Ex Parte Kojima et al

Patent Trial and Appeal Board

Aug 22, 2017

13752816 (P.T.A.B. Aug. 22, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/752,816 01/29/2013 Takeshi Kojima 410528US99 1023
22850 7590 08/24/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
WANG, XIAOBEI
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAKESHI KOJIMA and HIROSHI IRIE
Applicant: KABUSHIKI KAISHA KOBE SEIKO SHO
(KOBE STEEL, LTD.)
Appeal 2017-000161
Application 13/752,816
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134(a) of a final
rejection of claims 5—15. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is generally directed to a hot dip
galvannealed steel sheet. App. Br. 2.
Claim 5 illustrates the subject matter on appeal and is reproduced
below:
5. A hot dip galvannealed steel sheet, comprising:
(1) a material steel sheet which comprises 0.4 to 2.0%
by mass of Si and 1.0 to 3.5% by mass of Mn, and
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Application 13/752,816
(2) a coating layer on the material steel sheet,
wherein
the coating layer comprises a coating surface layer region
from the outer surface of the steel sheet to a depth of 0.01 pm,
and
the average Mn concentration in the coating surface layer
region is 0.14% or more.
App. Br. 8 (Claims Appendix).
The Examiner sets forth the following rejections in the Final Office
Action entered May 20, 2015 (“Final Act.”), and maintains the rejections in
the Answer entered July 6, 2016 (“Ans.”):
I. Claims 5 and 8—15 under 35 U.S.C. § 103(a) as unpatentable
over Kurosaki et al. (US 2011/0284136 Al, published November 24, 2011)
in view of Tasaki et al. (US 5,364,478, issued November 15, 1994) as
evidenced by Sugama (US 5,604,040, issued February 18, 1997); and
II. Claims 6 and 7 under 35 U.S.C. § 103(a) as unpatentable over
Kurosaki in view of Tasaki, as evidenced by Sugama, and Inbe et al. (US
2008/0041498 Al, published February 21, 2008).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions1, we affirm the Examiner’s rejections of
1 We do not consider any new argument raised in Appellant’s Reply Brief
filed September 6, 2016 that could have been raised in the Appeal Brief filed
December 22, 2015. 37 C.F.R. § 41.37(c)(l)(iv); 37 C.F.R. § 41.41(b)(2)
(arguments raised for the first time in the Reply Brief that could have been
raised in the Appeal Brief will not be considered by the Board unless good
cause is shown); see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (Informative) (explaining that under the previous rules, which are
similar to the current rules, “the reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
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claims 5—15 under 35 U.S.C. § 103(a) for the reasons set forth in the Final
Action, the Answer, and below.
Rejection I
Appellant argues claims 5 and 8—15 as a group. App. Br. 3—6.
Therefore, we select claim 5 as representative, and decide the appeal as to
claims 5 and 8—15 based on claim 5 alone. 37 C.F.R. § 41.37(c)(l)(iv).
Kurosaki discloses a galvannealed steel sheet that includes a steel base
sheet, a galvannealed layer on the base sheet, and a Mn—P-based oxide film
on the surface of the galvannealed layer. ^30,31,35,52. Kurosaki
discloses that the steel base sheet includes 0.01 to 4% Si, and further
discloses that 0.01% or more Si imparts strength and ductility to the sheet,
but greater than 4% Si increases the time required for alloying treatment of
the sheet. || 55, 56. Kurosaki discloses that the base steel sheet also
includes 0.01 to 2% Mn, and further discloses that 0.01% or more Mn
improves the sheet’s strength, but greater than 2% Mn negatively affects the
sheet’s elongation. || 57, 58. The Examiner finds that Kurosaki’s
disclosures thus establish that the amounts of both Si and Mn in the base
steel sheet are result-effective variables. Final Act. 4—5.
The Examiner finds that Kurosaki does not disclose that the
galvannealed layer has a coating surface layer region from the outer surface
of the steel sheet to a depth of 0.01 pm, with an average Mn concentration of
0.14% or more, and the Examiner relies on Tasaki for suggesting this
rebut the Examiner’s rejections, but were not.”). Cf. Optivus Technology,
Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir. 2006)
(argument raised for the first time in the reply brief that could have been
raised in the opening brief is waived).
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feature. Final Act. 5—6. Tasaki discloses an iron substrate coated with a hot-
dip galvanizing layer comprising Zn, 0.05 to 1 % Mn, and Fe, and discloses
that a brown Zn-Mn-Fe oxide forms on the surface of the galvanizing layer
when the galvanized substrate is subjected to heat treatment (annealing),
forming a galvannealed steel sheet.2 Col. 1,11. 50-57; col. 2,1. 42—col. 3,1.
17. Appellant does not dispute the Examiner’s finding that one of ordinary
skill in the art would have expected the amount of Mn to be relatively
constant over the entire thickness of the galvannealed coating disclosed in
Tasaki. Compare Final Act. 6, with App. Br. 3—6. The Examiner finds that
one of ordinary skill in the art would have been led to apply the
galvannealed coating disclosed in Tasaki to the steel base sheet disclosed in
Kurosaki to obtain a brown colored coating. Final Act. 6; Ans. 6—7.
