KIM, Heung-Yun et al.

Patent Trials and Appeals Board

Feb 4, 2020

15250022 - (D) (P.T.A.B. Feb. 4, 2020)

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.
15/250,022 08/29/2016 Heung-Yun KIM CSL0039USC 1351
23413 7590 02/04/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
KRUPICKA, ADAM C
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HEUNG-YUN KIM, IL-RYOUNG SOHN, and DAE-CHUL BAE
____________

Appeal 2019-003911
Application 15/250,022
Technology Center 1700
____________

Before MONTÉ T. SQUIRE, AVELYN M. ROSS, and BRIAN D. RANGE,
Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–19, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In this Decision, we refer to the Specification filed Aug. 29, 2016
(“Spec.”); Final Office Action dated Jan. 22, 2018 (“Final Act.”); Advisory
Action dated Apr. 20, 2018 (“Advisory Act.”); Appeal Brief filed July 3,
2018 (“Br.”); and Examiner’s Answer dated Oct. 19, 2018 (“Ans.”). There
is no reply brief.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies POSCO as the real party in
interest. Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s claimed subject matter relates to a method for
manufacturing a hot press formed (HPF) article having a hot dip aluminum
plating layer being formed on a surface of a substrate steel sheet, and an
HPF article manufactured by that method. Spec. 1:14–22, 3:9–11, 5:11–14;
Abstract. According to Appellant, the claimed method provides an HPF
article having excellent delamination resistance. Spec. 1:14–15, 4:23–27.
Claim 10 illustrates the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
10. A method for manufacturing a hot press formed (HPF)
article having excellent delamination resistance, the method
comprising:
preparing a steel sheet including, in % by weight, C:
0.18% to 0.25%, Si: 0.1 % to 1.0%, Mn: 0.9% to 1.5%, P: 0.03%
or less, S: 0.01 % or less, Al: 0.01 % to 0.05%, Cr: 0.05% to
0.5%, Ti: 0.01 % to 0.05%, B: 0.001 % to 0.005, N: 0.009% or
less, and a remainder of Fe and other impurities;
hot dip aluminum plating the steel sheet by, after heating
the steel sheet to a temperature of 550°C to 850°C, immersing
the steel sheet in a hot dip aluminum plating bath maintained at
a temperature of 640°C to 680°C and composed of, in % by
weight, Si: 7% to 13%, Fe: less than 3%, and the remainder of
Al and other unavoidable impurities;
skin pass milling (SPM) the hot dip aluminum plating steel
sheet with an elongation of 0.5% to 3% after cooling the hot dip
galvanized steel sheet;
alloying a hot dip aluminum plating layer on a surface of
the hot dip aluminum plated steel sheet by heating the hot dip
aluminum plated steel sheet to a temperature of 850°C to 950°C
and maintaining the temperature for a certain period of time; and
manufacturing a hot press formed (HPF) product by
rapidly cooling the alloyed hot dip aluminum plated steel sheet
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to a temperature of 300°C or lower while hot press forming the
alloyed hot dip aluminum plated steel sheet.
Br. 20–21 (key disputed claim language italicized and bolded).
REFERENCES
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Name Reference Date
Yoshikawa et al.
(“Yoshikawa”)
US 2006/0121305 A1 June 8, 2006
Nishibata et al. (“Nishibata”)

US 2006/0185774 A1 Aug. 24, 2006
Maki et al. (“Maki”)

