NAKANISHI, Tadashi et al.

Patent Trials and Appeals Board

Nov 7, 2019

14909978 - (D) (P.T.A.B. Nov. 7, 2019)

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.
14/909,978 02/03/2016 Tadashi NAKANISHI 168959 1280
25944 7590 11/07/2019
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
WALCK, BRIAN D
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
11/07/2019 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TADASHI NAKANISHI, SHINJI KOSEKI, YOSHIHIKO ODA,
and HIROAKI TODA
____________

Appeal 2019-001029
Application 14/909,978
Technology Center 1700
____________

Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–8.2 We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies JFE Steel Corporation as the real party in
interest. Appeal Brief filed March 23, 2018 (“Appeal Br.”) at 1.
2 Final Office Action entered October 27, 2017 (“Final Act.”) at 1.
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CLAIMED SUBJECT MATTER
Appellant claims a non-oriented electrical steel sheet. Claim 1, the
sole pending independent claim, illustrates the subject matter on appeal, and
is reproduced below with contested subject matter italicized:
1. A non-oriented electrical steel sheet having a chemical
composition comprising:
C: not more than 0.010 mass%,
Si: 1.0–7.0 mass%,
Mn: 0.001–3.0 mass%,
sol. Al: 0.0001–3.5 mass%,
P: 0.01–0.2 mass%,
S: not more than 0.010 mass%,
N: not more than 0.010 mass%, and
the remainder being Fe and inevitable impurities,
wherein:
a ratio (P120/Fe700) of a peak-peak height P120 of P near
to an electronic energy of 120 eV to a peak-peak height Fe700 of
Fe near to an electronic energy of 700 eV in an Auger
differential spectrum obtained by analyzing a broken surface of
a grain boundary through Auger electron spectroscopy is not
less than 0.1, and
a sheet thickness is 0.10–0.50 mm.

