Ex Parte Kondo et al

Patent Trial and Appeal Board

Nov 9, 2018

14382081 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/382,081 08/29/2014
22902 7590 11/09/2018
CLARK & BRODY
1700 Diagonal Road, Suite 510
Alexandria, VA 22314
FIRST NAMED INVENTOR
Keiichi Kondo
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
12049-0129 6599
EXAMINER
JOHNSON, JONATHAN J
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
11/09/2018 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 KEIICHI KONDO and YUJI ARAI
Appeal2017-009837
Application 14/382,081
Technology Center 1700
Before TERRY J. OWENS, JEFFREY R. SNAY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Applicant/Appellant (Nippon Steel & Sumitomo Metal Corp.)
appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-
10. We have jurisdiction under 35 U.S.C. § 6(b).
The Invention
The claims are to a method for making high-strength steel having
excellent sulfide stress cracking resistance. Claim 1 is illustrative:
1. A method for producing a high-strength steel material
excellent in sulfide stress cracking resistance, wherein a steel
that has a chemical composition consisting of, by mass percent,
C: 0.15 to 0.65%, Si: 0.05 to 0.5%, Mn: 0.1 to 1.5%, Cr: 0.2 to
1 .5%, Mo: 0.1 to 2.5%, Ti: 0.005 to 0.50%, Al: 0.001 to
Appeal2017-009837
Application 14/382,081
0.50%, and the balance of Fe and impurities, wherein Ni, P, S,
N and O among the impurities are Ni: 0.1 % or less, P: 0.04% or
less, S: 0.01 % or less, N: 0.01 % or less, and 0: 0.01 % or less,
and that has been hot-worked into a desired shape is
sequentially subjected to the steps of the following [1] to [3]:
[l] a step of heating the steel to a temperature exceeding
the Ac1 transformation point and lower than the Ac3
transformation point and cooling the steel;
[2] a step of reheating the steel to a temperature not lower
than the Ac3 transformation point and quenching the steel by
rapid cooling; and
[3] a step of tempering the steel at a temperature not
higher than the Ac 1 transformation point.
Kondo
Agazzi
The References
us 5,938,865
US 2010/0068549 Al
The Rejection
Aug. 17, 1999
Mar. 18, 2010
Claims 1-10 stand rejected under 35 U.S.C. § I03(a) over Agazzi in
view of Kondo.
OPINION
We reverse the rejection. We need address only claim 1, which is the
broadest independent claim.
Agazzi makes a seamless steel tube having isotropic toughness at low
temperatures to be made into a hydraulic cylinder barrel (i1i11, 3). The tube
is made by 1) sequentially hot rolling steel at a temperature higher than Ac 3,
2) heating the tube at a temperature between Ac1 and Ac3, 3) quenching the
tube to establish in the steel a dual-phase or multiphase microstructure
composed of ferrite and martensite and optionally bainite and/or retained
austenite, 4) cold drawing the quenched tube, and 5) stress relieving the tube
to improve its toughness (i1i124--30).
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Application 14/382,081
Kondo makes "a seamless steel pipe having high strength, good
toughness and excellent corrosion resistance, especially sulfide stress
cracking resistance, which is characterized by a combination of specified
chemical composition of raw materials ( steel billet) and specified
thermo-mechanical treatment of the material" (col. 1, 11. 11-16). The pipe is
made by 1) sequentially hot rolling at 40% or more of cross sectional
reduction ratio a low alloy steel, 2) finishing the hot rolling in a temperature
range of 800-1100 QC, 3) promptly heating the resulting steel pipe in a
complementary heating apparatus at a temperature and for a time satisfying
formula (a): 23500:S(T+273)x(21 +log t):S26000, where T (QC) is a
temperature not lower than 850 QC and t is time in hours, 4) quenching the
pipe immediately after taking it out of the complementary heating apparatus,
5) optionally performing at least one intermediate heat treatment consisting
of quenching or quenching and tempering, where the reheating temperature
for the intermediate heat treatment's quenching should be in the range of
Ac3 to Ac3+ 100 QC, and 6) tempering the pipe at a temperature not higher
than Ac1 as the last heat treatment (col. 7, 11. 27-50; col. 8, 11. 4--25). "When
the condition of the formula (a) is satisfied in the complementary heating
step, excellent toughness and corrosion resistance of the steel is obtained"
(col. 19, 11. 3-5), and "since the steel pipe, which has been subjected to the
in-line quenching and only one time tempering [ ( steps 4 and 6 above)] has
high strength, high toughness and excellent corrosion resistance, it can be
used satisfactorily without any other heat treatment in a severe corrosive
environment" (col. 18, 11. 40-44). The intermediate heat treatment (step 5
above) further improves the steel's toughness and corrosion resistance by
suppressing abnormal grain growth and inhibiting grain boundary movement
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Application 14/382,081
such that the grain structure is ultrafine and uniform (col. 18, 11. 45-54;
col. 19, 11. 13-22).
The Examiner concludes that "[i]t would have been obvious to one of
ordinary skill in the art at the time of invention to subject the steel pipe of
Agazzi to reheating to a temperature not lower than Ac3 and quenching
[(Kondo' s step 5 above)] and final tempering at a temperature not higher
than Ac 1 [(Kondo' s step 6 above)], in order to ensure high strength, high
toughness and excellent corrosion resistance, as taught by Kondo et al.
(Columns 15-19)" (Ans. 3).
Setting forth a prima facie case of obviousness requires establishing
that the applied prior art would have provided one of ordinary skill in the art
with an apparent reason to modify the prior art to arrive at the claimed
invention. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007).
The Examiner does not establish that Kondo' s disclosure of
intermediate heat treatment which improves the steel pipe toughness and
corrosion resistance achieved by Kondo' s complementary heating would
have provided one of ordinary skill in the art with an apparent reason to use
that intermediate heat treatment in Agazzi' s method which lacks Kondo' s
complementary heating and makes a steel tube having isotropic toughness at
low temperature to be made into a hydraulic cylinder barrel which Agazzi
does not indicate needs improved corrosion resistance.
Thus, the record indicates that the Examiner's rejection is based upon
impermissible hindsight in view of the Appellant's disclosure. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("A rejection based on section
103 clearly must rest on a factual basis, and these facts must be interpreted
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Application 14/382,081
without hindsight reconstruction of the invention from the prior art").
Accordingly, we reverse the rejection.
DECISION
The rejection of claims 1-10 under 35 U.S.C. § 103(a) over Agazzi in
view of Kondo is reversed.
The Examiner's decision is reversed.
REVERSED
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