Nakanishi, Tadashi et al.

Patent Trials and Appeals Board

Nov 4, 2019

15503570 - (D) (P.T.A.B. Nov. 4, 2019)

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.
15/503,570 02/13/2017 Tadashi Nakanishi JFEG-115US 1009
23122 7590 11/04/2019
RATNERPRESTIA
2200 Renaissance Blvd
Suite 350
King of Prussia, PA 19406
EXAMINER
GUGLIOTTA, NICOLE T
ART UNIT PAPER NUMBER
1781
NOTIFICATION DATE DELIVERY MODE
11/04/2019 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):
PCorrespondence@ratnerprestia.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TADASHI NAKANISHI, SHINJI KOSEKI, YOSHIHIKO ODA,
and TOMOYUKI OKUBO
____________

Appeal 2019-003162
Application 15/503,570
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, JEFFREY B. ROBERTSON, and
MONTÉ T. SQUIRE, 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 1–3 and 5, which are all of the claims pending in
this Application.3 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 In this Decision, we refer to the Specification filed Feb. 13, 2017 (“Spec.”);
Final Office Action dated Apr. 6, 2018 (“Final Act.”); Advisory Action
dated July 26, 2018 (“Adv. Act. “); Appeal Brief filed Oct. 11, 2018
(“Appeal Br.”); Examiner’s Answer dated Jan. 25, 2019 (“Ans.”); and Reply
Brief filed Mar. 13, 2019 (“Reply Brief”).
2 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies JFE Steel Corporation as the real
party in interest. Appeal Br. 2.
3 Claims 4 and 6–8 are canceled. Appeal Br. 14.
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CLAIMED SUBJECT MATTER
Appellant’s disclosure relates to a non-oriented electrical steel sheet
having a certain chemical composition. Spec. ¶¶ 1, 10; Abstract. According
to the Specification, the steel sheet is said to have high magnetic flux and
excellent magnetic properties and is mainly used as an iron core of a driving
motor or a generator motor for hybrid vehicles and electric vehicles. Spec.
¶ 1.
Claim 1 illustrates the claimed subject matter on appeal and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A non-oriented electrical steel sheet having a chemical
composition comprising C: not more than 0.01 mass%, Si:
1.3-5.0 mass%, Mn: 0.001-3 mass%, sol. Al: not more than 0.004
mass%, P: 0.05-0.20 mass%, S: not more than 0.005 mass%, N:
not more than 0.005 mass%, Ti: more than 0.0020 mass% but not
more than 0.1 mass%, and the remainder being Fe and inevitable
impurities, wherein a sheet thickness is 0.1-0.3 mm.
Appeal Br. 14.
REFERENCES
The Examiner relies on the following prior art references4 as evidence
in rejecting the claims on appeal:
Name Reference Date
Kono JP 2001323347 (A) Nov. 22, 2001
Hiroshi JP 2005200755 A July 28, 2005

