Ex Parte Fukaya et al

Patent Trial and Appeal Board

Mar 19, 2013

12152505 (P.T.A.B. Mar. 19, 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.
12/152,505 05/14/2008 INV001Masuhiro Fukaya 14793/13 (was 52433/950) 5442
26646 7590 03/19/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
IP, SIKYIN
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
03/19/2013 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
____________

Ex parte MASUHIRO FUKAYA and TADASHI KOMORI
__________

Appeal 2011-013636
Application 12/152,505
Technology Center 1700
____________

Before CHARLES F. WARREN, HUBERT C. LORIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-013636
Application 12/152,505

2
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
8, 9, and 11-13. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We REVERSE.
Appellants’ invention is directed to a high aluminiferous ferritic
stainless steel sheet for the weight sensor substrate of an automobile airbag
(Spec. 1: 8-12).
Claim 8 is illustrative:
8. A weight sensor substrate comprising a high
aluminum ferritic stainless steel sheet consisting of, in mass,
Cr: 12 to 16%,
Al: 2.5 to 8%,
Nb: 0.05 to 0.5%,
C: 0.025% or less, and
N: 0.025% or less,
the sum of C and N being 0.030% or less,
with the balance being Fe and unavoidable impurities,
wherein an average linear expansion coefficient of said
stainless steel is 13.5 to 15.5 x 10-6/°C in a temperature range
from 20°C to 900°C.

Appellants appeal the following rejections:
Appeal 2011-013636
Application 12/152,505

3
1. Claims 8, 9, and 11-13 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over JP ‘659 (JP 05093659 A published Apr. 16, 1993)
in view of JP ‘810 (JP 10-251810 published Sept. 22, 1998).1
2. Claim 9 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over JP ‘659 in view of JP ‘729 (JP 2000319729 published Nov. 21,
2000) or Lindén (US 6,296,953 issued Oct. 2, 2001).2

ISSUE
Did the Examiner reversibly err in concluding that it would have been
obvious to substitute the aluminum containing ferritic stainless steel of
JP ‘810, JP ‘729 or Lindén for the SUS 430 stainless steel of JP ‘659 so as
meet the composition recited in claims 8 and 9? We decide this issue in the
affirmative.

FINDINGS OF FACT AND ANALYSES
Appellants argue that the Examiner failed to give a reason for
substituting the aluminum containing ferritic stainless steel of JP ‘810,
JP ‘729 or Lindén, which are disclosed as useful for an electric heater, stove,
or bayonet tubing for the SUS 430 stainless steel sensor substrate of JP ‘659
(App. Br. 16). Appellants contend that the Examiner engaged in
impermissible hindsight in modifying JP ‘659 in light of the teachings of
JP ‘810, JP ‘729 or Lindén (id. at 20).
The Examiner finds that it would have been obvious to substitute the
aluminum containing ferritic stainless steel of JP ‘810, JP ‘729 or Lindén for

1 We refer to the JPO machine translations of JP ‘659 and JP ‘810 of record.
2 We refer to the JPO machine translations of JP ‘729 of record.
Appeal 2011-013636
Application 12/152,505

4
the SUS 430 ferritic stainless steel of JP ‘659 for the benefits and function
taught by JP ‘810, JP ‘729 and Lindén (Ans. 5). Presumably the Examiner
relies on the high temperature oxidation resistance property as providing the
reason for substituting the aluminum-containing stainless steels for JP ‘659’s
SUS 430.
The preponderance of the evidence favors Appellants’ argument of
nonobviousness. The Examiner has not established that JP ‘659 is
concerned with high temperature oxidation resistance of the metal substrate
or that such a property would have been important in JP ‘659’s distortion
sensor. JP ‘659 discloses that an important property of the metal substrate in
the distortion sensor is the expansion coefficient that when properly chosen
avoids delamination of a glass coating from the metal substrate (JP ‘659,
para. [0012]). As argued by Appellants, JP ‘810 and JP ‘729 are directed to
metals for use in high temperature applications such as a stove or an electric
heater (JP ‘810, JP ‘729, para. [0001]). Lindén is directed to a steel
composition for use in making bayonet tubes, superheater and reformer
tubes in steam reforming plants (Lindén, col. 1, ll. 7-9).
While the Examiner relies on case law for the proposition that
combining known ingredients for known functions would have been
obvious, the Examiner has not articulated any specific reasoning with some
rational underpinning to support the legal conclusion of obviousness that
addresses why one of ordinary skill in the art would have looked to JP ‘810,
JP ‘729 or Lindén for metals for use in high temperature conditions to use as
the metal substrate in JP ‘659’s sensor. In an attempt to provide some
reason for looking to the aluminum-containing stainless steels of the prior
art, the Examiner finds that Figure 2.4 of the STAINLESS STEEL HANDBOOK
Appeal 2011-013636
Application 12/152,505

5
cited in the Evidence Appendix and of record shows that aluminum is one of
the known metals affecting linear expansion (Ans. 8). However, as argued
by Appellants Figure 2.4 shows the linear expansion of several pure metals
as compared to to stainless steel SUS 304 (Reply Br. 6-7). The Examiner
has not established that Figure 2.4 shows the effect of aluminum on linear
expansion in a stainless steel composition.
Accordingly, we agree with Appellants that on this record there is no
credible reason for substituting the aluminum-containing ferritic stainless
steels of JP ‘810, JP ‘729 or Lindén for JP ‘659’s ferritic stainless steel
absent impermissible hindsight. On this record, we reverse all of the
Examiner’s § 103 rejections.

DECISION
The Examiner’s decision is reversed.

ORDER
REVERSED

bar