14413658 (P.T.A.B. Jul. 30, 2018)

Ex Parte Toda et al

Patent Trial and Appeal BoardJul 30, 2018

14413658 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/413,658 01/08/2015 25944 7590 08/01/2018 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 FIRST NAMED INVENTOR Hiroaki Toda 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. 162933 6444 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROAKI TODA, T ADAS HI NAKANISHI, MASAAKI KOHNO, and YOSHIHIKO ODA Appeal2017-009312 Application 14/413,658 Technology Center 1700 Before LINDA M. GAUDETTE, MARK NAGUMO, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1--4. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. Appeal2017-009312 Application 14/413,658 The claimed invention is generally directed to an electrical steel sheet of a specific composition and method of making it, where the variation in tensile strength (TS) of the sheet in a direction orthogonal to a rolling direction is 20 :S 15 MPa. According to the Specification, the invention is directed to a non-oriented electrical steel sheet, having a non-recrystallized deformed microstructure being 10 % or more and 70 % or less, that is used in a component to which a large stress is applied (for example, the rotor in high-speed rotating machinery such as a turbine generator, a drive motor of an electric vehicle or a hybrid vehicle, a motor for a machine tool). Spec. ,r,r 1, 15. According to the Specification, the prior art sheets suffer from strength and fatigue issues when used in motors that increasingly operate at variable speed or rotate at high speed at or above commercial frequency. Id. ,r,r 2-3. Further, prior art solutions for strengthening the sheet result in magnetic degradation due to the use of carbonitrides of Nb, Zr, Ti, V and the like as means for obtaining a high-strength non-oriented electrical steel sheet which form precipitates of carbonitrides. Id. ,r 20. Appellants solve the problems of the prior art by using a non-recrystallized and recovered microstructure as means for strengthening a steel sheet without using precipitates of carbonitrides to obtain a product with a small variation in tensile strength (20) of 15 MPa or less. Id. ,r,r 21, 27. The Specification also points to the importance of controlling manufacturing conditions to achieve the desired product. Id. ,r,r 21, 72-78, 82 (Table 7). That is, the properties of the inventive electrical steel sheet are dependent on both the compositional nature of the steel composition as well as the treatment given to the composition in making the steel sheet. 2 Appeal2017-009312 Application 14/413,658 Claims 1 and 3 are illustrative of the subject matter on appeal and are reproduced below: 1. An electrical steel sheet, a chemical composition thereof comprising, by mass%, C: 0.005 % or less, Si: more than 3.5 % and 4.5 % or less, Mn: 0.01 % or more and 0.10 % or less, Al: 0.005 % or less, Ca: 0.0010 % or more and 0.0050 % or less, S: 0.0030 % or less, and N: 0.0030 % or less, Ca/S being O. 80 or more, the balance being Fe and incidental impurities, a sheet thickness being 0.40 mm or less, a non- recrystallized deformed micro structure being 10 % or more and 70 % or less, tensile strength (TS) being 600 MPa or more, and iron loss Wl0/400 being 30 W /kg or less, wherein a variation in tensile strength (TS) of the electrical sheet in a direction orthogonal to a rolling direction is 20 :S 15 MPa. 3. A method of producing an electrical steel sheet comprising a series of processes including heating and then hot rolling a slab having the chemical composition according to claim 1 to obtain a hot-rolled sheet, subsequently coiling and subjecting the sheet to hot band annealing and pickling, then performing cold or warm rolling to yield a sheet thickness of 0.40 mm or less, and then subjecting the sheet to final annealing; a temperature during the heating of the slab being 1050 ~C or higher and 1150 Â°C or lower, a finisher delivery temperature in the hot rolling being 800 Â°C or higher and 900 Â°C or lower, a temperature for the coiling being 500 Â°C or higher and 650 Â°C or lower, a temperature for the hot band annealing being 900 Â°C or higher and 1000 Â°C or lower, and the final annealing being performed in an atmosphere containing 10 vol% or more of hydrogen and having a dew point of -20 Â°C or lower, and in a temperature range from over 650 Â°C to less than 800 Â°C. 3 Appeal2017-009312 Application 14/413,658 Appellants 1 (see generally Appeal Brief) request review of the Examiner's rejection of claims 1--4 under 35 U.S.C. Â§ 103(a) as unpatentable over Kono (JP2012136763A, published July 19, 2012 and relying on an English machine translation dated January 21, 2015), Hayakawa et al. (US 6,942,740 B2, issued September 13, 2005), and Sadahiro (US 8,936,687 B2, issued January 20, 2015). App. Br. 3; Final Act. 2-3. OPINI0N2 After review of the respective positions provided by Appellants and the Examiner, we REVERSE the Examiner's prior art rejection of claims 1- 4 under 35 U.S.C. Â§ 103(a) for the reasons presented by Appellants and add the following. 