POSCO

Patent Trials and Appeals Board

May 11, 2020

2019004334 (P.T.A.B. May. 11, 2020)

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.
14/783,221 10/08/2015 Woong-Hee HAN CSL0024US 1175
23413 7590 05/11/2020
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
MCGUTHRY BANKS, TIMA MICHELE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
05/11/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WOONG-HEE HAN, CHANG-HEE YIM, MIN-HO SONG,
SOO-CHANG KANG and CHONG-TAE AHN

____________

Appeal 2019-004334
Application 14/783,221
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–14 and 23.2,3 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies POSCO as the real party in interest.
Appeal Brief filed July 30, 2018 (“Appeal Br.”) at 3.
2 Final Office Action entered March 2, 2018 (“Final Act.”) at 1.
3 Appellant cancelled claim 24 in an amendment filed April 26, 2018.
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CLAIMED SUBJECT MATTER
Appellant claims a method of producing molten manganese-
containing steel. Appeal Br. 7. Claim 1, the sole pending independent
claim, is reproduced below and illustrates the subject matter on appeal:
1. A method of producing molten manganese-containing
steel, the method comprising:
preparing a molten ferroalloy or a molten nonferrous
metal;
maintaining the molten ferroalloy or the molten
nonferrous metal at a first temperature equal to or higher than a
melting point thereof, wherein the maintaining comprises:
performing a nitrogen-absorption prevention process or a
denitrification process to the molten ferroalloy or the molten
nonferrous metal;
preparing a molten steel having a second temperature;
and
pouring the molten ferroalloy or the molten nonferrous
metal into the prepared molten steel to form a manganese
molten steel having a third temperature.

Appeal Br. 15 (Claims Appendix).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered November 16, 2018 (“Ans.”):4
I. Claims 1, 2, 4, 7, 8, 12, and 23 under 35 U.S.C. § 103 as
unpatentable over Transactions5 in view of Lee;6

4 The Examiner withdrew the rejections of claim 24 under 35 U.S.C. §§
112(a) and 112(b) in an Advisory Action entered May 14, 2018 due to
Appellant’s cancellation of claim 24 in an amendment filed April 26, 2018.
5 Samuel Hoyt, Transactions from the American Institute of Mining and
Metallurgical Engineers, 113–129 (1919).
6 Lee et al., US 4,684,403, published August 4, 1987.
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II. Claim 3 under 35 U.S.C. § 103 as unpatentable over
Transactions in view of Lee and Subiura;7
III. Claims 5, 6, and 9 under 35 U.S.C. § 103 as unpatentable over
Transactions in view of Lee and Betz;8
IV. Claims 10, 11, and 13 under 35 U.S.C. § 103 as unpatentable
over Transactions in view of Lee and Hasegawa;9 and
V. Claims 13 and 14 under 35 U.S.C. § 103 as unpatentable over
Transactions in view of Lee and Harashima.10

FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1–14 and 23 under 35 U.S.C. § 103, for the reasons set forth in the
Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence Appellant provides for each issue that Appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Appellant presents arguments directed to independent claim 1 only, to

7 Subiura et al., JP 58-130217 A, published August 1983.
8 Betz et al., US 5,425,047, published June 13, 1995.
9 Hasegawa et al., US 4,650,417, published March 17, 1987.
10 Harashima et al., US 5,454,854, published October 3, 1995.
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which we accordingly limit our discussion, and the remaining claims on
appeal stand or fall with claim 1. Appeal Br. 9–13; 37 C.F.R. §
41.37(c)(1)(iv).
The Examiner finds that Transactions teaches adding molten
ferromanganese and a molten nonferrous metal (silico-manganese) at a first
temperature to a ladle containing molten steel at a second temperature, and
preparing a mixture of the molten ferromanganese, molten nonferrous metal
(silico-manganese), and molten steel at a third temperature. Final Act. 3–4
(citing Transactions pp. 125, 126); Ans. 8.
The Examiner finds that Transactions “does not teach performing a
nitrogen-absorption prevention process or a denitrification process” as
recited in claim 1. Id. The Examiner finds, however, that Lee discloses
adding magnesium silicide to a vessel containing a ferromanganese alloy,
closing the vessel, pressurizing the vessel with argon, and heating the vessel
to melt the ferromanganese alloy. Final Act. 3–4 (citing Lee col. 3, ll. 54–
67). The Examiner finds that Lee discloses that the magnesium silicide
strips impurities, including nitrogen and phosphorus, from the
ferromanganese alloy. Final Act. 4 (citing Lee col. 2, ll. 4–10).
In view of these disclosures in Lee, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art before the
effective filing date of the present application to treat the ferromanganese
used in Transactions’ process with magnesium silicide as disclosed in Lee,
because Lee “teaches that such a process results in effectively removing
phosphorus, which is known to be a harmful impurity in steel.” Final Act. 4
(citing Lee col. 1, ll. 29, 30, 61, 62).
Appellant argues that “[t]he claimed term ‘molten ferroalloy or a
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molten nonferrous metal’ is interpreted to be ‘molten FeMn’ or ‘metal Mn,’
in view of the specification of the present application, e.g., the Examples
thereof,” but “Transactions uses Silico-Manganese.” Appeal Br. 11.
Appellant’s argument does not identify reversible error in the
Examiner’s rejection, for reasons that follow.
We point out initially that under well-established principles of claim
interpretation, exemplary embodiments described in the Specification may
not be read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir.
1993) (“[L]imitations are not to be read into the claims from the
specification.”); Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875, (Fed. Cir. 2004) (“a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment”).
Other than generally referring to “the Examples” in the Specification,
Appellant does not direct us to any definition or limiting description of a
“molten ferroalloy” or a “molten nonferrous metal” in Appellant’s
Specification. Appeal Br. 11. Consequently, any disclosure of “molten
FeMn” or “metal Mn” in the Examples of Appellant’s Specification may not
be read into claim 1 so as to limit the recited “molten ferroalloy” or a
“molten nonferrous metal” to “molten FeMn” or “metal Mn” as Appellant
argues.
Nonetheless, consistent with the Examiner’s findings (Final Act. 4,
Ans. 8), Transactions explicitly discloses adding ferromanganese, as well as
silico-manganese, to a ladle containing molten steel. Transactions p. 125.
Transactions discloses that adding manganese “in the molten condition”
provides numerous benefits, which would have suggested adding
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ferromanganese and silico-manganese—a nonferrous metal—in the molten
condition to the molten steel, as recited in claim 1. Transactions p. 126.
Appellant argues that “Transaction may teach holding molten silica-
manganese in a ladle, but not maintaining the molten ferroalloy or the
molten nonferrous metal at a first temperature equal to or higher than a
melting point thereof” as recited in claim 1. Appeal Br. 11.
The Examiner explains in the Answer, however, that “‘[h]olding’ and
‘maintaining’ are synonymous in this instance. ‘Holding’ reads on a period
of time, and absent a direct teaching [in Transactions] of cooling the silica-
manganese in the ladle, the temperature of the molten silica-manganese
(‘nonferrous metal’) is at least at the melting point.” Ans. 9.
Because Appellant declined to file a Reply Brief, Appellant does not
identify any error in the Examiner’s factual findings or reasoning as
presented in the Answer. And Appellant’s assertion in the Appeal Brief that
holding molten silica-manganese in a ladle, as disclosed in Transactions,
differs from maintaining a molten ferroalloy or a molten nonferrous metal at
a first temperature equal to or higher than a melting point thereof, as recited
in claim 1, does not constitute a substantive argument that identifies error in
the Examiner’s rejection. See SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement .
. . as to the existence of factual disputes do not amount to a developed
argument.”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(“[T]he Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.”).
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Appellant argues that the Examiner “admitted . . . that Lee is intended
to ‘effectively remov[e] phosphorous,’” but “the claimed ‘nitrogen-
absorption prevention process or a denitrification process’ is not for
effectively removing phosphorus, as clearly set forth in the claim [claim 1].”
Appeal Br. 12.
As discussed above, however, the Examiner finds that Lee discloses
adding magnesium silicide to a ferromanganese alloy to strip the alloy of
