2020006625 (P.T.A.B. Dec. 9, 2021)

NIPPON STEEL & SUMIKIN STAINLESS STEEL CORPORATION

Patent Trials and Appeals BoardDec 9, 2021

2020006625 (P.T.A.B. Dec. 9, 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. 15/511,905 03/16/2017 Shinichi TERAOKA 6821-0101PUS1 5630 2292 7590 12/09/2021 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER EDMONDSON, LYNNE RENEE ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 12/09/2021 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHINICHI TERAOKA, YOSHIHARU INOUE, YUJI KOYAMA, JUNICHI HAMADA, and TOSHIO TANOUE Appeal 2020-006625 Application 15/511,905 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and MERRELL C. CASHION, JR., Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–4, 6–11, and 19–32. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “NIPPON STEEL & SUMIKIN STAINLESS STEEL CORPORATION.” Appeal Br. 1. Appeal 2020-006625 Application 15/511,905 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter (emphasis added to highlight the key disputed limitation): 1. A martensitic stainless steel used for a brake disk of a two- wheeled vehicle, the martensitic stainless steel comprising: in % by mass, C of 0.025% to 0.080%, Si of 0.05% to 0.8%, Mn of 0.5% to 1.5%, P of 0.035% or less, S of 0.015% or less, Cr of 11.0% to 13.5%, Ni of 0.01% to 0.50%, Cu of 0.01% to 0.08%, Mo of 0.01% to 0.30%, V of 0.01% to 0.10%, Al of 0.05% or less, and N of 0.015% to 0.060%; the balance being Fe and inevitable impurities; a DFE value defined by a formula (l) ranging from 5 to 30; and a δ ferrite fraction observed in a cross section structure ranging from 5% to 30% by an area ratio, DFE=l2(Cr+Si)-430C-460N-20Ni-7Mn-89 Formula (1) where: Cr, Si, C, N, Ni and Mn in the formula (l) respectively indicate contents. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Fukaya US 2009/0098009 A1 Apr. 16, 2009 Yamauchi US 2011/0030851 A1 Feb. 10, 2011 Teraoka US 9,523,402 B2 Dec. 20, 2016 Appeal 2020-006625 Application 15/511,905 3 REJECTIONS Claims 1–4, 6–11, and 19–32 are rejected under 35 U.S.C. § 103 as being unpatentable over Fukaya. Final Act. 2. Claims 1–4, 6–11, and 19–32 are rejected under 35 U.S.C. § 103 as being unpatentable over Yamauchi. Final Act. 4. Claims 1–4 and 8–11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1–3 of U.S. Patent No. 9,523,402 B2 (Teraoka). Final Act. 8. OPINION Upon consideration of the evidence of record and each of Appellant’s contentions as set forth in the Appeal Brief,2 we determine that Appellant has not demonstrated reversible error in the Examiner’s rejections (e.g., generally Ans.). In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of requiring Appellant to identify the alleged error in the Examiner’s rejection). We sustain the § 103 rejections and the nonstatutory double patenting rejection for the reasons expressed by the Examiner in the Final Office Action and the Answer. We add the following primarily for emphasis. The Supreme Court has established that “the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference stands for all of the 2 Appellant did not file a Reply Brief. Appeal 2020-006625 Application 15/511,905 4 specific teachings thereof as well as the inferences one of ordinary skill in the art would have reasonably been expected to draw therefrom). Appellant does not dispute that each of Fukaya and Yamauchi describes a steel having overlapping ranges of each component as recited in claim 1. The only dispute is whether the overall teachings of each of these references teaches the δ ferrite fraction as recited in claim 1. Appellant’s main argument is that each reference teaches away from the recited ferrite range (e.g., Appeal Br. 7, 10). Appellant also contends that the present invention “achieves unexpected and superior results, by virtue of the claimed ferrite fraction” (Appeal Br. 8). These arguments are not persuasive of reversible error in the Examiner’s obviousness determination for reasons well stated in the Examiner’s Answer (Ans. 3–11). Notably, the Examiner points out that Appellant admits that the DFE value is “approximately equivalent” to the ferrite fraction value (Appeal Br. 11; Ans. 4, 8). Appellant does not dispute the Examiner’s findings in the Answer that Fukaya does indeed teach a ferrite fraction range that is completely encompassed by the claimed range (Ans. 4) and Yamauchi likewise teaches a ferrite fraction range that substantially overlaps the claimed range (Ans. 8; no responsive brief was filed). The law is replete with cases in which the difference between the claimed invention and the prior art is the claimed range or other variable within the claims. These cases have also consistently held that the Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“In cases Appeal 2020-006625 Application 15/511,905 5 involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness.”); In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The burden rests with Appellant to establish (1) that the alleged unexpected results are, in fact, unexpected, (2) that the comparisons are to the disclosure of closest prior art, and (3) that the supplied evidentiary showing is commensurate in scope with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Having determined that the Examiner has established a prima facie case of obviousness, the issue becomes whether Appellant has established any criticality to the claimed range. The Examiner sufficiently addresses Appellant’s contentions regarding the alleged unexpected results (Ans. 6–9). Notably, Appellant has not shown reversible error in the Examiner’s determination that the evidence is not commensurate in scope with the breadth of claim 1 and therefore is not persuasive of nonobviousness (e.g., Ans. 6–7). In light of these circumstances, we affirm the Examiner’s § 103 rejections of all the claims on appeal, noting that Appellant does not separately argue any claims dependent on claim 1 in any of the rejections. Appellant likewise has shown no reversible error in the Examiner’s obviousness type double patenting rejection for reasons explained by the Examiner, that the DFE value and the concomitant ferrite fraction is completely encompassed by the claimed range (Ans. 10–11; see also Final 11). Appeal 2020-006625 Application 15/511,905 6 CONCLUSION The Examiner’s decision to reject claims 1–4, 6–11, and 19–32 is AFFIRMED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–11, 19–32 103 Fukaya 1–4, 6–11, 19–32 1–4, 6–11, 19–32 103 Yamauchi 1–4, 6–11, 19–32 1–4, 8–11 Nonstatutory Double Patenting 9,523,402 (Teraoka) 1–4, 8–11 Overall Outcome 1–4, 6–11, 19–32 TIME PERIOD FOR RESPONSE 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