2020005478 (P.T.A.B. Feb. 12, 2021)

JFE STEEL CORPORATION

Patent Trials and Appeals BoardFeb 12, 2021

2020005478 (P.T.A.B. Feb. 12, 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. 15/737,567 12/18/2017 Hidekazu FUJIMOTO 178769 1038 25944 7590 02/12/2021 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER GRAHAM, CHANTEL LORAN ART UNIT PAPER NUMBER 1771 NOTIFICATION DATE DELIVERY MODE 02/12/2021 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HIDEKAZU FUJIMOTO, TAKASHI ANYASHIKI, and TORU SHIOZAWA ____________ Appeal 2020-005478 Application 15/737,567 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, GEORGE C. BEST, and JEFFREY R. SNAY, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1 and 2 of Application 15/737,567. Final Act. (June 13, 2019). We have jurisdiction under 35 U.S.C. § 6. A telephonic hearing was held in this appeal on February 4, 2021. For the reasons set forth below, we reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies JFE Steel Corp. as the real party in interest. Appeal Br. 1. Appeal 2020-005478 Application 15/737,567 2 I. BACKGROUND The ’567 Application describes methods for making ferrocoke by molding and carbonizing a mixture of coal and iron ore. Spec. ¶ 1. Partially replacing the coke fuel with ferrocoke greatly reduces blast furnace CO2 emissions during ironmaking processes. See Tetsuo Satoh, Ferro-coke utilization promises to reduce energy consumption in iron making, Chemical Engineering (October 1, 2017), https://www.chemengonline.com/ferro-coke- utilization-promises-reduce-energy-consumption-ironmaking/. Ferrocoke can be made by mixing low-grade coal and low-grade iron ore fines with a binder and forming briquettes. Id. The briquettes are then carbonized and reduced in a shaft furnace. Id. The ferrocoke is used to produce iron in a blast furnace process. Id. Claim 1 is representative of the ’567 Application’s claims and is reproduced below from the Appeal Brief’s Claims Appendix. 1. A method for producing ferrocoke comprising molding and carbonizing a mixture of coal and iron ore, wherein the coal is (i) a single coal having a load average value of ash content of not less than 10.7% and a load average value of mean maximum reflectance of not less than 0.81%, or (ii) a mixture of plural coals and a non-caking or slight caking coal, the mixture having a load average value of ash content of not less than 10.7% and a load average value of mean maximum reflectance of not less than 0.81%. Appeal Br. Claims App. A-1. Appeal 2020-005478 Application 15/737,567 3 II. REJECTION On appeal, the Examiner maintains the following rejection: Claims 1 and 2 are rejected under 35 U.S.C. § 103 as unpatentable over Fujimoto.2, 3 Final Act. 3. III. DISCUSSION Appellant only presents substantive argument for reversal of the rejection with respect to claim 1. See Appeal Br. 5–9. Claim 2 is alleged to be patentable based upon its dependence from claim 1. Id. at 10. Accordingly, we limit our discussion to claim 1. We begin by noting that claim 1 is written in the alternative, i.e., the claimed method can be performed by using either (i) a single coal having specified properties or (ii) a mixture of coals blended so that the mixture has specified properties. See Claim 1. Based upon Fujimoto, the Examiner advances two theories in support of the obviousness rejection. Answer 9–10. The first theory involves a prima facie case that allegedly falls under alternative (i) of claim 1. Final Act. 3–4. The second theory involves a prima facie case that allegedly falls under alternative (ii) of claim 1.4 Answer 9–11. 2 JP 2008-056791 (A), published March 13, 2008. During prosecution, the Examiner relied upon the machine translation that was not formally entered into the record. We rely upon a human translation of Fujimoto that we obtained for the purposes of this appeal. Copies of both translations were made available to Appellant’s counsel prior to the telephonic hearing and will be entered into the record. 3 Hidekazu Fujimoto is identified as an inventor on both the asserted prior art and the ’567 Application. 4 We agree with Appellant that the Examiner appeared to withdraw any reliance on a theory of obviousness involving the second alternative of claim Appeal 2020-005478 Application 15/737,567 4 We address each of these theories below. For the following reasons, we determine that neither of the theories advanced by the Examiner are sufficient to support a rejection of claim 1 as obvious. We, therefore, reverse the rejection of claims 1 and 2. A. The Fujimoto reference Fujimoto describes the production of the ferrocoke from a mixture of coal and iron ore. Fujimoto ¶ 1. In particular, Fujimoto describes the importance of the properties of the coal used in the production of ferrocoke. Id. ¶¶ 3–6. Some coals have a strong caking tendency. Id. ¶ 3. When such coals are converted into coke, “the molded coal undergoes softening and fusing in the shaft furnace, which makes it difficult to operate the shaft furnace and causes deterioration of coke quality such as deformation and cracking.” Id. Such coals exhibit the same problems if they are used as a raw material in a ferrocoke manufacturing process. Id. ¶ 5. Use of non-caking coal such as anthracite or semi-anthracite as a ferrocoke raw material may decrease the strength of the ferrocoke, which is a problem. Id. Fujimoto addresses these problems by blending caking and non- caking coals together. Id. ¶ 7. As Fujimoto explains, [t]o produce ferro-coke using a shaft furnace or the like, in the present invention, a method is used in which coal and iron ore are mixed to form a molded product, and this molded product is dry-distilled, but the characteristic feature is that, as a ferro- coke raw material, a blended coal is used, in which hardly 1 in the Advisory Action. See Advisory Action 2 (“The Examiner agrees that Fijimoto [sic] does not teach a blended coal mixture with said claim characteristics; however[,] Applicant’s claim 1 is written in the alternative.”). Appellant, however, did not petition to have the Examiner’s Answer declared as setting forth a new ground of rejection. Appeal 2020-005478 Application 15/737,567 