Ex Parte ISEDA et al

Patent Trial and Appeal BoardOct 12, 2018

13429966 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/429,966 03/26/2012 Atsuro ISEDA 22902 7590 10/12/2018 CLARK & BRODY 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. 12049-0109 4326 EXAMINER 1700 Diagonal Road, Suite 510 YANG,JIE Alexandria, VA 22314 ART UNIT PAPER NUMBER 1733 MAIL DATE DELIVERY MODE 10/12/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ATSURO IS EDA, YOSHIT AKA NISHIYAMA, MASAHIRO SETO, SATOMI YAMAMOTO, HIROYUKI HIRATA, Y ASUTAKA NOGUCHI, MITSURU YOSHIZAWA, and HIROSHI MATSUO Appeal2018---000736 Application 13/429,966 Technology Center 1700 Before: ROMULO H. DELMENDO, JAMES C. HOUSEL, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-7, 10, 11, 14, 15, 18, and 19, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. Appeal2018---000736 Application 13/429,966 The invention addresses the thermal fatigue cracking in high-strength austenitic stainless steels caused by exposure to higher temperatures. Spec. ,r,r 8-9. The invention addresses this problem by making an austenitic steel having a chromium and nickel content of 15.0 to 23.0% and 6.0 to 20.0%, respectively, using a method comprising shotpeening ( described as an inventive processing "B") where a nozzle in which the spray aperture is narrowed to increase the velocity and spray an amount of shot twice as much as that used in a comparative prior art shotpeening ( described as "A" processing). App. Br. 18; Spec. ,r,r 24, 36, 37, 65, and 70. The inventive processing "B" results in a crushing of a micro structure so that there is no distinction between a crystal grain boundary and crystal grain to form a worked layer with high energy density. App. Br. 18; Spec. ,r,r 64, 70 and Figure 1. 1 This structural feature eliminates the difference in plastic deformation due to thermal fatigue and prevents the occurrence of a micro- crack which acts as the starting point for a crack. Spec. ,r 25. One way of obtaining this worked layer is through shotpeening by using shot balls of an appropriate hard material, size, and shape, and optimizing the conditions of ejection angle, flow amount, flow rate, opening of nozzle for causing shot balls to intensively collide with the surface to be worked. Id. ,r 64. Independent claim 1 is generally illustrative of the subject matter on appeal and is reproduced below: 1 We note that Appellants disclose a limited comparison between a prior art shotpeening process "A" and an inventive shotpeening process "B." Spec. ,r 70). However, the Specification does not provide sufficient information as to specific operating parameters of each process. 2 Appeal2018---000736 Application 13/429,966 1. Austenitic stainless steel, comprising, by mass%, Cr: 15.0 to 23.0%, and Ni: 6.0 to 20.0%, wherein a surface area is covered with an outer worked layer having an average thickness of 5 to 30 Âµm, the outer worked layer adjacent to an intermediate area wherein grains are crushed but grain boundaries are distinguishable, the intermediate area adjacent to a main part of a worked layer wherein grain boundaries are distinguishable, the outer worked layer having a crushed microstructure, wherein grains are crushed so that grain boundaries are not distinguishable, wherein a thickness of the outer worked layer is represented by a thickness which appears as a gray level difference in a microscopic observation of the austenitic stainless steel, after the austenitic stainless steel is heated at 650 to 750Â°C for 10 minutes to 10 hours, a cross section thereof including the outer worked layer is polished, and thereafter the polished surface is electrolytic etched in a 5 to 20% chromic acid solution. Independent claim 2 differs from claim 1 in that it defines the composition of the austenitic steel in more detail. Appellants2 (see generally App. Br.) request review of the following rejections from the Examiner's Final Office Action3: I. Claims 1, 2, 4, 5, 7, 10, 11, 14, 15, 18, and 19 rejected under 35 U.S.C. Â§ I02(b) as anticipated by Matsuo '414 (US 2006/0057414 Al, published March 16, 2006). 2 Nippon Steel & Sumitomo Metal Corporation are identified as the real parties in interest. App. Br. 3. 3 The Examiner withdrew the rejection under 35 U.S.C. Â§ 112, first paragraph. Ans. 2. Accordingly, this rejection is not before us for review on appeal. 