JFE STEEL CORPORATIONDownload PDFPatent Trials and Appeals BoardJan 7, 20212020001938 (P.T.A.B. Jan. 7, 2021) Copy Citation 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. Appeal 2020-001938 Application 14/780,702 2 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). Appeal 2020-001938 Application 14/780,702 3 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. Appeal 2020-001938 Application 14/780,702 4 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)). Appeal 2020-001938 Application 14/780,702 5 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. Appeal 2020-001938 Application 14/780,702 6 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 Appeal 2020-001938 Application 14/780,702 7 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 Appeal 2020-001938 Application 14/780,702 8 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 Copy with citationCopy as parenthetical citation