JFE STEEL CORPORATIONDownload PDFPatent Trials and Appeals BoardMay 19, 20212020000695 (P.T.A.B. May. 19, 2021) Copy Citation 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. 14/781,440 09/30/2015 Takashi Kobayashi JFE-15-1445/308692-420 2933 35811 7590 05/19/2021 IP GROUP OF DLA PIPER LLP (US) ONE LIBERTY PLACE 1650 MARKET ST, SUITE 5000 PHILADELPHIA, PA 19103 EXAMINER LIANG, ANTHONY M ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 05/19/2021 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 TAKASHI KOBAYASHI, HAYATO SAITO, and YOSHIMASA FUNAKAWA Appeal 2020-000695 Application 14/781,440 Technology Center 1700 ____________ Before CATHERINE Q. TIMM, DONNA. M. PRAISS, and MERRELL C. CASHION, JR., Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 5, 6, and 10, which constitute all the claims pending in this application. Claims 7–9 have been withdrawn. Claims 1–4 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b). 1 In this Decision, we refer to the Specification filed Sept. 30, 2015 (“Spec.”), the Non-Final Office Action dated Dec. 10, 2018 (“Non-Final Act.”), the Appeal Brief filed Apr. 26, 2019 (“Appeal Br.”), and the Examiner’s Answer dated Aug. 12, 2019 (“Ans.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies JFE STEEL CORPORATION as the real party in interest. Appeal Br. 1. Appeal 2020-000695 Application 14/781,440 2 We AFFIRM. STATEMENT OF THE CASE The invention relates to a steel sheet which is subjected to nitriding treatment to improve durability and is suitable as a material for machine parts. Spec. ¶ 1. Claims 5 and 10, reproduced below, are illustrative of the subject matter on appeal (emphasis added). 5. A steel sheet for nitriding having a composition and a microstructure: the composition comprising in percent by mass, 0.02% to 0.08% of C, 0.1% or less of Si; 0.2% to 1.8% of Mn, 0.05% or less of P; 0.02% or less of S, 0.01% to 0.06% of Al; 0.5% to 1.5% of Cr, 0.01% or less of N; and the balance being Fe and incidental impurities; and a microstructure including ferrite as a main phase and pearlite and/or bainite as a secondary phase, wherein the ferrite has a fraction of 70% or more in the entire microstructure and an average grain diameter of 5 to 25 μm, and cementite present in the secondary phase has an average length of a major axis of 3.0 μm or less in a cross section in a rolling direction of the steel sheet, the steel sheet having a Vickers hardness (HV0.1) at a depth of 0.2 mm from the surface of the steel sheet being 250 or more. 10. The steel sheet for nitriding according to Claim 5, wherein the steel sheet has a strength-elongation balance value (TS x EL) of 16 GPa% or more and 18.4 GPa % or less wherein TS is Tensile strength and EL is elongation. Appeal Br. 9 (Claims Appendix). Appeal 2020-000695 Application 14/781,440 3 ANALYSIS We review the appealed rejections 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.”)). After considering the argued claims in light of each of Appellant’s arguments, we are not persuaded Appellant has identified reversible error in the appealed rejections. The Examiner rejects claims 5, 6, and 10 as follows for the reasons provided in the Non-Final Office Action.3 Non-Final Act. 2–9. Claim(s) 35 U.S.C. § Basis/Reference(s) 5 112(b) Indefinite 5, 6, 10 103 Morita4 5, 6, 10 Double Patenting US 10,077,485 5, 6, 10 Double Patenting US 10,077,489 5, 6, 10 Double Patenting US 9,534,271 Indefiniteness of Claim 5 Appellant does not challenge the Examiner’s indefiniteness rejection for lacking antecedent basis for “the surface” recited in claim 5. Non-Final 3 The Examiner’s double patenting rejection of claims 5 and 10 over claims 1 and 5 of copending Application No. 14/375,709 in view of additional prior art references stands withdrawn because Appellant/Applicant filed a terminal disclaimer on Dec. 13, 2019 in copending Application No. 14/375,709. Final Act. 9; Ans. 7. 