4 In rejecting the claims on appeal, the Examiner relies and cites to the
English translations of record for both the Kono and Hiroshi references.
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REJECTIONS
On appeal, the Examiner maintains (Ans. 3) the following rejections:
1. Claims 1 and 2 are rejected under 35 U.S.C. § 103 as being
unpatentable over Kono (“Rejection 1”). Final Act. 2.
2. Claims 3 and 5 are rejected under 35 U.S.C. § 103 as being
unpatentable over Kono, as applied to claims 1 and 2 above, and further in
view of Hiroshi (“Rejection 2”). Id. at 4.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer,
Final Office Action, and Advisory Action, which we adopt as our own. We
add the following primarily for emphasis.
Rejection 1
The Examiner rejects claims 1 and 2 as being obvious over Kono
(Final Act. 2), which we refer to as Rejection 1. Appellant presents
argument for the patentability of claim 1 and does not present separate
argument for the patentability of claim 2. Appeal Br. 3, 11. We select claim
1 as representative and claim 2 stands or falls with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner determines that Kono teaches or suggests a
non-oriented steel sheet satisfying all of the limitations of claim 1 and
concludes the reference would have rendered the claim obvious. Final
Act. 2–3. On the record before us, we find a preponderance of the evidence
and sound technical reasoning support the Examiner’s findings and
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determination that Kono teaches or suggests a non-oriented steel sheet
satisfying all of the limitations of claim 1 and conclusion that the reference
would have rendered the claim obvious. Kono, Abstract, ¶¶ 1, 9, 31, 36, 39,
40, 43, 45 (Table 1)).
Appellant argues that the Examiner’s rejection should be reversed
because Kono fails to disclose any example that satisfies the composition of
claim 1 and provides no reason to modify any example of Kono to arrive at
the claimed composition. Appeal Br. 3–4. In particular, Appellant contends
that because every example shown in Table 1 of Kono has a value of Al, P,
or Ti that falls outside the range recited in claim 1, Kono’s steel sheets are
“different” from the steel sheets recited in the claim. Appeal Br. 4; see also
Reply Br. 3–4 (asserting the “claimed range of Ti differs from that taught by
Kono because the range taught by Kono extends well below the lower limit
of the claimed range of Ti”).
We do not find Appellant’s argument persuasive of reversible error in
the Examiner’s rejection because Kono’s teachings are not limited to the
disclosures in its examples or preferred embodiments. See In re Mills, 470
F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to the disclosure
of specific working examples.”); see also In re Susi, 440 F.2d 442, 445-46
(CCPA 1971) (holding disclosure of a particular preferred embodiment does
not teach away from a prior art reference’s broader disclosure).
Rather, as the Examiner finds (Ans. 3–4; Final Act. 2–3), Kono
explicitly teaches a non-oriented electrical steel sheet having a chemical
composition which encompasses or overlaps Appellant’s claimed
composition ranges (Kono, Abstract, ¶¶ 1, 9, 31, 39) and describes working
examples of sheets having thicknesses that fall within Appellant’s claimed
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thickness range (id. ¶¶ 43, 45 (Table 1)). See In re Petersen, 315 F.3d 1325,
1329-1330 (Fed. Cir. 2003) (holding that a prima facie case of obviousness
“exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art” and when “the claimed ranges are completely
encompassed by the prior art, the [obviousness] conclusion is even more
compelling than in cases of mere overlap.”).
Appellant’s argument reveals no reversible error in the Examiner’s
factual findings and conclusion in this regard.
Appellant argues further that the claimed invention yields unexpected
results. Appeal Br. 3, 5–11; Reply Br. 1–5. In particular, Appellant argues
the claimed composition achieves unexpected results with respect to the
effect of Ti content on the magnetic flux density of the steel sheet. Appeal
Br. 5. Relying on the data and results provided in Figure 2 of the
Specification, Appellant contends that “when Ti content is increased above
the lower limit of the claimed invention, magnetic flux density is also
substantially increased” (Appeal Br. 5) and this effect “would have been
unexpected in view of the teachings of Kono” (id. at 6). Appellant further
contends that, in contrast to the claimed invention, when Ti is increased in
Kono, magnetic flux density decreases. Id. at 6 (relying on data and
examples from Table 1 of Kono and an abridged version of Figure 2 of
Kono).
We do not find Appellant’s arguments persuasive based on the
fact-finding and well-stated reasoning provided by the Examiner at pages
4–6 of the Answer. In attempting to overcome a prima facie case of
obviousness by showing unexpected results, the burden rests with Appellant
to establish, among other things, that the alleged unexpected results
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presented as being associated with the claimed invention are, in fact,
unexpected and the supplied evidentiary showing is commensurate in scope
with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972).
Appellant has failed to satisfy the requisite burden. Appellant has not
sufficiently established that the alleged unexpected results associated with
the claimed invention are, in fact, unexpected. In particular, Appellant does
not identify persuasive evidence or adequately explain why the alleged
increase in magnetic flux as Ti content is increased would have been
considered to be an unexpected result and not just a typical result by one of
ordinary skill in the art. Klosak, 455 F.2d at 1080 (“[T]he burden of
showing unexpected results rests on [the party] who asserts them.”).
Especially, as the Examiner finds (Ans. 6) and contrary to what Appellant
argues, Kono explicitly teaches that increasing the concentration of Ti
improves (increases) the magnetic properties of the sheet. Kono ¶ 36.
Appellant’s alleged showing of unexpected results is also not
commensurate in scope with claim 1. As the Examiner finds and explains
(Ans. 5), although Kono teaches a composition having a Ti concentration,
which overlaps the claimed range of 0.0020–0.1 mass % (see Kono,
Abstract, ¶ 9), Appellant does not provide any data for compositions having
Ti contents at the upper part of the claimed range between 0.005–0.1
mass %. Thus, we are not persuaded that Appellant has provided data
sufficient to show that the alleged unexpected results occur over the entire
claimed range of 0.0020–0.1 mass %. See In re Kao, 639 F.3d 1057, 1068
(Fed. Cir. 2011) (“Evidence of secondary considerations must be reasonably
commensurate with the scope of the claims.”).
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Accordingly, we affirm the Examiner’s rejection of claims 1 and 2
under 35 U.S.C. § 103 as obvious over Kono.
Rejection 2
In response to the Examiner’s rejection of claims 3 and 5 as obvious
over the combination of Kono and Hiroshi, which we refer to above as
Rejection 2, Appellant does not present any new or additional substantive
arguments. Rather, Appellant relies on principally the same arguments
previously presented above in response to the Examiner’s rejection of claim
1 as obvious over Kono. See Appeal Br. 12 (“Appellant submits that claims
3 and 5 are not obvious based on Kono and Hiroshi for at least the reasons
set forth above with respect to claim 1.”).
Appellant’s assertions that “Hiroshi fails to provide any reason which
would have motivated one of ordinary skill in the art to modify the steel
sheets of Kono” (Appeal Br. 11) and “Hiroshi would not have led one of
ordinary skill in the art to expect the effect of Ti on magnetic flux density
achieved by the present invention” (id. at 12) are not persuasive of reversible
error in the Examiner’s rejection because they are conclusory. De Blauwe,
736 F.2d at 705.
Thus, based on the findings and technical reasoning provided by the
Examiner, and for principally the same reasons discussed above for
affirming the Examiner’s rejection of claims 1 and 2 under 35 U.S.C. § 103
as obvious over Kono, we affirm the Examiner’s rejection of claims 3 and 5
under 35 U.S.C. § 103 as obvious over the combination of Kono and
Hiroshi.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2 103 Kono 1, 2
3, 5 103 Kono, Hiroshi 3, 5
Overall
Outcome
1–3, 5

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).
AFFIRMED