3 Appeal2018---000736 Application 13/429,966 II. Claims 3 and 6 rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Matsuo '414. III. Claims 1, 4, 7, 10, 11, 14, 15, 18 and 19 rejected on the ground of nonstatutory obviousness type double patenting as unpatentable over claims 1-3 of Matsuo '989 (US 7,377,989 B2, issued May 27, 2008). OPINION The Prior Art Rejections Appellants argue independent claims 1 and 2 together and rely on these arguments to address the prior art rejections of dependent claims 3-7, 10, 11, 14, 15, 18, and 19. See generally App. Br. Accordingly, we select independent claim 1 as representative of the subject matter before us on appeal. Independent claim 2 and dependent claims 3-7, 10, 11, 14, 15, 18, and 19 stand or fall with representative claim 1. After review of the respective positions provided by Appellants and the Examiner, weaffirmtheExaminer'srejectionsofclaims 1-7, 10, 11, 14, 15, 18, and 19 under 35 U.S.C. Â§Â§ 102(b) and 103(a) for the reasons presented by the Examiner. We add the following for emphasis. Claim 1 Independent claim 1 is directed to an austenitic stainless steel comprising, by mass%, 15.0 to 23.0% Cr, and 6.0 to 20.0% Ni, and including a worked layer having an average thickness of 5 to 30 Âµm that has a crushed microstructure wherein grains are crushed so that grain boundaries are not distinguishable. The Examiner finds that Matsuo '414 describes an austenitic stainless steel comprising amounts of Cr and Ni that overlap the claimed amounts for 4 Appeal2018---000736 Application 13/429,966 these elements. Final Act. 3; Matsuo '414 ,r 30. The Examiner further finds that Matsuo '414 subjects the austenitic stainless steel to a shotpeening treatment that is the same as Appellants. Final Act. 4--5; Matsuo '414 ,r 22. In view of this, the Examiner finds that one of ordinary skill in the art would have expected the austenitic stainless steel of Matsuo '414 to have a worked layer with the claimed structural limitation. Final Act. 5. Thus, the Examiner concludes that the austenitic stainless steel of Matsuo '414 anticipates the claimed invention. Appellants do not dispute that Matsuo '414 discloses an austenitic stainless steel comprising Cr and Ni within the claimed amounts. See generally App. Br. Instead, Appellants contend that the Examiner lacks the factual basis to conclude that the process used in Matsuo is the same as that used in the invention and, therefore, assert that Matsuo '414' s steel inherently has the claimed structural limitation. Id. at 17. According to Appellants, Matsuo '414' s shotpeening operation is primarily based on having at least three passes to obtain the necessary surface profile to get the exfoliation resistance to scaling. Id. Appellants contend that Matsuo '414 varies the blasting pressure to increase the hardness difference between the surface and central part of the tube and improve the exfoliation resistance to scaling that is present when the necessary surface profile is obtained. Id. However, Appellants argue that Matsuo '414' s process does not achieve the claimed structure because there is nothing disclosing inventive processing "B." Id. at 18-19. Appellants additionally direct attention to the separate Declarations under 37 C.F.R. Â§ 1.132 by co-inventor Hiroshi Matsuo (First Declaration) and co-inventor Atsuro Iseda (Second Declaration) to show that Matsuo 5 Appeal2018---000736 Application 13/429,966 '414 does not describe the claimed invention. 4 App. Br. 19-22. According to Appellants, the First Declaration shows that Matsuo '414' s shotpeening process would not have led a person having ordinary skill in the art to the claimed steel having the specified worked layer. App. Br. 19-20. The Second Declaration offers further support for the statements in the First Declaration. App. Br. 20-22. We are unpersuaded by these arguments and evidence for the reasons presented by the Examiner. Final Act. 3-8; see also Ans. 4--5. In order to anticipate, a reference must identify something falling within the claimed subject matter with sufficient specificity to constitute a description thereof within the purview ofÂ§ 102. In re Schaumann, 572 F.2d 312, 317 (CCPA 1978). It is well established that specific examples of the claimed subject matter are not necessary to establish anticipation. Rather, to anticipate, one skilled in the art must be able to "at once envisage" the claimed subject matter in the prior art disclosure. In re Petering, 301 F .2d 67 6, 681 (CCP A 1962). Further, in determining whether a reference anticipates the subject matter recited in a claim, "it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826 (CCPA 1968). As noted by the Examiner, Matsuo '414 discloses subjecting an austenitic stainless steel having the claimed amounts of Cr and Ni to 4 The First Declaration was submitted on August 20, 2013. The Second Declaration was submitted on May 18, 2016. We refer to the Declarant for the First Declaration as Declarant 1 and Declarant for the Second Declaration as Declarant 2 for purposes of our discussion. 