JFE STEEL CORPORATION

Patent Trials and Appeals Board

May 19, 2021

2020000695 (P.T.A.B. May. 19, 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.
14/781,440 09/30/2015 Takashi Kobayashi JFE-15-1445/308692-420 2933
35811 7590 05/19/2021
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
05/19/2021 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 TAKASHI KOBAYASHI, HAYATO SAITO, and
YOSHIMASA FUNAKAWA

Appeal 2020-000695
Application 14/781,440
Technology Center 1700
____________

Before CATHERINE Q. TIMM, DONNA. M. PRAISS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 5, 6, and 10, which constitute all the
claims pending in this application. Claims 7–9 have been withdrawn. Claims
1–4 have been cancelled. We have jurisdiction under 35 U.S.C. § 6(b).

1 In this Decision, we refer to the Specification filed Sept. 30, 2015
(“Spec.”), the Non-Final Office Action dated Dec. 10, 2018 (“Non-Final
Act.”), the Appeal Brief filed Apr. 26, 2019 (“Appeal Br.”), and the
Examiner’s Answer dated Aug. 12, 2019 (“Ans.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies JFE STEEL CORPORATION as the
real party in interest. Appeal Br. 1.
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Application 14/781,440

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We AFFIRM.
STATEMENT OF THE CASE
The invention relates to a steel sheet which is subjected to nitriding
treatment to improve durability and is suitable as a material for machine
parts. Spec. ¶ 1. Claims 5 and 10, reproduced below, are illustrative of the
subject matter on appeal (emphasis added).
5. A steel sheet for nitriding having a composition and a
microstructure:
the composition comprising in percent by mass,
0.02% to 0.08% of C, 0.1% or less of Si;
0.2% to 1.8% of Mn, 0.05% or less of P;
0.02% or less of S, 0.01% to 0.06% of Al;
0.5% to 1.5% of Cr, 0.01% or less of N; and
the balance being Fe and incidental impurities; and
a microstructure including ferrite as a main phase and
pearlite and/or bainite as a secondary phase,
wherein the ferrite has a fraction of 70% or more in the
entire microstructure and an average grain diameter of 5 to 25
μm, and cementite present in the secondary phase has an
average length of a major axis of 3.0 μm or less in a cross
section in a rolling direction of the steel sheet,
the steel sheet having a Vickers hardness (HV0.1) at a
depth of 0.2 mm from the surface of the steel sheet being 250 or
more.
10. The steel sheet for nitriding according to Claim 5,
wherein the steel sheet has a strength-elongation balance value
(TS x EL) of 16 GPa% or more and 18.4 GPa % or less
wherein TS is Tensile strength and EL is elongation.
Appeal Br. 9 (Claims Appendix).

Appeal 2020-000695
Application 14/781,440

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ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
argued claims in light of each of Appellant’s arguments, we are not
persuaded Appellant has identified reversible error in the appealed
rejections.
The Examiner rejects claims 5, 6, and 10 as follows for the reasons
provided in the Non-Final Office Action.3 Non-Final Act. 2–9.
Claim(s) 35 U.S.C. § Basis/Reference(s)
5 112(b) Indefinite
5, 6, 10 103 Morita4
5, 6, 10 Double Patenting US 10,077,485
5, 6, 10 Double Patenting US 10,077,489
5, 6, 10 Double Patenting US 9,534,271

Indefiniteness of Claim 5
Appellant does not challenge the Examiner’s indefiniteness rejection
for lacking antecedent basis for “the surface” recited in claim 5. Non-Final

3 The Examiner’s double patenting rejection of claims 5 and 10 over claims
1 and 5 of copending Application No. 14/375,709 in view of additional prior
art references stands withdrawn because Appellant/Applicant filed a
terminal disclaimer on Dec. 13, 2019 in copending Application No.
14/375,709. Final Act. 9; Ans. 7.
4 JPH 9-143570, published June 3, 1997. Citations to the text of Morita are
to a translation appended to the reference in the record.
Appeal 2020-000695
Application 14/781,440

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Act. 2; Appeal Br. 8. Accordingly, we affirm the Examiner’s rejection under
35 U.S.C. § 112(b).

