Ex Parte Asai

Patent Trial and Appeal Board

Nov 3, 2017

11908412 (P.T.A.B. Nov. 3, 2017)

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.
11/908,412 09/12/2007 Tatsuya Asai 312536US3PCT 3825
22850 7590 11/07/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
LUK, VANESSA TIB AY
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
11/07/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TATSUYA ASAI
Appeal 2016-004762
Application 11/908,412
Technology Center 1700
Heard: October 18, 20171
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL2
Pursuant to 35 U.S.C. § 134(a), Appellant3 appeals from the
Examiner’s decision rejecting claims 1, 3, and 5 under 35 U.S.C. § 103(a) as
1 Appellant’s counsel presented oral argument in a hearing held on October
18, 2017. A transcript of the hearing will be included in the record upon its
availability.
2 Our Decision refers to the Specification (Spec.) filed September 12, 2007,
Appellant’s Appeal Brief (Appeal Br.) filed November 4, 2015, the
Examiner’s Answer (Ans.) dated March 25, 2016, and Appellant’s Reply
Brief (Reply Br.) filed April 7, 2016.
3 According to Appellant, the real party in interest is KABUSHIKI KAISHA
KOBE SEIKO SHO. Appeal Br. 1.
Appeal 2016-004762
Application 11/908,412
unpatentable over Ikeda4 in view of Schey5 and the Glossary,6 and
alternatively over Ikeda in view of Asai.7 We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The invention is directed to a method of manufacturing a sheet steel
formed product comprising heating a steel sheet blank to austenite+ferrite
temperature (Aci transformation temperature) or higher, then hot-press
forming the sheet to form a product without causing breaks or cracks. Spec.
11. However, Appellant discloses that when a steel sheet blank heated to
the austenite temperature is then hot-pressed, unevenness in material
strength and breaks or cracks tend to occur in the sheet during forming. Id. |
6. Appellant discloses, as depicted in Figure 1 (reproduced below), a hot-
press or hot stamping apparatus.
4 Ikeda et al., US 2003/0084966 Al, published May 8, 2003 (“Ikeda”).
5 Schey, John A., “Deformation Processes”, Manufacturing Processes and
Their Selection, http://products.asmintemational.org/hbk/do/highlight
/content/V20/D07/A03/S0066128.html, accessed February 5, 2012, ASM
Handbook, vol. 20, 2002.
6 “Glossary of Metallurgical and Metalworking Terms”, ASM Metals
Handbook, http://products.asmintemational.org/hbk/index.jsp, accessed
December 8, 2008, pp. 1—257 (“Glossary”).
7 Asai et al., JP 2005014002 A, published January 20, 2005 (“Asai”).
2
Appeal 2016-004762
Application 11/908,412
2a
COOLING
MEDIUM
COOLING
MEDIUM
Appellant’s Figure 1, showing a hot stamping apparatus
Appellant discloses that hot pressing or stamping involves heating a
steel sheet blank 4 to AC3 transformation temperature, sandwiching blank 4
between die 2 and blank holder 3, and then pressing punch 1 into a hole in
die 2, so that the blank is formed into the shape of punch 1. Id. 1 5.
However, Appellant further discloses that the temperature of the blank in a
portion held between die 2 and blank holder 3 is abruptly reduced in
temperature during forming, resulting in breaks or cracks. Id. ^ 6.
According to Appellant, when the austenitized steel sheet is cooled to a
temperature range of martensite formation start temperature Ms or less at an
average cooling rate of 20°C/sec or more, a steel sheet for hot forming can
be achieved, having excellent formability and quality without breaks or
cracks during forming. Id. 113.
3
Appeal 2016-004762
Application 11/908,412
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal. The limitation at issue
is italicized.
1. A method of manufacturing a hot-formed steel product,
comprising the following sequential steps of:
heating a steel sheet to be austenitized,
cooling the steel sheet to a temperature range of martensite
transformation start temperature Ms or less at an average cooling
rate of 20°C/sec or more,
heating the steel sheet to the Aci transformation
temperature or more, to form a lath structure, and
performing hot press forming of the steel sheet having the
lath structure, using a mold having a blank holder and a die by
drawing the steel sheet, to obtain a hot-formed steel product.
ANALYSIS
We sustain each of the Examiner’s obviousness rejections based on
the findings of fact, conclusions of law, and rebuttals to arguments well
expressed by the Examiner in the Final Office Action and the Answer, which
we adopt as our own. The following comments are added for emphasis.
For each rejection presented for review on appeal, Appellant does not
separately argue the claims on appeal. Accordingly, we select independent
claim 1 as representative and address Appellant’s arguments by reference to
this claim. 37 C.F.R. § 41.37(c)(l)(iv). Remaining claims 3 and 5,
dependent on claim 1, stand or fall with claim 1. Further, the prior art status
of the references applied by the Examiner in the rejections is not in dispute.
