Ex Parte 6564604 et al

Patent Trial and Appeal BoardSep 28, 2015

95001350 (P.T.A.B. Sep. 28, 2015)

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. 95/001,214 08/20/2009 6564604 7769.3003.001 2232 7590 09/29/2015 SUGHRUE, MION, ZINN, MACPEAK & SEAS, PLLC SUITE 800 2100 PENNSYLVANIA AVENUE, N.W. WASHINGTON, DC 20037-3213 EXAMINER LILLIS, EILEEN DUNN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 09/29/2015 PAPER 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. PTOL-90A (Rev. 04/07) 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. 95/001,350 04/30/2010 6564604 8459.048.RX0000 2425 7590 09/29/2015 SUGHRUE, MION, ZINN, MACPEAK & SEAS, PLLC 2100 PENNSYLVANIA AVENUE, N.W. SUITE 800 WASHINGTON, DC 20037-3213 EXAMINER LILLIS, EILEEN DUNN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 09/29/2015 PAPER 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. PTOL-90A (Rev. 04/07) 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. 95/001,353 05/12/2010 6564604 NOS 9001 6522 133894 7590 09/29/2015 Lewis Brisbois Bisgaard & Smith, LLP Attention;Maxwell J. Petersen 550 W. Adams Street, Suite 300 Chicago, IL 60661 EXAMINER LILLIS, EILEEN DUNN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 09/29/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ SEVERSTAL NORTH AMERICA, INC., TATA STEEL, and VOESTALPINE STAHL GmbH Requesters v. ARCELORMITTAL Patent Owner ____________________ Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B21 Technology Center 3900 __________________ Before DANIEL S. SONG, MICHAEL L. HOELTER, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 Issued to Kefferstein et al. on May 20, 2003 (hereinafter the '604 patent). Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 2 STATEMENT OF THE CASE The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from the Examiner’s rejection of claims 1, 3, 4, 13, 30, 33, 35, 41, and 42. While there are other claims that were involved in the reexamination, these were the only claims involved in rejections appealed by the Patent Owner. We have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b). Oral arguments were presented in this case on August 12, 2015, a transcript having been entered into the record on September 18, 2015. We AFFIRM-IN-PART. THE INVENTION The Patent Owner's invention is directed generally to "a process for the manufacture of a part with very high mechanical properties, formed by stamping of a strip of rolled steel sheet and more particularly hot rolled and coated with a metal or metal alloy ensuring protection of the surface and the steel." Spec. col. 1, ll. 8-12. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A process for the manufacture of a part with very high mechanical properties, said part formed by stamping of a strip of rolled steel sheet rolled and coated with a metal or metal alloy ensuring protection of the surface and the steel, said process comprising the steps: cutting the steel sheet to obtain a steel sheet blank, stamping the steel sheet blank to obtain the part, generating an alloyed compound on a surf ace of the strip of rolled steel sheet, before the stamping, said alloyed compound ensuring protection against corrosion and steel decarburization, and providing a lubrication function, and Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 3 trimming excess material from the steel sheet required for the stamping operation; the process further comprising: after the steel sheet is cut to obtain the steel sheet blank, subjecting the coated steel sheet blank to a rise in temperature in order to hot-form a part, thereby forming the alloyed compound at the surface of the part, said alloyed compound ensuring protection against corrosion and steel decarburization, and providing a lubrication function, cooling the stamped part to obtain such mechanical properties in the steel as high hardness and high surface hardness of the coating. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Mehler Guzzetta Saito Laurent US 3,056,694 US 5,015,341 US 5,105,454 US 6,296,805 Oct. 2, 1962 May 14, 1991 Apr. 14, 1992 Oct. 2, 2001 Kawasaki et al. (“Kawasaki”) JP H05-5916 Mar. 9, 1993 Jonsson WO 1999/007492 Feb. 18, 1999 Lyman et al., Metals Handbook 8th Edition Voume 4 Forming, American Society for Metals (1969) (hereinafter “Metals Handbook”). Yasuda et al., Influence of Fe-P Flash Coating on Anti-Powering Property and Friction Behavior of Galvannealed Steel Sheets, Tetsu to Hagane-Jornal of the Iron and Steel Institute of Japan (1991) (hereinafter “Yasuda”). Blūmel, Help for Drawing Sheet Metals with Galvanized Surfaces Have Good Formability, Maschinenmarkt, Wurzburg 94 (1988), No. 43 (hereinafter “Blūmel”). Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 4 THE REJECTIONS ON APPEAL The Examiner made the following rejections: 1. Claims 33 and 35 stand rejected under 35 U.S.C. § 112 first paragraph as failing to comply with the written description requirement. RAN2 17. 