14112717 (P.T.A.B. Jul. 26, 2018)

Ex Parte Suto et al

Patent Trial and Appeal BoardJul 26, 2018

14112717 (P.T.A.B. Jul. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/112,717 10/18/2013 23122 7590 RATNERPRESTIA 2200 Renaissance Blvd Suite 350 King of Prussia, PA 19406 07/30/2018 FIRST NAMED INVENTOR Mikita Suto 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. JFE-183US 9710 EXAMINER JOHNSON, JONATHAN J ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 07/30/2018 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): PCorrespondence@ratnerprestia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MIKITO SUTO, KATSUMI KOJIMA, MASAKI TADA, TAKUMI TANAKA, and YOICHI TOBIY AMA Appeal2017---008499 Application 14/112,717 1 Technology Center 1700 Before JEFFREY T. SMITH, LILAN REN, and JANEE. INGLESE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the final rejection of claim 1, the only claim on appeal. 2 We have jurisdiction under35 U.S.C. Â§ 6. 1 The real party in interest is JFE Steel Corporation. (App. Br. 2). 2 Claim 2 has been withdrawn from consideration. (Final Act. 1 ). Appeal2017---008499 Application 14/112,717 Appellants' invention relates to a steel sheet with excellent formability and surface quality after forming. The steel sheet is useful for a can body with high resistance to buckling against external pressure. (Spec. ,r 21 ). Claim 1 is illustrative: 1. A steel sheet with excellent formability and surface quality after forming to be used for a can having a can body with high resistance to buckling against external pressure, the steel sheet having a chemical composition containing, by mass%, C: 0.0005% or more and 0.0035% or less, Si: 0.05% or less, Mn: 0.1 % or more and 0.6% or less, P: 0.02% or less, S: less than 0.02%, Al: 0.01 % or more and less than 0.10%, N: 0.0030% or less, B: 0.0010% or more, in which the relationship BIN :S 3.0 is satisfied where BIN= (B (mass%))/10.81)/(N (mass%)/14.01), and the balance being Fe and inevitable impurities, and a microstructure in which the average integrated intensity fin the (111)[1-10] to (111)[-1-12] orientations on a plane parallel to a sheet surface at a position located at 1/4 of the thickness of the steel sheet is 7. 0 or more, wherein an average ferrite grain size in a cross section in the rolling direction is 6.0 Âµm or more and 10.0 Âµm or less, and the relationships EA vE 2: 215 GPa, Eo 2: 210 GPa, E4s 2: 210 GP a, E90 2: 210 GP a, and -0.4 :S ~r :S 0.4 are satisfied, where where Eo, E4s, and E90 are Young's moduli respectively in directions at angles of 0Â°, 45Â°, and 90Â° with respect to the rolling direction, and ~r = (ro - 2r4s + r90)/2, 2 Appeal2017---008499 Application 14/112,717 where ro, r4s, and r90 are Lankford values respectively in directions at angles of 0Â°, 45Â°, and 90Â° with respect to the rolling direction. Appellants request review of the following rejection (App. Br. 5) from the Examiner's final office action: Claim 1 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over the combination of Tosaka3 (JP 2005-320633 (A); published Nov. 17, 2005) in view ofKizu4 (JP 2007-092130 (A); published Apr. 12, 2007). OPINION The dispositive issue on appeal is: Did the Examiner err in determining that the combination of Tosaka and Kizu would have led one skilled in the art to a steel sheet with excellent formability and surface quality after forming containing B (by mass%) 0.0010% or more and in which the relationship BIN :S 3.0 is satisfied where BIN= (B (mass%))/10.81)/(N (mass%)/14.01); having a Young's modulus E4s in a direction at a 45Â° angle with respect to the rolling direction of greater than or equal to 210 GPa; and a micro structure in which the average integrated intensity fin the (111)[1-10] to (111)[-1-12] orientations on a plane parallel to a sheet surface at a position located at 1/4 of the thickness of the steel sheet is 7.0 or more as required by the subject matter of claim 1? 3 The Examiner and Appellants rely on the machine-generated translation for this document that has been provided in the record. 4 The Examiner and Appellants rely on the machine-generated translation for this document that has been provided in the record. 