Ex Parte Samuel et al

Patent Trial and Appeal Board

Feb 27, 2018

14085129 (P.T.A.B. Feb. 27, 2018)

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.
14/085,129 11/20/2013 Chris John Paul Samuel TKSU-11802/08 4713
25006 7590 03/01/2018
DTNSMORF fr SHOHT T T P
EXAMINER
900 Wilshire Drive JOHNSON, JONATHAN J
Suite 300
TROY, MI 48084 ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
MichiganPatTM @ dinsmore. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS JOHN PAUL SAMUEL,
BERTRAM WILHELM EHRHARDT, MARKUS WILHELM FORSCH,
ROGER DALE BOGGS, and STANLEY WAYNE BEVANS1
Appeal 2016-006033
Application 14/085,129
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—13 and 15—20.2 An oral hearing was held on
February 15, 2018. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The applicant is ThyssenKrupp Steel USA, LLC. ThyssenKrupp Steel
USA, LLC, is also identified as the real party in interest. App. Br. 1.
2 Claim 14 was canceled in an amendment following the Final Action. See
Amendment dated August 24, 2015.
Appeal 2016-006033
Application 14/085,129
BACKGROUND
The subject matter on appeal relates to a process for manufacturing a
ferritic hot rolled steel strip. E.g., Spec. 12; Claim 1. Claim 1 is reproduced
below from page 9 (Appendix A) of the Appeal Brief:
1. A process for manufacturing a ferritic hot rolled steel strip
comprising:
providing a steel slab having a chemical composition in weight
percent within a range of 0.050-0.080 C, 0.15-0.60 Mn, 0.20
maximum (max) Si, 0.04 max Ti, 0.008 max V, 0.006 max Mo,
O. 1 max Ni, 0.05 max Cr, 0.08 max Cu, 0.015 max S, 0.04 max
P, 0.01 max N, 0.006 max B, 0.06 max Al, balance Fe and
melting impurities;
soaking the steel slab within a temperature range between 1100
to 1400°C;
hot rolling the soaked steel slab in a roughing treatment at
temperatures between 900 to 1400°C and producing a transfer
bar;
hot rolling the transfer bar in a finishing treatment using a
finishing treatment at entry temperatures between 900—1100°C
and exit temperatures between 720-850°C and producing hot
rolled strip; and
coiling the hot rolled strip at a coiling station at temperatures
between 580-780°C;
the coiled hot rolled steel strip having a fully ferritic
microstructure and a yield strength between 130-210 MPa, a
tensile strength greater than 260 MPa, a uniform elongation
greater than 15%, a total elongation to failure greater than 30%
and strain hardening exponent greater than 0.2.
2
Appeal 2016-006033
Application 14/085,129
REJECTIONS ON APPEAL3
1. Claims 1—9, 12—13, and 15—20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Nomura et al. (US 6,982,012 B2, issued Jan. 3,
2006) andNakagawa (US 2010/0196189 Al, published Aug. 5, 2010).
Final Act. 2—5; Ans. 2—A.
2. Claims 10 and 11 stand rejected under 35 U.S.C. § 103 as
unpatentable over Nomura, Nakagawa, and Yokoi (US 2010/0108201 Al,
published May 6, 2010). Final Act. 5; Ans. 4—5.
3. Claims 1—13 and 15—20 stand rejected for obviousness-type double
patenting over claims 1—17 of Application No. 14/105,388, now issued as
U.S. Patent No. 9,593,399. Final Act. 7.4
4. Claims 1—13 and 15—20 stand provisionally rejected for
obviousness-type double patenting over claims 1—12 of Application No.
14/188,810. Final Act. 7; Ans. 5—6.
3 The provisional obviousness-type double patenting rejection over claims
1—19 of Application No. 14/169,184 is moot in view of the abandonment of
that application. See Final Act. 7; Ans. 5.
4 The double patenting rejection over the ’388 application was not repeated
in the Examiner’s Answer. See Ans. 5—6. However, in the Answer, the
Examiner maintained all grounds of rejection “except for the grounds of
rejection (if any) listed under the subheading ‘WITHDRAWN
REJECTIONS.’” Id. at 2. The Answer does not include a “WITHDRAWN
REJECTIONS” subheading. See generally Ans. Accordingly, the double
patenting rejection based on the ’388 application (now the ’399 patent) is
before us in this appeal.