2. Claims 33 and 35 stand rejected under 35 U.S.C. § 112 first paragraph as failing to comply with the enablement requirement. RAN 22. 3. Claims 33 and 35 stand rejected under 35 U.S.C. § 112 second paragraph as being indefinite. RAN 28. 4. Claims 1, 4, 13, 30, 41, and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mehler, the Metals Handbook, and Jonsson. RAN 43. 5. Claims 1, 4, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mehler, the Metals Handbook, Jonsson, and Yasuda. RAN 93. 6. Claims 1, 3, 13, 30, 41, and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Mehler, the Metals Handbook, Jonsson, and Saito. RAN 97. 7. Claim 13 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Mehler, the Metals Handbook, Jonsson, and Guzzetta. RAN 101. 2 When referring to "RAN" we reference the RAN dated March 25, 2014, which was incorporated by reference in the Examiner's Answer of October 21, 2014. Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 5 8. Claim 1, 33, 35, and 42 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Laurent and the Metals Handbook. RAN 116. 9. Claim 3, 4, 13, 30, and 41 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Laurent, the Metals Handbook, Kawasaki, and Blūmel. RAN 143. ANALYSIS Rejections under 35 U.S.C. § 112 The Examiner makes three rejections under 35 U.S.C. § 112 of claim 33 and claim 35, which depends from claim 33. RAN 17-18. The first of these is a first paragraph rejection for allegedly failing to comply with the written description requirement. The Examiner takes issue with the recitation in claim 33 stating, "wherein the step of generating the alloyed compound occurs during a heat treatment in which austenizing of the steel sheet blank," asserting that the Specification does not support that the alloy is generated during austenizing. RAN 17-18. The Patent Owner, however, directs us inter alia to col. 2, ll. 1-5 and 52-56 of the '604 patent Specification, "which describe subjecting the coated steel sheet blank to a rise in temperature in order to hot-form a part, and the alloyed intermetallic compound being 'thereby' formed 'during the temperature rise for hot- forming.'" App. Br. 12. The Patent Owner argues that the passages cited in response to the rejection "state explicitly that in Example 1 the alloying occurs at 950°C during the rise in temperature in the oven just prior to hot- forming" and that the "alloying and the austenitizing taking place at the same temperature." App. Br. 13. We agree with the Patent Owner that there is sufficient written description support for the claim limitation and therefore Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 6 do not sustain the rejection of claims 33 and 35 for lack of written description. Regarding enablement, the Patent Owner first explains how the limitations of weight loss of 32 g/m2 or less of claim 33 and 22 g/m2 or less of claim 35 are enabled via the Specification's disclosure of standard salt spray testing and that one of ordinary skill in the art would understand how these tests are performed and thus know how such measurements are achieved. App. Br. 14. We agree with the Patent Owner that this subject matter is sufficiently enabled for the reasons stated. The Examiner also agrees with one of the Requesters that the Specification does not "teach one skilled in the art how to [meet the weight loss limitation] for the unlimited possible alloys covered by this claim." RAN 23. As the Patent Owner explains, however, there are not unlimited alloys that are covered by the claims, but only that "[a] class of alloys is covered, and it is a class that meets all of the characteristics in claims 33 and 35," that the "specification is enabling with respect to that class of alloys," and that the claims are directed to a process of manufacturing a steel part with high mechanical properties. App. Br. 14-15. We also agree with the Patent Owner as to this rejection that there is only a limited class of alloys that may meet the limitations of claim 33 and that the specification is enabling with respect to that limited class of alloys. Accordingly, we do not sustain the enablement rejection of claims 33 and 35. The last basis for the rejection is that claim 33 is indefinite because there is some imprecise language in the claim whereby use of the terms "strip" and "blank" are essentially used interchangeably when they should Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 7 have different meanings and, according to the claim, a certain step occurs on a strip after the strip is cut into a blank (i.e., there no longer is a strip), thus rendering the claim indefinite. RAN 28. While we agree that the language at issue is not the paragon of claim drafting, we do not agree that it rises to a