2019002097 (P.T.A.B. Nov. 23, 2020)

Kyung Shik Oh et al.

Patent Trials and Appeals BoardNov 23, 2020

2019002097 (P.T.A.B. Nov. 23, 2020)

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. 14/776,797 09/15/2015 Kyung Shik OH ERU0053US 9935 23413 7590 11/23/2020 CANTOR COLBURN LLP 20 Church Street 22nd Floor Hartford, CT 06103 EXAMINER YUEN, JACKY ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 11/23/2020 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KYUNG SHIK OH, JOO DONG LEE, JEONG YUN CHOI, and SUNG JOOL KIM ____________ Appeal 2019-002097 Application 14/776,797 Technology Center 1700 ____________ Before MICHELLE N. ANKENBRAND, MONTÉ T. SQUIRE, and DEBRA L. DENNETT, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision2 to reject claims 1–3 and 5–9. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Because our rationale for affirming claims 1–3 and 5–9 differs from that of the Examiner, we designate the affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as POSCO. Appeal Br. filed Aug. 3, 2018 (“Appeal Br.”), 3. 2 Non-Final Action, mailed Apr. 6, 2018 (“Non-Final Act.”). Appeal 2019-002097 Application 14/776,797 2 STATEMENT OF THE CASE Background The subject matter on appeal relates to casting equipment that produces slabs of an extremely thick steel material. Specification, filed Sept. 15, 2015 (“Spec.”) ¶ 1. The Specification discloses that extremely thick steel material is conventionally “produced through predetermined post-processes such as forging and rolling of an ingot,” or using a continuous casting process. Id. ¶ 3. Compared with the continuous casting process, the ingot process produces slabs with a high thickness reduction ratio and relatively fewer internal defects. However, the ingot process lacks the superior yield and lowered production costs of continuous casting. Id. ¶¶ 4–5. Thus, the subject matter on appeal seeks to provide a casting installation capable of producing an extremely thick steel slab with internal quality characteristics the same as or better than ingot cast slabs, while also enhancing the volume and cost efficiency of production compared to traditional ingot cast slabs. Id. ¶ 8. Independent claim 1 reproduced below, illustrates the claimed subject matter: 1. A casting installation comprising: a casting unit configured to cast a molten steel in a vertical direction into a vertical cast slab, wherein the casting unit comprises: a mold through which the molten steel passes; and a drawing machine downwardly drawing the vertical cast slab from the mold; and a solidification unit separated from the casting unit, disposed spaced apart from the casting unit, and configured to receive the vertical cast slab from the casting unit, wherein the solidification unit comprises: Appeal 2019-002097 Application 14/776,797 3 a support block configured to move toward the drawing machine and receive the vertical cast slab, and support a bottom surface of the received vertical cast slab and move away from the drawing machine; and a support frame configured to support an upper portion of the received vertical cast slab, which is supported by the support block moved away from the drawing machine, the support frame being vertically spaced apart from the support block in such a manner that the received vertical slab between the support frame and the support block is exposed to an atmosphere; and a stirrer disposed spaced apart from the received vertical cast slab and configured to descend and ascent in a vertical direction of the received vertical slab supported by the support frame and the support block, thereby stirring a molten steel inside the received vertical cast slab. Appeal Br. 17 (Claims App’x). The References Olsson US 3,620,285 Nov. 16, 1971 Kanokogi US 3,667,534 June 6, 1972 Beitelman US 2009/0242165 A1 Oct. 1, 2009 Oh KR 10-20100085748 A July 29, 2010 Oh ’370 KR 10-20120074370 A July 6, 2012 The Rejections The Examiner maintains the following rejections on appeal: 1. Claim 7 under 35 U.S.C. § 112, second paragraph, as indefinite; 2. Claims 1, 5, and 9 under 35 U.S.C. § 103(a) as unpatentable over Oh, Kanokogi, and Olsson; 3. Claims 2 and 3 under 35 U.S.C. § 103(a) as unpatentable over Oh, Kanokogi, Olsson, Beitelman, and Oh ’370; Appeal 2019-002097 Application 14/776,797 4 4. Claim 6 under 35 U.S.C. § 103(a) as unpatentable over Oh, Kanokogi, Olsson, and Oh ’370; 5. Claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable over Oh, Kanokogi, Olsson, Oh ’370, and Beitelman. Non-Final Act. 5–13; Examiner’s Answer, dated Nov. 29, 2018 (“Ans.”), 3. OPINION Indefiniteness Rejection The Examiner concludes that claim 7 is indefinite because it is not clear whether the limitation of “the at least one stirrer” refers