OKABE, Seiji et al.

Patent Trials and Appeals Board

Aug 23, 2019

14894697 - (D) (P.T.A.B. Aug. 23, 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.
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.)
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Application 14/894,697

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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.
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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
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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,
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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,
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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
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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