NIPPON STEEL & SUMITOMO METAL CORPORATION

Patent Trials and Appeals Board

Jan 11, 2022

2021004640 (P.T.A.B. Jan. 11, 2022)

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. 15/541,932 07/06/2017 Satoshi KANO 1609-1095PUS1 1073 2292 7590 01/11/2022 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER O'KEEFE, SEAN P ART UNIT PAPER NUMBER 1738 NOTIFICATION DATE DELIVERY MODE 01/11/2022 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 SATOSHI KANO, TAKEAKI WAKISAKA, and ICHIRO TANAKA Appeal 2021-004640 Application 15/541,932 Technology Center 1700 Before JAMES C. HOUSEL, N. WHITNEY WILSON, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1 and 6-10.3 We have jurisdiction 1 In this Decision, we refer to the Specification filed July 6, 2017 (“Spec.”); the Final Office Action dated December 15, 2020 (“Final Act.”); the Appeal Brief filed April 22, 2021 (“Appeal Br.”); the Examiner’s Answer dated May 24, 2021 (“Ans.”); and Reply Brief filed July 23, 2021. 2 Appellant refers to “applicant” as defined in 37 C.F.R. § 1.42 (2020). Appellant identifies the real party in interest as Nippon Steel Corporation. Appeal Br. 1. 3 Claims 2 and 3 are withdrawn from consideration by the Examiner as drawn to a nonelected invention. Non-Final Office Action dated October 22, 2019. Claims 4 and 5 were canceled in an Amendment filed June 15, 2020. Appeal 2021-004640 Application 15/541,932 2 under 35 U.S.C. § 6(b). A video hearing was held on December 16, 2021.4 We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to a non-oriented electrical steel sheet. Spec. ¶ 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A non-oriented electrical steel sheet having a chemical composition comprising: C: 0 to 0.0050 mass%, Si: 0.50 to 2.70 mass%, Mn: 0.10 to 3.00 mass%, Al: 2.35 to 2.70 mass%, P: 0.050 to 0.100 mass%, S: 0 to 0.0060 mass%, N: 0 to 0.0050 mass%, Ti: 0 to 0.008 mass%, V: 0 to 0.008 mass%, Nb: 0 to 0.008 mass%, Zr: 0 to 0.008 mass%, and a balance: Fe and impurities, wherein the chemical composition satisfies a following expression (1), a following expression (2), and a following expression (3), an intensity of a {100} plane I{100} and an intensity of a {111} plane I{111} satisfy a following expression (4), the intensity 4 The record will include a transcript of the hearing when it becomes available. Appeal 2021-004640 Application 15/541,932 3 I{100} and the intensity I{111} being determined by calculating an average of an orientation determination function near a surface and an orientation determination function at a thickness center using pole figures measured by an X-ray diffraction method, a specific resistance is 60.0x10-8 Ω∙m or higher at room temperature, a thickness is 0.05 mm to 0.40 mm, 0.50≤Al/(Si+Al+0.5xMn)≤0.83 (1) l.28≤Si+Al/2+Mn/4+5xP≤3.90 (2), 4.0≤Si+Al+0.5xMn≤7.0 (3), and 0.50≤I{100}/I{111}≤1.18 (4), wherein in expressions (1) to (3) the chemical symbols indicate the amounts of the corresponding chemical elements in mass%. Appeal Br. 14-15 (Claims App.). REJECTION On appeal, the Examiner maintains the rejection of claims 1 and 6- 105 under 35 U.S.C. 103 as unpatentable over Miyazaki6 in view of Fujita ’948.7 Ans. 3. 5 As noted above, claims 4 and 5 were canceled. See supra note 3. 6 Miyazaki et al., US 2012/0014828 A1, published Jan. 19, 2012. 7 Fujita et al., JP 2001-158948A, published June 12, 2001. We refer to the machine translation of record of Fujita ’948 as cited by the Examiner. See generally Final Act. Appeal 2021-004640 Application 15/541,932 4 DISCUSSION The Examiner finds, and Appellant does not dispute that Miyazaki teaches a non-oriented electrical steel sheet having a chemical composition that includes chemical elements that overlap or fully encompass the ranges recited in claim 1. Compare Final Act. 2-3 (citing Miyazaki ¶¶ 1, 13, 29, 69, 70), with Appeal Br. generally; see also tables provided by the Examiner at pages 2-3 of the Final Action, reproduced below. The tables reproduced above compare the amount, in mass%, of chemical elements in the chemical composition of Miyazaki’s non-oriented Appeal 2021-004640 Application 15/541,932 5 steel sheet with the chemical elements in the chemical composition of claim 1’s non-oriented steel sheet. The Examiner acknowledges that Miyazaki is silent on numerical values of specific electrical resistance and is silent on measurements of intensity of a {100} plane I{100} and an intensity of a {111} plane I{111} at center thickness. Final Act. 3. To account for this difference, the Examiner relies on Fujita ’948. The Examiner finds that Fujita ’948 teaches that I{100}/I{111} at ¼ thickness is ≥ 1.20, which approaches the range of 0.50 to 1.18 recited in claim 1. Final Act. 4-5 (citing Fujita ’948 ¶¶ 9, 20). As explained in the Answer, the Examiner’s position is that non-oriented steels of the claimed composition and intensity ratio of 1.20, such as those resulting from the combination of Miyazaki and Fujita ’948 as applied, would be sufficiently close to the claimed non-oriented steel sheet that one of ordinary skill in the art would expect such non-oriented steels of the claimed composition and intensity ratio of 1.20 to have the same properties as those with an intensity ratio of 1.18. Ans. 9. Appellant argues that neither Miyazaki nor Fujita ’948 teaches or suggests a non-oriented electrical steel sheet where the intensity of I{100}/I{111} is greater than or equal to 0.50 and less than or equal to 1.18. Appeal Br. 5; Reply Br. 2. Appellant’s argument is persuasive of reversible error. As the Examiner acknowledges, Fujita ’948’s intensity ratio is close, but does not fall within the range of 0.50 to 1.18 recited in claim 1. Final Act. 4. As the Specification explains, and Appellant argues, in addition to the makeup of the steel composition, to control I{100}/I{111}, “it is necessary to keep the Appeal 2021-004640 Application 15/541,932 6 temperature of the cold band at a constant temperature in a range of 550°C to 700°C for 10 to 300 s.” Spec. ¶ 53. In other words, it is the chemical composition as well as the process of making Appellant’s non-oriented electrical steel sheet that affects the intensity of I{100}/I{111}. Miyazaki teaches that the cold-rolled sheets were subjected to a finish annealing at 950°C. Miyazaki ¶ 86. Fujita ’948 teaches that its steel was held at a temperature of 860°C or more in a final annealing step. Fujita ’948 ¶ 57 (Table 5). The Examiner, however, has not identified sufficient evidence that Miyazaki or Fujita ’948 teach or suggest an intermediate holding in a range of 550°C to 700°C for 10 to 300 seconds during the heating stage of the final annealing step. Thus, one of ordinary skill in the art would not have expected the non-oriented steel resulting from the combination of Miyazaki and Fujita ’948 to have an intensity of a {100} plane I{100} and an intensity of a {111} plane I{111} that falls within the range recited in claim 1, i.e., 0.5≤I{100}/I{111}≤1.18. Accordingly, we do not sustain the rejection of claims 1 and 6-10. CONCLUSION The Examiner’s decision to reject claims 1 and 6-10 is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 6-10 103 Miyazaki, Fujita ’948 1, 6-10 REVERSED