Ex Parte Inoue et al

Patent Trial and Appeal BoardMar 19, 2018

14368975 (P.T.A.B. Mar. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/368,975 06/26/2014 35811 7590 03/21/2018 IP GROUP OF DLA PIPER LLP (US) ONE LIBERTY PLACE 1650 MARKET ST, SUITE 4900 PHILADELPHIA, PA 19103 FIRST NAMED INVENTOR Hirotaka Inoue 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. SUG-14-1724 7242 EXAMINER KATZ, VERA ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 03/21/2018 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): pto. phil@dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROTAKA INOUE, SHIGEHIRO T AKAJO, HIROI YAMAGUCHI, SEIJI OKABE, and KAZUHIRO HANAZAWA Appeal2017-006091 Application 14/368,975 1 Technology Center 1700 Before BEYERL YA. FRANKLIN, JEFFREY R. SNAY, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellant appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 5, 6, and 9. We have jurisdiction. 35 U.S.C. Â§ 6(b ). We AFFIRM-IN-PART. 1 Appellant is the Applicant, JFE Steel Corporation, which according to the Appeal Brief, is also the real party in interest. App. Br. 1. Appeal2017-006091 Application 14/368,975 STATEMENT OF THE CASE2 Appellant describes the invention as relating to a grain-orientated electrical steel sheet that could be used for an iron core of a transformer. Spec. i-f 1. The Specification explains that it is important to reduce impurities in a steel sheet used for a transformer and that it is important to properly orientate the grains of such a sheet. Id. at i-f 3. Because grains and impurities cannot be perfectly controlled, the Specification explains that an advantageous technique known in the art is to irradiate a steel sheet with a laser to introduce high-dislocation density regions into the surface of the steel sheet "thereby narrowing magnetic domain widths and reducing iron loss of the steel sheet." Id. at i-f 4. The present invention seeks to improve upon such techniques. Id. at i-fi-18-15 Claim 5, reproduced below with emphasis added to certain key recitations, is the only independent claim on appeal and is illustrative of the claimed subject matter: 5. A grain-oriented electrical steel sheet having an insulating coating thereon having linear strain resulting from a high-energy beam irradiation extending in a direction that intersects a rolling direction of the steel sheet, and having a re-formed insulating coating on the insulating coating, wherein in an irradiation mark region caused by the high-energy beam, a ratio of an area containing defects on the re-formed insulating coating is 40 % or less, a maximum width of the irradiation mark region in the rolling direction is 250 Âµm or less, 2 In this opinion, we refer to the Final Office Action dated May 23, 2016 ("Final Act."), the Appeal Brief filed November 10, 2016 ("Appeal Br."), the Examiner's Answer dated January 19, 2017 ("Ans."), and the Reply Brief filed March 3, 2017 ("Reply Br."). 2 Appeal2017-006091 Application 14/368,975 and a thickness of the re-formed insulating coating is 0.3 Âµm or more and 2.0 Âµm or less. Appeal Br. 5 (Claims App.). REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Provisionally, claims 5 and 6 on the ground of nonstatutory double patenting as being unpatentable over claims 11-14 of copending Application No. 14/369,237 in view of Inokuti, U.S. Patent No. 6,280,862 B 1, Aug. 28, 2001 ("Inokuti"). Ans. 2. Rejection 2. Provisionally, claims 5 and 6 on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 14/347,759 in view of Inokuti. Id. at 3. Rejection 3. Provisionally, claims 5 and 6 on the ground of nonstatutory double patenting as being unpatentable over claims 3--4 of copending Application No. 14/368,654 in view of Inokuti. Id. at 4. Rejection 4. Provisionally, claims 5 and 6 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 13/814,115 in view oflnokuti. Id. at 5. Rejection 5. Claims 5, 6, and 9 under 35 U.S.C. Â§ 112 as failing to comply with the written description requirement. Id. at 6. Rejection 6. Claims 5, 6, and 9 under 35 U.S.C. Â§ 103 as unpatentable over Senda et al., EP 1 227 163 A2, published July 31, 2002 ("Senda"). Id. 3 Appeal2017-006091 Application 14/368,975 ANALYSIS Rejections 1--4, nonstatutory double patenting. Appellant has not identified any errors in the Examiner's determinations regarding the provisional double patenting rejections. See Reply Br. 1 (indicating that Appellant "will consider filing a Terminal Disclaimer"). "If an appellant fails to present arguments on a particular issue----or, more broadly, on a particular rejection-the Board will not, as a general matter, unilaterally review those uncontested aspects of the rejection." Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). Accordingly, we summarily affirm these rejections. Rejection 5, Section 112 written description. The Examiner rejects claims 5, 6, and 9 under 35 U.S.C. Â§ 112 as failing to comply with the written description requirement. Ans. 6. In particular, the Examiner maintains that the Specification does not support claim 5 's recitation "having a re-formed insulating coating on the insulating coating." Id. The Examiner further states that the Specification does not demonstrate "two continuous and distinct coatings" formed as a result of the re-forming. Pursuant to the written description requirement of 35 U.S.C. Â§ 112, the disclosure of the application relied upon must "reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). The written description inquiry is a question of fact. Id. Here, Appellant maintains that the Specification adequately explains "re-forming" at paragraphs 5, 20, 60, 61, 68, and 69. Appeal Br. 2---6. The preponderance of the evidence supports Appellant's position. Paragraph 4 Appeal2017-006091 Application 14/368,975 five of the Specification, for example, explains that irradiation damages an insulation coating on the steel sheet and "[t]herefore, after laser beam irradiation or electron beam irradiation, re-forming is performed on the steel sheet .... " Similarly, paragraphs 60 and 61 of the Specification provide an example where "an insulating coating was formed" then "magnetic domain refining treatment was applied by performing continuous laser irradiation" and finally "[ n ]ext ... re-forming of the insulating coating was performed." The Examiner's discussion of the Specification not disclosing "two continuous and