Appellant argues that the main purpose of Kurosaki is to improve the
chemical conversion treatability of the galvannealed steel sheet described in
the reference, and Appellant contends that Kurosaki discloses chemical
conversion treatment of the galvannealed steel sheet using zinc-phosphate.
App. Br. 3. Appellant asserts that “[i]t is well-known to those of ordinary
skill in the art that zinc-phosphate treatment is a pretreatment for
electrodeposition painting,” which Appellant argues is demonstrated by an
English translation of a Journal of Japan Coating Technology Association
reference that Appellant submitted to the Patent and Trademark Office on
August 15, 2015.3 App. Br. 3^4. Appellant contends that the chemical
conversion treated galvannealed steel sheet of Kurosaki will be coated with
2 Although Tasaki does not explicitly refer to the coated iron substrate as a
“galvannealed steel sheet,” Appellant acknowledges that Tasaki discloses a
galvannealed steel sheet. App. Br. 3.
3 Volume 46, No. 10, October, 1995.
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an additional paint layer, and because of this, one of ordinary skill in the art
would not have applied the brown-colored coating disclosed in Tasaki to
Kurosaki’s steel base sheet. App. Br. 4.
However, we find no disclosure in Kurosaki indicating that the “main
purpose” of Kurosaki’s invention is to provide a galvannealed steel sheet
having improved chemical conversion treatability, although Kurosaki does
disclose that this is one object of Kurosaki’s invention, among others.4
Although Kurosaki exemplifies subjecting galvannealed steel sheets to a
chemical conversion treatment using a zinc-phosphoric acid-fluorine
solution to determine whether the sheets were amenable to such chemical
conversion treatment (their “chemical conversion treatability”) (H 167, 168,
172), we find no disclosure in Kurosaki indicating that chemical conversion
treatment of galvannealed steel sheets would be required. Nor do we find
any disclosure in Kurosaki indicating that the exemplified chemically
converted galvannealed steel sheets were electrodeposition painted or would
require electrodeposition painting, and Appellant does not direct us to any
such disclosures in Kurosaki. App. Br. 3—6.
In addition, although Appellant relies on the Journal of Japan Coating
Technology Association reference as supposedly demonstrating that it was
well-known in the art that zinc-phosphate treatment is a pretreatment for
electrodeposition painting, Appellant does not direct us to any disclosure in
this reference indicating that electrodeposition painting necessarily follows
4 Kurosaki discloses that “an object of the present invention is to provide a
galvannealed steel sheet to increase excellent powdering resistance by low-
alloying treatment at a lower heating rate which further increases excellent
sliding property, excellent surface quality of appearance, and an excellent
chemical conversion treatability, and a producing method therefor.” 127.
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chemical conversion treatment, nor do we find any such disclosure in the
reference. App. Br. 3—6.
Moreover, in response to Appellant’s arguments, the Examiner relies
on evidentiary reference Sugama, and finds that Sugama discloses that zinc
phosphate conversion coatings protect steel from corrosion. The Examiner
finds that Sugama thus evidences that zinc phosphate conversion coatings
have practical utility in the absence of an additional paint layer, which
Appellant does not directly challenge (Reply Br 3—4.). Ans. 7—8; Sugama
col. 1,11. 20-25.
Therefore, the preponderance of the relied-upon evidence weighs
against Appellant’s position that the galvannealed steel sheet disclosed in
Kurosaki would necessarily be subjected to chemical conversion treatment
followed by electrodeposition painting. Instead, the weight of the relied-
upon evidence on this record indicates that the steel base sheet disclosed in
Kurosaki coated with a brown galvannealed coating as suggested by Tasaki
would not necessarily be subjected to chemical conversion treatment, but if
it were, the chemical conversion treatment would not necessarily be
followed by electrodeposition painting. Accordingly, Appellant’s arguments
and supporting evidence are unpersuasive of reversible error in the
Examiner’s rejection.
In response to Sugama’s suggestion that zinc phosphate conversion
coatings have practical utility in the absence of an additional paint layer,
Appellant further argues that zinc phosphate chemical conversion films have
a grayish white or grayish black color, as evidenced by Aizawa et al., How
to Control the Zinc Phosphating, 46 Hyomen Gijutsu (1995). App. Br. 4.
Appellant contends that one of ordinary skill in the art therefore would not
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have applied Tasaki’s coating to Kurosaki’s steel base sheet in order to
obtain a colored coating because the colored coating would be masked by
the zinc phosphate chemical conversion film that “is to be further applied in
the steel sheet of Kurosaki.” Id.
