Ex Parte Omura et al

Patent Trial and Appeal Board

Jun 18, 2018

14007992 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/007,992 09/27/2013 Tomohiko Omura
22902 7590 06/18/2018
CLARK & BRODY
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.
12049-0120 1396
EXAMINER
1700 Diagonal Road, Suite 510 YANG,JIE
Alexandria, VA 22314
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
06/18/2018 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 TOMOHIKO OMURA, JUN NAKAMURA, HIROKAZU
OKADA, HIROYUKI SEMBA, YUSAKU TOMIO, HIROYUKI HIRATA,
MASAAKI IGARASHI, KAZUHIRO OGAWA, and MASAAKI
TERUNUMA
Appeal2017-009622
Application 14/007 ,992
Technology Center 1700
Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and A VEL YN M.
ROSS, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 1--4 under 35 U.S.C. § 103(a) as
unpatentable over Igarashi et al. (US 7,531,129 B2, issued May 12, 2009) as
1 Our decision refers to the Specification (Spec.) filed September 27, 2013,
Appellants' Appeal Brief (Appeal Br.) filed March 13, 2017, the Examiner's
Answer (Ans.) dated May 15, 2017, and Appellants' Reply Brief (Reply Br.)
filed July 3, 2017.
2 According to Appellants, the real party in interest is Nippon Steel
Sumitomo Metal Corporation. Appeal Br. 3.
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Application 14/007 ,992
evidenced by ASTM (ASTM Standard El 12-96, "TABLE 4: Grain Size
Relationships Computed for Uniform, Randomly Oriented, Equiaxed
Grains", ASTM International, West Conshohocken, PA (2004)). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
STATEMENT OF THE CASE
The invention relates to a high-strength austenitic stainless steel for
high-pressure hydrogen gas, wherein the steel has a tensile strength of 800
MPa or higher and excellent mechanical properties in a high-pressure
hydrogen gas environment. Spec. Title of Invention and ,r 1.
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief (formatting and paragraphing added), is illustrative of the subject
matter on appeal. The limitations at issue are italicized.
1. An austenitic stainless steel for hydrogen gas comprising:
by mass percent,
C: 0. 10% or less,
Si: 1.0% or less,
Mn: 3 % or more to less than 7%,
Cr: 15 to 24%,
Ni: 10% to 15%,
Al: 0 .10% or less,
N: 0.10 to 0.50%, and
at least one kind of V: 0.01 to 1.0% and Nb: 0.01 to
0.50%,
the balance being Fe and impurities,
wherein in the impurities, the P content is 0.050% or less
and the S content is 0.050% or less,
the tensile strength is 800 MPa or higher,
the grain size number in accordance with ASTM El 12 is
No. 8 or higher, and
alloy carbo-nitrides having a maximum diameter of 5 0 to
1000 nm are contained in the number of 0.4/µm 2 or larger in
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cross section observation.
Independent claim 2 recites an austenitic stainless steel for hydrogen
gas substantially as set forth in claim 1, further requiring at least one element
selected from first, second, third, and fourth element groups.
ANALYSIS
The dispositive issue before us is whether Appellants have identified
reversible error in the Examiner's finding that Igarashi's example Al, shown
in Table 6, possesses the properties recited in claims 1 and 2. We answer
this question in the affirmative and, therefore, do not sustain the Examiner's
obviousness rejection based on this finding.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability"). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
Here, the Examiner finds Igarashi's example Al has all of the alloy
components and amounts as recited in claims 1 and 2. Ans. 2--4 (see the
Examiner's comparison table, Ans. 4). As such, the Examiner finds Igarashi
teaches the same alloy as recited in claims 1 and 2. Id. at 2. The Examiner
further finds Igarashi teaches a grain size of not greater than 20 um, which
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Application 14/007 ,992
provides a grain size number of No. 8 or higher as evidenced by ASTM, a
tensile strength of 800 MPa or more, and no greater than 0.4 um nitride
precipitates in an amount of not less than 0.01 vol.%, with unavoidable
carbide. Id. at 2-3. The Examiner also finds example Al is a combination
of base material Ml and welding material WI. Id. at 3. The Examiner also
finds Igarashi teaches similar nitride and carbide forming elements, e.g., Cr,
