95001626 (P.T.A.B. Apr. 29, 2013)

Ex Parte 7560628 et al

Patent Trial and Appeal BoardApr 29, 2013

95001626 (P.T.A.B. Apr. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,626 07/01/2011 7560628 Y1586.0024 6667 32172 7590 04/29/2013 DICKSTEIN SHAPIRO LLP 1633 Broadway NEW YORK, NY 10019 EXAMINER RUBIN, MARGARET R ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 04/29/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ MAPES PIANO STRING COMPANY Third Party Requester and Appellant v. YAMAHA CORPORATION Patent Owner and Respondent ____________ Appeal 2013-005391 Inter partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 Technology Center 3900 ____________ Before ROBERT E. NAPPI, KEVIN F. TURNER, and DAVID C. McKONE, Administrative Patent Judges. McKONE, Administrative Patent Judge. Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 2 DECISION ON APPEAL Third Party Requester Mapes Piano String Company (hereinafter “Appellant”) appeals under 35 U.S.C. §§ 134(c) and 315(b)(1) the Examiner’s decision to not adopt Appellant’s proposed rejections of claims 1-3. See App. Br. 2-3.1 Patent Owner Yamaha Corporation (hereinafter “Respondent”) is a party to the appeal under 35 U.S.C. § 315(a)(2) and disputes Appellant’s contentions. We have jurisdiction under 35 U.S.C. §§ 6, 134 and 315. We REVERSE. STATEMENT OF THE CASE This proceeding arose from a request for inter partes reexamination filed on behalf of Appellant, on May 20, 2011, of United States Patent 7,560,628 B2 (“the ’628 patent”), issued to Norihito Yamao et al. on July 14, 2009, based on United States Application 10/995,345, filed November 24, 2004. Claims 1-3 of the ’628 patent are subject to reexamination, all of which were issued with the ’628 patent. The Examiner chose to not adopt any of the rejections proffered by Appellant, thus confirming claims 1-3. See RAN 1-2. The ’628 patent is not the subject of litigation. See App. Br. 25; Resp. Br. 2. 1 Throughout this opinion, we refer to the Right of Appeal Notice mailed December 3, 2011 (“RAN”), Appellant’s Appeal Brief filed March 28, 2012 (“App. Br.”), and Respondent’s Brief filed April 30, 2012 (“Resp. Br.”). Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 3 THE INVENTION The invention of the ’628 patent relates to manufacturing steel wire for use in a stringed musical instrument. See ’628 patent, Abstract. Claim 1, which is illustrative of the invention, reads as follows: 1. A manufacturing method for a steel wire for use in a stringed musical instrument, comprising the steps of: subjecting a rolled wire material to wire drawing and patenting; removing decarburized layers existing on a surface of the rolled wire material affects damping characteristics of the sound waves propagating through the steel wire until a depth of the decarburized layers is 2 µm or less; and thereafter processing the steel wire further to produce musical instrument strings. THE PROPOSED REJECTIONS Appellant proposes 200 separate rejections of claims 1-3, based on various combinations of 22 prior art references. The Examiner did not adopt any of the proposed rejections. The prior art references relied upon by Appellant and discussed in this opinion include: Johnson US 2,746,335 May 22, 1956 Tsukamoto US 4,525,598 June 25, 1985 Tokimine JP H5-23965 A Feb. 2, 1993 Kuroda US 6,372,056 B1 Apr. 16, 2002 Watertown Arsenal WAR DEPT., REPORT OF THE TESTS OF METALS AND OTHER MATERIALS FOR INDUSTRIAL PURPOSES MADE WITH THE Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 4 UNITED STATES TESTING MACHINE AT WATERTOWN ARSENAL, MASS., DURING THE FISCAL YEAR ENDED JUNE 30, 1894, 317-22 (1894) Baraz V.R. Baraz et al., Piano Wire and Strings With High Acoustic Properties, METALLOVEDENIE I TERMICHESKAYA OBRABOTKA METALLOV (1992) Hopkin BART HOPKIN, MUSICAL INSTRUMENT DESIGN, PRACTICAL INFORMATION FOR INSTRUMENT MAKING 117-23, 151-52 (1996) Birkett Stephen Birkett et al., Reproduction of Authentic Historical Soft Iron Wire for Musical Instruments, PROC. OF THE HARMONIQUES INT’L CONGRESS (2002) The proposed rejections discussed in this opinion include: A.25. Proposed rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over Tsukamoto, Birkett, Hopkin, Baraz, Tokimine, and Johnson. See Appx. of Proposed Rejections, p. 3. A.89. Proposed rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over Kuroda, Birkett, Hopkin, Baraz, Tokimine, and Johnson. See Appx. of Proposed Rejections, p. 8. B.35. Proposed rejection of claim 2 under 35 U.S.C. § 103(a) as obvious over Tsukamoto, Birkett, Hopkin, Baraz, Tokimine, Johnson, and Watertown Arsenal. See Appx. of Proposed Rejections, p. 12. C.47. Proposed rejection of claim 3 under 35 U.S.C. § 103(a) as obvious over Kuroda, Birkett, Hopkin, Baraz, Tokimine and Johnson. See Appx. of Proposed Rejections, p. 18. Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 5 In reversing the Examiner’s refusal to adopt these rejections, we express no opinion on the propriety of the remaining proposed rejections. ISSUES The issues arising from the respective positions of Appellant, Respondent, and the Examiner, which we consider herein, are: Whether the Examiner erred in not adopting the rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over Tsukamoto, Birkett, Hopkin, Baraz, Tokimine, and Johnson. Whether the Examiner erred in not adopting the rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over Kuroda, Birkett, Hopkin, Baraz, Tokimine, and Johnson. Whether the Examiner erred in not adopting the rejection of claim 2 under 35 U.S.C. § 103(a) as being obvious over Tsukamoto, Birkett, Hopkin, Baraz, Tokimine, Johnson, and Watertown Arsenal. Whether the Examiner erred in not adopting the rejection of claim 3 under 35 U.S.C. § 103(a) as being obvious over Kuroda, Birkett, Hopkin, Baraz, Tokimine, and Johnson. FINDINGS OF FACT The record supports the following findings of fact by a preponderance of the evidence. Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 6 Kuroda FF1. Kuroda teaches manufacturing a steel wire for automotive springs by subjecting a rolled wire material to drawing and patenting. See Kuroda, col. 1, ll. 17-21(drawing); col. 1, l. 16 (patenting). FF2. Kuroda teaches removal of surface defects, such as decarburized layers2, from the surface of steel wires by shaving. See Kuroda, col. 1, ll. 13-16. According to Kuroda, shaving is carried out using a die and a chipper. See Kuroda, col. 6, ll. 19-20. Respondent does not dispute that shaving using a die and a chipper is synonymous with peeling using a peeling die. See Resp. Br. 7-8; 11-12. Accordingly, Kuroda teaches removing decarburized layers by peeling using a peeling die. Tsukamoto FF3. Tsukamoto teaches manufacturing steel wire for use in overhead transmission lines. See Tsukamoto, col. 1, ll. 8-12. FF4. Tsukamoto teaches subjecting a rolled wire material to drawing and patenting. See Tsukamoto, col. 3, ll. 38-45 (“In general, the production lines of the galvanized steel wire for use in the ACSR comprises the steps of: applying a patenting treatment to a hot rolled steel wire . . .; drawing the lubricated wire to provide a steel wire having a predetermined diameter and mechanical properties . . . .”). 2 As used in the ’628 patent, “the term ‘decarburized layer’ is defined as the prescribed portion of a steel whose surface is reduced in carbon concentration due to hot working or heat treatment applied thereto . . . .” Col. 4, ll. 54-57 (citing to the Japanese standard JIS G 0558). Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 7 FF5. Tsukamoto teaches that the patenting treatment results in decarburizing the steel wire such that the total decarburized depth is not less than 150µm. See Tsukamoto, col. 5, ll. 6-11. Tsukamoto further teaches “pickling” after the patent treatment and before drawing. Tsukamoto, col. 3, ll. 44. Appellant argues that pickling is the chemical removal of a decarburized layer, see App. Br. 9, a contention Respondent does not dispute, see Resp. Br. 7-8. Accordingly, Tsukamoto teaches removing decarburized layers existing on a surface of rolled wire material. Hopkin FF6. Hopkin teaches that for many musical applications, high-carbon steel is often preferred, as it is the strongest, with the least internal damping, and thus produces a bright tone. See Hopkin, p. 152. For a rounder tone with less sustain, softer steel can be used. See id. Thus, Hopkin teaches that the amount of carbon in steel wire affects damping characteristics of the sound waves propagating through the steel wire. FF7. Hopkin also teaches standard sizes and diameters of high- carbon spring-tempered steel piano wire. See Hopkin, pp. 121-22, Sidebar 9-2. Baraz FF8. Baraz teaches patenting carbon steel wire rods under different temperature conditions and drawing those rods to produce wires with different carbon contents. See Baraz, p. 283. Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 8 FF9. Baraz describes measuring various sound wave characteristics, including length of sounding, amount of nonharmonicity of the overtones, and irregularity of nonharmonicity of the damping vibrations for different carbon contents. See Baraz, pp. 283-85 (including Fig. 1, graphing acoustic properties to carbon content). Thus, Baraz teaches that the amount of carbon in steel wire affects damping characteristics of the sound waves propagating through the steel wire. Tokimine FF10. Tokimine teaches manufacturing of a wire for a wire saw. See Tokimine, ¶ 0001. The wire is run over a material together with abrasive grains (e.g., diamond powder) to cut the material. See Tokimine, ¶ 0002. The wire is manufactured from a hard steel wire material, such as piano wire material. See Tokimine, ¶ 0003. FF11. Tokimine teaches drawing the wire until a ferrite decarbonizing layer on the surface has a depth of 0.5 to 2µm. See Tokimine, ¶¶ 0010-12, 0021, claim 1. Tokimine teaches that the strength of the wire declines if the decarburized layer is thicker than 2µm. See Tokimine, ¶ 0013. Thus, Tokimine teaches a steel wire in which a depth of the decarburized layers is 2 µm or less. Johnson FF12. Johnson teaches constructing a piano wire by winding an undercovering wire around a core wire, further winding a covering wire on top of the undercovering wire, extending the covering wire slightly beyond Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 9 the undercovering wire along the core wire at each end, and forming a loop, or “hitch-pin,” in the core wire at one end. Johnson, col. 2, ll. 28-39. Thus, Johnson teaches processing steel wire to produce musical instrument strings. Watertown Arsenal FF13. Watertown Arsenal teaches various examples of steel music wire with phosphorus contents ranging from 0.015 weight percent to 0.033 weight percent. See Watertown Arsenal, p. 322. PRINCIPLES OF LAW Section 103 forbids issuance of a patent when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). A reference qualifies as prior art under § 103 when it is “analogous” to the claimed invention. Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). A reference is analogous if (1) it “is from the same field of endeavor, regardless of the problem addressed”; or (2) if the reference is not in the same field as the invention, it “is reasonably pertinent to the particular problem with which the inventor is involved.” Id. (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). See also KSR, 550 U.S. at 417: When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 10 either in the same field or a different one. . . . [I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill. Whether a reference is analogous is a question of fact. See Innovention Toys, 637 F.3d at 1321. ANALYSIS Claim 1 Appellant contends that both Kuroda and Tsukamoto teach subjecting a rolled wire material to wire drawing and patenting, and that both teach removing decarburized layers, Kuroda by peeling and Tsukamoto by pickling. See App. Br. 7-9. We agree. See FF1, FF2, FF4, FF5. Likewise, Appellant contends that Hopkin and Baraz show that increasing carbon in steel affects damping and results in better sounding musical instrument strings, and thus show that a decarburized layer affects damping characteristics of the sound waves propagating though a string. See App. Br. 10-13. We agree with that as well. See FF6, FF9. Appellant further contends that Tokimine describes a steel wire with a decarburized layer depth of 2µm or less, see App. Br. 14, which we agree with, see FF11. Finally, Appellant argues that Johnson discloses known techniques for processing wires into musical instrument (piano) strings. See App. Br. 16. We agree. See FF12. Thus, the prior art discloses each limitation of claim 1 individually. According to Appellant, a skilled artisan seeking to manufacture better sounding musical instrument strings would have combined the Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 11 references by starting with rolled steel wire material; applying well-known drawing and patenting techniques to such material (e.g., per Kuroda or Tsukamoto), resulting in wire with a decarburized layer; recognizing that removing the decarburized layer would increase the relative amount of carbon in the wire, thus reducing damping (e.g., per Hopkin or Baraz); removing the decarburized layer (e.g., per Kuroda or Tsukamoto) to the desired depth (e.g., per Tokimine); and processing the resulting wire into musical instrument strings using well-known techniques (e.g., per Johnson). See App. Br. 17-18. Respondent argues that Appellant has provided only conclusory statements and has not articulated reasons, with rational underpinning, for the proposed combinations. See Resp. Br. 7. The Examiner declines to adopt Appellant’s proposed rejections, finding that none of the combinations of prior art references proposed by Appellant teaches “removing decarburized layers existing on a surface of the rolled wire material affects damping characteristics of the sound waves,” as recited in claim 1. See RAN 3. The Examiner finds that the references that teach the impact of carbon on damping characteristics of steel musical instrument wires do not teach removing decarburized