Appeal Br. A-1 (Claims Appendix) (emphasis added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered September 21, 2018 (“Ans.”):
I. Claims 1, 3, 5, and 7 under 35 U.S.C. § 102(a) as anticipated
by, or alternatively, under 35 U.S.C. § 103 as unpatentable over, Tanaka (US
2009/0202383, published August 13, 2009);
II. Claims 2, 4, 6, and 8 under 35 U.S.C. § 103 as unpatentable
over Tanaka;
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III. Claims 1–8 for nonstatutory, obviousness-type double patenting
over claim 1 of Oda (US 9,466,411 B2, issued October 11, 2016); and
IV. Claims 1–8 provisionally rejected under 35 U.S.C. § 101 for
claiming the same invention as that claimed in U.S. patent applications
14/413,658, 14/435,314, 14/759,891, 14/767,735, 14/774,258, 14/775,925,
14/909,940, 15/111,310, 15/500,435, and 15/503,508.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1, 3, 5, and 17 under 35 U.S.C. § 102(a) as anticipated by, or
alternatively, under 35 U.S.C. § 103 as unpatentable over, Tanaka; the
Examiner’s rejection of claims 2, 4, 6, and 8 under 35 U.S.C. § 103 as
unpatentable over Tanaka; and the Examiner’s rejection of claims 1–8 for
nonstatutory double patenting over claim 1 of Oda. We decline to reach the
Examiner’s provisional double patenting rejection of claims 1–8 under 35
U.S.C. § 101 for the reasons discussed below.
I and II. Rejection of claims 1, 3, 5, and 17 under 35 U.S.C. § 102(a) as
anticipated by, or under 35 U.S.C. § 103 as unpatentable over, Tanaka, and
rejection of claims 2, 4, 6, and 8 under 35 U.S.C. § 103 as unpatentable over
Tanaka
Claim 1 requires the recited non-oriented electrical steel sheet to have
a ratio (P120/Fe700) of a peak-peak height P120 of P near to an electronic
energy of 120 eV to a peak-peak height Fe700 of Fe near to an electronic
energy of 700 eV in an Auger differential spectrum obtained by analyzing a
broken surface of a grain boundary through Auger electron spectroscopy of
not less than 0.1. The Specification indicates that the recited P120/Fe700 ratio
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quantifies an amount of phosphorus (P) on the surface of the crystal grain
boundary of the non-oriented electrical steel sheet of Appellant’s invention,
and explains that if the ratio is not less than 0.1 as recited in claim 1, iron
loss at a high frequency region can be reduced without deteriorating
magnetic flux density. Spec. ¶¶ 10, 26, 43. The Specification further
explains that the recited P120/Fe700 ratio is achieved by producing the steel
sheet according to a method comprising a finishing annealing process that
includes an initial finishing annealing step conducted in either a continuous
annealing furnace or a box annealing furnace, followed by heat treatment at
700–800ºC for not less than 2 hours, preferably more than 5 hours, or heat
treatment at 700–800ºC for 1–10 hours, depending on whether the initial
finishing annealing step is conduced continuously, or in a box annealing
furnace. Spec. ¶¶ 44, 51–52.
The Examiner finds that Tanaka exemplifies a non-oriented steel sheet
having “the same composition” as the non-oriented steel sheet of claim 1.
Final Act. 4–5 (citing Tanaka Example U, Table 3, ¶ 149). The Examiner
finds that, consequently, Tanaka’s non-oriented steel sheet “would be
expected to have the same or similar properties as the instantly claimed
steel,” including the same P120/Fe700 ratio, because “when the structure
recited in the [prior art] reference is substantially identical to that of the
claims, claimed properties or functions are presumed to be inherent.” Final
Act. 4–5.
Appellant argues that data provided in Appellant’s Specification show
that the P120/Fe700 ratio recited in claim 1 is inherently dependent on not only
the composition of the claimed non-oriented steel sheet, but instead results
from inclusion of a heat treatment step during production of the non-oriented
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steel sheet following a finishing annealing step. Appeal Br. 5–6 (citing
Spec. ¶¶ 51, 52, 61, 62 (Table 2), 63 (Table 3), 64). Appellant argues that
because Tanaka discloses a different method for producing the non-oriented
steel sheet described in the reference, which does not include a heat
treatment step following a finishing annealing step, the Examiner does not
establish that Tanaka’s non-oriented steel sheet would have a P120/Fe700 ratio
as recited in claim 1. Appeal Br. 6–7; Reply Br. 3–4.
Appellant’s arguments are persuasive of reversible error in the
Examiner’s rejection of claim 1 under § 102(a), and alternative rejection of
claim 1 under § 103, for reasons that follow. Appellant’s Specification
describes preparing two groups of steel sheet samples in which
corresponding samples (a–r) in each group had the same composition, but
were prepared using different processes. Spec. ¶¶ 56, 58. Table 1 shows
that all of the samples (a–r) of both groups included components in amounts
encompassed within the corresponding ranges recited in claim 1, and thus all
of the samples were within the scope of claim 1. Spec. ¶ 57.
The processes used to prepare both groups of samples involved, in the
following order, hot rolling, hot band annealing at 1000ºC for 30 seconds,
cold rolling, and finishing annealing at 1100ºC for 10 seconds. Spec. ¶¶ 56,
58. The first group of samples (group A) was not further treated, while the
second group of samples (group A’) was subjected to heat treatment at
750ºC for 5 hours after the finishing annealing step. Spec. ¶ 58. Table 2
shows that the samples of group A, which were not subjected to heat
treatment following finishing annealing, had P120/Fe700 ratios of 0.02, 0.03,
or 0.04, which are outside the range recited in claim 1, and Table 3 shows
that the samples of group A’, which were subjected to heat treatment
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following finishing annealing, had P120/Fe700 ratios ranting from 0.10 to 0.48,
which are within the range recited in claim 1. Spec. ¶¶ 62, 63. As Appellant
argues, these results show that non-oriented steel sheets having a chemical
composition as recited in claim 1 may or may not have a P120/Fe700 ratio as
recited in the claim, depending on the process used to prepare the non-
oriented steel sheets. Appeal Br. 5–6. The Specification, therefore,
demonstrates that the P120/Fe700 ratio recited in claim 1 is not an intrinsic
characteristic of a non-oriented steel sheet having a composition as recited in
the claim, but, rather, is a further requirement imposed by claim 1 on the
claimed non-oriented electrical steel sheet.
Although the steel sheet of Tanaka’s Example U cited by the
Examiner has a composition encompassed by claim 1, Tanaka discloses
