Ex Parte Allain et alDownload PDFPatent Trial and Appeal BoardMar 27, 201712281839 (P.T.A.B. Mar. 27, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation