Ex Parte Takada et al

Patent Trial and Appeal Board

Jul 30, 2018

13138534 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/138,534 08/30/2011
2292 7590 08/01/2018
BIRCH STEW ART KOLASCH & BIRCH, LLP
8110 Gatehouse Road
Suite 100 East
FALLS CHURCH, VA 22042-1248
FIRST NAMED INVENTOR
Hiromasa Takada
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.
0210-0350PUS1 6671
EXAMINER
YANG,JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
mailroom@bskb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROMASA TAKADA
and SUGURU YOSHIDA
Appeal2017-010829
Application 13/138,534 1
Technology Center 1700
Before: MICHAEL P. COLAIANNI, RAEL YNN P. GUEST,
and GEORGE C. BEST, Administrative Patent Judges.
GUEST, Administrative Patent Judge.
DECISION ON APPEAL
I. STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1--42 under 35 U.S.C. § 103(a) as being
1 Appellants identify the real parties in interest as Nippon Steel and
Sumitomo Metal Corp. Appellants' Appeal Brief 3, filed April 24, 2017
("App. Br.").
2 The Examiner's Final Office Action 2, dated August 22, 2016 ("Final
Act."), provides a "Status of the Previous rejections," in which a prior
rejection of claims 1--4 "has been withdrawn." The Examiner identifies
another previous rejection of claims 3 and 4 under 35 U.S.C. § 103(a) as
being unpatentable over U.S. Patent 8,394,213 B2, issued March 12, 2013,
to Meurer et al. ("Meurer"), alone or further in view of U.S. Patent
Appeal2017-010829
Application 13/138,534
unpatentable over Meurer in view of Guelton. 3 See Final Act. 3; Examiner's
Answer 2, dated June 15, 2017 ("Ans."). We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appellants' invention relates to low specific gravity steel for forging.
Specification ("Spec.") ,r 1. The disclosed steel is said to be superior in
machinability and useful for auto parts, machine structural parts, etc. Id. at
,r 5. Claim 1 is illustrative:
1. A steel for forging consisting of, by mass %,
C: 0.05 to 0.50%,
Si: 0.01 to 1.50%,
Mn: 5.1 to 5.5%,
P: 0.001 to 0.050%,
S: 0.020 to 0.200%,
Al: 3 .6 to 6.0%,
Cr: 0.01 to 0.20%,
N: 0.0040 to 0.0200%, and
having a balance of Fe and unavoidable impurities,
4,875,933, issued October 24, 1989, to Wan ("Wan"), but fails to provide an
alternative status for this rejection. Final Act. 2. We note that the Examiner
does not refer to this rejection in subsequent Actions, nor do Appellants
appeal it. See, e.g., Examiner's Advisory Action 2, mailed January 5, 2017;
App. Br. 8. We understand the rejection of claims 3 and 4 under 35 U.S.C.
§ I03(a) on the basis of Meurer, alone or in view of Wan, to have been
withdrawn by the Examiner, particularly in light of the reference to the sole
new ground of rejection addressed herein as being responsive to the
Applicants' amendments of record. Final Act. 2.
3 U.S. Patent 6,358,338 Bl, issued March 19, 2002, to Guelton et al.
("Guelton").
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Appeal2017-010829
Application 13/138,534
wherein the specific gravity of the steel is 7.44 or less.
App. Br. 21, Claim App'x.
II. Discussion
Claims 1--4 stand rejected under 35 U.S.C. § 103(a) (pre-AIA) as
being unpatentable over Meurer in view of Guelton.
The Examiner finds that Meurer teaches concentration ranges that
either overlap or are very close to the claimed ranges, rendering the claimed
ranges obvious, with the exception of the sulfur content. Ans. 2--4. The
Examiner relies upon Guelton's disclosure for teaching the requisite sulfur
content missing from Meurer. Id. at 4. The Examiner finds that Guelton
"teaches including less than 0.5wt%S [sic] in the alloy." Id.
The Examiner, inter alia, concludes that
[i]t would have been obvious to one of ordinary skill in the art at
the time the invention was made to add a proper amount of S in
the alloy of [Meurer] since both of [Meurer] and [ Guelton] teach
the same high Mn-content steel alloy throughout the disclosed
ranges and [Guelton] teaches that the alloy composition is related
to the casting and rolling properties of the alloy.
Id. at 4 (citing Guelton 2:18-50).
Appellants argue, inter alia, that "Guelton does not disclose the
specific amount of S, but rather the total amount of (S+Se+[Te ])" and
generally that "it would not have been obvious to the POSA at the time the
present invention was made to add 'a proper amount' of S into the alloy of
[Meurer]." App. Br. 13-14.
In light of the Appellants' arguments and upon further review of the
record, Guelton does not support the Examiner's finding that a "proper
amount" of sulfur contributes to Guelton's desirable rolling and casting
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Application 13/138,534
properties. While Guelton teaches that very high manganese steels can be
cast using "twin-roll casting" instead of conventional hot rolling processes
(Guelton 2:18-50), the expression (S+Se+Te):S0.5% in Guelton suggests that
sulfur is optional. Id. 1 :61. Thus, any rolling and casting benefits generally
taught by Guelton could not result merely from the amount of sulfur taught
therein. Thus, the Examiner has not provided a sufficient reason supported
by the evidence of record as to why the skilled artisan would have used an
amount of sulfur within the range recited in the claims to the alloy taught by
Meurer.
In view of the foregoing, we reverse the Examiner's rejection of
claims 1--4.
III. CONCLUSION
On the record before us and for the reasons discussed above, we do
not sustain the rejection maintained by the Examiner.
IV. DECISION
We reverse the Examiner's decision to reject the claims under 35
U.S.C. § 103(a) on the basis of Meurer in view of Guelton.
REVERSED
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