Ex Parte Nakanishi et al

Board of Patent Appeals and Interferences

Feb 28, 2012

11722410 (B.P.A.I. Feb. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RYOTA NAKANISHI,
HIROSHI IRIE, MASAYA NAKAMURA,
KOHEI OKAMOTO, and MASAFUMI SHIMIZU
____________

Appeal 2011-002043
Application 11/722,410
Technology Center 1700
____________

Before PETER F. KRATZ, HUBERT C. LORIN, and
RAE LYNN P. GUEST, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on Nov. 15, 2011.

STATEMENT OF THE CASE
Ryota Nakanishi, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1, 6, 12, 14, and 15. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claims 1 and 12, reproduced below, are illustrative of the subject
matter on appeal.
1. A process for hot-dip galvanization in which a steel
sheet is treated by oxidization/reduction for better quality of
galvanization and then galvanized,
wherein an annealing line of hot-dip galvanizing equipment is
composed of a first non-oxidizing zone, a second oxidizing zone, and
a third reducing zone arranged in an order of first to third zone in line;
wherein a steel sheet containing silicon of 0.2-3.0 weight
percent is oxidized during oxidization/reduction by flames blown to it
in the oxidizing zone and then reduced and annealed in the reducing
zone,
characterized in that said steel sheet on which rolling oil sticks
is heated under conditions where the excess air ratio r1 is 0.9 or higher
but below 1.00, the temperature t (°C) of the steel sheet is 450°C or
higher, and said excess air ratio r1 and temperature t (°C) of the steel
sheet satisfy the expression: t < -1000 x r1 + 1750 in said non-
oxidizing zone; and
said steel sheet is then heated by flames which are directly
applied for direct heating by burners whose nozzles are directed
toward the upper and lower surfaces of said steel sheet and extend in
the lateral direction of said steel sheet, under a condition where an air-
fuel ratio r2 is 1.00 or higher in said oxidizing zone.

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jul. 21, 2010) and Reply Brief (“Reply Br.,” filed Oct. 26, 2010),
and the Examiner’s Answer (“Answer,” mailed Aug. 31, 2010).
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12. A process for hot-dip galvanization in which a steel sheet
containing silicon of not less than 0.2 weight percent is treated by
oxidization/reduction for better quality of galvanization and then
galvanized, wherein the steel sheet is heated to 600°C or higher and
then is oxidized with flames blown onto it during
oxidization/reduction, the steel sheet is passed through an oxidizing
zone of the blown flames, and oxide films are formed on surfaces of
the steel sheet at a rate of 200-2,000 Ǻ/sec.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Wang
Kimura2

US 4,133,634
JP 04-202630

Jan. 9, 1979
Jul. 23, 1992
The following rejection is before us for review:
1. Claims 1, 6, 12, 14, 15 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Kimura and Wang.

ISSUE
Has the Examiner established a prima facie case of obviousness for
the claimed subject matter over the cited art combination?

2 The Examiner relies on a English Language Abstract and a computer
translation of JP 02-587724, which is identified as “the granted version of JP
‘630,” as the basis for rejecting the claims. Answer 4. Appellants do not
object to these documents as accurately reflecting the subject matter of JP
04-202630. See App. Br. 8.
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ANALYSIS
Independent claim 1 and claim 6 dependent thereon.
Claim 1 is drawn to a process for hot-dip galvanization “wherein an
annealing line of hot-dip galvanizing equipment is composed of a first non-
oxidizing zone, a second oxidizing zone, and a third reducing zone arranged
in an order of first to third zone in line.” According to the claimed process,
(a) in the first non-oxidizing zone: “a steel sheet containing silicon of
0.2-3.0 weight percent”
on which rolling oil sticks is heated under conditions where the
excess air ratio r1 is 0.9 or higher but below 1.00, the
temperature t (°C) of the steel sheet is 450°C or higher, and said
excess air ratio r1 and temperature t (°C) of the steel sheet
satisfy the expression: t < -1000 x r1 + 1750 in said non-
oxidizing zone;

(b) in the second oxidizing zone:
said steel sheet is then heated by flames which are directly
applied for direct heating by burners whose nozzles are directed
toward the upper and lower surfaces of said steel sheet and
extend in the lateral direction of said steel sheet, under a
condition where an air-fuel ratio r2 is 1.00 or higher in said
oxidizing zone;