3
Appeal 2016-006033
Application 14/085,129
ANALYSIS
Rejections 1 and 2
The Appellants argue the claims subject to Rejections 1 and 2 as a
group. We select claim 1 as representative of the rejected claims, and we
limit our discussion to claim 1. The remaining claims on appeal will stand
or fall with claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in Rejections 1 and 2.
Accordingly, we affirm those rejections for the reasons stated below.
The Examiner finds that Nomura teaches a process for manufacturing
a hot rolled steel strip that is similar to the claimed process. See Ans. 2-4.
The Examiner identifies the following differences between Nomura’s
process and the claimed process: (1) the composition of Nomura’s steel
differs from the claimed composition in that the disclosed ranges of some of
Nomura’s elements overlap, but are not identical to, the claimed ranges;
(2) the composition of Nomura’s steel differs from the claimed composition
in that the disclosed ranges of some of Nomura’s elements (C and Mo) do
not overlap, but closely approach, the claimed ranges; (3) the disclosed
temperature ranges at which the steps of Nomura’s process take place
overlap, but are not identical to, the claimed temperature ranges; (4) Nomura
does not expressly teach that its steel has “a fully ferritic microstructure,” as
recited by claim 1; and (5) Nomura does not expressly disclose the claimed
yield strength, tensile strength, uniform elongation, total elongation, and
strain hardening values recited by claim 1. See id.
4
Appeal 2016-006033
Application 14/085,129
Regarding differences (1) and (3), the Examiner determines that the
overlapping concentration and temperature ranges of Nomura result in a
prima facie case of obviousness of the claimed concentration and
temperature ranges recited by claim 1. Id.
Regarding difference (2), the Examiner acknowledges that the
disclosed concentration ranges of some of Nomura’s elements (C and Mo)
do not overlap the claimed ranges, but the Examiner determines that the
disclosed and claim ranges “are close enough [that] a prima facie case of
obviousness still exists.” Id. at 3.
Regarding difference (4), the Examiner finds that Nakagawa
“teach[es] a similar steel with single phase ferrite [that] exhibits high tensile
strength and improved stretch flangeability.” Id. The Examiner determines
that “it would have been obvious ... to modify the steel in Nomura et al.
into single phase ferrite, in order to obtain high tensile strength and
improved stretch flangeability, as taught by Nakagawa et al.” Id.
Regarding difference (5), the Examiner determines that the claimed
properties would be present in the steel of Nomura as modified by
Nakagawa because the combined references “teach[] a fully ferritic hot
rolled steel strip with a same or substantially the same composition made by
a same or substantially the same method.” Id. at 4.
In view of those findings, the Examiner concludes that the subject
matter of claim 1 would have been obvious to a person of ordinary skill in
the art. Id. at 2-4.
The Appellants do not challenge the Examiner’s findings that Nomura
teaches, suggests, or otherwise renders obvious the claimed concentration
and temperature ranges (differences (1), (2), and (3)). See generally App.
5
Appeal 2016-006033
Application 14/085,129
Br. 3—7. Nor do the Appellants argue that the processes taught by the
combined prior art differ from the claimed process. See id.
However, the Appellants argue that the composition of the combined
prior art falls beyond the scope of the claim because “Nakagawa . . . requires
between 0.05—0.25 Ti and 0.05—0.25 V,” which is “not close enough to 0.04
max Ti and 0.008 max V to establish a prima facie case of obviousness.”
App. Br. 4.
