Ex Parte Katsumura et al

Patent Trial and Appeal Board

Apr 18, 2018

14382097 (P.T.A.B. Apr. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/382,097 08/29/2014
35811 7590 04/20/2018
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 4900
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Tatsuro Katsumura
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.
GMP-14-1687 1040
EXAMINER
ANDERSON,JOSHUAD
ART UNIT PAPER NUMBER
3729
NOTIFICATION DATE DELIVERY MODE
04/20/2018 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 T ATSURO KA TSUMURA,
TAKAAKI IGUCHI, RINY A KOJO
And KOJI HARA 1
Appeal2017-007155
Application 14/382,097
Technology Center 3700
Before JAMES P. CALVE, ARTHUR M. PESLAK, and
SEAN P. O'HANLON
Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Action
rejecting claim 3. Appeal Br. 1. Claims 1, 2, and 4 are cancelled. Id. at 6
(Claims App'x). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 JFE Steel Corporation is identified as the real party in interest and also is
the applicant pursuant to 37 C.F.R. § 1.46. Appeal Br. 1.
Appeal2017-007155
Application 14/382,097
CLAIMED SUBJECT MATTER
Independent claim 3, the sole claim on appeal, is reproduced below.
3. A method of producing a steel product having an
excellent internal quality comprising subjecting an as-cast steel
billet of a round section to rolling at 3 or more passes to form a
steel product of round section, wherein the rolling is conducted
with a pair of upper and lower flat rolls at a first pass, a pair of
upper and lower caliber rolls at a second or more passes until
just before a last pass, and a pair of upper and lower round
caliber rolls at the last pass, under a condition that an area
reduction in the first pass is within a range of less than a total
area reduction from the raw material to the product, mid
wherein the area reduction in the first pass is not less than 50%
of a total area reduction in the second or more passes.
Appeal Br. 6 (Claims App'x).
REJECTION
Claim 3 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kazashi (JP 58-188502 A, pub. Nov. 4, 1983) and Hein (US 6,216,517 Bl,
iss. Apr. 17, 2001 ).
ANALYSIS
Resolution of this appeal turns largely on claim construction of the
limitation "wherein the area reduction in the first pass is not less than 50%
of a total area reduction in the second or more passes." We interpret this
limitation, according to its plain meaning, to require a first pass with a pair
of upper and lower flat rolls to reduce the cross-sectional area of the steel
product by at least 50% compared to an area reduction of that steel product
that occurs in all subsequent passes using upper and lower caliber rollers
("the second or more passes"), except "a last pass," which also occurs with
caliber rolls.
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Appeal2017-007155
Application 14/382,097
The Specification discloses Appellants' improvement as using the
strong drafting approach of the prior art to reduce the cross sectional area of
a steel product in a "first pass" by at least 50% of the total area reduction
that occurs in all remaining passes, which the Specification refers to as "the
second or more passes." Spec. i-fi-16-9, 16-20, 23, Table 1. Thus, where a
total area reduction of a steel product is 60%, for example, the area reduction
in the first pass with flat rolls is at least 20%. That way, the area reduction
that occurs during the first pass (i.e., 20%) is at least 50% ("not less than
50%" as claimed) of the total area reduction that occurs in all of the
remaining second or more passes (i.e., 40%).
Tests 1-3, 5-7, and 10 in Table 1 of the Specification all show defect
blocking when first pass area reduction (Z 1) is not less than 50% of the total
area reduction that occurs in all the second or more passes (Z2/N) of caliber
rolling. Spec. i123. 2 In Table 1, the second or more pass area reduction
(Z2/N) includes the area reductions from all of the passes that occur after the
first pass. All passes after the first pass use caliber rolling. See id. i-fi-f 19-23.
However, claim 3 is not limited to this embodiment. Instead, claim 3
recites (1) "a first pass" with a pair of flat rolls followed by (2) "a second or
more passes until just before a last pass" with a pair of caliber rolls, and then
(3) "a last pass" with a pair of caliber rolls. Appeal Br. 6 (Claims App'x).
See Toshiba Corp. v. Imation Corp., 681F.3d1358, 1369 (Fed. Cir. 2012)
("Appell[ ant] cannot overcome the plain meaning of claim 1 by pointing to
an embodiment disclosed in the specification").
2 Test 4 shows defect blocking when the first pass area reduction was 15%
and the second or more pass area reduction was 35%, i.e, the first pass area
reduction was less than 50% of the second or more pass area reduction.
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Appeal2017-007155
Application 14/382,097
We agree with the Examiner that Kazashi teaches a first pass that
reduces the cross sectional area of a billet by not less than 50% of the total
area reduction that occurs in a second pass of 2.8%. Final Act. 4; Ans. 7. In
this regard, Kazashi teaches a multi-pass reduction of the cross section of
billet 1 in which a first pass uses flat rolls (b) to reduce the cross section by
