Ex Parte Watanabe et al

Patent Trial and Appeal Board

Mar 19, 2018

13824722 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/824,722 03/18/2013
35811 7590 03/21/2018
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Makoto Watanabe
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.
SUG-13-1070 5015
EXAMINER
GAITONDE, MEG HA MEHTA
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
03/21/2018 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte MAK OTO WAT AN ABE, SEIJI OKABE,
and TOSHITO TAKAMIY A 1
Appeal2017-007547
Application 13/824,722
Technology Center 1700
Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and
AVELYN M. ROSS, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 1, 3-5, 7, and 8.2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
1 Appellants identify the real party in interest as JFE Steel Corporation.
2 On page 2 of the Answer, the Examiner indicates that claims 2 and 6 are no
longer rejected.
Appeal2017-007547
Application 13/824,722
STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants' subject matter on appeal and is
set forth below:
1. A grain oriented electrical steel sheet comprising: linear grooves
having a depth of 10 µm to 50 µm and a width of 50 µm to 300 µm
provided on a surface of the steel sheet; a forsterite film on the
surface of the grain oriented electrical steel sheet including a
surface of the linear grooves; and an insulating coating applied
directly to the surface of the forsterite film, wherein assuming that
ai (µm) denotes a film thickness of the insulating coating at the
floors of the linear grooves and a2 (µm) denotes a film thickness of
the insulation coating on the surface of the steel sheet at portions
other than the linear grooves, ai and a2 satisfy formulae (1) and (2):
0.3 µm :S a2:S 3.5 µm (1), and
0.4 :S ai/a2 :S2.5 (2).
The Examiner relies on the following prior art references as evidence
of unpatentability:
Kurosaki et al. (Kurosaki)
Inokuti
U.S. 6,565,674 Bl
U.S. 6,287,703 Bl
THE REJECTIONS
May 20, 2003
Sep. 11, 2001
1. Claims 1, 3, 5, and 7 are rejected under 35 USC § 103 as obvious in
view of Kurosaki in view of Inokuti.
2. Claims 4 and 8 are rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Kurosaki in view of Inokuti, as applied to claim 1 above,
and further in view of Applicant's Admitted Prior Art (AAPA).
2
Appeal2017-007547
Application 13/824,722
ANALYSIS
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports Appellants' stated position in the record, and we reverse each
rejection, with the following emphasis.
The dispositive issue in this case is whether Inokuti teaches the
missing element of Kurosaki pertaining to the film thickness ai (µm) of the
insulation coating at the floors of the linear grooves of the steel sheet
satisfying the formulae (1) and (2) as recited in claim 1. It is the Examiner's
position that Inokuti teaches an insulation coating thickness of 2 µm that
meets this claim limitation. Final Act. 2-3. Appellants dispute that Inokuti
teaches this missing element of Kurosaki for the reasons presented in both
the Appeal Brief and Reply Brief.
Appellants argue that Inokuti' s disclosure of a 2 µm thick insulation
coating pertains to the coating thickness at the surface of the steel sheet at
portions other than the linear grooves (including the floors of the liner
groves). Appeal Br. 3. Reply Br. 1-3. Appellants submit that the
proposed combination of Kurosaki with Inokuti' s teaching of a coating
thickness therefore does not suggest the thickness of the coating at the floors
of the linear grooves as claimed. Appellants refer to Inokuti's Figure 3C in
this regard, which is reproduced on page 4 of the Appeal Brief. Appellants
explain how there is an intervening nitride-oxide layer that fill the grooves
(which includes the floors of the grooves), so therefore there is no teaching
of an insulating coating on the floors of the grooves. Appellants argue that
the prior art teachings have not been properly considered as a whole.
Appeal Br. 5.
3
Appeal2017-007547
Application 13/824,722
The Examiner's response is that only Inokuti's teaching of the
thickness of the insulating coating is being applied to the teachings of
Kurosaki. Ans. 2-3. However, the Examiner is missing the point being
made by Appellants, which is that the degree to \vhich the Examiner has
analyzed each reference as a whole is lacking such that no prirnafacie case
has been properly rnet. Appeal Br. 3-5. In other words, the applied
references should be considered in their entirety in the determination of
obviousness, not just the portions that seem to support the idea of the
combination the Examiner wants to make. We note that an examiner's
reliance on "isolated teachings of the prior art \vithout considering the over-
all context within vvhich those teachings are presented" is improper and
should be considered when determining the use of impennissib1e hindsight
In re Afercier, 515 F.2d 1161, 1166 (CCPA 1975). vVe also note that the
obviousness inquiry should not be focused on the '"obviousness of
substitutions and differences" but rather on the obviousness of the
'"invention as a \vhole." Hybritech inc. v. il1onoc!ona! J1ntibodies, Inc., 802
F.2d 1367, 1383 (Fed. Cir. 1986) (citing Hodosh v. Block Drug Co,, 786
F.2d 1136 (Fed. Cir. 1986)). Choosing bits and pieces of the prior art that
favor the combination the Examiner wants to make, and failing to consider
each reference as a whole, as in the instant case for the reasons discussed in
the record by AppeIIants, indicates reliance upon impermissible hindsight in
making the proposed combination.3 We thus agree wHh Appellants that a
pritna facie case has not been properly made.
3 When researching a particular field of invention to inspire the next steps in
the inventive process, the applicant would be faced with the references as a
whole instead of with key words or phrases that match the wording of her
invention. Without the benefit of the not-yet-written claims guiding the
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Appeal2017-007547
Application 13/824,722
In view of the above, we reverse Rejection 1. We also reverse
Rejection 2 for the same reasons because the Examiner does not rely upon
the AAP A to cure the stated deficiencies of the combination of the applied
art of Rejection 1.
DECISION
Each rejection is reversed.
ORDER
REVERSED
search process, the applicant would not know which portions of the
reference should be considered relevant and which portions might be
overlooked during examination. In re Mercier, 515 F .2d at 1166.
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