, these embodiments present different ways to
improve the mechanical descaling property of scale that are well within
Kuroda's broader disclosure of making a steel wire excelling in scale
adhesion as well as descalability. App. Br. 4; Kuroda i-f 14. Thus,
Appellants have not adequately explained any patentable distinction between
Kuroda's steel wire and the steel wire of the claimed invention.
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Application 13/995,739
Appellants further argue Kuroda does not teach adjusting scale
thickness by adjusting FeO ratio inside the scale, as claimed. App. Br. 5.
We also find this argument unavailing. As noted by the Examiner,
Kuroda recognizes the ratio of FeO greatly affects the properties of scale at
the time of mechanical de scaling, specifically that the ratio of F eO
exceeding 30 vol. % leads to good mechanical descaling performance. Ans.
7; Kuroda i-fi-160, 101. Given that Kuroda's disclosed ratio ofFeO
encompasses the claimed FeO ratio, Appellants have not adequately
explained why one skilled in the art, using no more than ordinary creativity,
would not have been capable of adapting the composition and thickness of
the scale on Kuroda's steel product to ensure good mechanical descaling
performance. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A
person of ordinary skill is also a person of ordinary creativity, not an
automaton."). Appellants have not adequately explained any patentable
distinction between the claimed invention and Kuroda's steel product.
Appellants also argue the upper limit of 7 µm is a critical value
because the peeling ratio of the scale becomes unacceptable when this value
is exceeded as shown in Figure 2. App. Br. 4. Figure 2 illustrates data that
appears on Table 5 in the Specification. Spec. i-f 52.
We are also unpersuaded by this evidence. We agree with the
Examiner that the data relied upon does not demonstrate criticality over the
entire claimed thickness range of 7 µm or less. Ans. 5. Moreover, it is not
clear that the data presented in Figure 2 provide a comparison against the
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Application 13/995,739
closest prior art, Kuroda 2 in this case. In addition, Appellants' showing is
limited to providing scale to a steel wire having a diameter of 5.5 mm. Spec.
i-f 11. Given Appellants' previous focus on the diameter of the wire (App.
Br. 4), Appellants have not adequately explained why this single tested wire
of 5.5 mm in diameter is representative of the entire scope of wires
encompassed by the claim. Finally, while the Specification distinguishes
between data that satisfy the requirements of the present invention and data
that do not (Spec. i-fi-153-55), there is no discussion in the Specification
recognizing or explaining why the data show unexpected results.
On this record, Appellants have not adequately shown, much less
explained, why the evidence relied upon would have been unexpected by
one of ordinary skill in the art or is reasonably commensurate in the scope
with the claims. See, e.g., In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) ("Even assuming that the results were unexpected, Harris needed to
show results covering the scope of the claimed range. Alternatively Harris
needed to narrow the claims."); In re Greenfield, 571F.2d1185, 1189
(CCPA 1978).
Accordingly, we sustain the Examiner's prior art rejection under 35
U.S.C. § 103(a) for the reasons presented by the Examiner and given above.
2 The patent to Kuroda and the instant application are owned by the same
assignee (Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.)). Thus, the
patent to Kuroda is Appellants' own prior art.
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Application 13/995,739
ORDER
The Examiner's prior art rejection under 35 U.S.C. § 103(a) is
affirmed.
TIME PERIOD
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 ).
AFFIRMED
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