5% and a second pass reduces the billet by 2.8% before a final pass reduces
the cross sectional area by 36.4%. Kazashi, 2 (machine translation), Fig. 3.
Thus, the 5% area reduction of the first pass is not less than 50% of the
second pass of 2.8%, as claimed. Appellants do not dispute the calculations
used by the Examiner for the Figure 3 embodiment of Kazashi. Appeal Br.
5. Instead, Appellants argue that claim 3 requires the first pass reduction of
5% to be not less than 50% of the total area reduction in the second or more
passes, which, according to Appellants includes the second pass and the final
pass, which provides an area reduction of about 38.2% in Kazashi. Id. This
argument is not persuasive, however, because it is not commensurate with
the scope of claim 3 as we have interpreted it above. See Ans. 6-7.
The Examiner also finds that Hein teaches a method that reduces the
area by 28% in a first pass, 22% in a second pass, and 19% in a third/final
pass. Final Act. 4. The Examiner finds correctly that a 28% area reduction
in a first pass is not less 50% of a 22% area reduction in a second pass. Id.
However, even if the last pass area reduction of 19% is included with the
second pass area reduction of 22% under Appellant's asserted interpretation,
the 28% area reduction in the first pass is not less than 50% of the total area
reduction of 41 % that occurs in the second and final passes in Hein. Hein
thus teaches an area reduction with a strong first pass area reduction of 28%
that is not less than 50% of the total area reduction of all subsequent passes.
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Appeal2017-007155
Application 14/382,097
The Examiner's reason for modifying Kazashi's method to provide a
greater area reduction in the first pass, as claimed, is supported by a rational
underpinning. In this regard, Hein expressly teaches that this area reduction
method can be used to produce finished products with circular cross section
having a "very high level of precision, both in terms of size and shape" and
"a guaranteed minimum tolerance." Hein, 7: 50-8: 14 (Example). Appellants
do not dispute the Examiner's findings or determination of obviousness. See
Appeal Br. 5 (arguing that "without Hein, Appellant respectfully submits
that Kazashi fails to teach or disclose an area reduction in the first pass that
is not less than 50% of a total area reduction in the second or more passes.").
Instead, Appellants argue that neither Kazashi nor Hein teaches or
suggests blocking defects in a sectional center of a cast slab and thus have
objectives that "are completely different from the problems encountered by
the Appellant in reducing the number of defects in the center section of the
starting material." Appeal Br. 3. This argument is not persuasive. First, an
Examiner's reason for combining prior art teachings may differ from those
of an inventor. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007)
("neither the particular motivation nor the avowed purpose of the patentee
controls"). Second, claim 3 recites a "method of producing a steel product
having an excellent internal quality." The Examiner points out that claim 3
does not recite a method for blocking internal defects. Ans. 4--5. Appellants
respond that the claimed "excellent internal quality" refers to reducing or
resolving defects. Reply Br. 2. Even if we read this limitation into claim 3,
which we are not permitted to do, Appellants disclose that the prior art
taught this feature by "drafting of 30 mm at once rather than three times of
rolling of 10 mm/pass." Spec. i-f 4.
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Appeal2017-007155
Application 14/382,097
Appellants further disclose that it was known in the art that "strong
drafting way is known as a method of solving the defects in the central
center of the raw material by rolling." Id. (citing The Iron and Steel, '81-
8339); Reply Br. 1 (citing id.). Appellants use this teaching and provide
more "drafting" (i.e., area reduction) in a first pass with flat rollers. Id. i-f 7.
The Examiner also correctly finds that Hein teaches a first pass with
the claimed high area reduction as compared to second or more passes and
also teaches that this method provides a very high level of precision in size
and shape in finished products with a circular cross section. Hein, 7:50----67
(Example), 8:7-14. Indeed, Hein not only teaches a first pass area reduction
that satisfies Appellants' disclosed improvement of not less than 50% of the
area reduction of all subsequent passes, but does so while achieving a very
high level of accuracy and high speeds. Id. at 4: 1-9. Absent evidence of
long-felt need, mere passage of time without the invention is not evidence of
non-obviousness. In re Kahn, 441F.3d977, 991 (Fed. Cir. 2006). This is
particularly true where, as here, Appellants admit the prior art recognized the
problem of internal defects and solved it in the same way as Appellants, i.e.,
by increasing the area reduction in the first draft/pass of rolling. Thus, we
sustain the rejection of claim 3.
DECISION
We affirm the rejection of claim 3.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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