Ex Parte Takajo et al

Patent Trial and Appeal Board

Jul 24, 2018

14367273 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/367,273 06/20/2014
35811 7590 07/26/2018
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Shigehiro Takajo
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.
SUG-14-1703 4869
EXAMINER
YANG,JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
pto. phil@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHIGEHIRO TAKAJO, SEIJI OKABE,
HIROT AKA INOUE, and
MICHIRO KOMATSUBARA
Appeal2017-010245
Application 14/367 ,273 1
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL,
and JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 5-9.
We have jurisdiction under 35 U.S.C. § 6(b). 2
1 Appellant is the Applicant, JFE Steel Corporation, which, according to the
Brief, is the real party in interest. Appeal Brief (Appeal Br. 1) filed April
18,2017.
2 Our Decision refers to the Specification (Spec.) filed June 20, 2014, the
Final Office Action (Final Act.) notice emailed November 15, 2016,
Appellant's Appeal Brief (Appeal Br.) filed April 18, 2017, the Examiner's
Appeal2017-010245
Application 14/367,273
We AFFIRM-IN-PART.
The subject matter on appeal relates to grain-oriented electrical steel
sheets and methods of manufacturing grain-oriented electrical steel sheets
(see, e.g., claims 1 and 6). According to the Inventors, there is increasing
demand for electrical steel sheet having high flux density, low iron loss, and
reduced noise. Spec. ,r,r 2, 10. The Inventors state there are methods to
improve flux density and iron loss, but iron loss properties tend to worsen as
the flux density is increased. Id. ,r,r 3--4. The Inventors further disclose it is
known to induce thermal strain in electrical steel via plasma flame
irradiation, laser irradiation, electron beam irradiation, and the like to reduce
iron loss, but such methods can increase the hardness of the steel, which is
considered to create a higher dislocation density and increased hysteresis
loss and noise. Id. ,r,r 7-10, 14--15.
According to the Inventors, it is generally possible to inhibit
hysteresis loss and noise if an increase in hardness is minimized by reducing
the energy with which electrical steel is irradiated. Id. ,r 17. However,
lower irradiation energy alone results in higher total iron loss. Id. In view
of this, the Inventors conducted experiments and determined that screening
(i.e., selecting) electrical steels having a ratio of hysteresis loss to total iron
loss of less than 45% and irradiating the screened electrical steels with lower
irradiation energy than that used in conventional techniques resulted in
electrical steels having both low iron loss and low noise. Id. ,r,r 18, 34, 3 7,
39, 41.
Answer (Ans.) dated June 9, 2017, and Appellant's Reply Brief (Reply Br.)
filed July 28, 2017.
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Application 14/367,273
Independent claim 5 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. Limitations at issue are italicized.
5. A grain-oriented electrical steel sheet comprising
magnetic domains refined by lattice defect regions being locally
formed on a surface of or within the steel sheet by irradiating
the steel sheet with a heat beam, a light beam or a particle
beam, wherein the lattice defect regions have a hardness, as
measured by a micro Vickers hardness meter, equal to or lower
than that of other regions.
REJECTIONS ON APPEAL 3
I. Claims 5-9 under 35 U.S.C. § I03(a) as being
unpatentable over Sakai 4 in view of Inokuti; 5 and
II. Claim 5, provisionally, on the ground of nonstatutory
obviousness-type double patenting as being unpatentable
over claims 1 and 2 of application 14/367,654.
B. DISCUSSION
Rejection over Sakai in view of Inokuti
Claims 5-9 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Sakai in view of Inokuti. We address claims 5 and 6-9
separately below in view of Appellant's arguments.
3 The rejection of claims 5 and 6 under 35 U.S.C. § I02(b) as being
anticipated by Sakai et al., US 6,368,424 Bl, has been withdrawn by the
Examiner. Ans. 2.