4
Appeal 2016-004762
Application 11/908,412
Rejection over the combination of Ikeda, Schey, and the Glossary
Appellant indicates that the arguments of the earlier appeal in this
application are adopted in their entirety, to the extent that they apply to the
prior art” of this rejection. Appeal Br. 5. For this reason, we note our prior
Decision in Appeal No. 2013-004966 (Dec.), mailed December 23, 2014,
which we incorporate in its entirety here, given the substantial similarity in
both the claims before us therein and here, and the same applied prior art.
Appellant notes that our prior Decision stated, “Appellant has failed to
establish that the ordinary artisan would not have expected both stretch
flange and hot stamp formed products to have improved results using Ikeda's
steel sheet having a finer micro structure.” Appeal Br. 5; Dec. 8. Appellant
indicates that, in view of this, the claims have been limited to the draw
forming of the example in Figure 4 and that evidence has been introduced
“that one skilled in the art would not have expected improved results in draw
forming from a disclosure related to stretch flange forming.” Appeal Br. 5
and Evidence App’x., The 79th Lecture for Technology and Plasticity,
“Fundamentals and Applications of Forming sheet Materials” (Kensetsu-
Koryu-Kaikan), July 7, 2000 (hereinafter “Kensetsu”). In particular,
Appellant contends that their Figure 4 demonstrates improved results with
regard to hot draw forming a steel sheet that has been thermally processes in
accordance with claim 1 as compared to steel sheet that either has not been
thermally treated or whose thermal treatment included air cooling at an
average cooling rate of 10°C/sec. Id.
5
Appeal 2016-004762
Application 11/908,412
Appellant also contends that Kensetsu distinguishes between draw
forming versus sheet flange forming. Appeal Br. 5—8. Figure 6 of Kensetsu
is reproduced below.
Pj$ure $ CtawHSeaflco ct press fwmtng sod characteristics at
(1) Stretch cfefoRttatJon
(2) stretch flange determatton
(3) Seep drains detorntatf on
(4) aending deformation
Kensetsu, Figure 6, depicting various deformation techniques
In particular, Kenetsu’s Figure 6 shows stretch flange deformation
(quadrant (2)) and deep drawing deformation (quadrant (3)). Appellant
asserts that Kensetsu teaches that “draw forming represents a unique type of
press forming insofar as there occurs an inflow of material from the edge
portion to the inner side-wall portion of the workpiece during the draw
forming process.” Appeal Br. 5. Appellant further asserts that Kensetsu
teaches draw forming results in material inflow from the edges of the blank
sheet, whereas sheet flange forming results in material outflow from a hole
in the center of the blank sheet. Id. at 6. Moreover, Appellant urges that
Kensetsu teaches fracture failure results from a combination of a reduction
in deformation resistance at the flange portion, related to the r-value, and an
6
Appeal 2016-004762
Application 11/908,412
increased proof stress at the inner side-wall, related to the n-value, whereas
fracture failure in stretch flange forming results from the elongation ability
of the flange portion, or the sheet’s ultimate deformability. Id. at 7.
Therefore, Appellant argues that the ordinary artisan would not have
expected an improvement in cracking failure during draw forming from
improvements in cracking failure during stretch flange forming as taught in
Ikeda, since failure in each case stems from a different source. Id.
Appellant’s arguments are not persuasive of reversible error in the
Examiner’s rejection. Initially, we note that Appellant has added the
additional recitation that the hot press forming of the steel sheet “by drawing
the steel sheet,” to claim 1 during prosecution subsequent to our prior
Decision. Claim 1, Claims App’x, Appeal Br. 10. However, both
Appellant’s Figure 4 and Kensetsu are directed to “deep drawing”
deformation. See Spec. 14 and 5 and Kensetsu § 3.2(3). Drawing is a sheet
metal forming process in which a sheet metal blank is radially drawn into a
forming die by the mechanical action of a punch. See
https://en.wikipedia.org/wiki/Deep_drawing, last accessed on Oct. 19, 2017.
The process is considered “deep” drawing when the depth of the drawn part
exceeds its diameter. Id.
There is no dispute that Ikeda teaches the same thermal processing
steps and conditions as recited in claim 1 including heating a steel sheet to
be austenitized, cooling the sheet to a temperature range of martensite
transformation start temperature Ms or less at an average cooling rate of
20°C/sec or more, and heating the sheet to the Aci transformation
temperature or more to form a lath structure. Compare Ans. 2—3 with
Appeal Br. 5—8. Thus, the only difference between Ikeda and claim 1 is that
7
Appeal 2016-004762
Application 11/908,412
Ikeda teaches performing a hot press forming of the thermally processed
steel sheet by stretch flange formation rather than by drawing the steel sheet.