V, Al, and Nb, in a welding alloy composition, as indicated in base material.
Id. at 4. The Examiner finds these properties read on those recited in claims
1 and 2, where the precipitate number overlaps that recited in these claims.
Id. at 3. Therefore, the Examiner concludes it would have been obvious to
apply a proper amount of precipitate as Igarashi teaches because Igarashi
similarly discloses the same stainless steel for high-pressure hydrogen gas
application throughout the disclosed ranges. Id., citing MPEP 2144.05(!).
The Examiner also finds that a similar nitride/carbide precipitate level as
recited in claims 1 and 2 would be highly expected in example Al. Id. at 4.
Where a claimed product appears to be identical or substantially
identical to a product disclosed or suggested by the prior art, the burden is
properly shifted to the applicant to show that the prior art product does not
necessarily or inherently possess the recited properties recited in the claims.
See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d
1252, 1254-56 (CCPA 1977). Cf In re Crish, 393 F.3d 1253, 1259 (Fed.
Cir. 2004). An examiner's belief is reasonable where starting materials and
processing of the prior art are so similar to those disclosed by the applicant
that it appears that the claimed characteristic would naturally result when
conducting the process as taught in the prior art. Spada, 911 F.2d at 708;
Best, 562 F.2d at 1255. What is required is that the recited properties
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Application 14/007 ,992
inevitably result from the disclosed steps. In re Montgomery, 677 F.3d
1375, 1380 (Fed. Cir. 2012) ("[i]nherency ... may not be established by
probabilities or possibilities.").
The difficulty with the Examiner's findings regarding Igarashi is that
the Examiner relies on example Al which, as Appellants argue (Appeal Br.
15-16; Reply Br. 1-2), is a weld joint alloy composed of a combination of
both the base steel alloy Ml and the welding steel alloy WI. The
Examiner's findings that Igarashi teaches an alloy having the components
and amounts as recited in claims 1 and 2 requires reliance on this weld joint
alloy Al because, as Appellants assert (Appeal Br. 15), base material Ml
does not have a nickel content within the range recited in these claims.
Igarashi, Table 5, 7:57----67. Yet, Igarashi's austenite grain size and carbo-
nitride precipitate disclosures are directed, not to the welded joint examples
including example Al, but to the base materials such as Ml whose
composition and processing is different from that of the weld joint Al. See
Appeal Br. 15-16.
As Appellants argue, the processing history of a metal alloy is known
in the art and taught in both Igarashi and Appellants' Specification to be
critical in order to obtain the observed properties in the processed alloy.
Igarashi 19:31-55. While Igarashi discloses the processing history of base
material M 1 and properties thereof including the austenite grain size and
nitride precipitate level, the Examiner does not establish by a preponderance
of the evidence that a welded joint produced by fusion of the base material
and a weld material would necessarily result in or reasonably would have
been expected to have the same properties as the base material that has not
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fused with the weld material where, as here, the weld joint has a different
composition to the base material and a different processing history.
Accordingly, the Examiner has not carried the burden of establishing,
by a preponderance of the evidence, the factual basis for the conclusion that
the claimed invention would have been obvious. Under these circumstances,
we cannot conclude that the Examiner has met the minimum threshold of
establishing obviousness under 35 U.S.C. § 103(a) of claims 1 and 2, and
dependent claims 3 and 4. See Oetiker, 977 F.2d at 1445; KSR Int'! Co. v.
Teleflex, Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006)).
DECISION
Upon consideration of the record, and for the reasons given above and
in the Appeal and Reply Briefs, the decision of the Examiner rejecting
claims 1--4 under 35 U.S.C. § 103(a) as unpatentable over Igarashi as
evidenced by ASTM is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
REVERSED
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