JFE STEEL CORPORATION

Patent Trials and Appeals Board

Jan 7, 2021

2020001938 (P.T.A.B. Jan. 7, 2021)

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.
14/780,702 09/28/2015 Yuta Imanami SUG-15-1165 (308880-66) 1060
35811 7590 01/07/2021
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
LIANG, ANTHONY M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
01/07/2021 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):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUTA IMANAMI
____________

Appeal 2020-001938
Application 14/780,702
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 3–6 of Application 14/780,702. Final
Act. 1 (Feb. 1, 2019). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies JFE Steel Corp., as the real party in
interest. Appeal Br. 1.
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I. BACKGROUND
The ’702 Application describes a case hardening steel for machine
structure components, which are used in the field of construction machinery
and automobiles. Spec. ¶ 1. According to the Specification, the described
steel possesses improved cold forgeability and fatigue strength after
carburizing treatment. Id. Claim 3 is representative of the ’702 Application’s
claims and is reproduced below from the Appeal Brief’s Claims Appendix.
3. A case hardening steel comprising a chemical
composition containing
C: 0.10 mass% to 0.35 mass%,
Si: 0.01 mass% to 0.13 mass%,
Mn: 0.30 mass% to 0.80 mass%,
P: 0.02 mass% or less,
S: 0.03 mass% or less,
Al: 0.01 mass% to 0.045 mass%,
Cr: 1.3 mass% to 3.0 mass%,
B: 0.0005 mass% to 0.0040 mass%,
Nb: 0.003 mass% to 0.080 mass%,
N: 0.0080 mass% or less,
Ti as an impurity: 0.005 mass% or less, and
the balance being Fe and incidental impurities, and
satisfying Formulae (1) and (2):
3.0[%Si] + 9.2[%Cr] + 10.3[%Mn] ≥ 10.0 --- (1)
3.0[%Si] + 1.0[%Mn] < 1.0 --- (2)
where [%M] represents the content of element M
(mass%), and the case hardening steel is a steel
bar.
Appeal Br. Claims App. 8 (emphases added).
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II. REJECTION
On appeal, the Examiner maintains the rejection of claims 3–6 under
35 U.S.C. § 103 as unpatentable over the combination of Shuto2 and
Yanagiya.3 Final Act. 2.
III. DISCUSSION
Appellant argues for reversal of the rejection at issue based upon the
limitations in claim 3. Appeal Br. 2–7; Reply Br. 1–3. We, therefore, select
claim 3 as representative of the claims subject to this ground of rejection and
limit our discussion to this claim. 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claim 3, the Examiner found, inter alia, that Shuto teaches
a steel sheet composition comprising the claimed elements in wt. % amounts
that overlap or encompass the claimed wt. % ranges. Final Act. 2–3 (citing
Shuto Abstract; claim 1). The Examiner further found that Shuto’s elemental
ranges “overlap, encompass, or lie within the claimed ranges [for]” each of
Formulas (1) and (2). Final Act. 3. The Examiner concluded that “it would
have been obvious to one of ordinary skill in the course of routine
experimentation to set Si, Cr, Mn percentages of” Shuto’s steel “such that
the claimed [F]ormulae are satisfied.” Id. at 3.
Although the Examiner found that Shuto’s sheet does not teach or
suggest a steel bar shape, the Examiner relied upon Yanagiya for teaching
the requisite shape. Final Act. 4 (citing Yanagiya Example II). The
Examiner determined, inter alia, that Yanagiya’s bar shape “would have

2 US 2015/0017471 A1, published Jan. 15, 2015.
3 US 4,634,573, issued Jan. 6, 1987.
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been an obvious design choice” for one of ordinary skill in the art. Final Act
4 (citing MPEP § 2144.04).
Appellant argues, inter alia, that the rejection of claim 3 should be
reversed because: (i) Shuto’s hot-rolled steel sheet is distinguished from the
claimed case hardening steel, which is produced by cold forming a steel bar
(Appeal Br. 2–3), (ii) Shuto does not teach satisfying the Si and Mn content
required by Formula (2) to attain the beneficial properties of reduced
deformation resistance (id. at 3), and (iii) Shuto’s disclosure that “the Mn
content is preferably set to 1% or more, and more preferably 2% or more,”
would have provided insufficient motivation for one of ordinary skill in the
art to optimize Shuto’s Si and Mn content to satisfy Formula (2). Id. at 6
(citing Shuto ¶ 117).
First, we are not persuaded by Appellant’s argument (i). We note that
the subject matter of claim 3 is drawn to a steel comprising a chemical
composition—limitations are silent with respect to any methods of forming
the steel. “Many of appellant’s arguments fail from the outset because, . . .
they are not based on limitations appearing in the claims . . . .” In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
Second, Appellant’s arguments (ii) and (iii) regarding the alleged
nonobviousness of the claimed Formula (2) subject matter are similarly
unpersuasive. In an obviousness inquiry, the fact that a specific embodiment
is taught to be preferred is not controlling, because all disclosures of the
prior art, including non-preferred embodiments, must be considered. Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (citing In
re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
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As the Examiner found, “Shuto teaches overlapping ranges with
respect to Si (0.001–2.5%, which overlaps with the instantly claimed 0.01–
0.13%), . . . and Mn (0.1–4%, which overlaps with the instantly claimed 0.3–
0.8%).” Answer 5. In the instance where Shuto’s steel possesses 0.01% Si
and 0.3% Mn with each elemental amount within the claimed Si and Mn
ranges, Shuto’s Si and Mn amounts would have satisfied Formula (2).4
Appellant, furthermore, has not identified reversible error in the
Examiner’s finding that Shuto’s steel composition comprises each of the
claimed elements in wt. % amounts that overlap or encompass the claimed
wt. % ranges. See Final Act. 2–3. This is sufficient to create a prima facie
case of obviousness. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a
prima facie case of obviousness typically exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior art).
Once established, a prima facie case can be overcome if Appellant
shows either (i) that the prior art teaches away from the claimed invention or
(ii) that there are new and unexpected results relative to the closest prior art.
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004) (citing In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
Here, Appellant does not allege that Shuto teaches away from the
claimed invention. Rather, Appellant asserts that the claimed subject matter
provides unexpected results. Appeal Br. 6–7. In particular, Appellant argues