We note Appellant relies on the data from Figure 4 of the
Specification and Kensetsu to establish that one of ordinary skill in the art
would not have expected Ikeda’s thermally processed steel sheet to have an
improvement in cracking failure during drawing formation even though
Ikeda teaches the thermally processed steel sheet shows an improvement in
cracking failure during stretch flange formation. However, Appellant fails
to direct our attention to any evidence that the results in Figure 4 are
surprising or unexpected to one of ordinary skill in the art. See In re
Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (an applicant must show “that
the difference actually obtained would not have been expected by one skilled
in the art at the time of invention”). Attorney argument does not suffice.
See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (unexpected results
must be established by factual evidence).
Moreover, although Kensetsu discusses the various factors that are
important in fracture failure for deep drawing and stretch flange forming
(specifically identifying the r- and n-values as being the effective material
property for understanding such failure in deep drawing) while broadly
identifying “ultimate deformability” as the effective material property in
stretch flange forming, these alleged differences alone do not support
Appellant’s assertion of unexpected results. Indeed, Kensetsu teaches that
“total elongation is a complex property influenced by factors including r-
value and n-value.” Kensetsu § 2, p. 92 (paragraph bridging pp. 2 and 3 of
the English translation). In addition, Kensetsu teaches “[tjotal elongation is
influenced by n-value and r-value since necking limit strain depends on
8
Appeal 2016-004762
Application 11/908,412
those factors.” Id. at p. 93 (first paragraph after equations 3 and 4 of the
English translation). Thus, it appears that Kensetsu teaches that r- and n-
values are important factors for both deep drawing and stretch flange
forming. As for the inflow of flange material in deep drawing versus
outflow of material surrounding a central hole in stretch flange forming,
Appellant has not shown that this difference would have led the skilled
artisan to doubt that improved crack resistance in stretch flange forming
would be reasonably expected to suggest improved crack resistance in
drawing. We also note Kensetsu teaches that fracture in deep drawing “does
not occur easily and considerably [sic] deep drawing can be achieved.” Id. §
3.2(3). Therefore, though the factors influencing fracture failure for each
process are not identical, Appellant has not shown that the ordinary artisan
would not have expected Ikeda’s thermally treated steel sheet would have
improved crack resistance when subjected to drawing versus stretch flange
forming given the overlapping importance of the r- and n-values for such
failure. “Obviousness does not require absolute predictability of success. . . .
For obviousness under § 103, all that is required is a reasonable expectation
of success.” In re 0’Fcirrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1681
(Fed. Cir. 1988).
Accordingly, we will sustain the Examiner’s obviousness rejection
based on the combination of Ikeda, Schey, and the Glossary.
Rejection over the combination of Ikeda and Asai
As indicated above, there is no dispute that Ikeda teaches the same
process of thermally treating a steel sheet as set forth in claim 1. The
Examiner finds Asai teaches hot-drawing a steel sheet at temperatures
9
Appeal 2016-004762
Application 11/908,412
exceeding 300°C such that cracks and fractures are not generated. Ans. 4.
Therefore, the Examiner concludes it would have been obvious to have
applied a hot-drawn method as taught in Asai to the Ikeda’s thermally
treated steel sheet in order to from steel articles without cracks and fractures.
Id.
Appellant argues that there would have been no reason to undertake
the extra work and greater expense of performing Ikeda’s thermal treatment
process on the steel sheet, rather than simply heating the steel sheet, prior to
the drawing, especially when an improvement in cracking failure would not
have been expected. Appeal Br. 9. The Examiner responds that Ikeda
discloses the thermal treatment produces a steel sheet with a lath-like
structure which corresponds to improved stretch flange formability and
elongation. Appellant asserts, however, that this expectation of improved
results is moot because it is based on stretch flange formability, not draw
forming. Reply Br. 4.
Appellant’s arguments are not persuasive of reversible error. The
Examiner has established a benefit of performing Ikeda’s thermal processing
on steel sheets that are subsequently subjected to deformation processing.
As we determined above, Appellant fails to persuade us that one of ordinary
skill in the art would not have reasonably expected Ikeda’s teaching of
improved formability and crack resistance to apply to draw forming.
Accordingly, we are satisfied that the Examiner properly rejected claim 1 as
prima facie obvious over Ikeda in view of Asai.
DECISION
10
Appeal 2016-004762
Application 11/908,412
Upon consideration of the record, and for the reasons given above and
in the Examiner’s Answer, the decision of the Examiner rejecting claims 1,
3, and 5 under 35 U.S.C. § 103(a) as unpatentable over Ikeda either in view
of Schey and the Glossary, or in view of Asai, is affirmed.
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).
AFFIRMED
11