Farid Hassani et al.

Patent Trials and Appeals Board

Jun 16, 2021

2020004558 (P.T.A.B. Jun. 16, 2021)

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.
14/615,394 02/05/2015 Farid Eddin Hassani 20704.1012 6721
23280 7590 06/16/2021
Davidson, Davidson & Kappel, LLC
589 8th Avenue
22nd Floor
New York, NY 10018
EXAMINER
KOSHY, JOPHY STEPHEN
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
06/16/2021 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FARID EDDIN HASSANI, HYUN JO JUN, and
NINA MICHAILOVNA FONSTEIN
____________

Appeal 2020-004558
Application 14/615,394
Technology Center 1700
____________

Before CHRISTOPHER C. KENNEDY, JULIA HEANEY, and
JEFFREY R. SNAY, Administrative Patent Judges.

SNAY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–32. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies ArcelorMittal as the real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The invention relates to a steel sheet having high tensile strength and
high weldability. Spec. 1.2 Claim 1 reads as follows:
Claim 1: A steel sheet comprising:
a composition including, in weight%:
0.04 ≤ C ≤ 0.30,
0.5 ≤ Mn ≤ 4,
O ≤ Cr ≤ 4,
2.7 ≤ Mn+Cr ≤ 5,
0.003 ≤ Nb ≤ 0.1,
0.015 ≤ Al ≤ 0.1, and
0.05 ≤ Si ≤ 1.0,
wherein, after hot forming, the steel sheet has a tensile
strength in the range of 800-1400 MPa, an elongation
comprised between 4 and 9%, and a microstructure comprising
95 to 100 area% martensite.
Appeal Br. 16 (Claims Appendix).
Claim 16 recites a method of making a steel sheet from a composition
essentially as recited in claim 1. Each remaining claim on appeal depends
from claim 1 or 16.

REJECTION3
Claims 1–32 stand finally rejected under 35 U.S.C. § 103 as
unpatentable over Laurent4 and Kawasaki.5