layers. See id. Likewise, the Examiner finds that the references that do teach removing decarburized layers do not address musical instrument wires and do not teach the effects of decarburized layers on sound wave damping. See RAN 4. Appellant argues that the Examiner erroneously finds to be non- analogous art those references that do not address musical instrument wires. See App. Br. 4-5. Respondent responds that the Examiner never found any Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 12 prior art to be non-analogous and instead the Examiner correctly determined that there was no legitimate reason to combine the references to meet the limitations of claim 1. See Resp. Br. 3-4. We disagree with Respondent. While not explicit, the Examiner’s apparent disqualification of references not related to musical instrument strings or sound wave damping properties, see RAN 4, fairly can be characterized as a finding that references lacking a teaching of the relationship between decarburized layer thickness and sound damping are not reasonably pertinent to the problem addressed by the invention of claim 1 – hence not analogous. See Innovention Toys, 637 F.3d at 1321. Regarding the non-musical-instrument-wire references, Respondent distinguishes Kuroda as teaching a process of making steel wire rods for automotive springs and Tsukamoto as directed to overhead transmission lines. See Resp. Br. 8. Similarly, Respondent contends that Tokimine refers to a wire saw rather than musical instrument strings, and thus “is a very different product and requires different properties.” Resp. Br. 9. These arguments track the Examiner’s finding (RAN 4) that such references are not reasonably pertinent because they do not recognize the relationship between decarburized layers and sound damping. However, other than to note the differences in fields of endeavor, neither Respondent nor the Examiner persuasively explains why these references should be disqualified as prior art. We find these references to be reasonably pertinent to the problem with which claim 1 is involved. While neither Kuroda nor Tsukamoto state that removing the decarburized layer results in reduced sound damping, a Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 13 person of ordinary skill in the art would have ascertained that from Hopkin and Baraz. Thus, Hopkin and Baraz provide the link between art that teaches wire manufacturing in general (e.g., Kuroda, Tsukamoto, and Tokimine) and art that teaches processing wire into musical instrument strings (e.g., Johnson). See KSR, 550 U.S. at 418 (recognizing that it is often “necessary for a court to look to interrelated teachings of multiple patents” to determine whether there were reasons to combine references). Respondent argues that neither Hopkin nor Baraz refers to a decarburized layer on the surface of a wire, the influence of a decarburized layer on sound damping, or removal of a decarburized layer. See Resp. Br. 9. As to removal of a decarburized layer, that is taught in Kuroda and Tsukamoto. See FF2, FF5. Regarding the influence of a decarburized layer on sound damping, Hopkin explains that high-carbon steel is often the hardest and strongest steel with the least internal damping, and that such steel is often preferred for musical applications. See Hopkin, p. 152. Baraz quantifies these relationships. See FF 9. Because a decarburized layer is reduced in carbon (see ’628 patent, col. 4, ll. 54-57), the teachings of Hopkin and Baraz suggest that such a layer reduces hardness and strength and increases damping. This is further supported by Tokimine, which notes that a decarbonized layer thicker than 2µm reduces the strength of the wire. See Tokimine, ¶ 0013. Moreover, the effect of reducing a decarburized layer on a steel wire to less than 2 µm on “damping characteristics of the sound waves propagating through the steel wire” is merely a statement of an inherent result of reducing the decarburized layer to that depth. Thus, the sound Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 14 wave damping characteristics of a steel wire constructed of piano wire material (per Tokimine, see FF10) through drawing and patenting, necessarily would be affected by removal of decarburized layers (per Kuroda or Tsukamoto, see FF1-FF5) to a depth of less than 2µm (per Tokimine, see FF11). See In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977) (“Where . . . the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). As Hopkin teaches, a person of ordinary skill in the art would have recognized that a high-carbon steel wire with low sound damping characteristics would be desirable for musical applications. See FF6. The Examiner finds that “[l]eveling the