Ex Parte Ehrhardt et al

Patent Trial and Appeal Board

Sep 28, 2017

14188241 (P.T.A.B. Sep. 28, 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.
14/188,241 02/24/2014 Bertram Wilhelm Ehrhardt TKSU-13002/08 7253
25006 7590 10/02/2017
DTNSMORF fr SHOHT T T P
EXAMINER
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERTRAM WILHELM EHRHARDT,
CHRIS JOHN PAUL SAMUEL, RANBIR SINGH JAMWAL,
THOMAS MICHAEL POPLAWSKI, and TIMO FAATH
Appeal 2017-003477
Application 14/188,241
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—20 of Application 14/188,241
under 35 U.S.C. § 103(a) as obvious. Final Act. (February 22, 2016).
Appellants1 seek reversal of the rejection pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we affirm.
1 ThyssenKrupp Steel USA, LLC is identified as the applicant and real party
in interest. Appeal Br. 1.
Appeal 2017-003477
Application 14/188,241
BACKGROUND
The ’241 Application describes a process for making a hot rolled strip
from silicon-alloyed steel. Spec. | 5. Claim 1 is representative of the ’241
Application’s claims and is reproduced below from Appendix A:
1. A process for making a hot rolled strip from a silicon
alloyed steel, the process comprising:
providing a steel slab having a chemical composition in
weight percent within a range of 0.06-0.30 C, 0.3—2.0 Mn, 0.6—
3.5 Si and Fe plus incidental melting impurities;
hot rolling the steel slab to produce a hot rolled steel
strip;
and coiling the hot rolled strip at coiling temperatures
between 100—600°C, the coiled hot rolled strip having a
microstructure containing at least 90 vol% ferrite plus pearlite,
a yield strength of at least 400 MPa, a tensile strength of at least
600 MPa and a tensile elongation of at least 20% irrespective of
the hot rolled strip being coiled at 100°C, 350°C or 500°C;
wherein the coiled hot rolled strip has a spread of yield
strength of less than 70 MPa, a spread of tensile strength less
than 50 MPa, and a spread of percent elongation to failure less
than 10% for coiling temperatures between 100-600°C.
Appeal Br. 11 (App. A).
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1—20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Nomura.2 Final Act. 2.
2 US 5,470,529, issued November 28, 1995.
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Application 14/188,241
DISCUSSION
Rejection 1. Appellants argue for the reversal of the obviousness
rejection to claims 2—20 on the basis of limitations present in independent
claim 1. See Appeal Br. 3—9; Reply Br. 2-4. We, therefore, limit our
analysis to claim 1 for these claims. Independent claim 14 will stand or fall
with claim 1; dependent claims 2—13 and 15—20 will stand or fall with each
of their respective independent claims.3 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting claim 1, the Examiner found that Nomura describes each
step of the claimed process for making a hot rolled strip from a silicon
alloyed steel. Final Act. 2—3. The Examiner further found that Nomura
teaches or suggests the claimed microstructure characteristics of the coiled
steel sheet. Id. at 3. According to the Examiner, Nomura’s microstructure
“would meet the limitation of the micro structure because there is no
limitation on the content range of pearlite recited in the instant claims.” Id.
The Examiner determined that a prima facie case of obviousness
exists because Nomura’s steel sheets and the claimed coiled hot rolled strip
“are identical or substantially identical in structure or composition and are
produced by identical or substantially identical processes . ...”4 Id. The
3 We note that a difference in temperature conditions exists between
limitations at issue found in the independent claims, e.g., “irrespective of the
hot rolled strip being coiled at 100°C, 350°C, or 500°C” (claim 1) and
“irrespective of the hot rolled strip being coiled at temperatures between
100-600°C” (claim 14). This difference, however, is immaterial to our
disposition because Appellants do not argue the independent claims
separately. See, e.g., Appeal Br. 7.
4 Appellants do not dispute the Examiner’s findings that Nomura teaches or
suggests each of the claimed chemical components in the requisite weight
percent ranges, respectively. Final Act. 4; see generally Appeal Br. 3—9;
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Application 14/188,241
Examiner further determined that it would have been obvious to one of
ordinary skill in the art “to select the claimed elemental contents and other
parameters within the disclosed respective ranges of [Nomura] with an
expectation of success because [Nomura] discloses the same utilities over
the entire disclosed ranges.” Id. at 4.
The Examiner found that although Nomura does not specify the
claimed spreads of yield strength, tensile strength, and elongation as recited
in claim 1, “[t]he same spreads of yield strength, tensile strength and
elongation as claimed would be expected in the claimed and [Nomura’s]
steel sheets.” Id. at 5.
Appellants argue that the rejection of claim 1 should be reversed
because the Examiner has failed to establish a prima facie case of
obviousness. Appeal Br. 4. In particular, Appellants argue that (1) Nomura
. . . teaches away from a process for making ‘a micro structure containing at
least 90 volume percent ferrite plus pearlitef id. at 6; (2) Nomura fails to
teach or suggest that the requisite properties would have resulted in the hot
rolled strip irrespective of a coiling temperature of 100°C, 350°C, or 500°C
because Nomura teaches that “[c]oiling below 300°C accelerates the
formation of martensite, thereby deteriorating the ductility and whole
