NUCOR CORPORATION

Patent Trials and Appeals Board

Sep 24, 2021

2020003981 (P.T.A.B. Sep. 24, 2021)

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.
14/974,628 12/18/2015 James W. WATSON 213532.00145 2407
102467 7590 09/24/2021
Hahn Loeser + Parks LLP
65 East State Street
Suite 1400
Columbus, OH 43215
EXAMINER
HECKMAN, RYAN L
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
09/24/2021 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):
patents@hahnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES W. WATSON,
PAUL KELLY, DAVID C. VAN AKEN, and
CHRISTOPHER RONALD KILLMORE
Appeal 2020-003981
Application 14/974,628
Technology Center 1700
Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s May 1, 2019 decision to finally reject claims 11–192 (“Final
Act.”). We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Nucor
Corporation (Appeal Br. 3).
2 Claims 1–10 have been withdrawn from consideration (Final Act. 1).
Appeal 2020-003981
Application 14/974,628

2
CLAIMED SUBJECT MATTER
Appellant’s discloses a method of making hot rolled light-gauge
martensitic steel sheet (Appeal Br. 3). The method includes (1) preparing a
molten steel melt with a specified composition, (2) solidifying the molten
melt under specified conditions and cooling into a steel sheet, and (3) hot
rolling the steel sheet under specified conditions to form a steel sheet with
specific properties (Abstract). Claim 11, reproduced below, is illustrative of
the claimed subject matter:
11. A method of making hot rolled light-gauge martensitic
steel sheet comprising the steps of:
(a) preparing a molten steel melt comprising:
(i) by weight, between 0.20% and 0.35% carbon,
less than 1.0% chromium, between 0.7% and 2.0% manganese,
between 0.10% and 0.50% silicon, between 0.1% and 1.0%
copper, less than 0.05% niobium, less than 0.5% molybdenum,
silicon killed with less than 0.01 % aluminum, and
(ii) the remainder iron and impurities resulting
from melting;
(b) forming the melt into a casting pool supported on
casting surfaces of a pair of cooled casting rolls having a nip
there between;
(c) counter rotating the casting rolls and solidifying at a
heat flux greater than 10.0 MW/m2 the molten melt into a steel
sheet to less than 2.0 mm in thickness delivered downwardly
from the nip and cooling the sheet in a non-oxidizing
atmosphere to below 1080°C. and above the Ar3 temperature at
a cooling rate greater than 15°C/s and;
(d) hot rolling the steel sheet to between 15% and 50%
reduction and rapidly cooling to form a steel sheet with a
microstructure having at least 75% by volume martensite or
martensite plus bainite, a yield strength of between 700 and
1300 MPa, a tensile strength of between 1000 and 1800 MP a
and an elongation of between 1% and 10%.
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Application 14/974,628

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Yasuhara et al. US 6,364,968 B1 April 2, 2002
Saito et al. US 2004/0112484 A1 June 17, 2004
Takemura et al. US 2005/0092396 A1 May 5, 2005
Blejde et al. US 2014/0261905 A1 Sept. 18, 2014
Kitsuya et al. US 2017/0044639 A1 February 16, 2017
Seong Ju KR-2013-0046967 August 5, 2013

REJECTIONS
1. Claims 11 and 13–16 are rejected under 35 U.S.C. § 103 as
unpatentable over Blejde in view of Yasuhara.
2. Claim 12 is rejected under 35 U.S.C. § 103 as unpatentable
over Blejde in view of Yasuhara, and further in view of Takemura.
3. Claims 18 and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over Blejde in view of Yasuhara, and further in view of Saito.
4. Claims 18 and 19 are rejected under 35 U.S.C. § 103 as
unpatentable over Blejde in view of Yasuhara, and further in view of
Kitsuya.
5. Claims 11, 13, 14, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over Blejde in view of Seong Ju.
OPINION
Appellant argues the following groups of claims: (1) claim 11;
(2) claim 12; (3) claims 13 and 14; (4) claim 15; (5) claim 16; (6) claim 17;
(7) claim 18; and (8) claim 19. Because we determine that Appellant has
demonstrated reversible error in the rejection of independent claim 11, we
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Application 14/974,628