However, as discussed above, the weight of the evidence relied upon
in this appeal indicates that the steel base sheet disclosed in Kurosaki coated
with a brown galvannealed coating as suggested by Tasaki would not
necessarily be subjected to chemical conversion treatment. Even if this
suggested brown galvannealed steel sheet were subjected to a chemical
treatment that resulted in application of a grayish white or grayish black
chemical conversion film on the brown galvannealed coating, Appellant’s
arguments and the How to Control the Zinc Phosphating reference do not
establish that the chemical conversion film would mask the brown
galvannealed coating to such an extent that the brown coloring would not be
visible. Appellant does not direct us to any evidence establishing that such
masking would occur. App. Br. 4. Therefore, one of ordinary skill in the art
seeking to produce a brown galvannealed steel sheet would have been led at
the time of Appellant’s invention to apply the galvannealed coating
disclosed in Tasaki to the steel base sheet disclosed in Kurosaki, regardless
of whether the galvannealed steel sheet were further subjected to chemical
conversion treatment. Appellant’s arguments and evidence are therefore
unpersuasive of reversible error in the Examiner’s rejection.
Appellant further argues that “excellent phosphatability” is obtained
from a surface layer region coating having an average Mn concentration of
0.14% or more, and asserts that “[tjhese excellent results could not be
expected from the cited references, neither of which suggest this important
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effect alone or in combination.” App. Br. 5—6. In support of this argument,
Appellant cites Tables 1 and 2 and page 16 of Appellant’s Specification and
Appellant contends that “in Example Nos. 1-3 to 1-5, 2-4 to 2-8, 3-3 to 3-5,
and 4-3 to 4-5, heating was performed at 300°C or higher after the alloying
treatment to attain the Mn concentration of 0.14% or more in the coating
surface layer, and have excellent phosphatability.” Id.
The burden of analyzing and explaining Specification data to support
an assertion of non-obviousness rests with Appellant. In re Klosak, 455
F.2d 1077, 1080 (CCPA 1972). In the present case, Appellant does not
explain why the limited data provided in the relied-upon disclosures in
Appellant’s Specification are sufficient to show that the full scope of the hot
dip galvannealed steel sheets covered by claim 5 impart unexpected results
relative to the coating compositions of the closest prior art, Kurosaki. App.
Br. 5—6. We note that Kurosaki discloses that excellent chemical conversion
treatability (or phosphatability) resulted from the Mn—P-based oxide film
formed on the galvannealed sheet disclosed in the reference. 1145. In re
Baxter TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.”).
In Appellant’s relied-upon experimental examples, coating layers
were applied to four different base sheets comprising 1.10% to 1.76% Si and
1.82% to 2.65% Mn, and the Mn concentration in the surface layer of the
coating varied from 0.15% to 0.5%. Spec. 14—16. Appellant does not
explain why this limited showing is reasonably commensurate with the full
scope of claim 5, which is not limited to base sheets and surface coating
layers of such composition. App. Br. 5—6. In re Harris, 409 F.3d 1339,
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1344 (Fed. Cir. 2005) (“Even assuming that the results were unexpected,
Harris needed to show results covering the scope of the claimed range.
Alternatively Harris needed to narrow the claims.”); In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number
of) species gives unexpected results is inadequate proof, for ‘it is the view of
this court that objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is offered to support.’”)
{Quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Further, Appellant does not direct us to any statement in the
Specification attesting to the unexpected nature of the relied-upon data, or to
any other persuasive evidence or averment evincing that these results would
have been unexpected by one of ordinary skill in the art at the time of their
invention. App. Br. 5—6. As our reviewing court stated in In re Geisler, 116
F.3d 1465, 1471 (Fed. Cir. 1997):
Geisler made no such assertion [that results were unexpected]
in his application. Nor did Geisler submit any such statement
through other evidentiary submissions, such as an affidavit or
declaration under Rule 132 ... . Instead, the only reference to
unexpected results was a statement by Geisler’s counsel. . . that
Geisler’s results were “surprising.”
Appellant’s arguments to that effect cannot take the place of evidence. In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); In re Greenfield, 571 F.2d
1185, 1189 (CCPA 1978); In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974).
Therefore, on balance, the evidence of obviousness relied upon in this
appeal outweighs the proffered evidence of non-obviousness, and we
accordingly sustain the Examiner’s rejection of claims 5 and 8—15 under 35
U.S.C. § 103(a).
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Rejection II
Although Appellant asserts that Inbe fails to address the deficiencies
of Kurosaki and Tasaki and separately addresses claims 6 and 7, Appellant’s
statements do not constitute substantive arguments as to the separate
patentability of these claims because Appellant merely asserts without
further explanation that Kurosaki, Tasaki, and Inbe would not have
suggested the subject matter recited in these claims. App. Br. 5—6. As the
Court in Lovin indicates:
[T]he Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the
corresponding elements were not found in the prior art.
Because Lovin did not provide such arguments, the Board did
not err in refusing to separately address claims 2—15, 17—24,
and 31—34.
In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
We accordingly sustain the Examiner’s rejection of claims 6 and 7
under 35 U.S.C. § 103(a).
DECISION
For the reasons set forth in the Final Action, the Answer, and above,
we affirm the Examiner’s rejections of claims 5—15 under 35 U.S.C. §
103(a).
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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