Luc Diez et al.

Patent Trials and Appeals Board

Feb 26, 2020

13121833 - (D) (P.T.A.B. Feb. 26, 2020)

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.
13/121,833 08/05/2011 Luc Diez 706.1005 2277
23280 7590 02/26/2020
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
TUROCY, DAVID P
ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUC DIEZ, JEAN-MICHEL MATAIGNE, BERTRAND ORSAL,
and HUBERT SAINT RAYMOND

Appeal 2019–001972
Application 13/121,833
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
LILAN REN, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s final decision to reject claims 1–5 and 39.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies ArcelorMittal as the real party in
interest. Appeal Br. 2.
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Application 13/121,833

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The following rejections are presented for appeal: 2
I. Claims 1–5 and 39 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Nitto (Nitto et al., US 4,369,211,
issued January 18, 1983 (hereinafter “Nitto”)) and JP 2008-095129 A,
published April 24, 2008 (hereinafter “JP ’129”)).
II. Claims 1–5 and 39 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Nitto, JP ’129, and Komatsu (Komatsu
et al., US 6,235,410 B1, issued May 22, 2001 (hereinafter “Komatsu”)).

Appellant’s invention relates to a process for manufacturing a metal
strip of steel sheet coated with a zinc-based metal layer for corrosion
protection. (Spec. 1.) Claim 1 is illustrative of the subject matter on appeal
and is reproduced below:
1. A process for manufacturing a metal strip
coated with a metal coating for corrosion protection,
comprising:
making the metal strip pass through a bath of
molten metal including zinc or zinc alloy or aluminum or
aluminum alloy; then
wiping the coated metal strip using nozzles that
spray a gas on each side of the strip to adjust a thickness
of the metal coating, said gas having an oxidizing power
lower than that of an atmosphere consisting of 4%
oxygen by volume and 96% nitrogen by volume; and
then making the strip pass through a confinement device
defined:
at the bottom, by the wiping line and the upper
faces of said wiping nozzles,

2 The complete statement of the rejection on appeal appears in the
Examiner’s Answer (mailed Nov. 2, 2018 (“Ans.”). (Ans. 3–7).
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at the top, by the upper part of two confinement
boxes placed on each side of the strip, just above said
nozzles, and having a height of at least 10 cm in relation
to the wiping line and
on the sides, by the lateral parts of said
confinement boxes,
the atmosphere in said confinement device having
an oxidizing power lower than that of an atmosphere
consisting of 4% oxygen by volume and 96% nitrogen by
volume and higher than that of an atmosphere consisting
of 0.15% oxygen by volume and 99.85% nitrogen by
volume.

Appeal Br. Claims App. A.
OPINION3
Upon consideration of the evidence of record and each of Appellant’s
contentions as set forth in the Appeal Brief, as well as the Reply Brief, we
determine that Appellant has not demonstrated reversible error in the
Examiner’s rejections of claims 1–5 and 39. In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011) (explaining the Board’s long-held practice of
requiring Appellant(s) to identify the alleged error in the Examiner’s
rejection). We sustain the rejections of these claims generally for the
reasons expressed by the Examiner in the Answer. (Ans. 3–20.) We add the
following primarily for emphasis.

I. Claims 1–5 and 39 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Nitto and JP ’129.

3 We limit our discussion to the independent claim 1 as separately argued by
Appellant. 37 C.F.R. § 41.37(c)(1)(iv). Claims 2–5 stand or fall with
independent claim 1

