Ex Parte Drillet et al

Patent Trial and Appeal Board

Oct 6, 2016

13621015 (P.T.A.B. Oct. 6, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/621,015 09/15/2012
23280 7590 10/11/2016
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Pascal DRILLET
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.
704.1007DIV 6215
EXAMINER
SCHLEIS, DANIEL J
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
10/11/2016 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 PASCAL DRILLET, DOMINIQUE SPEHNER, and
RONALD KEFFERSTEIN
Appeal2015-004912
Application 13/621,015
Technology Center 1700
Before MARK NAGUMO, BRIAND. RANGE, and
JENNIFER R. GUPTA, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 24-34. We have jurisdiction. 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is ArcelorMittal
France. Appeal Br. 2.
Appeal2015-004912
Application 13/621,015
STATEMENT OF THE CASE
Appellants describe the present invention as relating to coated steels
and method of making coating steels. Spec. 1 :9-13. The coated steel could
be shaped into parts (for example, automotive parts) after heating by
stamping. Spec. 3: 14-29. Claim 24, reproduced below with emphasis
added to certain key recitations, is the only independent claim on appeal and
is illustrative of the claimed subject matter:
24. A coated steel stamped product, which comprises:
(a) a strip of base steel having a first side and a second
side; and
(b) a coating on at least one of said first side of said strip
of base steel and said second side of said strip of base steel,
wherein:
(i) said coating results from the interdiffusion between
said base steel, and aluminum or aluminum alloy pre-coating,
and
~ 11 J wherein said coating comprises, proceeding from
the base steel outwards:
(a) an Interdiffusion layer,
(b) an Intermediate layer,
( c) an Intermetallic layer, and
( d) a Superficial layer,
wherein said coating has a thickness greater than 30
micrometers and wherein said layer (a) has a thickness less than
15 micrometers.
Appeal Br.2 1 (Claims Appendix).
2 In this decision, we refer to the Final Office Action mailed September 25,
2013 ("Final Act."), the Appeal Brief filed October 20, 2014 ("Appeal Br."),
the Examiner's Answer mailed January 28, 2015 ("Ans."), and the Reply
Brief filed March 26, 2015 ("Reply Br.").
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Application 13/621,015
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Laurent et al. US 6,296,805 Bl Oct. 2, 2001
(hereinafter "Laurent")
Takagi et al. US 2004/0009366 Al Jan. 15, 2004
(hereinafter "Takagi")
Ford Engineering Material Specification WSB-MlA322-Al (March 31,
1992) (hereinafter "Ford Specification").
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 24-31, 33, and 34 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103 as unpatentable
over Laurent. Ans. 2.
Rejection 2. Claims 24, 25, 31, 33, and 34 under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103 as
unpatentable over Takagi. Id. at 5.
Rejection 3. Claim 32 under 35 U.S.C. § 103 as unpatentable over
Takagi. Id. at 7.
Rejection 4. Claims 26-28 under 35 U.S.C. § 103 as unpatentable
over Takagi and further in view of the Ford Engineering Specification. Id.
at 8.
ANALYSIS
Rejection 1. The Examiner rejects claim 24 as anticipated by or
obvious over Laurent. The Examiner finds that Appellants' process (as set
forth in the Specification) is identical or substantially identical to the process
of Laurent. Ans. 3. The Examiner then states "[w]here the claimed and
prior art products are identical or substantially identical, or are produced by
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Application 13/621,015
identical or substantially identical processes, the Office can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of the claimed product." Ans. 4; see also In re
Best, 562 F.2d 1252, 1256 (CCPA 1977). Appellants, however, argue that
one cannot assume that the process of Laurent will result in thickness of a
coating "greater than 30 micrometers" as recited by claim 24. Appeal Br. 8;
see also Reply Br. 2--4. The weight of the evidence supports Appellants on
this point.
In particular, Laurent provides little guidance regarding what
thickness of aluminum coating should be applied to the steel sheet except to
state that the sheet, "[i]n an example of implementation ... is coated with an
aluminum-based layer about 20 µm [i.e., 20 micrometers] in thickness."
Laurent 3:37--43. The Examiner finds that, in this regard, Laurent's process
is the same as Appellants' process because "[t]he instant application sets
forth providing an aluminum hot-dip coating that falls within the range of 20
to 33 microns." Appeal Br. 13 (citing Spec. 7:22-8:7). The Examiner
further finds that "[t]he thickness corresponds to the pre-coat that is
subsequently subjected to a heat-treatment process" and states that "it
appears that the thickness of the coating within this range would result in the
claimed coating thickness in the final product [i.e., greater than 30
micrometers]." Appeal Br. 13.
While the Specification suggests an initial thickness between 20 and
33 micrometers (Spec. 7:22-8:7) and describes "a preferred embodiment"
having a total thickness of layers (a) to (d) greater than 30 micrometers, the
Specification does not suggest that employing an initial thickness of 20
micrometers will result in the 30 micrometer thick layer preferred
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Application 13/621,015
embodiment. Moreover, the Examiner has not explained why heating would
cause a 20 micrometer aluminum coating to ultimately be greater than 30
micrometers thick (a 50% expansion).
To employ In re Best properly here, the Examiner must compare
Laurent's prior art process to a process in the Specification that results in a
product having the characteristics of claim 24 and establish that those two
processes are identical or substantially identical. In re Best, 562 F .2d at
1255. Thus, the process of Laurent must be compared to a process in the
Specification that results in a "coating [which] has a thickness greater than
30 micrometers." Appeal Br. 13 (Claims Appendix). Here, the record does
not establish that the Specification's process that starts with a 20 micrometer
coating will result in the preferred embodiment recited by claim 24-a claim
that requires coating thickness greater than 30 micrometers. Therefore,
because a preponderance of the evidence of record does not support the
Examiner's finding that Laurent's process is identical or substantially
identical to the Specification's process that results in a coating having a
thickness as recited in claim 24, we do not sustain the Examiner's Laurent-
based rejection of claims 24-31, 33, and 34.
Rejections 2--4. The Examiner rejects claims 24-28 and 31-34 as
anticipated by or obvious over Takagi. Takagi teaches an initial aluminum
coating between 10 to 20 micrometers. Takagi ,-i 3. The Examiner's
rejections again employ an In re Best rationale as discussed above and find
that Takagi inherently discloses the "greater than 30 micrometer" recitation
of claim 24. Ans. 6-7, 14. Appellants again argue that the reasoning is
flawed. Appeal Br. 10; Reply Br. 4. For reasons parallel to those explained
above, a preponderance of the evidence does not support the Examiner's
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Application 13/621,015
finding that Takagi's process is identical or substantially identical to the
Specification's process that results in a coating having a thickness as recited
in claim 24.
The Examiner's reliance on the Ford Engineering Specification does
not address this deficiency. Ans. 8-9. Therefore, we do not sustain the
Examiner's Takagi-based rejections of claims 24-28 and 31-34.
DECISION
For the above reasons, we reverse the Examiner's rejection of
claims 24-34.
REVERSED
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