5 softening and fusing coal and coal showing softening and fusing nature are mixed. Id. ¶ 9. In its examples, Fujimoto describes mixing a caking coal—referred to as coal A—with three different non-caking coals—referred to as coals B, C, and D—to create mixtures A + B, A + C, and A + D. Id. ¶¶ 13–17. These mixtures were then used as the raw coal material in a ferrocoke- manufacturing process. Id.; see also Fujimoto Fig. 2. Fujimoto also describes making ferrocoke using (a) a mixture of coal A and iron ore and (b) a mixture of coal B and iron ore. Id. ¶ 16; see also Fujimoto Fig. 1. Fujimoto, however, does not describe making ferrocoke using either coal C or coal D as the sole coal raw material. Id. Nor does Fujimoto disclose whether the ferrocoke produced using the mixture of coal B and iron ore has a suitable strength for use in iron manufacturing. Id. B. The Examiner’s theory involving the use of a single coal having the claimed properties In rejecting claim 1, the Examiner found that Fujimoto describes a method for producing ferrocoke by molding and carbonizing a mixture of coal and iron ore. Final Act. 3–4. The Examiner further found that Fujimoto describes, in Table 1, “Sample D which has an ash content of 10.9% and a mean maximum reflectance (Ro) of 2.14, thereby meeting the claim limitation of a single coal having a load average value of ash content of not less than 10.7% and a load average value of mean maximum reflectance of not less than 0.81%.” Id. at 5. Based upon these findings, the Examiner found that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to recognized FUJIMOTO process disclosed above, as a process Appeal 2020-005478 Application 15/737,567 6 and product of the claimed invention; and the motivation is taught by FUJIMOTO disclosing that it is possible to suppress the occurrence of softening fusion and cracking of ferrocoking molded product to increase the strength (para 8 and TABLE 1). Id.; see also Answer 5–6. Although the Examiner’s position is less than clearly expressed, we understand the Examiner to be saying that it would have been obvious to a person of ordinary skill in the art at the time of the invention to manufacture ferrocoke using only coal D as the coal raw material. Appellant argues that Fujimoto does not describe making ferrocoke from a mixture of the claimed single coal and iron ore. Appeal Br. 5–7. As discussed above, Fujimoto does not literally describe making ferrocoke from a mixture of coal D and iron ore. See Fujimoto ¶ 16. Neither coal A nor coal B have the recited load average ash content or reflectance values. Id. ¶ 14 (Table 1). We are not persuaded that a person of ordinary skill in the art lacking knowledge of Appellant’s disclosure would have been motivated to make a ferrocoke using a mixture of coal D and iron ore. Fujimoto states that “if non[-]caking anthracite or semi-anthracite[5] is used as a ferro-coke raw material, the strength of the ferro-coke may decrease, which is a problem.” Id. ¶ 5. Fujimoto teaches that the strength of the ferrocoke can be improved by mixing the anthracite or semi-anthracite with a coal having a volatile matter content in excess of 18 mass %. Id. ¶¶ 8– 11. Thus, a person having ordinary skill in the art would understand 5 Fujimoto defines anthracite and semi-anthracite as coals containing at most 18 mass % volatile matter. Fujimoto ¶ 10. Appeal 2020-005478 Application 15/737,567 7 Fujimoto to be teaching that the strength of the ferrocoke is correlated to the mass percentage of volatile matter in the coal raw material. A person having ordinary skill in the art, therefore, would not be motivated to make the ferrocoke from a mixture of only coal D and iron ore. Coal D has less than 65% of the volatile matter present in coal B. The ferrocoke consisting of coal D and iron ore would be expected to have lower strength than the ferrocoke consisting of coal B and iron ore, which Fujimoto does not describe as having sufficient strength to be practically useful. Thus, a person having ordinary skill in the art would not have had a reasonable expectation that a useful ferrocoke could be produced from a mixture of coal D and iron ore. Instead, Fujimoto would have motivated the routinier to mix coal D with a coal, such as coal A, that has a volatile matter content in excess of 18 mass %—i.e., precisely what Fujimoto did. Moreover, our determination is further supported by declaration evidence. During prosecution, Appellant presented evidence that coal D, in fact, “does not become cake and remains powder after coking and therefore would not be used in a method for producing ferrocoke comprising molding and carbonizing a mixture of coal (i.e., the single coal) and iron ore, as would be understood by one [of] ordinary skill in metallurgy.” September 6, 2019 Declaration of Hidekazu Fujimoto, ¶ 11 (entered into record September 11, 2019). C. The Examiner’s theory involving the use of a mixture of coals in which the mixture has the specified properties In the alternative, the Examiner’s Answer, the Examiner takes the position “that Coal A blended with two additional coals does meet the claimed invention of Appellant; as taught in para [0019] of FUJIMOTO.” Appeal 2020-005478 Application 15/737,567 8 Answer 10. The Examiner further explains that “Appellant does not properly represent para [0019]. Appellant only uses Coal A blended with Coal B, but as stated above by the Examiner para [0019] uses three different coals.” Id. Fujimoto’s paragraph 19, however, does not discuss blends of three different coals. Rather, as explained by Appellant, paragraph 19 describes three different blends of individual coals having different maximum reflectance is with coal B. See Reply Br. 3 (discussing Fujimoto’s paragraph 19).6 Because the Examiner’s finding regarding the content of Fujimoto’s paragraph 19 is erroneous, we cannot sustain the Examiner’s rejection of claim 1 on the basis of this theory of obviousness. IV. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2 103 Fujimoto 1, 2 REVERSED 6 The Examiner’s erroneous finding regarding the content of paragraph 19 may be due to the Examiner’s reliance upon a machine translation.