US 2014/0030544 A1 Jan. 30, 2014
REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claim 1–19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Maki in view of Yoshikawa and Nishibata
(“Rejection 1”). Ans. 6.
2. Claims 1–9 are rejected under 35 U.S.C. § 103 as being
unpatentable over Maki (“Rejection 2”). Id. at 3.
OPINION
Rejection 1
The Examiner rejects claims 1–19 under § 103 as obvious over the
combination of Maki, Yoshikawa, and Nishibata (Ans. 6–9), which we refer
to as Rejection 1.
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The Examiner determines that the combination of Maki, Yoshikawa,
and Nishibata suggests a method for manufacturing an HPF article satisfying
all of the limitations of claim 10 and concludes the combination would have
rendered the claim obvious. Ans. 6–9.
Regarding the “manufacturing a hot press formed (HPF) product by
rapidly cooling the alloyed hot dip aluminum plated steel sheet to a
temperature of 300°C or lower while hot press forming the alloyed hot dip
aluminum plated steel sheet” recitation of claim 10, the Examiner relies
principally on Maki for suggesting that element of the claim. Id. at 8–9.
Although the Examiner acknowledges that Maki’s process differs from the
claimed process in that the claimed process requires cooling the product
during press forming to a temperature of 300°C or less, and Maki’s process
requires cooling its product after press forming, the Examiner finds that the
processes are substantially identical and thus form “a substantially identical
product.” Id. at 3 (finding the processes form a substantially identical
product “whether cooled during, or after the press forming operation”).
The Examiner further finds and reasons that “substantially identical
materials treated in a substantially identical manner are expected to result in
products having substantially identical structure and properties.” Id. at 6.
Based on the above findings, the Examiner concludes
[o]ne of ordinary skill in the art would have found it
obvious to cool the product of Maki et al. during the press
forming operation where cooling during press forming has
been demonstrated in the art as a suitable alternative to
cooling after the press forming operation.
Id. at 8.
Appellant argues the Examiner’s rejection should be reversed because
Maki’s process is not substantially identical to the claimed process and thus,
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the products formed by Maki’s process are not substantially identical to the
HPF article recited in the claims. Br. 12–16. In particular, Appellant argues
that, in contrast to the claimed process, which requires rapidly cooling the
alloyed hot dip aluminum plated steel sheet to a temperature of 300°C or
lower while hot press forming the alloyed hot dip aluminum plated steel
sheet, i.e., during hot press forming, Maki’s process involves cooling its
steel sheet after hot press forming. Id. at 12–14 (citing Maki ¶¶ 107, 111,
114, 127).
Appellant further argues the HPF products formed by Maki’s process
and the claimed process are not substantially identical because the
“microstructures of a final steel product is crucially affected by the history
of heat treatments and associated temperatures, and plastic forming and
associated temperatures.” Id. at 14; see also id. at 12 (quoting Spec.
22:31–23:2 (“Removing the formed article from the mold at a steel sheet
temperature of 300°C or higher after the hot dip press may cause
deformation due to thermal stress.”)).
The weight of the evidence supports Appellant’s arguments. On the
record before us, we are not persuaded the Examiner has identified sufficient
evidence in the record to support the finding that Maki’s process and the
claimed process are substantially identical and necessarily form substantially
identical products. We, thus, are also not persuaded by the Examiner’s
conclusion it would have been obvious to one of ordinary skill to have
arrived at the claimed invention. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992) (holding the examiner bears the initial burden of establishing a
prima facie case of obviousness).
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The Examiner’s statements at pages 8–9 and 10–11 of the Answer
regarding Maki’s process and products formed by that process being
“substantially identical” to the claimed process and products formed are not
persuasive because they are largely conclusory and unsupported by
sufficient evidence in the record. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (explaining rejections “cannot be sustained by mere conclusory
statements”). Although the Examiner asserts that, “the process of Maki et
al. is considered to be substantially identical to that of appellants” (Ans. 11)
and “it is also known in the art of press forming to cool the product either
during or after press forming” (id. at 11), the Examiner does not direct us to
persuasive evidence or provide adequate technical reasoning to sufficiently
support any such finding. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) (requiring “reasoning with some rational underpinning to support
the legal conclusion of obviousness”) (quoting Kahn, 441 F.3d at 988).
Contrary to what the Examiner’s rejection seems to imply, the fact
that it may be technically possible to operate Maki’s process to cool its steel
sheet during forming in the manner claimed, the Examiner provides no
meaningful technical discussion regarding what impact such a modification
would have on the strength and surface properties of the sheet, which are
features that Maki teaches are required (Maki ¶¶ 1, 15, 47). See also Belden
Inc. v. Berk–Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
(“[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.”).
Thus, for principally the same reasons provided by Appellant at pages
12–17 of the Appeal Brief, we are not persuaded the Examiner has
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established by a preponderance of the evidence that Maki’s process and the
claimed process are substantially identical and form substantially identical
products, and, therefore, do not sustain the Examiner’s rejection of claim 10
and determination it would have been obvious to one of ordinary skill to
arrive at the claimed subject matter.
Because the Examiner’s rejection of claims 1–9 and 11–19 rest on the
same flawed finding that Maki’s process and the claimed process are
substantially identical and form substantially identical products and
obviousness conclusion, we also do not sustain the Examiner’s rejection of
those claims.
Accordingly, we reverse the Examiner’s rejection of claims 1–19
under 35 U.S.C. § 103 as obvious over the combination of Maki,
Yoshikawa, and Nishibata.
Rejection 2
The Examiner’s rejection of claims 1–9 under § 103 as obvious over
Maki (Ans. 3–6), which we refer to as Rejection 2, is based on the Maki
reference and rests on the same flawed finding that Maki’s process and the
claimed process are substantially identical and form substantially identical
products previously discussed above in reversing the Examiner’s Rejection
1. See Final Act. 3 (stating that “substantially identical materials treated in
substantially identical manner are expected to result in products having
substantially identical structure and properties”).
We, therefore, reverse the Examiner’s Rejection 2 for principally the
same reasons stated above for reversing Rejection 1.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–19 103 Maki, Yoshikawa,
Nishibata
1–19
1–9 103 Maki

1–9
Overall
Outcome
1–19

REVERSED