to the stirrer as recited in claim 1 (stirring a molten steel inside the received vertical cast slab) or the stirrer as recited in claim 6 (stirring at least one of the molten steel inside the mold or unsolidified molten steel inside the vertical cast slab). Non-Final Act. 5. Appellant does not argue this rejection and, instead, notes the rejection “can be resolved after obtaining [a] Board Decision on the main claim.” Appellant’s Reply Brief, dated Jan. 15, 2019 (“Reply Br.”), 2; see also Appeal Br. 9 (excluding the indefiniteness rejection from the listing grounds of rejection subject to appeal). Accordingly, we summarily affirm the Examiner’s rejection of claim 7 under 35 U.S.C. § 112, second paragraph, as indefinite. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without consideration of the substantive merits is appropriate where an appellant fails to contest a ground of rejection). Rejection over Oh, Kanokogi, and Olsson The Examiner rejects claims 1, 5, and 9 under 35 U.S.C. § 103(a) as unpatentable over Oh, Kanokogi, and Olsson. Non-Final Act. 6. Appellant argues the claims as a group. Appeal Br. 10. We select independent claim 1 Appeal 2019-002097 Application 14/776,797 5 as representative of the group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Regarding claim 1, the Examiner finds that Oh discloses a casting installation with a casting unit and a stirrer, the casting unit further comprising a mold and a drawing machine. Non-Final Act. 6 (citing Oh Figs. 2 and 5). The Examiner finds that Oh does not provide “a solidification unit separated from the casting unit,” wherein the solidification unit comprises a support block, support frame, and stirrer. Id. at 6–7. However, the Examiner relies on Kanokogi and Olsson for disclosing the solidification unit as recited in claim 1. Id. at 7–8. The Examiner finds Kanokogi teaches a semi-continuous casting unit with a support block that is moved towards a drawing machine via a truck on rails, receives the cast slab from a casting unit, supports a bottom surface of the cast slab, and is transported away from the drawing machine via the truck. Id. at 7 (citing Kanokogi Abstract, 4:1–30, Fig. 1); see Ans. 5. The Examiner concludes that it would have been obvious to an ordinarily skilled artisan to have included Kanokogi’s truck and bottom plate in Oh’s casting installation “in order to support and carry a cast slab out from beneath the mold, for further processing, and so that another slab can be cast.” Id. As to the support frame limitation of claim 1, the Examiner finds, inter alia, that Olsson, which discloses an apparatus for casting metal slabs in succession, teaches a support unit that “can be moved away” from the mold after the slab is cast, such that the first cast slab continues to cool, while the next slab is cast. Non-Final Act. 7–8 (citing Olsson 1:65–2:3, 5:25–40). Olsson’s “support unit includes a support frame (frame 2) [supported on rails and] configured to support an upper portion of the Appeal 2019-002097 Application 14/776,797 6 received vertical cast slab.” Id. at 8 (citing Olsson Figs. 1–3, 7). The Examiner concludes that it would have been obvious to modify the Oh and Kanokogi combination with Olsson’s support frame “so as to provide a support frame configured to support an upper portion of the cast slab.” Id. at 8. Turning to the stirrer limitation, the Examiner concludes that it would have been obvious to include Oh’s stirrer within “the solidification unit moved away from the mold as discussed in Kanokagi [sic] . . . and Olsson,” to improve the quality of the cast slab while solidifying. Id. at 8. Appellant argues that the Examiner fails to establish a prima facie case of obviousness. Appeal Br. 10. We determine that the Examiner does not show sufficiently that claim 1 would have been obvious over Oh, Kanokogi, and Olsson, but not for the reasons Appellant argues. Rather, we find that the Examiner does not present the necessary reasoning with a rational underpinning the support the conclusion that one of ordinary skill in the art would have modified the Oh and Kanokogi combination with Olsson’s support frame to arrive at the claimed subject matter. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). However, we do not reverse the rejection of claim 1 as unpatentable over the combination of Oh, Kanokogi, and Olsson, because we find sufficient reason within the art to support a legal conclusion of obviousness. We explain our reasoning below, first addressing Appellant’s arguments on appeal as to Kanokogi, and then turning to Olsson. Appellant argues that Kanokogi does not disclose the claimed support block, emphasizing that the claimed support block “is configured to move toward the drawing machine [] and receive the vertical cast slab.” Appeal Appeal 2019-002097 Application 14/776,797 7 Br. 12. Appellant notes that the claimed support block is “further configured to support a bottom surface of the received vertical cast slab [] and move away from the drawing machine.” Id. Appellant further argues that Kanokogi’s bottom plate may teach the claimed drawing machine, but cannot teach the claimed support block, “which is configured to receive a vertical cast slab from the drawing machine.” Id. at 13. Appellant does not persuade us of reversible error in the Examiner’s rejection. Rather, we agree with the Examiner that Kanokogi discloses how the support block moves with respect to the drawing machine, the separate and distinct elements of the drawing machine, and how the support block receives the vertical cast slab. Ans. 5. The Examiner also correctly points out that claim 1 requires a support block of the solidification unit that is configured to receive the vertical cast slab from the casting unit, not from the drawing machine as Appellant argues. Id. at 5–6. Thus, Appellant’s arguments are not commensurate in scope with the claims. Appellant makes two additional arguments regarding the recited support block. Appellant argues that the support block is “further defined as ‘supporting the received vertical cast slab with the claimed support frame . . . to stir a molten steel inside the received vertical cast slab’” and that there is no teaching or reason in Kanokogi for stirring a sufficiently solidified and cooled ingot slab. Appeal Br. 13 (emphasis omitted). We do not find Appellant’s arguments persuasive because they attack Kanokogi individually instead of focusing on the combined teachings of the references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a Appeal 2019-002097 Application 14/776,797 8 combination of references.”). Further, Appellant’s arguments appear to rely on bodily incorporating Kanokogi’s entire process and support structure into Oh, which is not the proper basis for determining obviousness. In re Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for obviousness “is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”). Turning now to Olsson, Appellant argues that Olsson does not disclose the recited support frame. Appeal Br. 13. Specifically, Appellant describes Olsson as teaching that its mold moves away from the melt pouring structure, the molten metal inside the mold solidifies during the movement, and a new mold within another rectangular frame moves in under the melt pouring structure. Id. at 13–14. Appellant contends that modifying Olsson’s frame to be the recited support frame makes Olsson inoperable for its intended purposes. Id. at 14. Appellant also contends that because Kanokogi sufficiently solidifies and cools the ingot there would have been need to grip or support its upper portion and, therefore, no reason for one of ordinary skill in the art to have combined Olsson’s frame into Kanokogi’s bottom plate to arrive at the recited solidification unit. Id. We address these arguments below, as well as discussing the Examiner’s rationale for the combination. We agree with the Examiner that Olsson discloses the support frame that claim 1 recites. See Non-Final Act. 8; Ans. 6–7. Specifically, Olsson discloses a support frame that supports an upper portion of a received vertical cast slab. Olsson 2:47–56, 3:9–20, Fig. 1 (depicting support frame 2 Appeal 2019-002097 Application 14/776,797 9 supporting support unit A (10, 10’, 20, 20’) and cast slab S after slab has been received within the support frame from mold 64 of the casting unit). A support block moved away from the drawing machine supports the cast slab. See id. 3:21–30, 5:26–29, Fig. 1 (depicting support block 30 supporting a bottom surface of slab S once received into support unit A from mold 64 such that both the bottom surface and an upper portion of the slab are supported). Olsson’s support frame is vertically spaced from the support block such that the cast slab between the support frame and support block is exposed to an atmosphere. Non-Final Act. 8. As the Examiner finds, Olsson suggests moving the received vertical cast slab away from under the mold such that cooling of the vertical cast slab may continue while another support unit is positioned under the mold to receive a slab. Non-Final Act. 8 (citing Olsson 1:24–40); see Olsson 5:26–39 (describing Olsson’s casting process). Thus, Olsson teaches successive slabs are cast then moved for cooling. For this reason, Appellant’s arguments that Olsson does not disclose the recited support frame and that an ordinarily skilled artisan would have had to modify Olsson to arrive at the recite support