OKABE, Seiji et al.Download PDFPatent Trials and Appeals BoardAug 23, 201914894697 - (D) (P.T.A.B. Aug. 23, 2019) Copy Citation 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. 14/894,697 11/30/2015 Seiji OKABE 168392 6689 25944 7590 08/23/2019 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 EXAMINER SU, XIAOWEI ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 08/23/2019 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SEIJI OKABE, HIROTAKA INOUE, and SHIGEHIRO TAKAJO ____________ Appeal 2019-000852 Application 14/894,697 Technology Center 1700 ____________ Before JEFFREY B. ROBERTSON, MICHAEL G. MCMANUS, and MERRELL C. CASHION, JR., Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–8. (Appeal Br. 1.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We REVERSE. 1 This Decision includes citations to the following documents: Specification filed November 30, 2015 (“Spec.”); Non-Final Office Action mailed June 30, 2017 (“Non-Final Act.”); Final Office Action mailed December 27, 2017 (“Final Act.”); Appeal Brief filed June 19, 2018 (“Appeal Br.”); Examiner’s Answer mailed September 14, 2018 (“Ans.”); and Reply Brief filed November 14, 2018 (“Reply Br.”). 2 Appellant/Applicant is JFE Steel Corporation, which is also identified in the Appeal Brief as the real party in interest. (Appeal Br. 1.) Appeal 2019-000852 Application 14/894,697 2 THE INVENTION Appellant states the invention relates to a grain-oriented electrical steel sheet with low iron loss, suitable for use in an iron core material of a transformer. (Spec. ¶ 1.) Claim 1 is representative and reproduced below from the Claims Appendix to the Appeal Brief (disputed language emphasized): 1. A grain-oriented electrical steel sheet subjected to magnetic domain refining by introducing linear strains having a shape of a solid line in a direction intersecting a rolling direction of the steel sheet repeatedly at a predetermined interval in the rolling direction, wherein the predetermined interval of the linear strains in the rolling direction is d mm and, when the steel sheet is placed on a flat surface, a mean value of difference between a height from the flat surface to the linear strain-introduced area of a steel sheet surface and a height from the flat surface to a median point between adjacent linear strain-introduced areas is h mm, and a ratio h/d of the h to the d is 0.0025 or more and 0.015 or less. (Appeal Br. A-1 (Claims Appendix)) REJECTION The Examiner rejected claims 1–8 under 35 U.S.C. § 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. § 103 as obvious over Omura et al. (WO 2012/017655 A1, with US 2013/0130043 A1, published May 23, 2013 used as an English translation, hereinafter “Omura”). (Non-Final Act. 4–6; Final Act. 3; Ans. 3.) We limit our discussion to claim 1, which is sufficient for disposition of this appeal. Appeal 2019-000852 Application 14/894,697 3 ISSUE The Examiner found Omura discloses a grain-oriented electrical steel sheet having linear strains induced in a direction that crosses a rolling direction by electron beam and the beam is irradiated in a linear fashion. (Non-Final Act. 4.) The Examiner found Omura does not teach the ratio of height difference at linear strain-introduced areas and at intermediate points between adjacent linear strain-introduced areas to the interval of the linear strain. (Id.) The Examiner stated “the recited ratio is determined by the steel composition and the processing condition of making the steel sheet.” (Id.) The Examiner found that Omura discloses steel, “which is identical to the steel composition disclosed in the instant Specification.” (Id. at 4–5 (citing Omura ¶¶ 49–56 and Spec. ¶¶ 28–34).) The Examiner found also that Omura discloses processing steps that “are substantially the same processing steps and performed in the same sequence as the processing condition disclosed in the instant Specification.” (Id. at 5 (citing Omura, ¶¶ 46, 60–68 and Spec. ¶¶ 27, 36–40, claims 2–3).) As a result of the similarity between the steel composition and process disclosed in Omura and the Specification, the Examiner determined that “one of ordinary skill in the art would expect that the steel sheet of Omura et al. meet[s] the recited ratio of h/d in claim 1.” (Id. at 6 (citing In re Best, 562 F.2d 1252, 1255 (CCPA 1977) and MPEP § 2112.01 I.)) Appellant argues Omura does not contain sufficient disclosure to support the Examiner’s position because Omura does not disclose the specific irradiation conditions in the examples and the comparative examples in the Specification, which fall within the general irradiation conditions Appeal 2019-000852 Application 14/894,697 4 disclosed by Omura, do not satisfy the recited h/d range. (Appeal Br. 6–7.) Appellant argues also that the iron loss disclosed by Omura in the Examples does not mean that Omura’s sheets possess the recited h/d ratio. (Id. at 10– 11.) Appellant argues that the Specification establishes criticality to the recited h/d ratio. (Id. at 12–14.) Accordingly, the dispositive issue with respect to this rejection is: Has Appellant identified a reversible error in the Examiner’s determination that a steel sheet having linear strains satisfying