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do not address the other rejections directly, but instead also reverse those
rejections because the additional references do not remedy the deficiencies
in the rejection of the independent claim.
Claim 1 – Blejde in view of Yasuhara. With regard to the rejection of
claim 1 over Blejde in view of Yasuhara, the Examiner’s findings are set forth
in the Final Action at page 3. The Examiner finds that Blejde discloses a
method of making a hot rolled-steel strip by first preparing a molten alloy
melt (Final Act. 3, citing Blejde ¶ 7). The Examiner finds that Blejde teaches
the limitations of claim 11, except that Blejde “does not teach many of the
compositional dependent variables including the steel’s microstructure having
at least 75% by volume martensite or martensite plus bainite as a result of
cooling a steel sheet with a thickness of less than 2.0 mm to below 1080°C
and above 0°C at a cooling rate greater than 15°C/s, thus imparting a yield
strength of between 700 and 1300 MPa resulting from an elongation of
between 1% and 10%” (Final Act. 3). The Examiner finds that:
Yasuhara teaches a high-strength, hot-rolled steel sheet having
excellent stretch flangeability (i.e., fracture limit strain around
edges) having the composition shown below in Table I.
Yasuhara teaches cooling a steel sheet with a thickness of less
than 2.0 mm (Column 14, Line 8) to below 1080°C and above
0°C at a cooling rate greater than 15°C/s (Column 5, Lines 7-
16). Yasuhara teaches the high-strength, hot-rolled steel sheet
having a microstructure of at least 75% by volume martensite
or martensite plus bainite, a tensile strength of between 1000
and 1800 MPa, and a yield strength between 700 and 1300 MPa
resulting from an elongation of between 1% and 10% (Example
No. 1 in Column 17, Table 3 and/or Column 19, Table 5). As
previously stated, Yasuhara teaches an inexpensive process
producing high-strength, hot-rolled steel sheet having excellent
stretch flangeability (i.e., fracture limit strain around edges),
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Yasuhara further teaches the steel having high uniformity in
both shape and mechanical properties.

(Final Act. 3–4). The Examiner also makes the following findings with
respect to the composition of the steel as set forth in the claims versus the
prior art:

(id.)
The Examiner concludes that it would have been obvious to modify
Blejde’s process by incorporating the steel composition and processing
parameters of Yasuhara in order to inexpensively produce a high-strength,
hot-rolled steel sheet with excellent stretch flangeability, and high uniformity
in both shape and mechanical properties (id.).
Appellant argues, inter alia, that Yasuhara does not teach a cast steel
sheet cast to less than 2.0 mm in thickness having between 0.20% and 0.35%
carbon and having at least 75% martensite or martensite plus bainite (Appeal
Br. 8). In particular, Appellant asserts that “[t]he Office relies on Yasuhara
for teaching [the steel’s microstructure having at least 75% by volume
martensite or martensite plus bainite” in a carbon alloy steel sheet having
0.20%–0.35% by weight carbon, which is further hot rolled from an cast steel
sheet having a thickness of 2 mm or less (Appeal Br. 9). Appellant contends
that “Yasuhara teaches the production of a thin strip from a slab has a
thickness greater than 2 mm, does not have a yield strength of between 700
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and 1300 MPa, a tensile strength of between 1000 and 1800 MPa, and an
elongation of between 1% and 10%, and does not have a microstructure
having martensite, regardless of whether it is 75% by volume martensite or
martensite plus bainite” (id.).
Finally, Appellant argues that “there is no indication to support the slab
composition of Yasuhara is even capable of being modified as an as cast steel
sheet under the methods as taught by Blejde and/or as recited by independent
claim 11” (Appeal Br. 10). Appellant points to the fact that in the only
example of Yasuhara which has the claimed strength and elongation
parameters with the presence of martensite (Example 1), the strip has a
thickness of 3.2 mm, which is greater than the claimed maximum of 2.0 mm,
while examples which have the claimed thickness (Examples 3, 5, 6, and 10–
14), do not have the claimed strength and elongation properties with the
presence of martensite with a thickness of 2 mm or less (id.).
Appellant’s argument is persuasive of reversible error in the rejection.
The Examiner states that the rejection does not rely on the specific examples
in Yasuhara, but instead the rejection “rel[ies] on the references for all of the
teachings expressed in the text of the references and/or one of ordinary skill in
the art would [have] reasonably understood from the texts” and while “[o]nly
specific portions of the texts have been pointed out to emphasize certain
aspects of the prior art . . . each reference as a whole should be reviewed in
responding to the rejection.”
The Examiner’s response appears to misapprehend Appellant’s
argument, which is that a person of skill in the art would not have had a
reasonable expectation that simply combining Blejde’s method with
Yasuhara’s composition and process steps would result in a material with the
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claimed properties. This is evidenced, as argued by Appellant, by the fact that
none of Yasuhara’s specific examples have the claimed set of properties.
Moreover, as also argued by Appellant (Appeal Br. 13), Yasuhara does
not teach a steel which has the claimed amount of carbon (0.20%–0.35%
carbon) and also contains martensite. As explained by Appellant, while
Yasuhara does show examples which contain martensite, none of those
examples have the claimed amount of carbon. Though Yasuhara does
disclose some examples which contain martensite, it appears to be aiming at a
bainite structure (see Abstract). Thus, the evidence does not support a finding
that Yasuhara teaches a steel composition with the claimed amount of carbon
which also contains at least 75% martensite or martensite plus bainite.
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). In this instance, Appellant has demonstrated reversible
error in the Examiner’s determination that the required combination of the two
cited references would have had a reasonable expectation of success.
Accordingly, we reverse the rejection, and also reverse the remaining
rejections based on the combination of Blejde and Yasuhara.
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Claim 11 – Blejde in view of Seong Ju. In this rejection the Examiner
relies on the same teachings of Blejde as set forth above, and makes the
following findings with respect to Seong Ju:
Seong Ju teaches a process and composition for producing a
high strength steel plate having excellent abrasion resistance,
excellent strength and solderability (Paragraph [0001]). Seong
Ju teaches the steel comprising the components listed below in
Table IV (Paragraphs [0008], and [0021]). Seong Ju teaches
the steels microstructure having at least 80% martensite, the
remainder being bainite or ferrite (Claim 7). Seong Ju teaches
cooling the sheet to below 1080°C and above 0°C at a cooling
rate greater than 15°C/s (Paragraph [0008]). Seong Ju teaches
the steel sheet having a yield strength between 700 and 1300
MPa (Claim 8), and a tensile strength between 1000 and 1800
MPa (Paragraph [0006]) and an elongation of between 1% and
10% (Paragraph [0012]).