Obviousness over Morita
Appellant argues the obviousness rejection of claims 5, 6, and 10 over
Morita together. Appeal Br. 3–6. Claims 6 and 10 each depend from claim 5,
therefore, Appellant’s arguments directed to claim 5 also apply to claims 6
and 10.
According to Appellant, the Examiner erred in determining Morita
discloses an identical or substantially identical composition produced by an
identical or substantially identical process to the claimed steel sheet and
therefore inherently possesses the claimed properties: (a) “cementite present
in the secondary phase has an average length of a major axis of 3.0 μm or
less in a cross section in a rolling direction of the steel sheet,” and (b) “the
steel sheet having a Vickers hardness (HV0.1) at a depth of 0.2 mm from the
surface of the steel sheet being 250 or more.” Id. at 3. Appellant directs us to
Morita’s cooling step, which includes three cooling stages, and argues that
Appellant’s cooling step includes only two stages and does not contain a
“retaining stage.” Id. at 4–5. Below is a chart comparing Morita’s process to
that of Appellant’s process taken from the Examiner’s Answer.
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Ans. 8 (citing Morita Abstract, ¶¶ 8, 9, 31; Spec. ¶ 28).
Appellant does not challenge the Examiner’s summary of the
processes, but, instead, argues that the physical characteristics of steel sheets
depend on both the steel composition and method in which the steel sheet is
made, thus, this difference in Morita’s process means the alleged inherent
properties would not necessarily flow from Morita’s teachings. Appeal Br. 5.
Appellant directs us to the properties of strength-elongation balance value
(TS x EL) where TS is tensile strength and EL is elongation as recited in
dependent claim 10 and argues as “further support of non-inherency” that
Morita’s examples do not have a strength-elongation balance value that
overlaps with claim 10’s recited range. Id.
Appellant also directs us to Morita’s composition Y as having a Cr
content of 0.52%, which falls within the range recited in claim 5, and notes
that composition Y is not among Morita’s examples. Id. Appellant argues
that Morita does not disclose, teach, or suggest that Cr has an effect on
increasing the hardness of the surface portion of the steel sheet by forming
nitrides in the steel in a nitriding treatment, but only teaches that Cr is added
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to ensure the desired strength and to enhance weldability and corrosion
resistance. Id. at 6 (citing Morita ¶ 23).
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 5 as obvious over Morita’s disclosure.
The preponderance of the evidence in this Appeal record supports the
Examiner’s determination that Morita’s process for producing a high tensile
strength hot rolled steel plate is substantially similar to Appellant’s process.
Morita’s process, like Appellant’s process, seeks to create ferrite small
grains in an initial phase and pearlite and/or bainite in a secondary phase.
Compare Spec. ¶¶ 23, 24 with Morita ¶¶ 29–31. As highlighted in the
Examiner’s comparison table (Ans. 8), both Morita’s process and
Appellant’s process (a) heat a steel slab to substantially the same
temperature range, (b) hot roll at a finishing temperature in substantially the
same range, (c) cool from a finishing temperature to 750 ºC at substantially
the same cooling rate, (d) subsequently cool to substantially the same stop
temperature range at substantially the same average cooling rate, and (e) coil
at substantially the same temperature range. Compare Spec. ¶¶ 45–48, with
Morita ¶¶ 28–31.
Appellant’s assertion that Morita’s slower cooling rate to hold
temperature in the range of less than 750 ºC to 600 ºC for a period of 5 to 20
seconds during the cooling process rebuts the process being substantially
similar (Appeal Br. 4–5) is not persuasive because the Examiner finds
Morita’s disclosed cooling rate ranges result in an average cooling rate of
approximately 15 ºC/s, which falls within the 15–35% ºC/s range of
Appellant’s cooling process. Ans. 8–9. Appellant does not dispute this
finding.
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The Examiner also finds that the TS x EL property recited in
dependent claim 10 overlaps with the combination of Morita’s general
teaching of TS of >490 MPA (i.e., 0.49 GPa) and Morita’s EL values for the
examples in Table 4, which together suggests a TS x EL (>0.49GPa x
>25%) or >25.5 GPa%. Ans. 9 (citing Morita ¶ 6, Table 4). Appellant does
not dispute these findings.
A preponderance of evidence in the record, including the substantial
similarity between the methods of Morita and Appellant, supports the
Examiner’s determinations and justifies requiring Appellant to prove that
Morita’s product does not necessarily or inherently possess the claimed
properties. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“[T]he PTO
can require an applicant to prove that the prior art products do not
necessarily or inherently possess the characteristics of his claimed product.
. . . Whether the rejection is based on ‘inherency’ under 35 U.S.C. § 102, on
‘prima facie obviousness’ under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO's
inability to manufacture products or to obtain and compare prior art
products.” (footnote omitted)). No such proof has been provided by
Appellant. Further, Appellant has not provided evidence in support of the
argument that the TS and EL properties of Morita’s examples are not
representative of Morita’s composition Y, which has a Cr content within the
claimed range. Nor has Appellant directed us to any evidence of the
criticality of the claimed Cr range with respect to the claimed properties.
In sum, Appellant’s arguments are not persuasive of error in the
Examiner’s conclusion of obviousness. Accordingly, we affirm the
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Examiner’s rejection of claim 1 as well as the rejection of claims 6 and 10
under 35 U.S.C. § 103 over Morita.

Double Patent Rejections
The Examiner maintains the rejection of claims 5, 6, and 10 over
certain claims in U.S. Patents 10,077,485, 10,077,489, and 9,534,271 for the
reasons stated in the Non-Final Office Action. Non-Final Act. 6–9.
Appellant argues that each of the Examiner’s double patenting
rejections should be reversed for the same reasons discussed with respect to
obviousness over Morita. Appeal Br. 6–7.
The issue to consider when determining whether a nonstatutory basis
exists for a double patenting rejection is whether any claim in the application
defines an invention that is merely an obvious variation of an invention
claimed in another patent. The analysis employed in an obviousness-type
double patenting determination parallels the guidelines for an obviousness
determination under 35 U.S.C. § 103 only in so far as one applies an obvious
analysis to the differences between the two sets of claims. In re Braat, 937
F.2d 589, 593–94 (Fed. Cir. 1991); see also In re Longi, 759 F.2d 887, 892
n. 4 (Fed. Cir. 1985). Because Appellant’s arguments concerning the
obviousness of Morita relate to Morita’s process and disclosure, those same
arguments do not apply to the obviousness rejections over the claims in U.S.
Patents 10,077,485, 10,077,489, and 9,534,271. Thus Appellant has not
identified error in any of the Examiner’s double patenting rejections.
Accordingly, we sustain each of the Examiner’s double patenting rejections
of claims 5, 6, and 10.

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Application 14/781,440

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CONCLUSION
For these reasons and those provided in the Non-Final Office Action
and the Examiner’s Answer, we uphold the Examiner’s rejections of claims
5, 6, and 10.
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).
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
5 112(b) Indefinite 5
5, 6, 10 103 Morita 5, 6, 10
5, 6, 10 Double Patenting
US 10,077,485
5, 6, 10
5, 6, 10 Double Patenting
US 10,077,489
5, 6, 10
5, 6, 10 Double Patenting
US 9,534,271
5, 6, 10
Overall
Outcome
5, 6, 10

AFFIRMED