expandability of the steel,” id. at 7 (citing Nomura 10:56—58); (3) such
Reply Br. 2—\. Nor do Appellants dispute the Examiner’s findings that
overlap exists between Nomura’s disclosed ranges for “[t]he slab thickness,
the soaking temperature range, the micro structural percentage range, the
finish rolling temperature to the coiling temperature range (i.e.[,] 300—
940°C); the coiling temperature range, the yield strength range, the tensile
strength range and the tensile elongation range ...” and the claimed ranges,
respectively. Final Act. 4; see generally Appeal Br. 3—9; Reply Br. 2-4.
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Application 14/188,241
accelerated martensite formation and associated deterioration “provides no
suggestion of obtaining a spread of yield strength of less than 70 MPa, a
spread of tensile strength less than 50 MPa, and a spread of percent
elongation to failure less than 10% for coiling temperatures between 100-
600°C,” id. at 7—8; and (4) even assuming that the Examiner has established
a prima facie case of obviousness, Appellants have overcome such a prima
facie case because Nomura’s “degradation of ductility when coiled below
300°C . . . teaches away from the pending claims and one skilled in the art
would find the mechanical properties recited in claim[] 1 . . . unexpected.”
Id. at 9.
First, with regard to argument (1), we begin by interpreting the
language of claim 1. In particular, we construe the phrase “at least 90 vol%
ferrite plus pearlite.”
During prosecution, the PTO gives the language of the proposed
claims “the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant’s
specification.” In re Morris, 111 F.3d 1048, 1054—55 (Fed. Cir. 1997).
The broadest reasonable interpretation of the phrase “at least 90 vol%
ferrite plus pearlite” is that the microstructure must contain at least 90 vol%
of the total amount of ferrite plus pearlite. In other words, the broadest
reasonable interpretation of the phrase“at least 90 vol% ferrite plus pearlite”
is that either ferrite or pearlite may be 0 vol% as long as the other
component is present in “at least 90 vol%.”
Appellants implicitly argue that this interpretation of the claim term
“at least 90 vol% ferrite plus pearlite” is incorrect. See Reply Br. 2.
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Application 14/188,241
Specifically, Appellants argue that claim 1 requires that “that some pearlite
must be present in the microstructure,” id., which is inconsistent with an
interpretation that the term encompasses at least 90 vol% ferrite only.
We, however, see nothing in the Specification that suggests that the
interpretation set forth above is not reasonable. The Specification does not
contain any disclosure that is inconsistent with the broader interpretation,
which in turn is completely consistent with the plain language of the claim.
Accordingly, we conclude that the term “at least 90 vol% ferrite plus
pearlite” means “at least 90 vol% of: (i) ferrite only, (ii) pearlite only, or (iii)
a mixture of ferrite and pearlite.”
Appellants argue in connection with argument (1) that Nomura
“discloses how to avoid pearlite, not minimize the content of pearlite as
asserted by the Examiner.” Reply Br. 2. Appellants’ argument (1) is not
persuasive in view of our construction of the phrase “at least 90 vol% ferrite
plus pearlite.”
As the Examiner found, Nomura is silent with regard to any disclosure
that the microstructure contains no pearlite at all. Answer 4. Accordingly,
Nomura’s teachings, which are directed to minimizing pearlite, do not
foreclose the possibility that some pearlite would have been present in the
disclosed micro structure. We have considered Nomura’s teachings in
conjunction with the Specification’s lack of any disclosure that is
inconsistent with our construction of the phrase “at least 90 vol% ferrite plus
pearlite.” Therefore, Appellants’ argument (1) is not persuasive because
claim 1 should not be construed as requiring a minimum amount of pearlite
in the micro structure.
Second, we are not persuaded by Appellants’ arguments (2), (3), and
(4) because Appellants have not adequately explained or established that the
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Application 14/188,241
ordinary skilled artisan would have understood the correlation between:
(i) Nomura’s accelerated martensite formation with an associated
degradation of ductility and (ii) Appellants’ claimed yield strength of at least
400 MPa, a tensile strength of at least 600 MPa, a tensile elongation of at
least 20%, a spread of yield strength of less than 70 MPa, a spread of tensile
strength less than 50 MPa, and a spread of percent elongation to failure less
than 10%.
Furthermore, it is well established that when claimed and prior art
products 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.
In re Best, 562 F.2d 1252, 1256 (CCPA 1977). Appellants have not met this
burden. The record evidence is silent as to any persuasive technical
reasoning or evidence demonstrating that each of the microstructure
properties would not have occurred in Nomura’s high tensile strength steel
sheet.
In view of the foregoing, we affirm the Examiner’s rejection of
independent claim 1. Thus, we also affirm the rejection of: (i) claims 2—13,
which ultimately depend from claim 1 and (ii) claims 15—20, which
ultimately depend from claim 14.
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 1—20
of the ’241 Application.
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Application 14/188,241
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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