(Final Act. 10). The Examiner determines that it would have been
obvious to modify the teachings of Blejde by incorporating the concepts of
Seong Ju in order to produce a high strength steel plate having excellent
abrasion resistance, excellent strength and solderability (id.).
Appellant argues that a person of skill in the art would not have
combined Seong Ju with Blejde because Seong Ju’s method for hot rolling a
slab “is different than, inconsistent with, and is, additionally, contrary to hot
rolling a thin cast steel strip as taught by Blejde” (Appeal Br. 15). Appellant
correctly notes that Seong Ju requires the use of a process which includes a
slab reheating step, followed by a hot rolling stage, and then by a
cooling/coiling step (Seong Ju, ¶ 67). By contrast, Blejde specifically
distinguishes between either a hot rolling step or a slab heating step in order to
modify the microstructure of the cast strip (Blejde ¶ 50). While Seong Ju does
indicate that its steel plate has excellent abrasion resistance, strength and
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solderability (Seong Ju, ¶ 1), nothing in Seong Ju suggests that these
properties could be obtained without using all three steps recited in ¶ 67.
However, because Blejde states that hot rolling is an alternative to slab
reheating, a person of skill in the art would have had no reason to think that
not performing both steps, as required by Seong Ju, would produce desirable
results. Nor would a person of skill in the art have expected that only
performing the hot rolling step of Seong Ju would produce a steel plate having
the desirable properties outlined in Seong.
Accordingly, we determine that a person of skill in the art would not
have been motivated to combine the teachings of Blejde with those of Seong
Ju so as to arrive at the invention of claim 11. Therefore, we reverse the
rejection of claim 11, and the claims which depend from it, over Blejde in
view of Seong Ju.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
11, 13–16 103 Blejde, Yasuhara 11, 13–16
12 103 Blejde, Yasuhara,
Takemura
12
18, 19 103 Blejde, Yasuhara,
Saito
18, 19
18, 19 103 Blejde, Yasuhara,
Kitsuya
18, 19
11, 13, 14,
17
103 Blejde, Seong Ju 11, 13, 14,
17
Overall
Outcome
11–19

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REVERSED