4 Sakai et al., US 6,368,424 Bl, issued Apr. 9, 2002 ("Sakai").
5 Inokuti et al., US 5,411,604, issued May 2, 1995 ("Inokuti").
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Application 14/367,273
Claim 5
The Examiner finds Sakai discloses manufacturing a grain-oriented
electrical steel sheet via pulse laser light irradiation but Sakai does not
specify that a lattice defect region has a hardness, as measured via micro
Vickers hardness, equal to or lower than that of other regions, as recited in
claim 5. Final Act. 3. The Examiner finds such a hardness would be related
to the scanning energy density used in irradiation, citing Inokuti. Id. The
Examiner further finds that Inokuti discloses a process of manufacturing
grain oriented steel sheet with reduced iron loss by adjusting the surface
energy density for the steel. Id. at 3--4. The Examiner concludes it would
have been obvious to modify surface energy density Sakai's process in view
of Inokuti to refine the magnetic domains in Sakai's steel sheet. Id. at 4.
Appellant contends that when one calculates the irradiating energy
density for the example disclosed by Sakai, one determines its energy
density is higher than the examples disclosed in Appellant's Specification,
citing the Declaration of Seiji Okabe filed February 13, 2017 ("Okabe
Declaration"). Appeal Br. 2--4; Reply Br. 1-3. Appellant asserts that the
example having the highest energy density in the Specification resulted in an
increased hardness so the irradiated portion of Sakai's example, which uses
an even higher energy density, would also experience an increase in
hardness, not a hardness equal to or lower than that of other regions, as
recited in claim 5. Appeal Br. 4--5; Reply Br 3--4; Okabe Declaration 1-3.
Thus, according to Appellant, Sakai's electrical steel would not inherently
possess the claimed hardness. Appeal Br. 5-7.
Appellant's arguments are unpersuasive. The rejection of claim 5 is
not over Sakai alone but the combination of Sakai and Inokuti. As discussed
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Application 14/367,273
above, the Examiner finds Inokuti discloses a process of manufacturing
grain oriented steel sheet with reduced iron loss by modifying the surface
energy density for the steel and concludes it would have been obvious to
modify Sakai in view of Inokuti. Final Act. 3--4.
Inokuti discloses a method of producing reduced iron loss, low noise,
grain oriented silicon steel sheet for a transformer. Inokuti 1 :9--12.
Inokuti's method includes irradiating the steel (i.e., with an electron beam)
so the surface energy density on the surface of the steel is controlled to be
0.16 J/cm2 or more, such as 0.23 J/cm2. Id. 3:22-34, 5:66-68, 6:25-29,
7:46-68, 8:1-14. These energy density values respectively correspond to
1.6 mJ/mm2 and 2.3 mJ/mm2, which are lesser values than those calculated
by Appellant for the examples (e.g., samples 2, 3, 5, 6, 8, and 9) that did not
experience an increase in hardness after irradiation. Appeal Br. 4; Spec. ,r
40, Table 2. As a result, there would have been a reasonable expectation of
success that the combination of Sakai and Inokuti would have resulted in an
electrical steel having the hardness of claim 5.
Furthermore, the combination of Sakai and Inokuti is a substitution of
one known process (Inokuti' s irradiation method for electrical steel) for
another (Sakai's irradiation method for electrical steel) that yields no more
than a predictable result or is the mere application of a known technique to
prior art that is ready for improvement. See KSR Int'! Co. v. Teleflex Inc.,
550 U.S. 398, 416--417 (2007). Moreover, Inokuti discloses that its process
produces steel with reduced iron loss and noise (Inokuti 1 :9--15), which
would have provided one of ordinary skill in the art a reason to modify Sakai
in view of Inokuti.