frame, which would have made Olsson inoperable for its intended purpose, are unpersuasive. We also find equally unpersuasive Appellant’s argument that because Kanokogi sufficiently solidifies and cools the ingot there would have been need to grip or support its upper portion and, therefore, no reason for one of ordinary skill in the art to have combined Olsson’s frame into Kanokogi’s bottom plate to arrive at the recited solidification unit. As with Appellant’s other arguments regarding Kanokogi, this argument appears to rely on Appeal 2019-002097 Application 14/776,797 10 bodily incorporating Kanokogi’s process, which is not the proper basis for determining obviousness. Keller, 642 F.2d at 425. As we explain above, the Examiner concludes that it would have been obvious to modify the Oh and Kanokogi combination to include Olsson’s support frame “to provide a support frame configured to support an upper portion of the cast slab.” Non-Final Act 8. This rationale, however, does not present the necessary reasoning with a rational underpinning the support the conclusion of obviousness. Nevertheless, we do not reverse the rejection. Both Kanokogi and Olsson disclose slab support and transportation systems as part of the slab casting apparatus. Kanokogi discloses a semi-continuous casting apparatus, see Kanokogi Abstract, whereas Olsson discloses a continue casting apparatus with a transportation and support system that solidifies the cast slab away from the casting unit, Olsson 1:24–39. We conclude that one of ordinary skill in the art would have substituted one known slab support and transportation system in a casting apparatus (Olsson’s support unit and frame on rails) for another (the Oh and Kanokogi combination’s truck and rails), which would have provided the predictable results of supporting the cast slab both on the top and the bottom (Olsson’s frame supports the top and Kanokogi’s plate supports the bottom), moving the slab away from the casting unit promptly after casting, and solidifying the slab elsewhere. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). Appeal 2019-002097 Application 14/776,797 11 Finally, Appellant argues that the Examiner’s reliance on Oh’s stirrer to meet the stirrer limitation of claim 1 is erroneous because Oh’s stirrer “is provided in a casting unit, not in a solidification unit receiving a vertical cast slab from the casting unit.” Appeal Br. 15. We disagree. Because Olsson suggests solidifying the slab away from the mold, we agree with the Examiner that it would have been obvious for one of ordinary skill in the art to include a stirrer such as the one Oh describes in the separate solidification unit. Non-Final Act. 8; Ans. 7. As the Examiner explains, doing so would have provided the same benefits as Oh’s stirrer, i.e., improving the quality of the slab while solidifying and cooling. Ans. 7; see Oh (English language translation) mailed Dec. 9, 2016, 5–6. Thus, the Examiner provides a reason with rational underpinnings to support the conclusion that one of ordinary skill in the art would have included the stirrer in the portion of the apparatus where the cast slab solidifies. Therefore, we affirm the Examiner’s rejection of claims 1, 5, and 9 under 35 U.S.C. § 103(a) as unpatentable over the combination of Oh, Kanokogi, and Olsson. Because our rationale differs from that the Examiner provides, we designate our affirmance as a new ground of rejection under 37 C.F.R. § 41.50(b). Remaining Rejections The Examiner rejects claims 2, 3, and 6–8 under 35 U.S.C. § 103(a) as unpatentable over Oh, Kanokogi, Olsson, and additional references. Non-Final Act. 9–13. Appellant does not argue the rejections or the patentability of these claims separately. Thus, we affirm the Examiner’s Appeal 2019-002097 Application 14/776,797 12 rejections of claims 2, 3, and 6–8 for the same reasons as discussed above in addressing claim 1. CONCLUSION We affirm the Examiner’s rejection of claim 7 under 35 U.S.C. § 112 and we affirm the Examiner’s rejections of claims 1–3 and 5–9 under 35 U.S.C. § 103(a). We designate our affirmance of the Examiner’s § 103 rejections as a new ground of rejection. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7 112 Indefiniteness 7 1, 5, 9 103(a) Oh, Kanokogi, Olsson 1, 5, 9 2, 3 103(a) Oh, Kanokogi, Olsson, Beitelman, Oh ’370 2, 3 6 103(a) Oh, Kanokogi, Olsson, Oh ’370 6 7, 8 103(a) Oh, Kanokogi, Olsson, Oh ’370, Beitelman 7, 8 Overall Outcome 1–3, 5–9 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2019-002097 Application 14/776,797 13 This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that the appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . AFFIRMED; NEW GROUND OF REJECTION UNDER 37 C.F.R. § 41.50(b)