NIPPON STEEL & SUMITOMO METAL CORPORATION

Patent Trials and Appeals Board

Jan 12, 2022

2021001158 (P.T.A.B. Jan. 12, 2022)

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. 15/576,944 11/27/2017 Shuichi YAMAZAKI 6827-0106PUS1 6223 2292 7590 01/12/2022 BIRCH STEWART KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 EXAMINER CHRISTY, KATHERINE A ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 01/12/2022 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 SHUICHI YAMAZAKI, MASARU TAKAHASHI, KAZUTOSHI TAKEDA, HIROYASU FUJII, AKIRA AKAGI, and HIROKI HORI Appeal 2021-001158 Application 15/576,944 Technology Center 1700 Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and JAMES C. HOUSEL, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1 and 2. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Nippon Steel Corporation. (Appeal Br. 1). Appeal 2021-001158 Application 15/576,944 2 CLAIMED SUBJECT MATTER The claims are directed to an insulating (corrosion resisting) coating for an electrical steel sheet. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An insulating coating for an electrical steel sheet that is formed on a surface of a base metal of the electrical steel sheet, wherein the insulating coating comprises a polyvalent metal phosphate of one or more elements selected from Al, Zn, Mg and Ca, and the insulating coating has an enriched layer of a divalent metal at an interface with the surface of the base metal, wherein an enrichment of the divalent metal contained in the enriched layer is 0.01 g/m2 or more and less than 0.2 g/m2. REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Sumitomo (machine translation) JP 3935664 B2 Mar. 30, 2007 REJECTION Claims 1 and 2 stand rejected under 35 U.S.C. § 102(a)(1) over Sumitomo. OPINION “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). We need address only the sole independent claim, i.e., claim 1. That claim requires an enrichment amount of 0.01 g/m2 or more and less than Appeal 2021-001158 Application 15/576,944 3 0.2 g/m2 of a divalent metal in an insulating coating’s enriched layer at an interface with a base metal surface. Sumitomo discloses an electrical steel sheet insulating coating made from an aqueous solution containing: (A) a water-soluble polyvalent Al, Mg, Ca, Sr, Ba, or Zn (or two of them) phosphate, and (B) a chelating agent containing an acid group, particularly a phosphonic acid compound or a phosphonic acid compound and a carboxylic acid compound (¶¶ 16, 17). According to the Sumitomo machine translation (¶¶ 22, 23): The ratio of polyvalent metal phosphate (A) to chelating agent (B) is the sum of the product of the number of moles of metal atoms contained in (A) and its valence, ∑Mi, and the number of moles of (B) and the molecule When the sum of products of the number of acid groups therein is ∑Oi, the ratio is set so as to satisfy the following formula (1). 0.1≤ ∑Oi /∑Mi ≤ 5 (1) The Examiner finds (Final 2-3): Sumitomo teaches insulating film on a steel sheet surface ([0019]), where the insulating coating comprises a polyvalent metal phosphate of Al, Mg, Zn or Ca ([0016]) and an organic resin [0018]; [0035]) with a divalent metal at 1 to 50 mass% ([0028] [0029]). Sumitomo further teaches the chemical composition and structure of the prior art ([0028]-[0029], [0040]-[0045]), which therefore teaches its properties (In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)) of an enriched layer in the insulating coating of a divalent metal at an interface with the surface of the base metal, wherein an enrichment of the divalent metal contained in the enriched layer is 0.1 g/m2 or more and less than 2.0 g/m2. The concentration of divalent metal to chelating agent, processing parameters and density of 0.1-2.0 g/m2 of the insulating film is within the parameters taught by applicant in [0042]-[0049]. § MPEP 2112.01 II states a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the Appeal 2021-001158 Application 15/576,944 4 identical chemical composition and structure, the properties applicant discloses of the enriched layer on the surface and the enrichment level are necessarily present. The Examiner’s finding that “Sumitomo teaches insulating film on a steel sheet surface ([0019]), where the insulating coating comprises a polyvalent metal phosphate of Al, Mg, Zn or Ca ([0016]) and an organic resin [0018]; [0035]) with a divalent metal at 1 to 50 mass% ([0028] [0029])” is misleading. What Sumitomo discloses is: “The concentration of the polyvalent metal phosphate in the treatment liquid is preferably in the range of 1 to 50% by mass, more preferably 2 to 30% by mass” (¶ 29). The divalent metal referred to by the Examiner is the divalent metal in the polyvalent metal phosphate. To obtain an enrichment layer containing a divalent metal enrichment amount of 0.01 g/m2 or more and less than 0.2 g/m2, the Appellant combines a polyvalent metal phosphate with a chelating agent and a divalent metal (preferably added as a chelating agent/divalent metal chelate compound) (Spec. ¶¶ 40-42). The Examiner does not establish that Sumitomo combines a divalent metal with a polyvalent metal phosphate and a chelating agent. The Examiner’s finding that “Sumitomo further teaches the chemical composition and structure of the prior art ([0028]-[0029], [0040]-[0045]), which therefore teaches its properties . . . of an enriched layer in the insulating coating of a divalent metal at an interface with the surface of the base metal, wherein an enrichment of the divalent metal contained in the enriched layer is 0.1 g/m2 or more and less than 2.0 g/m2” lacks the required supporting evidence. Appeal 2021-001158 Application 15/576,944 5 The Examiner’s finding that “if the prior art teaches the identical chemical composition and structure, the properties applicant discloses of the enriched layer on the surface and the enrichment level are necessarily present” is ineffective for establishing a prima facie case of anticipation because the Examiner does not establish that Sumitomo discloses the Appellant’s identical composition and structure. CONCLUSION The Examiner’s rejection is reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2 102(a)(1) Sumitomo 1, 2 REVERSED