That argument is not persuasive because the Examiner does not rely
on Nakagawa for disclosing a steel composition with the claimed
concentrations of Ti and V. As set forth above, the Examiner finds that
Nomura teaches a steel composition having concentrations of Ti and V that
overlap the claimed ranges. See Ans. 2—3 (providing table showing the
concentration ranges of each element of the claims and Nomura). The
Appellants do not dispute the Examiner’s findings in that regard. The
Appellants’ argument, rather, is that the substitution of Nakagawa’s steel
composition, including its concentrations of Ti and V, for Nomura’s steel
composition results in steel having a composition differing from that
claimed. See App. Br. 4. But the Appellants provide no explanation as to
why the proposed combination would require such a substitution. We
understand the Examiner’s rejection to rely on Nomura for the disclosure of
a steel composition comprising amounts of Ti and V that overlap the ranges
of claim 1, and on Nakagawa for its disclosure concerning the benefits of a
fully ferritic micro structure. See Ans. 2-4. The Appellants do not argue that
it would have been beyond the level of ordinary skill in the art to obtain a
fully ferritic micro structure using Nomura’s steel composition, as proposed
by the Examiner. On this record, the Appellants’ argument concerning
6
Appeal 2016-006033
Application 14/085,129
Nakagawa’s Ti and V concentrations is not persuasive of reversible error in
the Examiner’s rejection. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011) (explaining that, even if the examiner had failed to make a prima facie
case, the Board would not have erred in framing the issue as one of
reversible error because “it has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections”).
The Appellants also argue that “neither Nomura ... or Nakagawa . . .
disclose or fairly suggest a yield strength between 130-210 MPa as recited
in claim 1.” App. Br. 4. However, that argument is again based on the
assumption that the prior art steel composition relied on by the Examiner
includes the amounts of Ti and V disclosed by Nakagawa, rather than the
amounts of Ti and V disclosed by Nomura. See id. at 4—5. The Appellants
do not argue that steel compositions having the amounts of Ti and V taught
by Nomura (i.e., amounts that overlap the claimed Ti and V ranges),
modified to possess a fully ferritic microstructure as suggested by
Nakagawa, would not possess the yield strength recited by claim 1. The
Appellants’ argument, accordingly, does not meaningfully address the
Examiner’s rationale, and, therefore, is not persuasive of reversible error.
See Jung, 637 F.3d at 1365.
Finally, the Appellants argue that modifying Nomura in view of
Nakagawa to obtain a fully ferritic micro structure would render the steel of
Nomura “unsatisfactory for its intended purpose” because Nomura teaches a
steel composition “with retained austenite, ferrite and at least one of bainite
and martensite.” App. Br. 6—7. In other words, the Appellants argue that,
because Nomura’s steel is not fully ferritic, modifying it to obtain fully
ferritic steel would render Nomura’s steel unsatisfactory for its intended
7
Appeal 2016-006033
Application 14/085,129
purpose. Id. The Appellants state that “the purpose of Nomura et al. is [to]
produce [a] hot rolled strip that avoids a fully ferritic microstructure.” Id. at
7.
That argument is not persuasive. Nomura describes its compositions
with retained austenite and bainite and/or martensite as “preferred
embodiment[s].” See, e.g., Nomura at 5:12—35; see also id. at 2:27—31. We
are not persuaded by the Appellants’ discussion of Nomura that Nomura’s
purpose is as narrow as suggested by the Appellants, i.e., to “avoid[] a fully
ferritic microstructure.” See App. Br. 7. Rather, Nomura is more broadly
concerned with producing high strength steel “having excellent workability
and shape accuracy.” See, e.g., Nomura at Title, Abstract, 1:11—18.
Nakagawa, similarly, is concerned with producing high strength steel. See,
e.g., Nakagawa at Abstract. On this record, we are not persuaded that the
Examiner’s proposed modification would render Nomura’s steel unsuitable
for its intended purpose.
We affirm the Examiner’s rejection of claim l.5
5 In the Reply Brief, the Appellants argue for the first time that Nakagawa’s
steel “is not fully ferritic as recited in claim 1.” Reply Br. 2. That argument
was not presented in the opening Appeal Brief. On the contrary, the
Appellants “assume [d] for arguments sake that a combination of Nomura et
al. and Nakagawa et al. provide[s] a fully ferritic microstructure,” and made
no specific argument to the contrary. See App. Br. 5. Accordingly, the new
argument in the Reply Brief is untimely, and the Appellants have not shown
good cause for failing to raise that argument in the opening Appeal Brief.
See 37 C.F.R. § 41.41(b)(2). We decline to consider it.
8
Appeal 2016-006033
Application 14/085,129
Rejections 3 and 4
The Appellants do not acknowledge or address the obviousness-type
double patenting rejections. See generally App. Br.; Reply Br.
Accordingly, we summarily affirm those rejections.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1—13 and 15—20.
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
9