3 With respect to method claim 3, the Examiner finds that Kono discloses a method of making an electrical steel sheet of the same composition as described in claim 1 that differs from the claimed method in that Kono does not disclose the finisher delivery temperature in the hot rolling step and the coiling temperature. Final Act. 3-5; Kono Table 2 (Example B), Table 3 (Example 8B). The Examiner finds Sadahiro discloses a process of manufacturing an electrical steel sheet comprising a hot rolling step with a finishing delivery and coiling temperatures that 1 The real party in interest is identified as JFE Steel Corporation. App. Br. 1. 2 We limit our discussion to independent claims 1 and 3. 3 A discussion of Hayakawa is unnecessary for disposition of this appeal. The Examiner relied upon this reference to teach the claimed final annealing hydrogen-containing atmosphere. Final Act. 4; Hayakawa col. 24, 11. 30-52, col. 49 (Example 13). We note that Hayakawa discloses the use of a similar atmosphere in annealing steps other than the final annealing. Hayakawa col. 6, 11. 47-53. 4 Appeal2017-009312 Application 14/413,658 overlap the claimed finishing delivery and coiling temperatures ranges. Final Act. 5; Sadahiro col. 2, 11. 1-17, col. 7, 1. 8---col. 8, 1. 25. The Examiner determines it would have been obvious to one of ordinary skill in the art to arrive at the claimed invention from the combined teachings of the cited art. Final Act. 4--5. Appellants argue that Kono is directed to a non-oriented grain sheet while Sadahiro is directed to grain oriented sheets. App. Br. 5. According to Appellants, the process for producing a grain oriented electromagnetic steel sheet is completely different than the processes for producing a non- grain oriented electromagnetic steel sheet because the former is manufactured by a process that further includes subjecting the sheet to an additional annealing for secondary recrystallization. Id. at 4--5. Appellants contend that the operational temperatures of Sadahiro are directed to a process that is different from the claimed process because Sadahiro' s process is for secondary recrystallization to yield an oriented steel sheet. Id. at 11-13. Thus, Appellants assert that one of ordinary skill in the art would not have had any reason to modify the non-grain oriented electrical steel sheet in Kono with the Sadahiro finishing delivery temperature and coiling process temperature because secondary recrystallization is not contemplated in the process for producing a non-grain oriented electrical steel sheet. Id. at 13. The weight of the evidence supports Appellants' position. The premise of the Examiner's rejection is that one skilled in the art would have modified Kono' s method of making an electrical steel sheet by using Sadahiro' s disclosed operational parameters for making a grain oriented electrical sheet. However, as argued by Appellants, Kono is directed to a 5 Appeal2017-009312 Application 14/413,658 process of making non-grain oriented electrical steel sheets. App. Br. 5; see Kono ,r 43. While the Examiner determines that Kono's electromagnetic steel sheet is not limited to non-grain oriented electromagnetic steel sheets, the Examiner does not direct us to any portion of Kono in support of this conclusion. Nor does the Examiner adequately explain why one skilled in the art would have expected the operational conditions for making grain oriented electrical steel sheets to apply to making a different product such as a non-grain oriented electrical steel sheet. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (explaining that "rejections 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"). With respect to product claim 1, the Examiner finds that claimed variation in tensile strength is a material property that fully depends on the alloy composition and working process. Final Act. 6. Thus, the Examiner concludes that the combined teachings of the cited art would result in that same electromagnetic steel sheet treated by the similar working process and that the claimed variation in tensile strength would naturally flow from the combined teachings of the cited art. The Examiner's reasoning is incorrect for the reasons given above. Further, the particular steel sheet depends on both the steel composition as well as the treatment given to the composition in making the electrical steel sheet. Given that Kono only exemplifies variations in tensile strength greater than 15 MPa (see Kono Table 4 and Figure 2), the Examiner has not adequately explained how one skilled in the art would have modified the 6 Appeal2017-009312 Application 14/413,658 process of Kono to make an electric steel sheet exhibiting a variation in tensile strength of 15 MPa or less, as claimed. Accordingly we reverse the Examiner's prior art rejection of claims 1--4 under 35 under 35 U.S.C. Â§ 103(a) for the reasons presented by Appellants and given above. ORDER The Examiner's prior art rejection of claims 1--4 under 35 U.S.C. Â§ 103(a) is reversed. REVERSED 7