JFE STEEL CORPORATION

Patent Trials and Appeals Board

Apr 14, 2021

2020003204 (P.T.A.B. Apr. 14, 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.
14/905,054 01/14/2016 Kouichi Nushiro SUG-15-1584/308880-70 7896
35811 7590 04/14/2021
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
WYSZOMIERSKI, GEORGE P
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
04/14/2021 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):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KOUICHI NUSHIRO, TOSHIO MAETANI,
TOMOSHIGE ONO, and YUKIKO OZAKI
Appeal 2020-003204
Application 14/905,054
Technology Center 1700
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and
SHELDON M. MCGEE, Administrative Patent Judges.
MCGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 18–25. We have jurisdiction.
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as JFE
STEEL CORPORATION. Appeal Br. 1.
Appeal 2020-003204
Application 14/905,054

2
CLAIMED SUBJECT MATTER
The claims are directed to a mixed powder for powder metallurgy
containing a mixture of an iron-based powder, an alloying powder, a
machinability improvement powder, and a lubricant. Appeal Br. 7 (Claims
App.). The claims require the machinability improvement powder to
comprise “crystalline layered alkaline silicate heat-treated at 400 °C to 1100
°C,” where the alkaline silicate can be, e.g., sodium silicate. Id.
Sole independent claim 18 is illustrative and is reproduced below:
18. A mixed powder for powder metallurgy obtained by
mixing an iron-based powder, an alloying powder, a
machinability improvement powder, and a lubricant, wherein
the machinability improvement powder comprises crystalline
layered alkaline silicate heat-treated at 400 °C to 1100 °C,
the alkaline silicate is at least one of sodium silicate,
potassium silicate and lithium silicate,
and
a mix proportion of the machinability improvement
powder is 0.01% to 1.0% by mass in terms of total content of
the iron-based powder, the alloying powder, and the
machinability improvement powder.
Appeal Br. 7, Claims App.

STATEMENT OF THE CASE
The Rejections
The Examiner rejects claims 18–25 under 35 U.S.C. § 103 as
unpatentable over the combined disclosures of Andersson2 and Reen,3 with

2 US 2014/0341771 A1, published Nov. 20, 2014.
3 US 3,689,964, issued Sept. 12, 1972.
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Application 14/905,054

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or without additional prior art. Final Act.4 2–6. Relevant to this appeal, the
Examiner finds that Andersson discloses every limitation recited in claim 18
except for 1) the machinability improvement powder (MIP) comprising one
of the specifically claimed crystalline layered alkaline silicates, such as
sodium silicate, and 2) heat-treating the MIP at 400 °C to 1100 °C. Id. at 2–
3. To address these differences between Andersson and claim 18, the
Examiner turns to Reen, which the Examiner finds evinces that sodium
silicate was known in the art “to be useful as a machinability improving
agent in an iron-based powder composition.” Id. at 3.
Based on these combined teachings, the Examiner determines that it
would have been obvious to incorporate sodium silicate into Andersson’s
powder composition. Id. The Examiner also determines that the claimed
temperature range used to heat-treat the sodium silicate is a product-by-
process limitation that is “not seen as resulting in a patentable distinction
between the prior art and the” claims. Id.
Appellant’s Contentions
Appellant argues that Reen does not employ an alkaline silicate
powder, but rather uses an aqueous alkali metal silicate solution. Appeal Br.
3. Thus, according to Appellant, the skilled artisan would not have been
motivated to modify Andersson’s powder composition with Reen’s sodium
silicate to arrive at the claimed subject matter. Id. Appellant also asserts
that Reen’s disclosure of aqueous alkali metal silicates teaches away from
arriving at the claimed subject matter. Id. at 4.

