Ex Parte Kochi et al

Patent Trial and Appeal Board

Nov 18, 2016

13582608 (P.T.A.B. Nov. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/582,608 09/04/2012 Takuya Kochi
22850 7590 11/22/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
403 l 89US99PCT 5080
EXAMINER
YANG,JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
11/22/2016 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
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte T AKUY A KOCHI, HITOSHI HAT ANO, and
KOTARO TOYOTAKE
Appeal2015-000722
Application 13/582,608
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY W. ABRAHAM, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision2 finally rejecting claims 1-20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as Kabushiki Kaisha Kobe
Seiko Sho (Kobe Steel, Ltd.). Appeal Brief filed August 4, 2014 ("App.
Br."), 2. Oral arguments were heard on November 10, 2016.
2 Final Office Action mailed March 11, 2014 ("Final Act.").
Appeal2015-000722
Application 13/582,608
The subject matter on appeal relates to a seamless steel pipe for a
high-strength hollow spring. Spec. i-f 1. Claim 1, reproduced below, is
illustrative of the claims on appeal.
1. A seamless steel pipe, comprising:
from 0.20 to 0.70 mass% of C;
from 1.0 to 3 .0 mass% of Si;
from 0.1 to 3.0 mass% of Mn;
from 0 to 0.030 mass% of P;
from 0 to 0.030 mass% of S;
from 0 to 0.02 mass% of N; and
a remainder of Fe and unavoidable impurities,
wherein the seamless steel pipe comprises carbide comprising
cementite, which has an equivalent circle diameter of 1.00 µm or
less, and
the pipe is suitable for a hollow spring.
App. Br. (Claims Appendix) i.
REJECTIONS ON APPEAL
1. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as obvious
over Toyotake et al. (US 2010/0037976 Al, published Feb. 18,
2010) (hereinafter "Toyotake") in view of Toyooka et al.
(US 6,290,789 Bl, issued Sept. 18, 2001) (hereinafter "Toyooka");
and
2. Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as obvious
over T oyooka.
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Appeal2015-000722
Application 13/582,608
DISCUSSION
Although argued separately, Appellants' arguments are substantially
the same for independent claim 1 and dependent claims 3-5, 9-14, 19, and
20. Appellants do not separately argue dependent claims 2, 6-8, or 15-18.
Accordingly, we focus on claim 1 in deciding this appeal.
The Examiner finds that Toyotake teaches a seamless steel pipe
having all the claimed elements in ranges that overlap with the ranges
recited in claim 1. Non-Final Office Action mailed Dec. 2, 2013 ("Non-
Final Act."), 3-5; 3 Toyotake Abstract and i-f 185; Table 3 (Steel A and B).
The Examiner, however, acknowledges that Toyotake does not specify
"carbide comprising cementite" as recited in the claims. Non-Final Act. 5.
The Examiner finds Toyooka discloses a steel pipe containing the
claimed elements in ranges that overlap with the ranges recited in claim 1,
and also includes fine carbides such as cementite with a grain size of
1.00 µm or less to impart high strength and ductility. Non-Final Act. 8-9;
Toyooka Abstract, 4:5-19, 4:34--42, 9:25-50 and 10:60-61.
The Examiner finds that it would have been obvious to a person of
ordinary skill in the art to "control the grain size of cementite as
demonstrated by [Toyooka] for the alloy of [Toyotake] in order to obtain
excellent toughness and ductility." Non-Final Act. 5---6.
Appellants do not dispute that both Toyotake and Toyooka disclose a
steel pipe containing the claimed elements in ranges overlapping with the
ranges recited in claim 1. See App. Br. generally. Nor do Appellants
dispute the Examiner's reasoning for combining Toyotake and Toyooka.
3 In the Final Action, the Examiner simply refers to the rejections made in
the Non-Final Action. Final Act. 3.
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Appeal2015-000722
Application 13/582,608
See id. Rather, Appellants principal argument for reversal of the Examiner's
rejections is that none of Toyooka's examples teach or disclose annealing a
steel pipe having a combination of from 1.0 to 3 .0 mass% of silicon (or
narrower ranges recited in dependent claims 9-14) and cementite at a
temperature of least 750 QC, and thus Toyooka's examples would not
produce or enable one of ordinary skill in the art to produce a steel pipe that
includes cementite having a diameter of 1.00 µm or less (or the narrower
diameter ranges recited in dependent claims 3-5, 19, and 20). See App.
Br. 8-24; see also Reply Brief filed October 17, 2014 ("Reply Br.") 7-9.
Appellants' argument is not persuasive of reversible error in the
Examiner's rejections. A prior art patent is presumed to be enabled. See,
e.g., In re Antor Media Corp., 689 F.3d 1282, 1287-88 (Fed. Cir. 2012). In
addition, "[a] reference must be considered for everything that it teaches, not
simply the described invention or a preferred embodiment." In re Applied
Materials, Inc. 692 F.3d 1289, 1298 (Fed. Cir. 2012). Although Toyooka
does not include an example of a steel pipe with a silicon content of from 1.0
to 3 .0 mass% of silicon and cementite having a grain diameter of 1.00 µm or
less, Toyooka broadly discloses its steel pipe contains 0.01 to 3.0% silicon
(4:5-12) and can include cementite preferably having a grain diameter of
1.0 µm or less (9:25---61 ). In addition, Toyooka teaches that its steel pipe is
preferably heated at temperatures of 400 QC to 7 50 QC, and preferably not
higher than 750 QC (Toyooka 10: 16-47), which Appellants admit (App.
Br. 9). Appellants' Specification teaches that it is preferable to use a final
annealing temperature of 7 50 QC or higher, a range that includes 7 50 QC, in
manufacturing the seamless steel pipe to reduce the size of the carbide in the
pipe to 1.00 µm or less. Thus, based on Appellants' own Specification, a
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Appeal2015-000722
Application 13/582,608
steel pipe with cementite that has a circle diameter of 1.00 µm or less can be
formed by annealing a steel pipe containing cementite at a temperature of
750 QC, as disclosed in Toyooka .. Appellants have not persuasively argued
or presented evidence demonstrating why a person of ordinary skill in the art
reading Toyooka would have had to engage in undue experimentation to
produce a seamless steel pipe having from 1.0 to 3 .0 mass % of silicon and
cementite having an average crystal diameter of 1.00 µm or less. Nor does
Appellants' evidence of record convince us that when the annealing
temperature is 750 QC, the cementite in Toyooka's steel pipe would not have
an average crystal diameter of 1.00 µm or less. Accordingly, we sustain the
rejection of claims 1-20 under 35 U.S.C. § 103(a) over Toyotake in view of
Toyooka, and over Toyooka alone.
We have considered Appellant's remaining arguments (see, e.g., App.
Br. 13-20) and find none that warrant reversal of the appealed rejections
based on reasoning analogous to those discussed above and those given by
the Examiner. Cf In re Antor Media Corp., 689 F.3d 1282, 1294 (Fed. Cir.
2012).
DECISION
For the above reasons, the Examiner's rejections of claims 1-20 are
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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