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The Examiner finds Nitto and JP ’129 both describe processes for
manufacturing a metal strip having a metal coating for corrosion protection
including passing the metal strip through about the molten metal, wiping the
coated metal strip by means of nozzles that spray gas on each side of the
strip. (Ans. 3–5.) The Examiner finds Nitto discloses the metal strip passes
through a confinement zone having an oxidizing atmosphere consisting of
4% oxygen by volume and 96% nitrogen by volume. (Ans. 3.) The
Examiner determines that Nitto describes the oxygen content range required
by the claimed invention and concludes a person of ordinary skill in the art
would have determine the optimum oxygen concentration through routine
experimentation to obtain the recognized benefits. (Ans. 4.) The Examiner
recognized Nitto failed to disclose the confinement box was arranged above
the gas wiping nozzles. (Ans. 4.) The Examiner finds JP ’129 describes all
the requirements by the claimed invention, including the molten metal bath,
the gas wiping nozzles, and the confinement zone located above the gas
nozzles. The Examiner finds JP ’129 fails to disclose the claimed
atmosphere. (Ans. 4.) The Examiner finds Nitto and JP ’129 both describe
the combination of gas wiping nozzles and confinement zones; however,
Nitto’s confinement zone encompasses the wiping nozzles and extends to
the surface of the molten metal. (Ans. 4; see Nitto Fig. 12.) The Examiner
finds JP ’129 describes the confinement box could have various locations
including above the wiping nozzles, as required by the claimed invention,
and encompasses the wiping nozzles and extends to the surface of the
molten metal as described by Nitto. (Ans. 4; see JP ’129 Figs. 2, 5.) The
Examiner finds JP ’129 discloses the placement of the confinement zones
above the gas nozzles provides the benefit of preventing splashing during
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wiping. (Ans. 4; see JP ’129 ¶¶ 13, 22–25.)
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to perform a process for manufacturing a metal
strip having a metal coating for corrosion protection including passing the
metal strip through a bath of molten metal, wiping the coated metal strip by
means of nozzles that spray gas on each side of the strip having a
confinement zone, including oxygen atmosphere, located above the gas
wiping nozzles as required by the claimed invention based on the teachings
of Nitto and JP ’129. (Ans. 4–5.)
Appellant argues Nitto describes advantages for having a confinement
zone with a controlled atmosphere —to prevent contamination from ambient
atmosphere— located from within the metal bath extending upward and
encompassing the gas wiping nozzles. (Appeal Br. 2–9; Nitto Figs. 12–19.)
Appellant argues combining the teachings of JP ’129 with Nitto would
frustrate and destroy the very purpose of Nitto. (Appeal Br. 11–12.)
Appellant also argues the combination of JP ’129 and Nitto would not
obviate the subject matter of claim 1 because JP ’129 achieves the alleged
benefits without Nitto. (Appeal Br. 15–16.)
Appellant’s arguments are premised on the bodily incorporation of the
teachings of JP ’129 into Nitto and vice versa. Contrary to Appellant’s
arguments, it is not necessary to physically incorporate the teachings of one
reference into another to render obvious the claimed invention. See In re
Bush, 296 F.2d 491, 496 (CCPA 1961) (“In a case of this type where a
rejection is predicated on two references each containing pertinent disclosure
which has been pointed out to the applicant, we deem it to be of no
significance, but merely a matter of exposition that the rejection is stated to
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be on A in view of B instead of on B in view of A, or to term one reference
primary and the other secondary.”); See also In re Moutett, 686 F.3d 1322,
1333 (2012).
The Examiner has established, as evidenced by Nitto and JP ’129, that
processes for manufacturing a metal strip having a metal coating for
corrosion protection including passing the metal strip through a bath of
molten metal, allowing the strip to pass through air, wiping the coated metal
strip by means of nozzles that spray gas on each side of the strip, passing the
strip through a confinement box located above the wiping nozzles for
controlling the atmosphere were all known to persons of ordinary skill in the
art. JP ’129 exhibits the location of the confinement box above the wiping
nozzles and encompassing the wiping nozzles were recognized alternatives.
(JP ’129 Figs. 1, 5.) Nitto exhibits the effect of controlling the atmosphere
to which the coated strip has been exposed. (Nitto col. 13.)
It has been established that the predictable use of known prior art
elements performing the same functions they have been known to perform is
normally obvious, and the combination of familiar elements is likely to be
obvious when it does no more than yield predictable results. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“[T]he [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.”). See
also In re Fritch, 972 F.2d 1260, 1264–65 (Fed. Cir. 1992) (a reference
stands for all of the specific teachings thereof as well as the inferences one
of ordinary skill in the art would have reasonably been expected to draw
therefrom). The present record establishes all the claimed elements were
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known in the prior art. A person of ordinary skill in the art would have had
to combine the elements as claimed by known methods with no change in
their respective functions, and the combination would have yielded
predictable.
Appellant argues the combination of Nitto and JP ’129 does not teach
the step of “passing the strip through air after the step of making the strip
pass through a bath and before the step of wiping” as recited in claim 39.
(Appeal Br. 13–14.)
Appellant’s argument is not persuasive because this embodiment is
disclosed by JP ’129. (JP ’129 Fig. 1.)

II. Claims 1–5 and 39 are rejected under 35 USC § 103 as
unpatentable over the combination of Nitto, JP ’129, and Komatsu.
To address this rejection, Appellant first argues that Komatsu fails to
remedy the deficiencies of Nitto and JP ’129 that Appellant discusses in
connection with the arguments Appellant provides for claim 1. (Appeal Br.
16.) Because Appellant’s arguments directed to Nitto and JP ’129 are
unpersuasive of reversible error in the Examiner’s rejection of claim 1 for
the reasons discussed above, they are also unpersuasive of reversible error in
this rejection of claims 1–5 and 39.
Appellant’s arguments that the teachings of Nitto and Komatsu are in
conflict are not persuasive as the cited references describes suitable
atmosphere for the confinement box. A person of ordinary skill in the art
following the teachings of the cited references would have had sufficient
skill to select the appropriate atmosphere. Appellant has not directed us to
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evidence that the claim atmosphere provides unexpected results.

DECISION SUMMARY
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1–5, 39 103

Nitto, JP ’129  1–5, 39
1–5, 39 103

Nitto, JP ’129,
Komatsu
1–5, 39
Overall
Outcome
1–5, 39

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