producing the steel sheet of Example U by a process differing from the
process described in Appellant’s Specification that results in a P120/Fe700
ratio as recited in claim 1. Tanaka ¶ 149. Tanaka also discloses a more
general process for producing the steel sheet of Tanaka’s invention that also
differs from the process described in Appellant’s Specification. Tanaka
¶¶ 99–138. More specifically, Tanaka provides a general description of
producing the non-oriented electrical steel sheet of Tanaka’s invention using
a process that involves, in the following order, hot rolling, optional hot-
rolled band annealing, cold rolling a single time or cold rolling at least two
times with intermediate annealing between each cold rolling step, and
soaking at 820ºC or less by box annealing or continuous annealing. Tanaka
¶¶ 99–138. Tanaka exemplifies producing numerous steel sheets by several
processes that differed according to whether the processes included a hot-
rolled band annealing step, and whether they involved cold rolling once, or
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cold rolling twice with intermediate annealing. Tanaka ¶ 149. All of the
exemplary processes described in Tanaka, however, including the process
used to produce the steel sheet of Example U, involved, in the following
order, hot rolling, cold rolling (once or twice with intermediate annealing),
and a soaking treatment conducted by continuous annealing for 30 seconds
at a temperature of from 650ºC to 800ºC, with the exception of Example 1-
10, in which the soaking treatment was conducted at 500ºC for 10 hours.
Tanaka ¶ 149, Table 3.
The process generally described in Tanaka for producing the non-
oriented electrical steel sheet of Tanaka’s invention, and the exemplary
processes described in the reference, therefore, each involve a soaking
treatment involving box annealing or continuous annealing at 820ºC or less
immediately following cold rolling. In contrast, as discussed above,
Appellant’s Specification shows that cold rolling, followed by finishing
annealing, and then heat treating at 750ºC for 5 hours, yields a non-oriented
steel sheet having a P120/Fe700 ratio as recited in claim 1.
Although the Examiner asserts that “Tanaka does teach a heat
treatment step after finish annealing at 750°C, which is the same temperature
as that of the instant specification (700–800 °C),” Tanaka discloses
conducting the heat treatment step following either a single cold rolling step,
or following the final cold rolling step if cold rolling is performed more than
once, rather than performing a heat treatment step following finishing
annealing, as described in Appellant’s Specification. Ans. 7 (citing Tanaka
¶¶ 131–135, 149).
Accordingly, because Tanaka’s process does not include a heat
treatment step following a finishing annealing step, which Appellant’s
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Specification demonstrates results in a P120/Fe700 ratio as recited in claim 1,
the Examiner does not provide a sufficient factual basis to establish that the
relied-upon non-oriented electrical steel sheet disclosed in Tanaka would
necessarily or inherently have a P120/Fe700 ratio as recited in claim 1. In re
Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency, however, may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not
sufficient.”).
The Examiner also does not identify any disclosure in Tanaka that
would have suggested modifying Tanaka’s non-oriented electrical steel sheet
to have a P120/Fe700 ratio as recited in claim 1.
Consequently, because claims 3, 5, and 7 each depend from claim 1,
we do not sustain the Examiner’s rejection of claims 1, 3, 5, and 7 under 35
U.S.C. § 102(a) as anticipated by, or alternatively, under 35 U.S.C. § 103 as
unpatentable over, Tanaka. We also do not sustain the Examiner’s rejection
of claims 2, 4, 6, and 8 under 35 U.S.C. § 103 as unpatentable over Tanaka
because this rejection suffers from the same deficiencies as the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103.
III. Rejection of claims 1–8 for nonstatutory, obviousness-type double
patenting over claim 1 of Oda
The Examiner finds that “[a]lthough the claims at issue are not
identical, they are not patentably distinct from each other because [claim 1
of] the above cited patent [Oda] recites a non-oriented electrical steel with a
composition overlapping that of the instant claims.” Final Act. 7.
As discussed above, however, Appellant’s Specification includes
experimental data demonstrating that non-oriented steel sheets having a
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chemical composition as recited in claim 1 may or may not have a P120/Fe700
ratio as recited in the claim, depending on the process used to prepare the
non-oriented steel sheets. The Specification thus shows that the P120/Fe700
ratio recited in claim 1 is not an intrinsic characteristic of a non-oriented
steel sheet having a composition as recited in the claim, but, rather, is a
further requirement imposed by claim 1 on the claimed non-oriented
electrical steel sheet. As Appellant argues (Reply Br. 7–8), in view of this
showing in Appellant’s Specification, although the non-oriented electrical
steel of Oda’s claim 1 may have a composition “overlapping that of the
instant claims,” the Examiner does not identify any feature in claim 1 of Oda
that would have indicated or suggested that a P120/Fe700 ratio as recited in
Appellant’s claim 1 would be inherent in the non-oriented electrical steel
sheet of Oda’s claim 1.
We, accordingly, do not sustain the Examiner’s rejection of claims 1–
8 for nonstatutory, obviousness-type double patenting over claim 1 of Oda.
IV. Provisional double patenting rejections of claims 1–8 under 35 U.S.C.
§ 101
We decline to reach these rejections because at least some of the
claims relied upon in the provisional double patenting rejections on appeal
either clearly are, or may be, different in language or status from the claims
originally relied upon when these rejections were initially made by the
Examiner. See Ex parte Jerg, Appeal No. 2011-000044, (BPAI April 13,
2012) (informative) (“Panels have the flexibility to reach or not reach
provisional obviousness-type double-patenting rejections.”) (citing Ex parte
Moncla, Appeal No. 2009-006448 (BPAI June 22, 2010) (precedential)).

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CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 5, 7 102(a) Tanaka 1, 3, 5, 7
1, 3, 5, 7 103 Tanaka 1, 3, 5, 7
2, 4, 6, 8 103 Tanaka 2, 4, 6, 8
1–8 Obviousness-
type Double
Patenting
1–8
1–8 101 Provisional
Double
Patenting3

Overall
Outcome
1–8

REVERSED

3 As discussed above, we do not reach this provisional rejection.