4 Although the appeal is taken from the Final Office Action dated June 4,
2019, we refer to the Final Office Action dated January 7, 2019 which
articulates the substance of the rejections in more detail.
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Appellant also asserts that heating the mixed powder of Andersson
and Reen would not result in a mixed powder as claimed. Id.
Appellant also contends that alkaline silicates heat-treated within the
claimed temperature range exhibit characteristics that are different from
those that are not treated according to the claims. Id. at 5.
OPINION
We review the appealed rejection for reversible error based on the
arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv);
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) (explaining that
even if the Examiner had failed to make a prima facie case, “it has long been
the Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections”).
Having considered Appellant’s contentions, we are unpersuaded of
reversible error in the rejections, and sustain the rejections for the reasons
provided by the Examiner. Final Act. 2–5; Adv. Act. 2; Ans. 3–9. We add
the following only for emphasis.
Appellant’s arguments regarding the aqueous form of Reen’s sodium
silicate do not identify error in the rejection because the Examiner does not
rely on Reen for the physical form the silicate takes. See Final Act. 2
(finding that Andersson discloses a powder comprising an alkaline silicate
having a layered crystalline structure); Adv. Act. 2 (“The Andersson
material includes all of [the claimed] components except for a specific
silicate used for machinability improvement, but does include a silicate for
machinability improvement in a structural form (layered crystalline) as
recited in claim 18.”); Ans. 8 (“Andersson discloses the use of a powdered
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form of such a silicate” and “discloses the use of such a silicate in a
crystalline layered form.”).
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR Intern. Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007). Applying that legal principle to the case at hand, it
was known to use the claimed sodium silicate to improve the machinability
properties of an iron-based powder. Reen, 1:20–25, 53–56. It was also
known that using silicates having a layered crystalline structure in iron-
based powders “contribute to machining properties even at relatively low
temperatures during machining” thus avoiding negative impact on the tool.
Andersson ¶ 54. Therefore, despite Reen’s specific teaching that its sodium
silicate was used in aqueous form, the skilled artisan would have recognized
that sodium silicate––if in crystalline layered form––could be used to
likewise improve Andersson’s similar iron-based powder composition.
Notably, Appellant has not argued that it would have been beyond the skill
of the ordinary artisan to use Reen’s sodium silicate in crystalline layered
powder form. Appeal Br. 2–5. We, therefore, discern no reversible error in
the Examiner’s conclusion that the skilled artisan would have been
motivated to employ sodium silicate in crystalline layered form in
Andersson’s iron-based powder composition, for the purpose of improving
its machinability. Final Act. 3; Ans. 8–9; Adv. Act. 2; Reen, 1:53–56.
As to Appellant’s data which purportedly shows that “heat-treated
crystalline layered alkaline silicates treated at 400°C to 1100°C exhibit
characteristics that are different from those that are not heat-treated” (Appeal
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Br. 5), we observe the temperatures at which the “crystalline layered”
silicates were heat-treated are not given. Spec. ¶ 71 (Table 2). Thus, we
cannot determine whether the powders containing the claimed silicates (i.e.,
samples M1–M14 and M27–M30) fall within the scope of the appealed
claims. See also Ans. 8 (“the examples of the invention (M1 [through] M14)
do not appear to specify any particular heating temperature, so it is not
possible to determine how or whether changing the heat-treatment
temperature affects the properties of those materials.”). Therefore,
Appellant’s data falls short of evincing a structural difference between the
claimed powders that require an alkaline silicate (e.g., sodium silicate)
“heat-treated at 400 °C to 1100 °C,” and powders that contain such a silicate
that is not heat-treated in this manner. 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.”).
We also reject Appellant’s argument that heating the mixed powder of
Andersson and Reen would not result in a mixed powder (Appeal Br. 4)
because it misunderstands the rejection and furthermore lacks evidentiary
support. See Final Act. 2 (noting that “Andersson does not state that the
silicate is” heat-treated, but finding the claimed heat treating temperature to
be a product-by-process limitation (emphasis added)); In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take
the place of evidence.”).
In sum, Appellant has failed to identify reversible error in the
rejection of claim 18. Appellant relies on the same deficient arguments for
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the remaining rejections. Appeal Br. 5–6. We, therefore, sustain all of the
obviousness rejections on appeal.
CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
18, 19 103 Andersson, Reen 18, 19
20, 21 103 Andersson, Reen,
Uenosono
20, 21
20, 21 103 Andersson, Reen,
Ozaki
20, 21
22 103 Andersson, Reen,
Andersson ʼ431
22
23, 24 103 Andersson, Reen,
Henmi
23, 24
25 103 Andersson, Reen,
JP 46-39564
25
Overall
Outcome
18–25

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