4 JPH 9-143570, published June 3, 1997. Citations to the text of Morita are to a translation appended to the reference in the record. Appeal 2020-000695 Application 14/781,440 4 Act. 2; Appeal Br. 8. Accordingly, we affirm the Examiner’s rejection under 35 U.S.C. § 112(b). Obviousness over Morita Appellant argues the obviousness rejection of claims 5, 6, and 10 over Morita together. Appeal Br. 3–6. Claims 6 and 10 each depend from claim 5, therefore, Appellant’s arguments directed to claim 5 also apply to claims 6 and 10. According to Appellant, the Examiner erred in determining Morita discloses an identical or substantially identical composition produced by an identical or substantially identical process to the claimed steel sheet and therefore inherently possesses the claimed properties: (a) “cementite present in the secondary phase has an average length of a major axis of 3.0 μm or less in a cross section in a rolling direction of the steel sheet,” and (b) “the steel sheet having a Vickers hardness (HV0.1) at a depth of 0.2 mm from the surface of the steel sheet being 250 or more.” Id. at 3. Appellant directs us to Morita’s cooling step, which includes three cooling stages, and argues that Appellant’s cooling step includes only two stages and does not contain a “retaining stage.” Id. at 4–5. Below is a chart comparing Morita’s process to that of Appellant’s process taken from the Examiner’s Answer. Appeal 2020-000695 Application 14/781,440 5 Ans. 8 (citing Morita Abstract, ¶¶ 8, 9, 31; Spec. ¶ 28). Appellant does not challenge the Examiner’s summary of the processes, but, instead, argues that the physical characteristics of steel sheets depend on both the steel composition and method in which the steel sheet is made, thus, this difference in Morita’s process means the alleged inherent properties would not necessarily flow from Morita’s teachings. Appeal Br. 5. Appellant directs us to the properties of strength-elongation balance value (TS x EL) where TS is tensile strength and EL is elongation as recited in dependent claim 10 and argues as “further support of non-inherency” that Morita’s examples do not have a strength-elongation balance value that overlaps with claim 10’s recited range. Id. Appellant also directs us to Morita’s composition Y as having a Cr content of 0.52%, which falls within the range recited in claim 5, and notes that composition Y is not among Morita’s examples. Id. Appellant argues that Morita does not disclose, teach, or suggest that Cr has an effect on increasing the hardness of the surface portion of the steel sheet by forming nitrides in the steel in a nitriding treatment, but only teaches that Cr is added Appeal 2020-000695 Application 14/781,440 6 to ensure the desired strength and to enhance weldability and corrosion resistance. Id. at 6 (citing Morita ¶ 23). Appellant’s arguments do not persuade us that the Examiner reversibly erred in rejecting claim 5 as obvious over Morita’s disclosure. The preponderance of the evidence in this Appeal record supports the Examiner’s determination that Morita’s process for producing a high tensile strength hot rolled steel plate is substantially similar to Appellant’s process. Morita’s process, like Appellant’s process, seeks to create ferrite small grains in an initial phase and pearlite and/or bainite in a secondary phase. Compare Spec. ¶¶ 23, 24 with Morita ¶¶ 29–31. As highlighted in the Examiner’s comparison table (Ans. 8), both Morita’s process and Appellant’s process (a) heat a steel slab to substantially the same temperature range, (b) hot roll at a finishing temperature in substantially the same range, (c) cool from a finishing temperature to 750 ºC at substantially the same cooling rate, (d) subsequently cool to substantially the same stop temperature range at substantially the same average cooling rate, and (e) coil at substantially the same temperature range. Compare Spec. ¶¶ 45–48, with Morita ¶¶ 28–31. Appellant’s assertion that Morita’s slower cooling rate to hold temperature in the range of less than 750 ºC to 600 ºC for a period of 5 to 20 seconds during the cooling