Ex Parte OKU et al

Patent Trial and Appeal Board

Nov 24, 2014

12756935 (P.T.A.B. Nov. 24, 2014)

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. 12/756,935 04/08/2010 Manabu OKU 02886.0102-01000 1627 22852 7590 11/25/2014 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER YEE, DEBORAH ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 11/25/2014 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 MANABU OKU, TAKEO TOMITA, YOSUKE SUMI, and YASUHISA TANAKA ____________ Appeal 2013-002312 Application 12/756,935 Technology Center 1700 ____________ Before LINDA M. GAUDETTE, GRACE KARAFFA OBERMANN, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. ANKENBRAND, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 6-11, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Nisshin Steel Co., Ltd. and Toyota Jidosha Kabushiki Kaisha as the real parties in interest. App. Br. 4. Appeal 2013-002312 Application 12/756,935 2 The Invention The invention relates to a method for making a ferritic stainless steel sheet with excellent thermal fatigue properties and a ferritic stainless steel sheet produced from the method. Spec. 1:8-13. The stainless steel sheet can be used in an automotive exhaust-gas path member. Id. at 3:5-7. Claim 6, the sole independent claim, is representative of the claims on appeal, and is reproduced below from the Claims Appendix to the Appeal Brief: 6. A method for making a ferritic stainless steel sheet with excellent thermal fatigue properties, comprising: providing a material including by mass%, 0.03% or less of C, 1.0% or less of Si, 1.5% or less of Mn, 0.6% or less of Ni, 10~20% of Cr, 0.05~0.30% of Ti, 0.51~0.65% of Nb, 0~less than 0.10% of Mo, 0.8~2.0% of Cu, 0~0.10% of Al, 0.0005~0.02% of B, 0~0.20% of V, and 0.03% or less of N, with a balance being Fe and inevitable impurities, wherein the material has a composition satisfying equations (1) and (2) represented below, Nb - 8(C+ N) ≥ 0 … (1) 10Si + 20Mo + 30Cu + 20(Ti + V) + 160Nb - (Mn + Ni) ≥ 100 … (2); and subjecting the material to hot rolling, annealing after the hot rolling, cold rolling, and annealing after the cold rolling; wherein the annealing after the cold rolling is performed with an average cooling rate of 10-30oC/sec continuously from about 900oC to about 400oC; and wherein the ferritic stainless steel made in the method has a structure in which finely dispersed ɛ-Cu phase grains in a matrix, each having a long diameter of 0.5µm or more, are present in a density of 10 or less per 25 µm2. Appeal 2013-002312 Application 12/756,935 3 The References Morihiro (“JP ’009”) JP 09-195009 July 29, 1997 Koichi (“JP ’543”) JP 10-204543 Aug. 4, 1998 Yoshitaka (“JP ’149”) JP 2000-303149 Oct. 31, 2000 The Rejections The claims stand rejected as follows: Claims 6-11 are rejected under 35 U.S.C. § 103(a) as unpatentable over JP ’149, in view of JP ’009 and JP ’543. OPINION We affirm the rejection of claims 6-11 under 35 U.S.C. § 103(a). Appellants argue independent claim 6 and do not present separate arguments for the patentability of dependent claims 7-11. We therefore limit our discussion to claim 6. Claims 7-11 stand or fall with claim 6. 37 C.F.R. § 41.37(c)(1)(iv) (2013). Appellants argue that the Examiner incorrectly ascertained the scope and contents of the cited art, as well as the differences between the claimed invention and the cited art, because the combination of JP ’149, JP ’543, and JP ’0092 fails to disclose or suggest “annealing after the cold rolling . . . performed with an average cooling rate of 10-30oC/sec continuously from about 900oC to about 400oC[,]” as required by claim 6. App. Br. 10-12. In particular, Appellants argue (1) JP ’543’s disclosed cooling rate of “up to 15oC/sec” is irrelevant to a cooling rate for annealing after cold rolling, id. at 11-12, and (2) JP ’149 does not provide any meaningful teaching of the 2 Appellants do not rely on the particulars of JP ’009 to support their arguments. Accordingly, we do not consider JP ’009 for purposes of this Decision. Appeal 2013-002312 Application 12/756,935 4 cooling rate under particular conditions, including Appellants’ claimed average cooling rate of 10-30oC/sec, id. at 11. We address each of Appellants’ arguments in turn. Appellants argue that JP ’543 is irrelevant to a cooling rate for annealing after cold rolling as required by claim 6. Id. at 12. Appellants’ argument is not persuasive because it fails to identify error in the Examiner’s finding that JP ’543 is relevant evidence of the general principle that a steel sheet heated to 900-1050oC has a cooling rate in air, as a cooling medium, of up to 15oC/sec. Final Office Action 3 (December 9, 2011); Advisory Action 2 (March 13, 2012); Ans. 4. Appellants argue that JP ’149 does not provide any meaningful teaching of the cooling rate under particular conditions, including Appellants’ claimed average cooling rate of 10-30oC/sec, and, therefore, fails to suggest such a cooling rate. App. Br. 11. We are not persuaded by Appellants’ argument. Like Appellants’ claim 6, JP ’149 teaches a process of hot rolling, annealing, cold rolling, annealing, and air cooling. First Office Action 2-3 (August 19, 2011); JP ’149 ¶¶ 42-46. The second annealing in JP ’149’s process is carried out at 900-1050oC, which overlaps the 900oC temperature at which Appellants’ second annealing, is carried out. First Office Action 3; JP ’149 ¶ 43. In other words, JP ’149 teaches substantially the same process as Appellants’ claim 6. Id. at 2. While JP ’149 does not explicitly teach a cooling rate, JP ’543 supports the Examiner’s finding that, at the time of the invention, air cooling of a steel sheet heated to 900-1050oC was known to occur at a rate of up to 15oC/sec. Ans. 4; JP ’543 ¶¶ 28, 29, 34, 35, and abstract. Thus, the Appeal 2013-002312 Application 12/756,935 5 Examiner had a reasonable basis for concluding that a person of ordinary skill in the art would have expected a cooling rate of up to 15oC/sec for JP ’149’s steel sheet because that sheet is heated to (i.e., annealed at) a temperature between 900-1050oC, and then subjected to air cooling. This range overlaps Appellants’ claimed cooling range of 10-30oC/sec and, therefore, renders it prima facie obvious. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Because the Examiner correctly found that JP ’149’s cooling rate overlaps the claimed range and presumptively renders it prima facie obvious, the burden shifted to Appellants to show that the particular claimed ranges are critical, e.g., achieve unexpected results relative the prior art ranges. Id. at 1330. Appellants argue that the cooling rate recited in claim 6 is critical, App. Br. 13, 17, but point to no evidence indicating the criticality of the claimed range relative to the range inherent in JP ’149’s process. Thus, Appellants have failed to meet their burden. Appellants argue that the Examiner incorrectly ascertained the scope and content of the cited art, as well as the differences between the claimed invention and the cited art, because the combination of JP ’149 and JP ’543 fails to disclose or suggest “ferritic stainless steel made in [a] method has a structure in which finely dispersed ɛ-Cu phase grains in a matrix, each having a long diameter of 0.5µm or more, are present in a density of 10 or less per 25 µm2.” App. Br. 12-13. In particular, Appellants argue that because JP ’149 does not recognize that precipitation of ɛ-Cu varies depending on the cooling rate at annealing after cold rolling, the method Appeal 2013-002312 Application 12/756,935 6 disclosed in JP ’149 would not necessarily result in a ferritic stainless steel with a structure as set forth in claim 6. Id. at 14. JP ’149 does not expressly teach that its ferritic stainless steel has the structure set forth in Appellants’ claim. JP ’149, however, discloses an ɛ-Cu phase minutely precipitated in steel to provide solid solution strengthening at a high temperature, thereby avoiding large ɛ-Cu phase grains, similar to Appellants’ invention. First Office Action 5; Ans. 5; JP ’149 ¶ 34. Further, as the Examiner found, and Appellants do not dispute, JP ’149’s ferritic steel plate is extremely similar in composition to and made by the same process as Appellants’ sheet. First Office Action 5; Ans. 5. As previously explained, JP ’149 inherently teaches a cooling rate of up to 15oC/sec. The fact that Appellants have “recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious.” Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985). Appellants argue that the Examiner failed to provide an adequate rationale to support the combination of JP ’149 and JP ’543 to achieve Appellants’ claimed invention. App. Br. 15-16. Appellants’ argument is not well taken because, as previously discussed, the Examiner did not combine JP ’149 with JP ’543 to arrive at Appellants’ claim 6, but rather, relied on JP ’543 as evidence of the general principle that a steel sheet heated to 900-1050oC has a cooling rate in air, as a cooling medium, of up to 15oC/sec. Appellants argue that the results from the method according to claim 6 would not have been predictable from the cited references. App. Br. 17-19. Specifically, Appellants argue that JP ’149 and JP ’543 do not disclose or Appeal 2013-002312 Application 12/756,935 7 suggest the criticality of the claimed cooling rate after cold rolling and the beneficial results achieved therefrom. Id. at 18. We are not persuaded by Appellants’ argument, but rather, agree with the Examiner that JP ’149’s ferritic steel sheet, which is similar in composition to and made by the same process as Appellants’ steel sheet, achieves the same results. Ans. 6. Like Appellants’ steel sheet, JP ’149’s sheet exhibits high temperature tensile strength at 600oC and excellent thermal fatigue strength. Id.; compare JP ’149 ¶¶ 50, 57 with Spec. ¶¶ 48, 49, and Table 2. Likewise, JP ’149’s process uses a cooling rate that overlaps Appellants’ claimed range and creates the same structure of ɛ-Cu phase grains that Appellants claim. It is of no moment that JP ’149 fails to explicitly recognize that the benefits are due to the cooling rate. Discovery of a property inherent in a prior art method does not render that method patentable, even if a person of ordinary skill in the art may not recognize the inherent characteristics or functioning of the prior art. In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (“Inherency is not necessarily coterminous with the knowledge of those of ordinary skill in the art. Artisans of ordinary skill may not recognize the inherent characteristics or functioning of the prior art.”) Accordingly, we affirm the Examiner’s rejection of claims 6-11. Appeal 2013-002312 Application 12/756,935 8 DECISION/ORDER The Examiner’s rejection of claims 6-11 under 35 U.S.C. § 103(a) are 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). AFFIRMED cdc