Ex Parte Hino et al

Patent Trials and Appeals BoardApr 22, 2019

14127735 - (D) (P.T.A.B. Apr. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/127,735 12/19/2013 25944 7590 04/24/2019 OLIFF PLC P.O. BOX 320850 ALEXANDRIA, VA 22320-4850 FIRST NAMED INVENTOR Y oshimichi Hino 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 159604 4843 EXAMINER WARD, THOMAS JOHN ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 04/24/2019 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): OfficeAction25944@oliff.com jarmstrong@oliff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHIMICHI HINO and HIROKAZU SUGIHARA 1 Appeal2018-005314 Application 14/127,735 Technology Center 3700 Before: JENNIFERD. BAHR, MICHAEL J. FITZPATRICK, and LEE L. STEPINA, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from the Examiner's final decision rejecting claims 1-3. We have jurisdiction under 35 U.S.C. Â§ 6(b). We reverse. 1 The Appeal Brief indicates that JFE STEEL CORPORATION is the real party in interest. Appeal Br. 1. Appeal2018-005314 Application 14/127,735 CLAIMED SUBJECT MATTER The claims are directed to a method and apparatus for heating steel sheet. Claim 1, reproduced below with emphasis added, is illustrative of the claimed subject matter: 1. A method for heating a steel sheet, the method comprising: heating a continuously traveling steel sheet; generating a wrinkle in a widthwise central portion of the steel sheet by pre-heating the steel sheet before heating the continuously traveling steel sheet; and spreading the wrinkle up to a widthwise edge portion of the sheet by thereafter enlarging a heating zone. Appeal Br. A-1 (Claims App.). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Camm Hirota US 6,594,446 B2 July 15, 2003 US 2010/0155390 Al June 24, 2010 REJECTI0N2 Claims 1-3 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Hirota and Camm. 3 2 A rejection of claims 1-3 under 35 U.S.C. Â§ 112, first paragraph, was withdrawn in the Answer. See Final Act. 2; Ans. 4. 3 The heading for this rejection refers to 35 U.S.C. Â§ I02(b ), but the body of the rejection makes clear that a combination of the teachings of Hirota and Camm is used to reject claims 1-3. See Final Act. 4---6. 2 Appeal2018-005314 Application 14/127,735 OPINION The Examiner finds Hirota discloses many of the steps recited in claim 1, and, in paragraph 68, discloses the step of generating a wrinkle in a widthwise central portion of the steel sheet. Final Act. 5. 4 The Examiner takes the position that "Hirota discloses the metal plate 1 become[ s] prominent where prominent is defined as protruding, sticking out or projecting beyond a surface or line ... which is synonymous with the defined wrinkle." Ans. 5---6 (citing merriamwebster.com). Appellants contend that Hirota fails to disclose generating a wrinkle as recited in claim 1. See Appeal Br. 6-9. Specifically, Appellants contend that paragraph 68 of Hirota describes making "prominent" the cancellation of induced currents, not any physical structure of the steel sheet. We agree with Appellants. We reproduce paragraph 68 of Hirota below, with emphasis added. In the example shown in FIG. 6, the distance at the edge area of the metal plate is smaller than the distance at the central area, so that overheating at the edge area can be effectively restrained. Overheating at the edge area is restrained because by the smaller distance cancellation of the induced currents in upper and lower portions of the metal plate becomes prominent, which leads to reduced heating at the edge area. In addition, the heating time is simply shortened, which also leads to reduced heat divergence, since the heat divergence by the induction heating apparatus is proportional to the square of the current density and to the heating time. Thus, it is the cancellation of induced currents in the metal plate that becomes prominent, not any geometric characteristic of the plate. The Examiner's finding that the creation of this "prominence" corresponds to the 4 The Examiner finds that Hirota fails to disclose a step of pre-heating the steel sheet and relies on Camm to remedy this deficiency. Final Act. 5. 3 Appeal2018-005314 Application 14/127,735 recited generation of a wrinkle in a widthwise central portion of the steel sheet is not supported by a preponderance of the evidence. In the Answer, the Examiner states "Hirota discloses the same structure as the claimed invention and would be able to perform the same steps of a method as claimed," and "it has been held that the recitation that an element is 'capable of' performing a function is not a positive limitation, but only requires the ability to so perform[, i]t does not constitute a limitation in any patentable sense." Ans. 6 ( citing In re Hutchison, 154 F.2d. 135 (C.C.P.A. 1946). 5 We disagree with the Examiner's application of Hutchison in the context of claim 1 because, as Appellants correctly point out (Reply Br. 3- 4), claim 1 is a method claim that specifically requires a particular process to be performed, namely, "generating a wrinkle in a widthwise central portion of the steel sheet by preheating the steel sheet" (Appeal Br. A-1 (Claims App.)). The claim at issue in Hutchison was a product claim, and the language at issue related to the intended use of the claimed product. Hutchison, 154 F.2d at 137-138. Thus, to the extent Hutchison indicates that, in some cases, functional recitations do not carry patentable weight in product claims, 6 the facts of Hutchison are critically different from those present here. 5 The Examiner uses the United States Patents Quarterly citation, 69 USPQ 138. Ans. 6. 6 "Taking first claim 42 for analysis ... the first phraseology italicized by appellant is the introductory clause to the effect that the laminated article is 'adapted' for use in making a template or the like. This does not constitute a limitation in any patentable sense." Hutchison, 154 F .2d at 13 8 ( emphases added); but see In re Gianelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014) "We have noted that, 'the phrase 'adapted to' is frequently used to mean 'made 4 Appeal2018-005314 Application 14/127,735 We do not sustain the rejection of claim 1 and associated dependent claims 2 and 3 as unpatentable over Hirota and Camm. DECISION The Examiner's rejection of claims 1-3 is reversed. REVERSED to,' 'designed to,' or 'configured to,' ... [a]lthough the phrase can also mean 'capable of or 'suitable for."' Internal citation omitted. 5