the recited ratio of h/d in claim 1 would have necessarily been produced or would have been obvious based on the steel composition and process disclosed in Omura? DISCUSSION We have carefully considered Appellant’s arguments and are persuaded that, when the evidence of record is considered as a whole, Omura does not provide sufficient disclosure to support the Examiner’s position that a steel sheet having linear strains satisfying the recited ratio of h/d in claim 1 would have been produced or would have been obvious based on the disclosure therein. In particular, we agree with Appellant that Omura does not provide sufficient disclosure to determine whether the steel sheets in Omura possess linear strains having the recited h/d ratio in claim 1. As the Specification discloses, in order to set the h/d ratio to within the range of 0.0025 or more and 0.015 or less, the beam intensity, beam spot shape, and the beam scanning rate “must be selected as appropriate.” (Spec. ¶ 24.) Table 1 of the Specification makes clear that the general conditions disclosed therein, Appeal 2019-000852 Application 14/894,697 5 which the Examiner found to be the same as disclosed in Omura, do not necessarily produce linear strains satisfying the recited h/d ratio as evidenced by Comparative Examples 7–9, 11, and 13. (Spec. 13, Table 1.) In this regard, we agree with Appellant that the iron loss disclosed in Omura’s examples are insufficient to provide evidence that Omura’s steel sheets contain linear strains satisfying recited h/d ratio. (Reply Br. 3–5.) That is, the Specification makes clear that, as a result of the h/d ratio recited in the claim 1, “the iron loss of the transformer produced using the steel sheet can further be reduced.” (Spec. ¶ 22.) (Emphasis added). Thus, whether the steel sheets in the examples disclosed in Omura have better iron loss properties than the examples in the Specification, as discussed by the Examiner (Ans. 7–10), does not provide sufficient information to support the Examiner’s position as discussed further below. Further, as noted by Appellant, the steel sheets used in the examples of Omura appear to be of a different composition than the steel sheets used in the examples in the Specification, at least with respect to sulfur and oxygen content. (Reply Br. 3–5; Omura ¶ 66; Spec. 42.) As to the criticality of the recited h/d ratio, we agree with Appellant that the Specification sufficiently establishes criticality to the range recited in claim 1. That is, the Specification discloses that if the h/d ratio is less than 0.0025, the tension generated between strain lines is small, such that the magnetic domain refining effect decreases and iron loss increases. (Spec. ¶ 22.) In addition, the Specification discloses that if the ratio h/d exceeds 0.015, the stacking factor of the iron core decreases, which introduces compressive stress to the steel sheet during fastening in producing iron cores, increasing iron loss. (Id.) Further, Comparative Examples 11 and 13, Appeal 2019-000852 Application 14/894,697 6 which have h/d ratios outside each endpoint of the range at 0.0023 and 0.0155, respectively, show increased iron loss compared to Examples 1–6, 10, 12, and 14, which have h/d ratios falling inside the range recited in the claims. (Id. at 13, Table 1.) In this regard, we agree with Appellant that the Examiner’s position regarding the silicon content of the steel sheet and its effect on iron loss does not bear on whether the results in the examples are commensurate in scope with the claims. (Ans. 13; Appeal Br. 13–14.) As discussed above, the h/d ratio within the range recited in the claims further improves the iron loss properties of the steel sheet. (Spec. ¶ 22.) Thus, although Omura and the Specification disclose that silicon is an element that is useful to improve iron loss of the steel sheet (Omura ¶ 54; Spec. ¶ 32), such does not inform whether the iron loss is further improved between steel sheets having the same silicon content and linear strains satisfying an h/d ratio within the range recited in the claims versus steel sheets with linear strains satisfying an h/d ratio that falls outside the claimed range. Moreover, as acknowledged by the Examiner, “the claimed ratio h/d is not a commonly recognized or characterized parameter in domain refining of a grain oriented steel sheet.” (Ans. 4.) Indeed, Appellant and the Examiner agree that Omura does not disclose h/d ratios. (Non-Final Act. 4; Appeal Br. 4.) Thus, to the extent that Omura could be interpreted as suggesting that optimizing the h/d ratio would have been obvious, there is insufficient rational underpinnings to support this position. In re Antonie, 559 F.2d 618 (CCPA 1977) (a particular parameter must first be recognized as a result- effective variable, i.e., a variable which achieves a recognized result, before Appeal 2019-000852 Application 14/894,697 7 the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation). For these reasons, we reverse the Examiner’s decision to reject claim 1, and claims 2–8 dependent therefrom. DECISION We reverse the Examiner’s decision rejecting claims 1–8. REVERSED Copy with citationCopy as parenthetical citation