11044185 (B.P.A.I. Apr. 30, 2009)

Ex Parte Ikeda et al

Board of Patent Appeals and InterferencesApr 30, 2009

11044185 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SHUSHI IKEDA, HIROSHI AKAMIZU, KOICI MAKII, YOICHI MUKAI, and KOICHI SUGIMOTO ____________ Appeal 2009-1923 Application 11/044,185 Technology Center 1700 ____________ Decided:1 April 30, 2009 ____________ Before ADRIENE LEPIANE HANLON, JEFFREY T. SMITH, and JEFFREY B. ROBERTSON, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-1923 Application 11/044,185 2 Statement of the Case This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1, 2, and 4-7. 2 Claims 8-10 have been withdrawn from consideration. (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6.3 Appellants’ invention relates to a high stress and low yield ratio cold rolled steel having a high elongation property and a high flange drawing property. (Spec. 1). Claim 1 is illustrative: 1. A high stress and low yield ratio cold rolled steel having a high elongation property and a high flange drawing property, the steel sheet comprising: 0.10 to 0.25% by mass of C; 1.0 to 2.0% by mass of Si; and 1.5 to 3.0% by mass of Mn; wherein the steel sheet has a structure comprising at least 5% by volume of residual austenite; at least 60% by volume of banitic ferrite; and 20% by volume or less (including 0%) of polygonal ferrite, and wherein the steel sheet has a tensile strength of 980 MPa or higher; and a total elongation measured a cord and toJIS NO. 5 (EI IN %), a flange drawing property (λ in%), a tensile strength (TS in MPa) and a yield strength (YP in MPa) satisfy the inequality [(EI x λ x TS)/YP] ≥645. 2 An oral hearing was held for this appeal on April 21, 2009. 3 In rendering this decision we have considered the Appellants’ arguments presented in the Appeal Brief dated March 11, 2008 and the Reply Brief dated June 27, 2008. Appeal 2009-1923 Application 11/044,185 3 Appellants appeal the Examiner's rejections as set forth below: Claims 1, 2, 4, and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Iwatani (JP 10-237547, published Japanese patent application, published August 9, 1998). Claim 5 stands rejected as unpatentable over Iwatani combined with ASM Handbook Volume I, pages 144-145. Claim 7 stands rejected as unpatentable over Iwatani combined with Irie (U.S. 4,640,872, issued February 3, 1987). The dispositive issue before us is whether the Examiner has established Iwatani describes a high stress and low yield steel having at least 5% by volume of residual austenite. We answer this question in the negative. Therefore, WE REVERSE.4 The Examiner bears the initial burden of presenting a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). In order to establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007)). 4 We select independent claim 1 as representative of the rejected subject matter. Appeal 2009-1923 Application 11/044,185 4 The Examiner found that Iwatani describes a cold rolled steel sheet having high ductility and high strength comprising carbon, silica, manganese, phosphorus, sulfur, aluminum, and calcium in amounts that render the ranges of these components stated in the claimed invention obvious. (Ans. 3-4). The Examiner found that the amount of austenite present in Iwatani was the same as the claimed invention due to the overlapping composition and substantially similar process of manufacturing the steel sheets. (Ans. 5). Appellants contend that the steel sheets of the claimed invention have a different microstructure from that of Iwatani. Specifically, Iwatani does not describe or suggest that the steel sheets necessarily comprise the amount of residual austenite required by the claimed invention. (Br. 6). Appellants aver that the difference in microstructure can be traced to the difference in continuous annealing conditions disclosed in Iwatani. (Br. 6). Appellants argue that the steel sheets having the same composition do not necessarily have the same microstructure. (Br. 4-5). In support of this argument, Appellants refer to the Examples in the Specification that describe steel sheets having substantially similar compositions. (See Br. 5, reproducing table 2 from the Specification). We agree with Appellants that the Examiner has not adequately explained why the microstructure of the steel of Iwatani would necessarily be the same as the claimed invention. The Examiner has not directed us to evidence that establishes that the residual amount of austenite present in Iwatani is the same as the claimed invention. Also, the Examiner has not adequately addressed the evidence relied upon by the Appellants. That is, the Examiner has not identified evidence that establishes the steel sheets of Appeal 2009-1923 Application 11/044,185 5 Iwatani necessarily comprise at least 5% of residual austenite as required by the claimed invention. The Examiner has not explained why the reaction conditions described in Iwatani would necessarily result in a steel composition having at least 5% of residual austenite. For the foregoing reasons and those presented in Appellants’ principal Brief on Appeal, the rejection of claims 1, 2 and 4-7 under 35 U.S.C. § 103(a) is reversed. ORDER The Examiner's decision rejecting claims 1, 2 and 4-7 is reversed. REVERSED PL Initial: sld OBLON, SPIVAK, MCCLELLAND, MAIER & NEUSTANT, P.C. 1940 DUKE STREET ALEXANDRIA, VA 22314