decarburization layer through a drawing process . . . [is] related but ultimately distinct from what claim 1 requires.” RAN 3-4. We presume that this refers to Tokimine, which teaches drawing a wire until a decarbonizing layer on the surface has a depth of 0.5 to 2µm, see FF11. Appellant cites Kuroda and Tsukamoto, rather than Tokimine, as showing removal of a decarburized layer. Moreover, although Tokimine does not teach removing a decarburized layer, in light of the teachings of Kuroda and Tsukamoto, a person of ordinary skill in the art would have recognized removal of decarburized layers as a well-known alternative and predictable way of arriving at a desired decarburized layer depth. See KSR, 550 U.S. at 416. In any case, we find that Tokimine is reasonably pertinent for showing a decarburized layer depth in the range recited in claim 1. Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 15 Regarding processing steel wire to produce musical instrument strings, Hopkin teaches standard sizes for music wire, see FF7, and Johnson teaches well-known steps for processing wire into piano strings, see FF12. Thus, manufacturing a wire according to the teachings of Kuroda or Tsukamoto and Tokimine to a size taught by Hopkin and further processed into a piano string as taught by Johnson merely predictably uses prior art elements according to their established functions--an obvious improvement. See KSR, 550 U.S. at 417. Having reviewed the rejections proposed by the Appellant, we are persuaded that the Examiner erred in the nonadoption of proposed rejections A.25 and A.89 and as such, we cannot sustain the Examiner’s decision to not adopt the proposed rejections of claim 1 under 35 U.S.C. § 103(a) as unpatentable over 1) Kuroda, Hopkin, Baraz, Tokimine, and Johnson; and 2) Tsukamoto, Hopkin, Baraz, Tokimine, and Johnson. 3 Our decision in that regard, and our entry of the rejection herein as proposed by Appellant, constitutes a new ground of rejection pursuant to 37 C.F.R. § 41.77 (a) and (b). Claim 2 Claim 2 depends on claim 1 and further recites that “the phosphorus content of the rolled wire material ranges from 0.015 weight percent to 0.050 weight percent.” Appellant proposes rejecting claim 2 as obvious over Tsukamoto, Birkett, Hopkin, Baraz, Tokimine, and Johnson, as proposed for 3 We conclude that Appellant’s proposed addition of Birkett to the combinations is cumulative of the teachings of Hopkin and Baraz. Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 16 claim 1, and in further view of Watertown Arsenal. See App. Br. 19. The Examiner confirmed claim 2 for the same reasons as claim 1. See RAN 4. Watertown Arsenal lists the results of tests of steel music wire from several manufacturers to determine the content of various elements, including phosphorous. See Watertown Arsenal, p. 322; FF13. The test results ranged from .017 to .033 weight percent phosphorus. See id. This is within the range (.015%-.050%) recited in claim 2. Appellant argues that a prima facie case of obviousness exists with such a recitation of a range that overlaps with the claimed range, and that it would have been obvious to produce an improved music wire using steel with a phosphorous content typically found in music wire. See App. Br. 19-20. Respondent does not dispute these arguments, and instead argues that Appellant attempts to reconstruct the invention of claim 2 in a piecemeal fashion without considering the claim as a whole. See Resp. Br. 11. “[A] prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art.” In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). As explained above, claim 1 is obvious over Tsukamoto, Hopkin, Baraz, Tokimine, and Johnson, and Birkett is cumulative to Hopkin and Baraz. By demonstrating that music wire is known to include phosphorous contents within the range recited in claim 2, Appellant has demonstrated a prima facie case that claim 2 is also obvious. We are not persuaded by Respondent’s argument that this proposed rejection fails to take into account claim 2 as a whole. Instead, we conclude that choosing a steel material with a phosphorous content known to Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 17 be appropriate for musical instrument strings is the predictable use of a prior art element for its established function. See KSR, 550 U.S. at 417. Having reviewed the rejections proposed by the Appellant, we are persuaded that the Examiner erred in the nonadoption of proposed rejection B.35 and as such, we cannot sustain the Examiner’s decision to not adopt the proposed rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Tsukamoto, Hopkin, Baraz, Tokimine, Johnson, and Watertown Arsenal. Our decision in that regard, and our