4 In other words, 3.0[0.01%Si] + 1.0[0.3%Mn] = 0.33, which is less than 1.0.
See Appeal Br. Claims App. 8.
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that the Specification “discloses unexpected results relative to Shuto and any
other cited reference, thereby demonstrating nonobviousness.” Id. at 4.
The Examiner, however, concluded that Appellant’s relied-upon data
does not provide sufficient evidence to demonstrate the criticality of
Formula (2). Answer 6. The Examiner asserts that Comparative Example
Steel No. X’s deformation resistance of 804 MPa, which is close to the
allowable 800 MPa limit, raises an issue as to “whether this result differs to
an extent such that the difference is really unexpected.” Id. at 7; see Spec.
Table 2.
Whether an invention has produced unexpected results is a question of
fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). For a showing of
unexpected results to be probative of nonobviousness, an applicant must
establish (1) that there actually is a difference between the results obtained
by the claimed invention and the prior art, and (2) that the observed
difference would have been considered unexpected by a person of ordinary
skill in the art at the time of the invention. In re Freeman, 474 F.2d 1318,
1324 (CCPA 1973) (citing In re Klosak, 455 F.2d 1077 (1972); In re
D’Ancicco, 439 F.2d 1244 (1971)).
In support of their argument, Appellant points to experimental data in
the Specification. Appeal Br. 5 (citing Spec. Fig. 4); Reply Br. 1–2 (citing
Spec. ¶¶ 13, 14, 27, 28). Assuming, arguendo, that Appellant’s data
establishes an actual difference between the claimed invention and the prior
art, Appellant still has not met their burden. Appellant has not identified any
evidence of record (as opposed to mere attorney argument) that one of
ordinary skill in the art would have considered the reported differences
between the claimed invention and the prior art to have been unexpected at
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the time of the invention. Superiority alone is not sufficient to show that the
result is unexpected. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed.
Cir. 2007) (“[A]ny superior property must be unexpected to be considered as
evidence of non-obviousness.” (emphasis in original)). Therefore, Appellant
has not established the existence of unexpected results.
Appellant argues that one of ordinary skill in the art would not have
been motivated to modify Shuto’s steel sheet into the shape of Yanagiya’s
bar. Appeal Br. 6–7. According to Appellant, Shuto merely discloses a hot-
rolled steel sheet, having an improved stretch flangeability property. Id.
Appellant alleges that “[t]hose skilled in the art” would have readily
understood “that such a hole expansion ratio is only a consideration for steel
sheets and is not a consideration for steel bars.” Id. at 7.
We, however, agree with the Examiner that these allegations
“amount[] to mere speculation or opinion and [are] not substantiated by
evidence.” Answer 8. See Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588,
595 (Fed. Cir. 1997) (citation omitted) (“[A]rguments of counsel cannot take
the place of evidence lacking in the record.”); see also Icon Health &
Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney
argument is not evidence.”).
As the Examiner determined, it would have been obvious to one of
ordinary skill in the art at the time of the invention to roll Shuto’s steel
composition into Yanagiya’s round bar because this shape facilitates testing
for cracks. Final Act. 4 (citing Yanagiya Example II; Shuto ¶ 108). We,
furthermore, agree with the Examiner that the claimed bar shape also “would
have been an obvious design choice” for the ordinarily skilled artisan. Final
Act 4 (citing MPEP § 2144.04). In this case, the Examiner has properly
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established a prima facie case of obviousness, and Appellant has not
presented sufficient evidence or argument to rebut that case.
Appellant raises new arguments against the Examiner’s findings
regarding the applied prior arts’ teachings for the first time in the Reply
Brief. Reply Br. 2–3. These arguments are untimely. We, therefore, will not
consider them. Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010)
(informative) (explaining that arguments and evidence not timely presented
in the principal Brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”).
In view of the foregoing, we determine that the Examiner did not
reversibly err in rejecting claim 3 as unpatentable over Shuto with Yanagiya.
Accordingly, we also affirm the rejection of claims 4–6, which depend from
claim 3.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3–6 103 Shuto, Yanagiya 3–6
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