3 Appeal2017---008499 Application 14/112,717 After review of the respective positions provided by Appellants and the Examiner, we REVERSE the prior art rejection for the reasons presented by the Appellants and add the following. We refer to the Examiner's Answer for a statement of the Examiner's rejection (Final Act. 2--4). The Examiner found Tosaka teaches a steel sheet composition comprising C, Si, Mn, P, S, Al, N, B, and Fe in amounts that overlap the claimed invention. (Id. at 2-3). The Examiner found the claimed BIN would have been achievable by routine investigation. (Id. at 3). The Examiner found T osaka did not teach the claimed orientation intensities or the claimed Young's moduli. The Examiner found that Kizu teaches the claimed orientation intensities and Young's moduli. (Id. at 3--4). The Examiner concluded that it would have been obvious to a skilled artisan to incorporate the orientation intensities and Young's moduli into the sheet of Tosaka in order to obtain high strength and excellent rigidity, as taught by Kizu. (Id. at 4). Appellants argue that the differences in chemical compositions between Tosaka and Kizu demonstrate that one of ordinary skill in the art would not have modified the chemical composition of T osaka based on Kizu as proposed by the Examiner. (App. Br. 12-13). Appellants specifically state: [T]here are substantial differences between the ranges of C and Ti contents required by Kizu and Tosaka to form their respective steels and to achieve their respective and divergent objectives. One of ordinary skill in the art would not have been motivated to combine Kizu and Tosaka, or to modify the composition of Tosaka based on the teachings of Kizu, because one of ordinary skill in the art would have expected that modifying the C or Ti content of Tosaka would 4 Appeal2017---008499 Application 14/112,717 result in a steel sheet that failed to achieve the features taught by Tosaka. App. Br. 13. We agree with Appellants. The Examiner proposes modifying Tosaka's steel composition by looking to Kizu to adjust the orientation intensities and Young's moduli. The Examiner has not analyzed the compositional differences between Tosaka and Kizu. Tosaka discloses the content of Cat 0.0020wt% or less provides significant improvement in the first ordered deep drawing. (Tosaka ,r 23). Tosaka also discloses the composition comprises 0.0005---0.0020wt% B, 0.003-0.030wt% Ti and 0.0030wt% or less ofN. (Id. ,r,r 29-32). Kizu discloses the properties of the described invention are based upon compositions comprising mass%, C: 0.02---0.15%, N: % 0.01 or less, Ti: 0.1-1.0%, and satisfies equation 1. (Kizu ,r 12). The Examiner's response to argument, Answer 6, states: "appellant has not provided any factual evidence to show that incorporating Kizu would have upset the steel sheet of Tosaka." The Examiner's position is not well taken. During examination, the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." KSR Int'! v. Teleflex, Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also, Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 5 Appeal2017---008499 Application 14/112,717 2009) ("[T]he analysis that 'should be made explicit' refers not to the teachings in the prior art of a motivation to combine, but to the court's analysis."). The Examiner has failed to address the significant differences in the steel compositions of Tosaka and Kizu. The Examiner has not addressed the modifications that are required for Tosaka's steel compositional content to achieve the claimed orientation intensities and Young's moduli. The Examiner has not directed us to evidence or adequately explained how to achieve the claimed orientation intensities and Young's moduli and maintain Tosaka's steel compositional content within the disclosed amounts. Appellants have persuasively argued that the Examiner's proposed motivation for combining the applied prior art is not supported by the evidence of record. Since we reverse because the Examiner has not established that the relied-upon disclosures are sufficient to support obviousness, we need not reach the issue of the sufficiency of the Declaration presented by Appellants. Cf In re Geiger, 815 F.2d 686, 688 (Fed. Cir. 1987). For the foregoing reasons and those stated in the Briefs, we determine that the Examiner's conclusion of obviousness is not supported by facts. "Where the legal conclusion [ of obviousness] is not supported by facts it cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Accordingly, the Examiner's rejection of claim 1 over the combination of Tosaka and Kizu is reversed. Non-statutory Obviousness-Type Double Patenting Rejections In view of our reversal of all of the rejection covering claim 1, we decline to reach the merits of the obviousness-type double patenting 6 Appeal2017---008499 Application 14/112,717 rejection over claims 1--4 of copending Application No. 14/440,779. We refer this back to the Examiner to determine the appropriateness of this rejection. See Ex parte Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential). The Examiner should process the obviousness type double patenting rejection consistent with MPEP Â§ 804 upon return of the present application to the jurisdiction of the Examiner. ORDER The rejection of claim 1 under 35 U.S.C. Â§ 103(a) as unpatentable over T osaka and Kizu is reversed. We have not reached the merits of the obviousness-type double patenting rejection. REVERSED 7