2 We cite to the Specification filed February 5, 2015, amended June 9, 2016.
A proposed substitute Specification filed June 11, 2018 is not indicated as
having been entered by the Examiner.
3 The Examiner’s rejection under 35 U.S.C. § 112(b) stands withdrawn.
Ans. 3.
4 US 6,296,805 B1, issued October 2, 2001 (“Laurent”).
5 US 2013/0095347 A1, published April 18, 2013 (“Kawasaki”).
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OPINION
We review the appealed rejection for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)).
Appellant presents arguments regarding claims 1, 13, 16, 27, and 32.
Appeal Br. 4–14. We address Appellant’s arguments below. Each claim not
separately argued stands or falls with the argued claim from which it
depends.
Independent Claims 1 and 16
Relevant to Appellant’s arguments on appeal, the Examiner finds
Laurent discloses a steel sheet comprising all the components recited in
claim 1, at concentrations which overlap or fall within the recited ranges,
except Laurent does not teach the presence of Nb. Final Act. 4. The
Examiner finds Kawasaki teaches it was known to include 0.002–0.1 weight
% Nb in a steel composition to advantageously refine austenite grains and
thereby improve toughness. Id. at 5; Ans. 23.
Appellant argues Kawasaki teaches adding Mo to increase toughness,
not Nb. Appeal Br. 7 (citing Kawasaki ¶ 65); Reply Br. 2. Appellant also
argues substituting Nb for the Mo taught in Kawasaki, and adding that
amount to the Nb already disclosed in Kawasaki, would have resulted in Nb
concentrations that exceed the recited range. Id. at 7–8.
Appellant’s arguments are not persuasive. Kawasaki expressly
teaches Nb is an “important element[]” to “control the dimensional ratio of
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the lengths of prior austenite grains . . . and control the average grain size of
the prior austenite grains.” Kawasaki ¶ 53. To that end, Kawasaki teaches
including Nb at a concentration from 0.002% to 0.1%. Id. Kawasaki’s
teaching that Mo also refines austenite grains, id. ¶ 65, does not negate
Kawasaki’s teaching regarding Nb for that purpose. To the contrary,
Kawasaki states that Nb acts “similarly” to Mo in refining austenite grains,
and that such grain refinement improves toughness. Id. In light of the
foregoing disclosures, we are not persuaded of error in the Examiner’s
finding that one of ordinary skill would have had a reason to provide
Laurent’s steel composition with 0.002% to 0.1% Nb to advantageously
control grain size and improve toughness. See Laurent 3:65–66 (recognizing
control of grain size as important). Nor are we persuaded that applying the
teaching of Kawasaki would have led to Nb concentrations greater than the
claimed range. The Examiner relies on Kawasaki’s teaching that Nb
provides advantages similar to Mo as further evidence of a reason to include
Nb, not as a reason to substitute Nb for Mo. Ans. 23.
Appellant argues there would have been no reason to modify
Laurent’s composition to increase toughness because, according to
Appellant, Laurent’s disclosed steel has a tensile strength which exceeds that
of Kawasaki. Appeal Br. 8; Reply Br. 4. Appellant does not explain why a
greater tensile strength in Laurent would have precluded one of ordinary
skill in the art from seeking to improve toughness. Moreover, even if
Laurent’s disclosure were regarded as teaching steel having a toughness that
already exceeded that of Kawasaki, Appellant does not articulate why that
would negate Kawasaki’s teaching that addition of Nb was known to
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improve desired characteristics, or the Examiner’s finding that such an
improvement would have been useful in Laurent.
Appellant also argues neither Laurent nor Kawasaki teaches the
recited individual and collective concentrations for Mn and Cr. Appeal Br.
10, 12; Reply Br. 6–7. We disagree. As the Examiner finds, Final Act. 4,
Laurent discloses 0.5–3% Mn and 0.01–1% Cr. See Laurent 1:50–55.
Laurent’s stated concentration ranges for these components individually,
therefore, implicitly identifies the concentration of Mn and Cr taken together
as ranging from 0.51–4%. See also, Kawasaki ¶ 50 (teaching improved
hardenability by including one or both of Mn and Cr at a concentration from
1–3%). Appellant does not identify reversible error in the Examiner’s
determination that the recited Mn + Cr concentration range would have been
prima facie obvious over these overlapping ranges identified in the prior art.
Appellant additionally argues the cited prior art compositions do not
demonstrate insensitivity to cooling rate. Appeal Br. 11. However, neither
claim 1 nor claim 16 recites the argued insensitivity characteristic.
With further regard to claim 16, Appellant argues Kawasaki provides
additional steel composition components that are precluded by the term
“consisting” in the claim. Appeal Br. 12. However, the Examiner’s
rejection relies on Kawasaki as evidence of a reason to add Nb to the steel
composition of Laurent. Appellant does not contend Laurent’s steel
composition, so-modified, would have included any component other than
those encompassed by claim 16.
For the foregoing reasons, we are not persuaded of reversible error in
the Examiner’s rejection as applied to each of claims 1 and 16.

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Claim 13
Claim 13 requires that the recited “95 to 100 area% martensite”
structure can be achieved after cooling from 900 oC at any cooling rate
between 3–5 oC/sec. Appellant argues neither Laurent nor Kawasaki teaches
the recited cooling rate insensitivity. Appeal Br. 11; Reply Br. 8–10.
As the Examiner observes, Ans. 27, the disputed recitation in claim 13
relates to a process by which the claimed steel sheet may be produced.
Appellant does not present sufficient evidence to distinguish the claimed
product even if the product suggested by the prior art were produced by a
different process. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If
the product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.”). Moreover, Appellant
acknowledges that cooling rate insensitivity results from the composition of
the steel. Spec. 3 (“The chemistry of the steel, particularly the content of
Mn+Cr of from 2.7 and 5 wt%, makes the formed sheet insensitive to
cooling rate.”). Appellant’s argument that the prior art does not recognize
cooling rate insensitivity does not show error in the Examiner’s
determination that the recited composition would have been obvious from
the prior art, and the recited insensitivity characteristic is said to result from
the composition.

Claims 27 and 32
With regard to claims 27 and 32, as discussed above in connection
with claim 16, Appellant argues Kawasaki provides additional steel
components that are precluded by the term “consisting” in the claim. Appeal
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Br. 12–14; Reply Br. 12–16. Here too, the argument is not persuasive
because the Examiner’s rejection is based on the combined teachings of
Laurent and Kawasaki.

CONCLUSION
The Examiner’s decision rejecting claims 1–32 is affirmed.

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–32 103 Laurent, Kawasaki 1–32

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED