Ex Parte Daeschler et al

Patent Trial and Appeal Board

Jul 15, 2016

12674165 (P.T.A.B. Jul. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/674, 165 03/09/2011
23280 7590 07119/2016
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Valerie Daeschler
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
704.1018 4715
EXAMINER
CAMPBELL, NATASHA N.
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
07/19/2016 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VALERIE DAESCHLER, JEAN-LUC BOREAN,
NATHALIE MIKLER, GILLES DUSSART, SYLVAIN MIALOT, and
PA TRICE MATET 1
Appeal2015-001421
Application 12/674,165
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
AVEL YN M. ROSS, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1, 3, 4, 6-9, and 11-23. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
BACKGROUND
The subject matter on appeal relates to processes for secondary
descaling of running metal strips during hot-rolling. E.g., Spec. 1:4--6;
1 According to the Appellants, the Real Party in Interest is ArcelorMittal
France. App. Br. 2.
Appeal2015-001421
Application 12/674,165
Claim 1. Claim 1 is reproduced below from Appendix A of the Appeal
Brief:
1. A process for secondary descaling of running metal strips during
hot-rolling, the process comprising spraying water onto the
surface of the running metal strips with spray rails having
nozzles supplied with pressurized water, wherein all of said
nozzles are supplied at a hydraulic pressure of from 3 to 30 bar,
and wherein said nozzles are regulated so that heat flux density
extracted from the strip (HF) resulting from the cooling of its
surface by the sprayed water is between 6.5 and 20 MW/m2 for
a strip temperature between 900 and 1100°C.
REJECTIONS ON APPEAL2
1. Claims 1, 3, 7-9, 13, 15-18, and 21-23 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Ehls et al. (US 2004/0261206 Al,
published Dec. 30, 2004) as evidenced by Ichinose et al. (JP 11-47820, dated
Feb. 23, 1999).
2. Claims 4, 6, and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ehls as evidenced by Ichinose and Killilea (US 4,507,949,
issued Apr. 2, 1985).
3. Claims 11, 12, 16, 19, and 20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ehls as evidenced by Ichinose and Killilea. 3
2 In the Answer, the Examiner withdraws a 35 U.S.C. § 112 rejection of
claims 4, 11, 12, 16, and 18-20. Ans. 7.
3 Rejection 3 is a new ground of rejection set forth in the Examiner's
Answer. Ans. 5-7. The Appellants have maintained the appeal and
addressed the new ground in the Reply Brief. See Reply Br. 4.
2
Appeal2015-001421
Application 12/674,165
ANALYSIS
The Examiner finds that Ehls teaches a descaling method comprising
each element of claim 1, except that Ehls does not expressly recite the
claimed heat flux density of between 6.5 and 20 MW/m2. Ans. 3. The
Examiner finds, however, that the method of Ehls necessarily would produce
a heat flux density falling within the claimed range because the temperature
drop of the metal strip resulting from Ehls' low pressure water spray would
be similar to the temperature drop of the metal strip resulting from the
Appellants' low pressure water spray, and thus the heat flux density would
be similar. Id. at 3--4, 8-9. The Examiner acknowledges that Ehls does not
expressly teach the temperature drop that would occur in its metal strip, but
finds that Ichinose teaches a similar low pressure spray used for descaling
metal that results in a temperature drop similar to that disclosed by the
Appellants, and the Examiner finds that Ehls' spray would be expected to
produce the same drop as the spray of Ichinose. Id. at 8-9. On the basis of
those findings, the Examiner determines that the process of Ehls necessarily
would produce a heat flux density falling within the claimed range. Id.
We reverse the rejection. As the Appellants explain, the Ehls
descaling process appears to be a "primary" process, involving loose scale,
that occurs before the slab enters the roller hearth furnace and is subjected to
hot rolling, see Ehls i-fi-f 11, 22, while the Appellants describe a "secondary"
process that occurs during or after hot rolling, see Reply Br. 2-3; Spec. 1 :4--
37. The Examiner makes no finding that Ehls teaches a "secondary" process
as recited by claim 1. The record indicates that scale removed during the
process of Ehls is "loose" scale, whereas the scale removed during a
secondary process such as that described by the Appellants is "strongly
3
Appeal2015-001421
Application 12/674,165
adherent" scale. E.g., Ehls iii! 1, 4, 11, 15, 22 (describing method for
removing loose scale before slab enters the roller hearth furnace and
indicating distinction from strongly adherent scale); Spec. 1 :4--37 (noting
that primary descaling occurs before hot rolling and that secondary descaling
occurs after or during hot rolling); Reply Br. 2-3. Ichinose likewise appears
to be concerned with removal of strongly adherent scale rather than loose
scale. Ichinose if 6 (describing scale that is "adhered firmly"); Ehls if 4
(describing Ichinose as concerning the removal of "strongly adherent scale
from the surface of a slab").
The Examiner finds that the Ehls process occurs "under similar
conditions" to the claimed process, and that the "temperature drop that
occurs [in Ehls] is similar to that disclosed by the appellant." Ans. 4, 8. We
are not persuaded that a preponderance of the evidence supports those
findings. Ehls does not disclose a temperature drop. As explained above,
Ehls concerns the removal of loose scale, whereas Ichinose concerns the
removal of strongly adherent scale. Given that difference, we are not
persuaded that a person of ordinary skill in the art would have understood
the temperature conditions described by Ichinose to apply to Ehls. Ehls
expressly teaches that, in contrast to processes for removing strongly
adherent scale, its process for removing loose scale "can be carried out with
low heat losses of the slab." Ehls if 22. That teaching suggests that the
temperature drop taught by Ichinose for the removal of strongly adherent
scale may not be applicable to the process of Ehls.
On this record, the Examiner has not established by a preponderance
of the evidence that the process of Ehls necessarily would involve the
temperature drop taught by Ichinose or by the Appellants. Because that
4
Appeal2015-001421
Application 12/674,165
finding was the basis for the Examiner's determination that the process of
Ehls necessarily would produce a heat flux density that falls within the scope
of claim 1, that determination likewise is not supported by a preponderance
of the evidence. Accordingly, we must reverse the Examiner's rejection of
claim 1. Because all of the additional claims on appeal depend, directly or
indirectly, from claim 1, and the Examiner's rejection of those claims does
not remedy the error identified above, we must also reverse the Examiner's
rejection of claims 3, 4, 6-9, and 11-23.
CONCLUSION
We REVERSE the Examiner's rejection of claims 1, 3, 4, 6-9, and
11-23.
REVERSED
5