6 Appeal2018---000736 Application 13/429,966 shotpeening. Final Act. 3-5; Matsuo '414 ,r,r 22, 24, and 30. In the Specification, Appellants disclose shotpeening, in general, as one of several processes that can be used to obtain the desired worked layer in the austenitic stainless steel. Spec. ,r 65. Thus, as explained by the Examiner, a person of ordinary skill would have drawn a reasonable inference that Matsuo' s '414 shotpeening treatment of its austenitic stainless steel would also result in that steel having a worked layer with the claimed structural limitation based on Appellants' disclosure. Final Act. 5. Appellants present the First and Second Declarations as evidence that the shotpeening process by which the claimed austenitic steel is made is structurally different from the austenitic steel made by Matsuo '414' s process. App. Br. 19-22. Declarant 1 asserts that the disclosed prior art, illustrated in Figure 2, "is representative of the structure obtained by practicing the teachings of Matsuo ['414]," specifically "obtained under the same conditions used for test piece No. 14 of Matsuo ['414]." First Deel. ,r 3. Table B of the Second Declaration indicates that Matsuo '414 lacks disclosure with respect to the spraying velocity and the impact energy-two parameters that both Declarant 1 and Declarant 2 discuss as key to the invention. First Deel. ,r 5; Second Deel. ,r 9; Table B (see Exhibit II). But Declarants and Appellants have not adequately explained what spraying velocity and impact energy were used for the comparative experiment and why such values were selected as representative of the teachings of Matsuo '414. A mere conclusory statement that "[i]t is impossible to increase spraying velocity much higher than 65 mis with the nozzle used in the testing of Matsuo", Second Deel. ,r 8, is insufficient. Moreover, neither Appellants nor 7 Appeal2018---000736 Application 13/429,966 Declarants direct us to any portion of the Specification that support the tested operating parameters for the embodiments shown in Figures 1 and 2. While Appellants point to paragraph 70 of the Specification to support a distinction between the disclosed prior art process and the inventive process, this portion of the Specification does not provide sufficient information as to the specific operating parameters of each process. Declarant 1 further states that "some of the [the inventive] examples [ of Matsuo '' 414] did not exhibit any worked layer having an average thickness of 5 to 30 microns with a high energy density having a crushed microstructure wherein a distinction between a crystal grain boundary and a crystal grain is eliminated." First Deel. ,r 4. A fair reading of this statement would suggest to one skilled in the art that some of Matsuo '414' s examples did exhibit the desired claimed features. Declarant 1 has not provided any objective evidence in the form of data from which the observations were drawn. Therefore, absent this objective evidence, one skilled in the art would not be able to ascertain from Declarant 1 's statements whether all austenitic stainless steels within the scope of Matsuo '414 lack the claimed structural limitation, and indeed Declarant 1 's statements indicate the contrary. Thus, we agree with the Examiner's determination that the First and Second Declarations are insufficient to show a patentable distinction between the claimed austenitic stainless steel and Matsuo '414' s austenitic stainless steel. Ans. 5. Accordingly, we affirm the Examiner's prior art rejections of claims 1, 2, 4, 5, 7, 10, 11, 14, 15, 18, and 19 under 35 U.S.C. Â§ 102(b) and of claims 3 and 6 under 35 U.S.C. Â§ 103(a) for the reasons presented by the Examiner and given above. 8 Appeal2018---000736 Application 13/429,966 Nonstatutory Obviousness-type Double Patenting Rejection We refer to the Examiner's Non-Final Action dated September 28, 2016 for a statement of this rejection. See Final Act. 5. Appellants rely on the arguments presented above to address the rejection of claims 1, 4, 7, 10, 11, 14, 15, 18 and 19 on the ground of nonstatutory obviousness type double patenting as unpatentable over claims 1-3 of Matsuo '989. Accordingly, we also affirm this rejection for the reasons presented by the Examiner and given above. DECISION The Examiner's rejections of claims 1-7, 10, 11, 14, 15, 18, and 19 are affirmed. 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)(l )(iv). AFFIRMED 9