Laurent Cretteur et al.

Patent Trials and Appeals Board

Oct 19, 2020

2020000674 (P.T.A.B. Oct. 19, 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.
14/235,420 09/10/2014 Laurent Cretteur 706.1021 5035
23280 7590 10/19/2020
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
SCHLEIS, DANIEL J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
10/19/2020 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LAURENT CRETTEUR, QINGDONG YIN,
FRANCIS SCHMIT, and WOLFRAM EHLING

Appeal 2020-000674
Application 14/235,420
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 30–39, and 62. We have jurisdiction
under 35 U.S.C. § 6(b).
We reverse.

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
ArcelorMittal. Appeal Brief dated Feb. 25, 2019 (“Appeal Br.”) 2.
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CLAIMED SUBJECT MATTER

The present application generally relates to “a very high-strength hot-
formed welded steel part.” Specification filed Jan. 27, 2014 (“Spec.”) ¶ 1.
The Specification teaches that the steel part is formed by “butt welding of at
least two sheets [which sheets consist] at least in part of a steel substrate and
a pre-coating.” Id. ¶ 27. The pre-coating is taught to “consist[] of an
intermetallic alloy layer which is in contact with the steel substrate, topped
by a layer of metal alloy which is an aluminum or aluminum-based alloy.”
Id. A sheet of the type at issue is shown in Figure 2, reproduced below.

Figure 2 of the Drawings is a schematic illustration
depicting the layers of a sheet. Id. ¶¶ 44, 47–57.

The sheet includes steel substrate 6, intermetallic alloy layer 5, and metal
alloy layer 7. Id. ¶ 44. Pre-coating 3 includes intermetallic alloy layer 5 and
metal alloy layer 7. Metal alloy layer 7 has been removed from the
periphery 9 of upper surface 8a at the right side of the figure. Id. ¶ 47.
Another figure, below, shows two sheets welded together.
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Figure 4 depicts the formation of a weld metal zone 35
at the junction between the two sheets 11, 12. Id. ¶ 70.

Figure 4 illustrates a welded blank fabricated from a first sheet 11 and a
second sheet 12. Id. ¶ 74. Figure 4 further depicts laser 30 and filler wire
32. Id. ¶ 60.
The Specification additionally teaches that an object of the invention
is a welded steel part where the mechanical strength of the weld metal zone
is greater than that of the welded sheets. Id. ¶ 28. The Specification teaches
that such strength is achieved where “the ratio between the carbon content of
the weld metal zone and the carbon content of the substrate of the first or
second sheet, whichever has the highest carbon content Cmax, is between
1.27 and 1.59.” Id. ¶ 29.
Claim 30 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:
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30. A welded steel part obtained by heating in the
austenitic range followed by hot forming, then cooling,
of at least one welded blank obtained by a butt welding
of at least a first and a second sheet comprising:
a steel substrate; and
a pre-coating including an intermetallic alloy layer
and a metal alloy layer of an aluminum or aluminum-
base alloy, the intermetallic alloy layer contacting the
steel substrate, the metal alloy layer topping the
intermetallic alloy layer;
a weld metal zone resulting from the welding
operation and forming a bond between the first and
second sheets;
the metal alloy layer being removed from edges
peripheral to the weld metal zone while the intermetallic
alloy layer remains;
over at least a portion of the weld metal zone, a
ratio between a carbon content of the weld metal zone
and a carbon content of the steel substrate of the first
or second sheet having a higher carbon content Cmax,
is between 1.27 and 1.59;
a composition of the steel substrate of at least the
first or the second sheet, comprises the following
elements, expressed in per cent by weight:
0.10% ≤ C ≤ 0.5%≤
0.5% ≤ Mn ≤ 3%
0.1% ≤ Si ≤ 1%
0.01% ≤ Cr ≤ 1%
Ti ≤ 0.2%
Al ≤ 0.1%
S ≤ 0.05%
P ≤ 0.1%
0.0002% ≤ B ≤ 0.010%,
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the balance being iron and unavoidable impurities
from processing.
Appeal Br. 24 (Claims App.) (emphasis added)
REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Bonnet US 7,241,971 B2 July 10, 2007
Canourgues et al.
(“Canourgues”)
US 2009/0220815 A1 Sept. 3, 2009

