Ex Parte Allain et al

Patent Trial and Appeal Board

Mar 27, 2017

12281839 (P.T.A.B. Mar. 27, 2017)

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.
12/281,839 11/19/2008 Sebastien Allain 704.1011 6312
23280 7590 03/29/2017
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
03/29/2017 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 SEBASTIEN ALLAIN, AUDREY COUTURIER,
THIERRY IUNG, and CHRISTINE COLIN
Appeal 2016-000645
Application 12/281,839
Technology Center 1700
Before TERRY J. OWENS, JENNIFER R. GUPTA, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—13 and 23—26 of Application
12/281,839 under 35 U.S.C. 103(a) as obvious. Final Act. 3—5. Appellants1
request reversal of these rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
1 ArcelorMittal France is identified as the real party in interest. Appeal
Br. 2.
Appeal 2016-000645
Application 12/281,839
BACKGROUND
The ’839 Application relates to steels of predominantly bainitic
microstructure having a tensile strength of greater than 1200 MPa and a
yield strength/tensile strength ratio of less than 0.75. Spec. 1.
Claim 1 is representative of the ’839 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A hot-rolled steel sheet having a tensile strength of
greater than 1200 MPa, a yield strength/tensile strength ratio
Re/Rm of less than 0.75 and an elongation at break of greater
than 10%, the composition of which comprises, the contents
being expressed by weight:
0.10% < C < 0.25%
1% < Mn <3%
Al> 0.015%
Si < 1.985%
Mo < 0.30%
0.3% < Cr < 1.5%
S< 0.015%
P<0.1 %
Co < 1.5%
B < 0.005%
and wherein
1% < Si + A1 < 2%
Cr + (3 x Mo) > 0.3%
the balance of the composition consisting of iron and inevitable
impurities resulting from smelting, the microstructure of said
steel consisting of at least 75% per unit area of bainite, residual
austenite in an amount equal to or greater than 5% per unit area
of and martensite in an amount equal to or greater than 2% per
unit area of and containing martensite/residual austenite islands,
wherein the number NMAper unit area of said martensite/
2
Appeal 2016-000645
Application 12/281,839
residual austenite islands having a maximum size Lmax greater
than 2 microns and having an elongation factor (maximum size
Lmax /minimum size Lmjn) less than 4 is less than 14000/mm2,
wherein the steel is obtained by continuous cooling steps after
hot rolling.
Appeal Br., Appendix A 1—2 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejection:
Claims 1—13 and 23—26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Yuse et al., (2006/0137768 Al, pub.
June 29, 2006) (hereinafter “Yuse”) in view of Akamizu et al., (US
2005/0150580 Al, pub. July 14, 2005) (hereinafter “Akamizu”). Final Act.
3—5.2
DISCUSSION
In rejecting the claims at issue, the Examiner finds, inter alia, that the
cited references do not expressly teach certain attributes included in the
claims such as the “size, distribution and the elongation factor of the
martensite/austenite islands.” Id. at 4. The Examiner finds, rather, that such
properties “would be expected” in steel sheet made as taught by the
references because such sheet would have a composition similar to that
2 The Examiner rejected claims 1—13 and 23—26 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Final Act. 2. This rejection was subsequently withdrawn. Answer 4—5.
3
Appeal 2016-000645
Application 12/281,839
described in the claims and would be cooled in a similar manner. Id. at 4—5
(citing Yuse 198).
Appellants argue that the steel sheets as claimed differ from the steel
sheets described by the references both in composition and manner of
production. Appeal Br. 13. They argue that specific attributes of the
claimed steel sheets, such as the morphology of the martensite/austenite
islands, are dependent on production steps such as continuous cooling at the
rate taught in the Specification. Id. at 13—16; see Spec. 8 (teaching that
primary and secondary cooling rates must be adjusted so as to yield
martensite/austenite islands).
Appellants further note that the Specification teaches a primary
cooling rate (designated “Vr”) between 50 and 90- C/sec. and a secondary
cooling rate (designated “V'r”) between 0.08 and 2- C/sec. Appeal Br. 13.
The primary cooling rate begins at a temperature (TDr) lying above Ar3 (the
austenite-to-ferrite transformation start temperature) and continues to a
transformation temperature (TFR) between B's and Ms + 50° C.3 Spec. 6, 19,
Fig. 1.
The Examiner relies upon Yuse as teaching a similar cooling rate.
Yuse teaches that cooling begins at a temperature between A3 and A3 + 50°
and continues at a rate of 3° C or greater to a temperature between Ms and
Bs. Final Act. 4—5 (citing Yuse 198). These beginning and end points are
similar to those taught by the Specification. The cooling rate taught by
3 Ms denotes the martensite transformation start temperature. Spec. 6. Bs
denotes the bainite transformation start temperature. Id. B's is equal to Bs
under slow cooling conditions; B's is equal to Bs + 60° C under more rapid
cooling conditions. Id. at 19.
4
Appeal 2016-000645
Application 12/281,839
Yuse, however, is much lower than the 50 to 90° C/sec. taught by the
Specification.
The Examiner finds that “the size, distribution and the elongation
factor of the martensite/austenite islands. .. would be expected” in view of
the similarity of the teachings of the prior art and the Specification regarding
composition and cooling. Id. at 4—5. That is, the Examiner regards such
properties as inherent to a steel sheet made of the materials taught by the
cited references and cooled as taught by Yuse. Id. (citing MPEP 2112.01 I
regarding inherency).
“[IJnherency may supply a missing claim limitation in an obviousness
analysis.” PAR Pharm., Inc. v. TWIPharms., Inc., 773 F.3d 1186, 1194—95
(Fed. Cir. 2014). But “the use of inherency, a doctrine originally rooted in
anticipation, must be carefully circumscribed in the context of obviousness.”
Id. at 1195. Inherency “may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” In re Oelrich, 666 F.2d 578, 581 (C.C.P.A.
1981). Inherency requires that the missing material is “necessarily present,”
not merely probably or possibly present, in the prior art. Trintec Indus., Inc.
v. Top—U.S.A. Corp., 295 F.3d 1292, 1295 (Fed. Cir. 2002).
The Specification teaches that the morphology of the martensite/
austenite islands is dependent upon, inter alia, production steps such as
cooling rate. Spec. 8. The Examiner has not made any finding to the
contrary. The Yuse reference teaches a much slower rate of cooling than the
present Specification. Accordingly, on the present record,
martensite/austenite islands with the claimed attributes are not “necessarily
present” in the steel sheets taught by the cited prior art.
5
Appeal 2016-000645
Application 12/281,839
All claims at issue depend, directly or indirectly, from claim 1. In
view of the foregoing, we are persuaded that the Examiner erred in finding
the presence of martensite/austenite islands with the claimed morphology
required by claim 1. Accordingly, all rejections are reversed.
CONCLUSION
For the reasons set forth above, we reverse the rejection of claims 1—
13 and 23—26 of the ’839 Application.
REVERSED
6