distinct insulating coatings" (Ans. 9) is not persuasive because this language is not recited by claim 5. Because, as explained above, the Specification demonstrates Inoue, et al.' s possession of the claim 5 recitation "having a re-formed insulating coating on the insulating coating," we do not sustain this rejection. Rejection 6, Section 103 obviousness. The Examiner rejects claims 5, 6, and 9 under 35 U.S.C. Â§ 103 as unpatentable over Senda. Ans. 6. The Examiner construes claim 5 as only optionally having an irradiation mark because the recited maximum width of the irradiation mark "include[ s] zero." Id. at 8. The Examiner finds that Senda teaches a grain-oriented electrical steel sheet obtained by irradiating the sheet with a high energy laser beam. Id. at 6. The Examiner finds that Senda "teaches a re-formed insulating coating on the insulating coating, such as a fosterite layer." Id. at 7. The Examiner finds that Senda teaches thickness of the layer is a result- effective variable. Id. The Examiner finds that "the structure, the property of the steel sheet being grain-orientated, the manner of irradiation of steel sheet with a high-energy beam, the structure of the coatings and the property 5 Appeal2017-006091 Application 14/368,975 of the linear strain are substantially identical to those of the instant claims." Id. at 8. We begin our obviousness analysis with claim construction. Appellant persuasively argues that, contrary to the Examiner's position, the sheet of claim 5 must be irradiated. Appeal Br. 7. Appellant correctly argues that claim 5 recites a "steel sheet having an insulating coating thereon having linear strain resulting from a high-energy beam irradiation." Id. (emphasis added). If the width of the recited "irradiation mark region" were zero, as the Examiner suggests is possible, the recited "linear strain resulting from" irradiation would not be present. Accordingly, while claim 5 's recitation that the "irradiation mark region in the rolling direction is 250 Âµm or less" allows for a very thin irradiation mark region, it does not allow for there to be no irradiation mark region at all. Construction of the term "re-formed insulating coating" is also a matter of dispute between the Appellant and the Examiner. The Examiner maintains that the "'re-formed' is a process step that does not structurally limit the article." Ans. 12. Appellant urges that the "reformed insulating coating" must cover the initial coating after the initial coating is damaged. Reply Br. 2; see also Appeal Br. 3---6 (discussing why re-forming in the context of the Specification means to form again after irradiation). During prosecution, an application's claims are given their broadest reasonable scope consistent with the specification. In re Am. A cad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). We therefore construe "re-formed insulating coating" with the context provided by the Specification in mind. See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010) ("any such construction [must] be consistent with 6 Appeal2017-006091 Application 14/368,975 the specification ... and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art" (internal quotes and citation omitted)). As explained above in conjunction with our disposition of the Examiner's written description rejection, the Specification consistently refers to "re-forming" in the context of a first insulation layer being damaged by irradiation and then "re-forming" the insulating coating. While we agree with the Examiner that the term "re-formed" is, in nature, a process term (Ans. 12), we do not agree that the term connotes no structure. Rather, Appellant persuasively explains that a re-formed coating will be applied on top of any damage caused by irradiation of the initial coating. Appeal Br. 6- 7. Moreover, this reformed layer will not have the irradiation mark. Id. The recitation "re-formed insulating coating" is thus similar to claim recitations that our reviewing court and its predecessor have construed as providing a structural limitation. See, e.g., In re Nordt Development Co., LLC, 881 F.3d 1371 (Fed. Cir. Feb. 8, 2018) (holding that claim recitation "injection molded" connoted structural limitation); In re Garnero, 412 F.2d 276, 279 ( CCP A 1969) (holding that "interbonded one to another by interfusion" connotes structure). Given the claim construction above, we agree with Appellant's argument that the Examiner has not adequately explained how Senda teaches or suggests the recited "re-formed insulating coating." Appeal Br. 6-7; Reply Br. 2---6. The Examiner does not make factual findings that would establish, for example, that Senda's product is produced by forming one coating layer, performing irradiation, and then re-forming a second coating layer, and the Examiner has not made findings sufficient to establish that 7 Appeal2017-006091 Application 14/368,975 Senda's product is structurally the same as a product made by such a process. Because the Examiner has not adequately established that the Senda product and the product of claim 5 are "identical or substantially identical, or are produced by identical or substantially identical processes," burden to establish otherwise does not shift to Appellant. In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Accordingly, we do not sustain this rejection. DECISION For the above reasons, we affirm the Examiner's (1) provisional rejection of claims 5 and 6 on the ground of nonstatutory double patenting as being unpatentable over claims 11-14 of copending Application No. 14/369,237 in view of Inokuti, (2) provisional rejection of claims 5 and 6 on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 14/347,759 in view of Inokuti, (3) provisional rejection of claims 5 and 6 on the ground of nonstatutory double patenting as being unpatentable over claims 3--4 of copending Application No. 14/368,654 in view of Inokuti, and (4) provisional rejection of claims 5 and 6 on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 13/814, 115 in view of Inokuti. We reverse the Examiner's (5) rejection of claims 5, 6, and 9 under 35 U.S.C. Â§ 112 as failing to comply with the written description requirement and (6) rejection of claims 5, 6, and 9 under 35 U.S.C. Â§ 103 as unpatentable over Senda. 8 Appeal2017-006091 Application 14/368,975 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED-IN-PART 9