both nitrogen and phosphorus impurities. Final Act. 3–4 (citing Lee col. 2,
ll. 4–10; col. 3, ll. 54–67). The Examiner relies on this disclosure in Lee as
providing a reason that would have prompted one of ordinary skill in the art
to treat the ferromanganese used in Transactions’ process with magnesium
silicide, because phosphorus “is known to be a harmful impurity in steel.”
Final Act. 4 (citing Lee col. 1, ll. 29, 30, 61, 62). Modifying Transactions’
process as proposed by the Examiner to include treating Transactions’
ferromanganese with magnesium silicide would result in removal of not only
phosphorus from the ferromanganese, but would also result in removal of
nitrogen, corresponding to a denitrification process as recited in claim 1.
Because claim 1 does not exclude removal of phosphorus, Appellant’s
argument does not identify reversible error in the Examiner’s rejection.
Appellant argues that Transactions “fails to explicitly teach”
“preparing a molten steel having a second temperature; and pouring the
molten ferroalloy or the molten nonferrous metal into the prepared molten
steel to form a manganese molten steel having a third temperature” as
recited in claim 1. Appeal Br. 12. Appellant argues that, consequently, the
Examiner “must provide sufficient reasons, as to why a person having
ordinary skill in the art, but not knowing the prior art problem having been
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solved by the claimed invention, would be tempted to modify the process
steps disclosed in Transactions to arrive at [such] claimed steps.” Id.
As discussed above, however, the Examiner’s rejection is not based
on modifying Transactions’ process to arrive at the steps recited in claim 1
of “preparing a molten steel having a second temperature; and pouring the
molten ferroalloy or the molten nonferrous metal into the prepared molten
steel to form a manganese molten steel having a third temperature.” Final
Act. 3–4. Rather, the Examiner finds that Transactions teaches adding
molten ferromanganese and a molten nonferrous metal (silico-manganese) at
a first temperature to a ladle containing molten steel at a second temperature,
and preparing a mixture of the molten ferromanganese, molten nonferrous
metal (silico-manganese), and molten steel at a third temperature. Final Act.
3–4 (citing Transactions pp. 125, 126); Ans. 8. Supporting the Examiner’s
findings, we note that Transactions explicitly discloses “pour[ing] the
molten ferromanganese . . . in such a manner that it unites with the steel
stream.” Transactions p. 126. The “steel stream” is necessarily molten due
to the fact that it is in the form of a “stream.” Because Appellant’s argument
does not address the rejection as presented by the Examiner, the argument
does not identify error in the Examiner’s factual findings or reasoning, and,
therefore, does not identify reversible error in the rejection.
Appellant argues that Transactions is “intended to improve recovery
of Silicon and Manganese,” but, “[i]n contrast, the claimed method is drawn
to solve, among others, a temperature drop when pouring the molten
ferroalloy or the molten nonferrous metal into the prepared molten steel to
form a manganese molten steel, as clearly described throughout the
specification of the present application.” Appeal Br. 12. Appellant argues
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that, “[t]herefore, there is no reason or motivation, for a person ordinary
skilled, to be tempted to modify Transactions or combine it into the other
references to obtain the claimed invention.” Appeal Br. 13. Appellant
argues that “[e]ven though the claimed method steps, as a whole, are old or
well-known in the prior art, Applicant respectfully argues that the invention
as claimed is not rendered obvious where ‘old’ or ‘well-known’ elements
solve different problems.” Id.
It is well-established, however, that “[i]n determining whether the
subject matter of a patent claim is obvious, neither the particular motivation
nor the avowed purpose of the patentee controls.” KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 419 (2007). And significantly, “the law does not require
that the references be combined for the reasons contemplated by the
inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see also In
re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (“Although the motivation to
combine here differs from that of the applicant, the motivation in the prior
art to combine the references does not have to be identical to that of the
applicant to establish obviousness.”).
As discussed above, the Examiner provides reasoning having rational
underpinning grounded in sound factual findings as to why one of ordinary
skill in the art would have combined the relied-upon disclosures of
Transactions and Lee to arrive at a method as recited in claim 1. Appellant’s
arguments directed to asserted differences in the problems solved by
Transactions and Appellant’s invention do not identify any error in the
Examiner’s rationale for the proposed combination, and, therefore, do not
identify reversible error in the Examiner’s rejection. KSR, 550 U.S. at 420
(explaining that any need or problem known in the art can provide a reason
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for combining the elements in the manner claimed).
We, accordingly, sustain the Examiner’s rejections of claims 1–14 and
23 under 35 U.S.C. § 103.
CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 7, 8,
12, 23
103 Transactions, Lee 1, 2, 4, 7, 8,
12, 23

3 103 Transactions,
Lee, Subiura
3
5, 6, 9 103 Transactions,
Lee, Betz
5, 6, 9
10, 11, 13 103 Transactions,
Lee, Hasegawa
10, 11, 13
13, 14 103 Transactions,
Lee, Harashima
13, 14
Overall
Outcome
1–14, 23

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