Ex Parte Deura et al

Patent Trial and Appeal Board

Aug 8, 2017

12345100 (P.T.A.B. Aug. 8, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/345,100 12/29/2008 Tetsushi DEURA 335884US0 7244
22850 7590 08/10/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
POLYANSKY, ALEXANDER
ART UNIT PAPER NUMBER
1731
NOTIFICATION DATE DELIVERY MODE
08/10/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TETSUSHI DEURA, MOTOHIRO NAGAO, and
TAKASHI ABIKO
Appeal 2016-001596
Application 12/345,100
Technology Center 1700
Before CATHERINE Q. TIMM, JULIA HEANEY, and
JEFFREY R. SNAY, Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 seek our review pursuant to 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1—18 of Application 12/345,100 as
unpatentable over the combination of Sakamota3 and Kimura.4 We have
1 This Decision refers to the Specification filed Dec. 29, 2008 (“Spec.”),
Final Rejection dated Oct. 9, 2014 (“Final Act.”), Appeal Brief filed Mar.
26, 2015 (“Br.”), and the Examiner’s Answer dated Sept. 10, 2015 (“Ans.”).
2 Appellants identify the real party in interest as Kabushiki Kaisha Kobe
Seiko Sho (Kobe Steel, Ltd.). App. Br. 1.
3 JP 2007-169769, published July 05, 2007 (“Sakamoto”).
4 JP 2003-213386, published July 30, 2003 (“Kimura”).
Appeal 2016-001596
Application 12/345,100
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on July 27,
2017. We affirm.
BACKGROUND
The subject matter on appeal relates to a forging steel with refined
inclusions. Br. 3. According to Appellants’ Specification, by adjusting the
amounts of dissolved calcium and magnesium in the steel, it is possible to
control the morphology of the inclusions formed. Spec. 117. The object of
providing forging steel with refined inclusions is to make forged products,
such as crankshafts for ships and vessels, having excellent fatigue
characteristics. Br. 3; Spec. 112.
Claim 1, the sole independent claim, is reproduced below from the
Claims Appendix of the Appeal Brief:
1. A steel comprising :
C: 0.2-0.6% (hereafter, % denotes “% by mass"),
Si: 0.05-0.5%,
Mn: 0.2-1.5%,
Ni: 0.1-3.5%,
Cr: 0.9-4%,
Mo: 0.1-0.7%,
Al: 0.005-0.1%,
S: 0.008% or less (0% not included),
0: 0.0025% or less (0% not included),
Total Ca: 0.0030% or less (0% not included), and
Total Mg: 0.0015% or less (0% not included), wherein
the steel satisfies any one of the following (I) to (IV) in regard
to dissolved Ca and dissolved Mg (hereafter, ppb and ppm
denote respectively "ppb by mass" and "ppm by mass"):
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Application 12/345,100
(I) Dissolved Ca: 2-500 ppb, and
Dissolved Mg: 0.04-5 ppm;
(II) Dissolved Ca: 2-100 ppb, and
Dissolved Mg: 5-10 ppm;
(III) Dissolved Ca: 2 ppb or less (0 ppb not included), and
Dissolved Mg: 0.04-5 ppm; or
(IV) Dissolved Ca: 2-500 ppb, and
Dissolved Mg: 0.04 ppm or less (0 ppm not included).
DISCUSSION
Appellants argue all claims subject to the rejection as a group. Br. 4—
13. We choose claim 1 as representative; all dependent claims stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Having considered the evidence presented in this Appeal and each of
Appellants’ contentions, we are not persuaded that Appellants identify
reversible error in the rejection. Accordingly, we affirm for the reasons
stated by the Examiner in the Final Action and Answer, which we adopt as
our own. We add the following primarily for emphasis.
The Examiner finds that Sakamoto teaches a forged crankshaft steel
comprising the elements recited in claim 1, in amounts that overlap the
claimed amounts. Final Act. 2—3. The Examiner acknowledges that
Sakamoto does not specify the amounts of dissolved Ca and Mg in the steel,
but determines it would have been obvious to a person of ordinary skill in
the art to modify Sakamoto’s steel by including dissolved Ca and Mg in the
amounts disclosed by Kimura, in order to control and optimize the formation
of oxides and sulfides in the steel, and thereby control corrosion and surface
properties. Final Act. 3—4, citing Sakamoto 133, Kimura 8, 11, 14, 17—
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Application 12/345,100
19, and 28. The Examiner notes that Sakamoto as modified by Kimura
explicitly meets the amounts of dissolved Ca and Mg recited in claim 1.
Final Act. 6.
Appellants argue that the combination of Sakamoto and Kimura does
not satisfy any of the claim recitations (I) to (IV) with regard to the amount
of dissolved Ca and Mg, and that the Examiner incorrectly relies on
Sakamoto’s teaching of total Ca and Mg as meeting claim 1 ’s requirement
for dissolved Ca and Mg. Br. 3. This argument is not persuasive because it
is not consistent with the rejection. The Examiner does not rely on
Sakamoto for a teaching of dissolved Ca and Mg, but rather finds that the
combination of Sakamoto and Kimura explicitly meets the amounts of
dissolved Ca and Mg recited in claim 1. Ans. 3. Similarly, Appellants’
argument that Kimura teaches a larger total Mg amount than claim 1 recites,
and does not require Ca as an indispensable element, see Br. 11—12, is not
persuasive because Sakamoto teaches the total Ca and Mg content recited in
claim 1. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“the test is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art.”).
Appellants further argue that the Examiner incorrectly finds that
Sakamoto and Kimura are substantially similar steel compositions. Br. 8.
Appellants argue that the compositions of Sakamoto and Kimura differ with
respect to the amounts of dissolved Li, dissolved Al, and Cr and Ni. Br. 8—
9. The Examiner responds that the amounts argued by Appellants are very
small, and Appellants have not shown that they would affect the overall
alloy, particularly the formation of dissolved Ca and Mg. Ans. 4—5. Having
considered Appellants’ position and the references, we are not persuaded
that the Examiner harmfully erred. The Examiner’s determination that a
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Application 12/345,100
person of ordinary skill in the art would have modified Sakamoto to include
the amounts of dissolved Ca and Mg taught by Kimura is reasonable and
supported by a preponderance of the evidence, particularly in view of
Kimura’s teaching that dissolved Ca and Mg deoxidize the steel in order to
control corrosion.
Appellants also argue that the rejection is improperly based on
hindsight reasoning because Kimura’s purpose in adjusting amounts of
dissolved Mg and Ca, and desired function of dissolved Mg and Ca in the
steel, is different from the purpose disclosed in Appellants’ Specification,
i.e. “making the size of the largest inclusions in the steel remarkably small
and hence improving fatigue characteristics.” Br. 10, citing Spec 20—21.
Appellants’ argument is not persuasive of reversible error because the fact
that Appellants recognize another advantage of dissolved Mg and Ca is not a
basis for patentability where the advantage would flow naturally from
following the suggestion of the prior art. Ex parte Obiaya, 227 USPQ 58,
60 (Bd. Pat. App. & Inter. 1985).
ORDER
For the reasons given above, it is ORDERED that the rejection of
claims 1—18 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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