entry of the rejection herein as proposed by Appellant, constitutes a new ground of rejection pursuant to 37 C.F.R. § 41.77 (a) and (b). Claim 3 Claim 3 depends on claim 1 and further recites that “the step of removing decarburized layers comprises the step of peeling using peeling dies.” Appellant proposes rejecting claim 2 as obvious over Kuroda, Birkett, Hopkin, Baraz, Tokimine and Johnson, as proposed for claim 1, and in further view of additional teachings in Kuroda. See App. Br. 21. The Examiner confirmed claim 3 for the same reasons as claim 1. See RAN 4. Kuroda teaches removing decarburized layers by peeling using peeling dies. See FF2. Respondent again argues that Kuroda’s teachings are limited to automotive applications and that Appellant has not articulated adequate reasons to combine Kuroda with the other prior art references. See Resp. Br. 11. As explained above for claim 1, a person of ordinary skill in the art would have had sufficient reason to combine Kuroda’s teachings with Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 18 those of Hopkin, Baraz, Tokimine, and Johnson, and Birkett is cumulative to Hopkin and Baraz. Having reviewed the rejections proposed by the Appellant, we are persuaded that the Examiner erred in the nonadoption of proposed rejection C.47 and as such, we cannot sustain the Examiner’s decision to not adopt the proposed rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Kuroda, Birkett, Hopkin, Baraz, Tokimine and Johnson. Our decision in that regard, and our entry of the rejection herein as proposed by Appellant, constitutes a new ground of rejection pursuant to 37 C.F.R. § 41.77 (a) and (b). DECISION The Examiner’s refusal to adopt the rejections of claims 1-3 is reversed. This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.77(b) which provides that “[a]ny decision which includes a new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Correspondingly, no portion of the decision is final for purposes of judicial review. For further guidance on new grounds of rejection, see 37 C.F.R. § 41.77(b)-(g). The decision may become final after it has returned to the Board. 37 C.F.R. § 41.77(f). 37 C.F.R. § 41.77(b) also provides that the Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must exercise one Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 19 of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both. (2) Request rehearing. The owner may request that the proceeding be reheard under § 41.79 by the Board upon the same record. Any request to reopen prosecution before the examiner under 37 C.F.R. § 41.77(b)(1) shall be limited in scope to the “claims so rejected.” Accordingly, a request to reopen prosecution is limited to issues raised by the new ground(s) of rejection entered by the Board. A request to reopen prosecution that includes issues other than those raised by the new ground(s) is unlikely to be granted. Furthermore, should the patent owner seek to substitute claims, there is a presumption that only one substitute claim would be needed to replace a cancelled claim. A requester may file comments in reply to a patent owner response. 37 C.F.R. § 41.77(c). Requester comments under 37 C.F.R. § 41.77(c) shall be limited in scope to the issues raised by the Board’s opinion reflecting its decision to reject the claims and the patent owner’s response under paragraph 37 C.F.R. § 41.77(b)(1). A newly proposed rejection is not permitted as a matter of right. A newly proposed rejection may be appropriate if it is presented to address an amendment and/or new evidence properly submitted by the patent owner, and is presented with a brief Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 20 explanation as to why the newly proposed rejection is now necessary and why it could not have been presented earlier. Compliance with the page limits pursuant to 37 C.F.R. § 1.943(b), for all patent owner responses and requester comments, is required. The Examiner, after the Board’s entry of a patent owner response and requester comments, will issue a determination under 37 C.F.R. § 41.77(d) as to whether the Board’s rejection is maintained or has been overcome. The proceeding will then be returned to the Board together with any comments and reply submitted by the owner and/or requester under 37 C.F.R. § 41.77(e) for reconsideration and issuance of a new decision by the Board as provided by 37 C.F.R. § 41.77(f). REVERSED Appeal 2013-005391 Inter Partes Reexamination Control 95/001,626 United States Patent 7,560,628 B2 21 cc: PATENT OWNER: Dickstein Shapiro LLP 1633 Broadway New York, NY 10019 THIRD PARTY REQUESTER: W. Edward Ramage Baker Donelson Beraman et al. 211 Commerce Street, Suite 800 Nashville, TN 37201 cu