level whereby one of skill in the art would not understand the meaning of the claim. The Patent Owner argues, inter alia, that the claims are not read in a vacuum, but are to be read in light of the Specification and prosecution history and that the Specification makes clear what the claim means. App. Br. 16. We generally agree. The Specification "only shows and describes one step for raising the temperature of the steel for hot stamping, and that is heating the blank in an oven immediately prior to stamping" so that "the only way one of ordinary skill in the art could reasonably read the language of claim 33 is that the term 'strip of rolled steel sheet' is sometimes used to refer to the blank." PO's Rebuttal Br. 5. Further, we note that the claim recites "generating an alloyed compound on a surface of the strip of rolled steel sheet." While the Patent Owner could have more clearly written this to recite that the compound is generated on a surface of the blank instead of the strip, we agree with the Patent Owner that a surface of the strip encompasses that of the blank. The claim does not require formation on the entire surface of the strip, which would be impossible once it is a blank because some of that surface no longer exists. So, given the more complete disclosure in the Specification, we agree that one of ordinary skill in the art would understand that this claim refers to a portion of the strip still existing as the blank and that it is that Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 8 surface onto which the alloy is generated. Accordingly, we do not agree that the claim is indefinite and do not sustain the Examiner's indefiniteness rejection of claims 33 and 35. Prior Art Rejections On the whole, the parties do not generally disagree as to the content of the prior art, but the major issues in this case deal with the basis, or lack thereof, for combining the various prior art to achieve the claimed invention. The Patent Owner's argument against many of the combinations is that not only would one of skill in the art not have been motivated to combine the teachings cited by the Examiner, especially those involving zinc alloys, but that the prior art specifically cautions against heating zinc coatings to the temperatures provided in the claims. See, e.g., App. Br. 20- 21. In support, the Patent Owner cites specific instances of these teachings, such as, "[w]hen a sheet of carbon steel plated with fused zinc is locally strengthened by the [martensite transformation or bainite transformation], a Zn--Fe layer formed on the surface of the steel sheet is evaporated by heat applied thereto." App. Br. 20 (citing Sato, Patent US 5,735,163, col. 9, ll. 10-18). Furthermore, the Requesters' own experts also recognize this issue, "[i]n case of glavannealed steel[,] liquid zinc will occur at temperatures higher than 670° C. Both the melting and the vaporization of zinc are problems, and zinc oxidation is also problematic." App. Br. 21 (citing Second Marder Dec. ¶11). The Patent Owner also cites numerous other examples in the prior art cautioning against the use of zinc coatings at such high temperatures. App. Br. 24-25. Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 9 As the Patent Owner further points out, the majority of Requesters' evidence supporting combinability of the hot forming process of the prior art with a zinc coating such as described in Mehler is found in expert declarations. App. Br. 25. These declarations often cite to other publications describing that such processes are known or possible, but such publications post-date the filing date of the '604 patent and are not prior art. Id. As noted by the Patent Owner with respect to one of these post-dated publications and Requesters' expert evidence, they "recognize the very problems Owner has repeatedly noted," and, for example, "Faderl's subsequent explanation of why the invention was successful is not prior art and is not an indication of what was known at the time of invention. Instead, it confirms that the invention obtains an unexpected and surprising result." App. Br. 26. We also find persuasive the fact that Mehler cautions against heating zinc coatings at the claimed temperatures for more than a few seconds (Mehler col. 2, ll. 46-59), yet the process disclosed in Jonsson requires heating times "generally on the order of minutes." App. Br. 31 (citing First DeArdo Dec. ¶46). Accordingly, even the references used by the Examiner in the combination appear to argue against their combination. As to the Examiner's suggestion that the zinc coating becomes alloyed quickly and thus could withstand the further heating taught in Jonsson, we agree with the Patent Owner that such a suggestion is contrary to the teachings in Mehler, because "after alloying the coating is still molten even at Mehler's low alloying temperatures." App. Br. 33 (citing Mehler col. 4, ll. 28-29). Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 10 As such, we believe that the Patent Owner has shown by a preponderance of the evidence that, while zinc coatings and hot forming were both known at the time of the invention, the state of the prior art not only did not motivate one to hot form zinc coated steel parts, but specifically cautioned against this. The Patent Owner appears to have gone against convention in attempting to hot form zinc coated steel and achieved results that would not have been expected at the time. We thus agree that neither the Examiner nor the Requesters have established an adequate basis for using the zinc coatings of Mehler in the prior art hot forming processes as claimed. As such, the rejections of claims 1, 3, 4, 13, 30, 41 and 42 (Rejections 4-7 above) involving Mehler are not sustained. While certain claims, such as claims 3, 4, and 13, specifically recite the use of zinc as part of the alloying compound, several of the claims recite only general properties that may apply to other alloying elements/compounds besides zinc. Many of the claims not specifically reciting zinc (claims 1, 30, 33, 35, 41, and 42) also stand rejected over combinations involving the teachings of Laurent, which teaches not a zinc alloy, but an aluminum alloy. Claim 42, for example recites "said alloyed compound provides galvanic protection of the cathode protection type." We agree with the Patent Owners that the Requesters have failed to show that the aluminum coating taught in Laurent provides such galvanic protection. See App. Br. 40-42. It is especially telling that Steinhoff, one of Requesters' experts, has specifically stated in past publications "that aluminum-silicon coated steel provides 'no cathodic corrosion protection' while zinc-aluminum Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 11 coated sheets provide 'cathodic corrosion protection." App. Br. 41. Accordingly, we do not sustain Rejection 8 as it pertains to claim 42. The Patent Owner argues the last remaining portion of Rejection 8 as it pertains to claims 1, 33, and 35 solely on the basis that Laurent fails to teach the lubricating function claimed therein. See, e.g., App. Br. 38-39, Rebuttal Br. 23-24. While it is true that Laurent does not specifically tout the lubricating effects of an aluminum coating, this fact is not dispositive of the issue. The claim does not specify any level of lubrication, only that lubrication of some sort be afforded by the alloyed coating. Tata Steel's expert, Kurt Steinhoff, conducted an experiment showing that, in comparison to uncoated steel, various compounds provide a lower coefficient of friction in hot strip drawing. Second Steinhoff Dec. ¶¶28-29. It is clear from the chart provided that coatings of AlSi, ZnAl, and ZnNi all result in a lower coefficient of friction during hot strip drawing than uncoated steel. The Patent Owner's response is only that "the inclusion of zinc in a coating obtains a greatly decreased coefficient of friction relative to aluminum based coatings." App. Br. 39. While this may be true, this does not persuasively address the fact that an aluminum-based coating does appear to provide lubrication when compared to uncoated steel. As noted above, the claims at issue do not require any particular level of lubrication and we are persuaded that a coating such as that taught in Laurent would provide at least some lubrication such that it would meet the claim language at issue. Accordingly, we sustain Rejection 8 as it pertains to claims 1, 33, and 35 over Laurent and the Metals Handbook. Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 12 Regarding claims 3, 4, 13, 30, and 41, which are rejected over Laurent, the Metals Handbook, Kawasaki, and Blūmel, these rejections fail for the same basic reasons stated above with respect to Mehler; namely that the hot forming processes taught in Laurent are at too high a temperature for one of skill in the art to have contemplated success by substituting zinc for aluminum. See also App. Br. 42-51. Accordingly, we do not sustain these rejections. DECISION For the above reasons, we REVERSE the Examiner’s decision to reject claims 3, 4, 13, 30, 41, and 42 and AFFIRM the rejection of claims 1, 33, and 35. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED-IN-PART Appeal 2015-004353 Merged Reexamination Control Nos. 95/001,214, 95/001,350, and 95/001,353 Patent US 6,564,604 B2 13 PATENT OWNER: SUGHRUE, MION, ZINN, MACPEAK & SEAS, PLLC SUITE 800 2100 PENNSYLVANIA AVENUE, N.W. WASHINGTON, DC 20037-3213 THIRD PARTY REQUESTERS: REISING ETHINGTON P.C. PO BOX 4390 TROY, MI 48099-4390 NOVAK DRUCE & QUIGG, LLP 1000 LOUISANA STREET FIFTY-THIRD FLOOR HOUSTON, TX 77002 MAXWELL J. PETERSEN PAULEY PETERSEN & ERICKSON 2800 WEST HIGGINS ROAD, SUITE 365 HOFFMAN ESTATES, IL 60169