Ex Parte Okita et al

Patent Trials and Appeals Board

Apr 9, 2019

14240595 - (D) (P.T.A.B. Apr. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/240,595 02/24/2014 Keisuke Okita
22850 7590 04/11/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
429780US99PCT 5890
EXAMINER
LIANG, ANTHONY M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
04/11/2019 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
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEISUKE OKIT A, SHUSH! IKEDA, and
JUNY A NAITOU
Appeal2017-006803
Application 14/240,595
Technology Center 1700
Before ADRIENE LEPIANE HANLON, JAMES C. HOUSEL, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-006803
Application 14/240,595
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from a rejection2 of claims
1, 3, 4, and 9-13. We have jurisdiction under 35 U.S.C. § 6(b ). A hearing
was held on March 12, 2019.
We affirm.
CLAIMED SUBJECT MATTER
The claims relate to "press hardened parts used in structural members
of automobile components which requires [sic.] strength and corrosion
resistance" as well as a method for producing the parts. Spec. ,r 1. 3 Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for producing a press hardened part of a
surface-treated steel sheet, the method comprising:
forming a Zn-Fe-based plated layer comprising Fe of from
10 to 80 mass% on a surface of a base steel sheet, thereby
obtaining the surface-treated steel sheet;
heating the surface-treated steel sheet to a temperature not
lower than an Ac 1 transformation point of the base steel sheet and
950°C or lower;
subsequently cooling the surface-treated steel sheet to a
temperature not higher than a solidifying point of the Zn-Fe-
based plated layer depending on a content of Fe in the Zn-Fe-
based plated layer; and
subsequently press forming the surface-treated steel sheet,
thereby obtaining the press hardened part, wherein the
1 The real party in interest is identified as "KABUSHIKI KAISHA KOBE
SEIKO SHO (KOBE STEEL, LTD.)." Appeal Brief of April 18, 2016
("Br."), 2.
2 Final Office Action of October 30, 2015 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of January 23, 2017 ("Ans.") and the
Reply Brief of March 23, 2017 ("Reply Br.").
3 Application No. 14/240,595 ("Spec.").
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Application 14/240,595
solidifying point of the Zn-Fe-based plated layer is a solidifying
point of the Zn-Fe-based plated layer before said heating.
Claims Appendix (Br. 16).
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Imai US 2004/0166360 Al Aug. 26, 2004
Suzuki JP 2011-117086 June 16, 2011
ASM Handbook Vol. 4 ("HeatTreating"), (Rafael Menezes Nunes, et. al.,
ASM International 1991) ("ASM").
REJECTIONS
Claims 1, 3, 4, and 9-13 rejected under pre-AIA 35 U.S.C. § I03(a) as
being unpatentable over Imai in view of Suzuki, as evidenced by ASM.
Final Act. 4. 4
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellants and in light of the arguments and evidence
produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections.")). After having
considered the evidence presented in this Appeal and each of Appellants'
contentions, we are not persuaded that Appellants identify reversible error,
and we affirm the Examiner's § 103 rejection for the reasons expressed in
4 The Examiner rejected claims 1, 3-5, and 7-13 in the Final Office Action.
Final Act. 4. Claims 5, 7, and 8 have since been withdrawn and therefore no
longer before us. Claims Appendix (Br. 17).
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Application 14/240,595
the Final Office Action and the Answer. We add the following primarily for
emphasis.
Rejection of Claim 15
Appellants do not dispute the prior art teachings but argue that the
Examiner reversibly erred in rejecting claim 1 because Imai "implicitly"
teaches away from "subsequently cooling the surface-treated steel sheet" as
recited in claim 1. Br. 10. More specifically, Appellants argue that because
Imai does not mention cooling between heating and press forming a steel
sheet, a skilled artisan would have understood such silence as an affirmative
teaching away from the recited cooling step. Id.
"Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
produce the objective of the applicant's invention." Syntex (U.S.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations omitted). Given
the undisputed facts that: (1) the post-cooling temperature of Suzuki
overlaps with the pre-press-forming temperature of Imai ( compare Final
Act. 5, with Br. 7-10), 6 (2) Imai is silent with regard to cooling, and (3)
Suzuki teaches that "cracking of the base material surface at the time of hot
stamp processing can be prevented" by cooling (Suzuzki ,r 17), Appellants'
argument does not persuade us that a skilled artisan would be discouraged
from the recited "subsequently cooling the surface-treated steel sheet" step.
5 Because Appellants do not argue claims 3, 4, and 10-13 separately, they
stand or fall with claim 1. Br. 12; see also 37 C.F.R. § 4I.37(c)(l)(iv).
6 The Examiner finds, and Appellants do not dispute, that Suzuki teaches
cooling "in the range of 800 °C to 950 °C, to 500-730°C, which overlaps
with the instantly claimed range of not higher than the solidifying point (i.e.
665°C in the case of Imai et al.)." Ans. 3.
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In re Gurley, 27 F.3d 551,553 (Fed. Cir. 1994) ("A reference maybe said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant. The degree of teaching away will of course depend on the
particular facts; in general, a reference will teach away if it suggests that the
line of development flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.").
Appellants' argument that Imai describes press forming the steel sheet
in a "hot state" (Br. 10 (citing Imai ,r 122); Reply Br. 4) does not persuade us
otherwise. To the extent that the "hot state" described in Imai relates to an
absolute temperature requirement (which overlaps the pre-press-forming
temperature of Suzuki), it does not discourage any particular method as to
reaching the absolute temperature ( e.g., by cooling to the particular absolute
temperature).
We further note that the test of obviousness is "whether the teachings
of the prior art, taken as a whole, would have made obvious the claimed
invention." In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991). Appellants'
argument attacks the references individually - without addressing the
teachings in Suzuki - and therefore without considering what the combined
references would have suggested to the person of ordinary skill in the art.
"Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing
In re Keller, 642 F.2d 413,425 (CCPA 1981)). Appellants do not address
Suzuki's teachings which - together with those of Imai - form the basis of
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Application 14/240,595
the rejection. For example, Appellants do not address Suzuki's teaching of
heating a steel material to 800-950°C, cooling the material to 500-730°C,
and hard pressing the material. See Br. 7-10; see also Suzuki ,r,r 15-18. We
are therefore not persuaded that the Examiner reversibly erred in evaluating
the prior art teachings as a whole.
Rejection of Claim 9
Claim 9 depends from claim 1 and additionally recites: "wherein said
heating occurs at a temperature of not lower than an Ac3 transformation
point of the base steel sheet and 930°C or lower."
Appellants argue that the Examiner reversibly erred because "claim 9
is directed to a hot pressing, not a warm pressing." Br. 13. We are
unpersuaded by this argument because the plain language of claim 9 does
not recite "hot pressing." We decline to import unrecited features into the
claim and Appellants' argument, directed to features not recited by the claim
language, cannot impart patentability. In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998) (finding that unclaimed features cannot impart
patentability to claims).
Appellants' remaining argument for claim 9 mirrors that for claim 1
(Br. 13-14 (arguing that Imai prohibits any cooling)), and for the reasons
provided supra, we sustain the rejection of claim 9.
DECISION
The Examiner's decision 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
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Appeal2017-006803
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AFFIRMED
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