process rebuts the process being substantially similar (Appeal Br. 4–5) is not persuasive because the Examiner finds Morita’s disclosed cooling rate ranges result in an average cooling rate of approximately 15 ºC/s, which falls within the 15–35% ºC/s range of Appellant’s cooling process. Ans. 8–9. Appellant does not dispute this finding. Appeal 2020-000695 Application 14/781,440 7 The Examiner also finds that the TS x EL property recited in dependent claim 10 overlaps with the combination of Morita’s general teaching of TS of >490 MPA (i.e., 0.49 GPa) and Morita’s EL values for the examples in Table 4, which together suggests a TS x EL (>0.49GPa x >25%) or >25.5 GPa%. Ans. 9 (citing Morita ¶ 6, Table 4). Appellant does not dispute these findings. A preponderance of evidence in the record, including the substantial similarity between the methods of Morita and Appellant, supports the Examiner’s determinations and justifies requiring Appellant to prove that Morita’s product does not necessarily or inherently possess the claimed properties. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. . . . Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO's inability to manufacture products or to obtain and compare prior art products.” (footnote omitted)). No such proof has been provided by Appellant. Further, Appellant has not provided evidence in support of the argument that the TS and EL properties of Morita’s examples are not representative of Morita’s composition Y, which has a Cr content within the claimed range. Nor has Appellant directed us to any evidence of the criticality of the claimed Cr range with respect to the claimed properties. In sum, Appellant’s arguments are not persuasive of error in the Examiner’s conclusion of obviousness. Accordingly, we affirm the Appeal 2020-000695 Application 14/781,440 8 Examiner’s rejection of claim 1 as well as the rejection of claims 6 and 10 under 35 U.S.C. § 103 over Morita. Double Patent Rejections The Examiner maintains the rejection of claims 5, 6, and 10 over certain claims in U.S. Patents 10,077,485, 10,077,489, and 9,534,271 for the reasons stated in the Non-Final Office Action. Non-Final Act. 6–9. Appellant argues that each of the Examiner’s double patenting rejections should be reversed for the same reasons discussed with respect to obviousness over Morita. Appeal Br. 6–7. The issue to consider when determining whether a nonstatutory basis exists for a double patenting rejection is whether any claim in the application defines an invention that is merely an obvious variation of an invention claimed in another patent. The analysis employed in an obviousness-type double patenting determination parallels the guidelines for an obviousness determination under 35 U.S.C. § 103 only in so far as one applies an obvious analysis to the differences between the two sets of claims. In re Braat, 937 F.2d 589, 593–94 (Fed. Cir. 1991); see also In re Longi, 759 F.2d 887, 892 n. 4 (Fed. Cir. 1985). Because Appellant’s arguments concerning the obviousness of Morita relate to Morita’s process and disclosure, those same arguments do not apply to the obviousness rejections over the claims in U.S. Patents 10,077,485, 10,077,489, and 9,534,271. Thus Appellant has not identified error in any of the Examiner’s double patenting rejections. Accordingly, we sustain each of the Examiner’s double patenting rejections of claims 5, 6, and 10. Appeal 2020-000695 Application 14/781,440 9 CONCLUSION For these reasons and those provided in the Non-Final Office Action and the Examiner’s Answer, we uphold the Examiner’s rejections of claims 5, 6, and 10. 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). In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 5 112(b) Indefinite 5 5, 6, 10 103 Morita 5, 6, 10 5, 6, 10 Double Patenting US 10,077,485 5, 6, 10 5, 6, 10 Double Patenting US 10,077,489 5, 6, 10 5, 6, 10 Double Patenting US 9,534,271 5, 6, 10 Overall Outcome 5, 6, 10 AFFIRMED Copy with citationCopy as parenthetical citation