DISCUSSION
The Examiner rejects claims 30–39, and 62 under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Canourgues in view of Bonnet. Final Office
Action dated Nov. 16, 2018 (“Final Act.”) 3–6. In support of the rejection,
the Examiner finds that Canourgues teaches a blank generally similar to that
claimed, however, “it does not explicitly set forth the content of the carbon
in the weld zone compared or the relationship of the carbon in the weld zone
compared to the steel substrate.” Final Act. 5.
The Examiner additionally finds that the secondary reference, Bonnet,
includes a number of teachings regarding the relationship of carbon content
and hardenability in steel. Id. at 5–6. Specifically, the Examiner finds that
carbon content affects the hardenability and mechanical properties of a steel
structure. Id. at 5 (citing Bonnet 2:9–16, 2:23–25). The Examiner finds that
it is known to adjust the hardenability of a metal by varying the alloying
elements relative to the base metal. Id. (citing Bonnet 2:43–48). The
Examiner finds that the carbon content of the weld can be controlled by
variation of the welding process parameters. Id. (citing Bonnet 13:34–50).
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The Examiner determines that, because the amount of carbon affects
the hardness of the weld, the carbon concentration is a result-effective
variable. Id. at 6. The Examiner determines that optimization of values of
result-effective variables is within the ability of one of ordinary skill in the
art. Id. The Examiner further determines that one of skill in the art would
have had reason “to have controlled the carbon content in the weld as taught
by Bonnet within the product of Canourgues” so as “to achieve certain
mechanical and physical properties in the weld” and “to produce a weld
having improved properties in terms of resilience, toughness, and tensile
strength.” Id.
Appellant argues that the Examiner’s prima facie case is in error.
Appeal Br. 11–18. Appellant further argues that the Examiner’s prima facie
case is rebutted by evidence of criticality. Id. at 18–20. Appellant
additionally argues claims 36, 37, and 62 separately. Id. at 20–22.
With respect to the Examiner’s prima facie case, Appellant first
argues that the cited references fail to teach the 1.27 to 1.59 carbon ratio
limitation. Id. at 11–15. Appellant argues that Bonnet does not teach to
increase carbon content in the weld zone relative to the steel substrate. Id. at
13. Appellant further argues that Bonnet “does not include any ranges for
carbon content in the weld as compared to the metal substrate.” Id.
Appellant further argues that Bonnet generally teaches to reduce the content
of alloying elements in the weld zone relative to the base metal. Id.
Similarly, Appellant asserts that every example in Bonnet includes less
carbon in the weld than in the metal substrate. Id. at 13, 14–15.
Second, Appellant argues that the disclosures of Canourgues and
Bonnet would teach away from the 1.27 to 1.59 carbon ratio. Id. at 15–18.
Appellant asserts that Bonnet teaches that “the goal is to reduce the content
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of the alloying elements relative to the base metal.” Id. at 16 (emphasis in
original). Appellant further asserts that Bonnet “teaches that a lowering of
hardenability and brittleness is desired for steels which [Bonnet teaches]
‘already result in a hard and brittle structure.’” Id. (quoting Bonnet 2:49–
63). As a consequence, one of ordinary skill in the art, looking to
Canourgues and Bonnet, would have selected a filler wire having a carbon
content less than that of the metal sheets. Id. at 17.
In the Answer, the Examiner contends that determining the
concentration of carbon in the weld is merely optimization of a result-
effective variable. See Examiner’s Answer dated Sept. 9, 2019 (“Ans.”) 7–
8. The Examiner further finds that the “carbon content affects the
hardenability and determines the mechanical properties of the various
structures.” Id. at 8 (citing Bonnet 2:23-25). The Examiner determines that
those of ordinary skill in the art knew that the amount of carbon within a
welding zone impacts hardenability and that the amount of carbon can be
controlled to achieve the desired hardenability and other mechanical
properties. Id. at 8. The Examiner views the claimed carbon ratio as merely
a change in proportion that does not impart patentability. Id. at 9.
The Examiner determines that, for some intended uses, “it is
important for the weld to have greater strength than that of the workpieces”
and that “Bonnet teaches that carbon affects the hardenability of the weld
and teaches how to produce a product with a desired amount of carbon
within the weld.” Id. at 10.
In its Reply Brief, Appellant argues that reaching the claimed ratio
from the prior art would have been more than routine optimization. Reply
Brief dated Nov. 5, 2019 (“Reply Br.”) 2–3. Appellant asserts that “the
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Examiner has studiously avoided discussing any disclosed values for carbon
in Bonnet.” Id. at 3. Appellant summarizes its arguments as follows:
(i) Bonnet does not include any ranges for carbon content in
the weld as compared to the metal substrate;
(ii) Bonnet expressly teaches that for steels of the type
described in Canourgues and as claimed, “the goal is to
reduce the content of the alloying elements relative to the
base metal.” (Col. 2, lines 30-48), i.e., the opposite of what
is claimed; and
(iii) that, consistent with this, every example in Bonnet
includes less carbon in the weld as compared with the
metal substrate. (Table 6).
Reply Br. 3–4 (reformatted).
In regard to optimization of ranges, the Federal Circuit has held that
“[w]here the general conditions of a claim are disclosed in the prior art, it is
not inventive to discover the optimum or workable ranges by routine
experimentation.” E.I. DuPont de Nemours & Co. v. Synvina C.V., 904 F.3d
996, 1006 (Fed. Cir. 2018) (quoting In re Aller, 220 F.2d 454, 456 (CCPA
1955)). Disclosure of the “general conditions of the claim” includes the
disclosure of overlapping values. See Applied Materials, 692 F.3d 1289,
1295 (Fed. Cir. 2012) (“[B]ecause the prior art disclosed values overlapping
the claimed ranges, the ‘general conditions’ of the claim are disclosed.”).
Here, as pointed out by Appellant, the Examiner has not made any finding of
a teaching of overlapping values of the relative carbon contents of the
components. Accordingly, we cannot find that the general conditions of the
claim are disclosed in the cited art.
Additionally, while the Examiner cites to teachings regarding carbon
concentration in a general sense, the Examiner does not direct us to any
teachings in the prior art that concern the ratio of the carbon content of a
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metal sheet to the carbon content of a weld zone. Nor does the Examiner
direct us to any teachings concerning the effect of aluminum in the weld
metal zone. See Spec. ¶¶ 14, 90; Figure 6. Nor does the Examiner address
Appellant’s evidence that the exhibited toughness of the weld metal zone
was contrary to prevailing theory. See Spec. ¶¶ 36, 101, 104; Figure 9.
Accordingly, on the present record, we conclude that Appellant has
shown error in the Examiner’s proposed reason to modify the welded
component of Canourgues so as to include the claimed ratio of carbon
contents. In view of such determination, we need not consider Appellant’s
remaining arguments.

CONCLUSION

The Examiner’s rejection is reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
30–39, 62 103(a) Canourgues,
Bonnet
30–39, 62

REVERSED