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Application 14/367,273
Appellant further argues the hardness of claim 5 is attained by
selecting a steel sheet having a ratio of hysteresis loss to total iron loss of
less than 45% via screening and irradiating the selected steel sheet. Reply
Br. 2-3. This argument is also unpersuasive because Appellant's
Specification states that (1) screening electrical steels having a ratio of
hysteresis loss to total iron loss of less than 45% and (2) irradiating the
screened electrical steels with lower irradiation energy than conventional
techniques results in electrical steels having both low iron loss (e.g., 0.80
W/kg or lower) and low noise (e.g., 45 dBA or lower). Spec. ,r,r 18, 34, 37,
39, 41. A degree ofhardness reduction may also occur, as stated in
paragraph 18 of the Specification and demonstrated by samples 2, 3, 5, and 6
in Table 2 at paragraph 40. However, samples 8 and 9 in Table 2
demonstrate that one can achieve the claimed hardness even though the
selection step of Appellant's invention is not followed. Specifically,
samples 8 and 9 each had a ratio of hysteresis loss to total iron loss of 48 %
prior to irradiation, which exceeds the ratio limit of less than 45% disclosed
by the Inventors (id. ,r 41 ), yet samples 8 and 9 experienced a O % change in
hardness of their irradiated portions. Id. ,r 40, Table 2. Therefore, in light of
Appellant's Specification, we are not persuaded that the properties recited in
claim 5 would not reasonably have been expected absent the argued
selection step. We further note that claim 5 does not require a specific
degree of iron loss or noise for the electrical steel.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claim 5.
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Application 14/367,273
Claims 6-9
Claim 6 recites a method of manufacturing the grain-oriented steel
sheet of claim 5, including steps of "selecting a steel sheet having a ratio of
hysteresis loss to total iron loss of less than 45% by screening" and
"irradiating the steel sheet with a heat beam." Claims 7-9 depend from
claim 6.
In the rejection of claim 6, the Examiner finds Sakai discloses the
selection of a steel sheet having a ratio of hysteresis loss to total iron loss, as
recited in claim 6. Final Act. 4. Appellant argues Sakai only discloses the
relationship between incident laser power to iron loss after laser irradiation,
not selecting a steel having a ratio of hysteresis loss to total iron loss of less
than 45% and irradiating the selected steel, as recited in claim 6. Appeal Br.
7-8. Appellant argues Inokuti also fails to disclose the selection step of
claim 6. Appeal Br. 8.
Appellant's arguments are persuasive. The Examiner responds to
Appellant's arguments by repeating the finding that Sakai discloses the
selection step of claim 6 and citing Table 4 of Sakai. Ans. 4. However, as
argued by Appellant at page 3 of the Reply Brief, Table 4 of Sakai includes
a ratio of iron loss values before and after laser irradiation, not selecting a
steel according to the ratio recited in claim 6. Sakai 14:66-67, 15:1-22.
Further, the Examiner's other findings are directed to irradiation intervals
and directions, not the selection of a steel having a ratio of hysteresis loss to
total iron loss of less than 45%. Final Act. 4; Ans. 4. Thus, the Examiner's
findings do not address claim 6 as it is written.
For the reasons discussed above, we do not sustain the Examiner's
§ 103(a) rejection of claims 6-9.
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Application 14/367,273
Double Patenting Rejection
Claim 5 is provisionally rejected on the ground of nonstatutory
obviousness-type double patenting as being unpatentable over claims 1 and
2 of application 14/367,654.
Application 14/367,654 issued as US 10,020,101 on July 10, 2018.
Because the claims of the issued patent were amended subsequent to the
Examiner's provisional rejection, the rejection is moot. Accordingly, we
leave it to the Examiner to assess whether the provisional obviousness-type
double patenting rejection should be converted to a non-provisional
obviousness-type double patenting rejection based on the claims of US
10,020,101. Cf, ExparteJerg, 2012 WL 1375142 at *3 (BPAI 2012)
(informative) ("Panels have the flexibility to reach or not reach provisional
obviousness-type double-patenting rejections.") (citing Ex parte Monda, 95
USPQ2d 1884 (BPAI 2010) (precedential)).
C. CONCLUSION
On the record before us, we:
I. sustain the§ 103(a) rejection of claim 5; and
II. do not sustain§ 103(a) rejection of claims 6-9.
DECISION
The decision of the Examiner to reject claims 5-9 is affirmed-in-part.
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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-IN-PART
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