and
(c) in the third reducing zone: “reduc[ing] and anneal[ing] in the
reducing zone.”
The Examiner’s basic position is that Kimura discloses the claim steps
but for “that the preheating zone is a non-oxidizing zone as claimed,” for
which Wang is relied upon. Answer 4. That is to say, the Examiner found
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that Wang discloses elements (a), the first non-oxidizing zone, and Kimura
discloses (b), the second oxidizing zone, and (c), the third reducing zone, in
preforming the steps as claimed. With respect to Wang, the Examiner found
that “Wang teaches that preheating in a non-oxidizing furnace at a
temperature of 600-700°C in order to remove oil/grease on the surface of the
steel sheet (col. 1 lines 8- 19 and 24-31).” Answer 4. Given Wang and
Kimura, the Examiner concludes that “it would have been obvious to one of
ordinary skill in the art to have incorporated the non-oxidizing preheating
step as taught by Wang into the hot-dip galvanizing process of [Kimura] in
order to effectively remove oil/grease on the steel sheet surface as taught by
Wang;” that is, the Examiner concluded that in combining Wang and
Kimura one of ordinary skill in the would have reached the combination (a),
(b) and (c) as claimed. Answer 4.
The Appellants disagree, arguing that the claimed process requires
certain conditions within the (a) non-oxidizing and (b) oxidizing zones
which one of ordinary skill in the art would not reach given what Wang and
Kimura disclose. We agree.
Specifically, as the Appellants point out, “Wang teaches that the
invention being described is specifically designed to solve the problem of
undesirable soot which normally forms on the steel surface ‘when the
burners are operated with an insufficient air supply’” App. Br. 11 (citing
col. 1, ll. 50-57). See also Wang, col. 1, ll. 58-63: “permitting in the
preheating oven of a steel strip galvanizing production line the combustion
of liquid hydrocarbons with a considerable air deficiency.” Accordingly,
notwithstanding that Wang discloses a temperature range (600-700°C) (see
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col. 1, ll. 11-13) overlapping with that claimed (450°C or higher), Wang’s
intent to heat under air deficiency is counter to, and thus teaches away from,
“heat[ing] under conditions where the excess air ratio r1 is 0.9 or higher but
below 1.00 . . . and said excess air ratio r1 and temperature t (°C) of the steel
sheet satisfy the expression: t < -1000 x r1 + 1750 in said non-oxidizing
zone” as claimed.
The Examiner responds to the Appellants’ argument that not only
does Wang not teach the excess air ratio for the first non-oxidizing zone as
claimed, but Wang teaches away from doing so, by stating:
Appellant argues that Wang does not expressly teach the
claimed air fuel ratio. However, as stated above, the claimed air-fuel
ratio in the non-oxidizing zone is a result effective variable that
directly affect[s] the heating efficiency and oil/grease removal
efficiency in the non-oxidizing preheating zone. Therefore, one of
ordinary skill in the art would have found it obvious to have varied the
air-fuel ratio in the non-oxidizing zone of [Kimura] in view of Wang
via routine optimization in order to achieve desired heating efficiency
and oil/grease removal efficiency MPEP 2144.05 II. Since appellant
has not provided any factual evidence to show that the claimed air-
fuel ratio would have in fact led to unexpected results, appellant's
argument is not found convincing.
Answer 6. The difficulty with this reasoning is that the burden is on the
Office to establish a prima facie case of obviousness. Where there is a
teaching away, as there is here for the use of the excess air ratio claimed in
the non-oxidizing zone, the Office bears the burden of showing that the
rationale underpinning the legal conclusion of obviousness is not
undermined. This is so because “[a] reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
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discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “[W]hen the prior art teaches
away from combining certain known elements, discovery of a successful
means of combining them is more likely to be nonobvious.” KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007). Shifting the burden to the
Appellants to show why the claimed invention was not obvious is not proper
in light of the fact that the prior art teaches away from the claimed
combination.
We are persuaded by the Appellants’ argument that the Office has not
met its burden of establishing a prima facie case of obviousness in the first
instance.
The rejection of claims 1 and 6 under 35 U.S.C. § 103(a) as being
unpatentable over Kimura and Wang is reversed.

Independent claim 12 and claims 14 and 15 dependent thereon.
We will reverse the rejection of claims 12, 14, and 15 for different
reasons.
The issue is whether one of ordinary skill in the art would have been
led to the claimed method whereby:
the steel sheet is heated to 600°C or higher and then is oxidized
with flames blown onto it during oxidization/reduction, the
steel sheet is passed through an oxidizing zone of the blown
flames, and oxide films are formed on surfaces of the steel sheet
at a rate of 200-2,000 Ǻ/sec.

According to the Examiner, “[r]egarding claim 12, [Kimura] teaches
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an average oxidation velocity of not less than 30 Ǻ/sec (Claim 1), which
encompasses the claimed rate of oxidization film formation.” Answer 5.
Claim 12 is reasonably broadly construed to require certain steps be
performed – that is, heating to 600°C or higher and then oxidizing with
flames blown onto it during oxidization/reduction – by which oxide films on
surfaces of the steel sheet at a rate of 200-2,000 Ǻ/sec are formed. The fact
that Kimura discloses a rate of formation overlapping that claimed does not
address the claimed subject matter, which is not drawn to forming oxide
films on surfaces of the steel sheet at a rate of 200-2,000 Ǻ/sec per se but a
process comprising steps to yield that result. In that regard, the Examiner
adds that “the heating temperature of 600-700°C at the preheating non-
oxidizing zone as taught by [Kimura] in view of Wang reads on the non-
oxidizing zone heating temperature as claimed.” Answer 5.
Wang discloses a temperature range (600-700°C) (see col. 1, ll. 11-
13) for the purpose of cleaning the steel sheet. Nevertheless, there is
insufficient apparent reasoning with logical underpinning to support the
legal conclusion of obviousness. We are not persuaded by the
preponderance of the evidence that, given Kimura’s disclosure of an average
oxidation velocity of not less than 30 Ǻ/sec and Wang’s disclosure of the
temperature range 600-700°C for cleaning the steel sheet, one of ordinary
skill in the art would have reached the claimed method whereby:
the steel sheet is heated to 600°C or higher and then is oxidized
with flames blown onto it during oxidization/reduction, the
steel sheet is passed through an oxidizing zone of the blown
flames, and oxide films are formed on surfaces of the steel sheet
at a rate of 200-2,000 Ǻ/sec.

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The rejection is reversed.
DECISION
The decision of the Examiner to reject claims 1, 6, 12, 14, and 15 is
reversed.

REVERSED

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