Ex Parte Mizuta et al

Patent Trial and Appeal BoardMay 12, 2017

13489005 (P.T.A.B. May. 12, 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. 13/489,005 06/05/2012 Sae MIZUTA 399475US99 9044 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER LEE, REBECCA Y ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 05/16/2017 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 tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SAE MIZUTA, YUICHI FUTAMURA, and YUKIHIRO UTSUMI Appeal 2015-007268 Application 13/489,005 Technology Center 1700 Before JEFFREY W. ABRAHAM, JULIA HEANEY, and JEFFREY R. SNAY, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—6, 10, and 13—23.3 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held May 9, 2017, a transcript of which will be entered into the record in due course. We REVERSE. 1 We refer to the Specification (“Spec.”) filed June 5, 2012, as amended August 14, 2013; Non-Final Office Action (“Non-Final Act.”) dated December 5, 2014; Appellants’ Appeal Brief (“App. Br.”) dated February 26, 2015; Examiner’s Answer (“Ans.”) dated June 11, 2015; and Appellants’ Reply Brief (“Reply Br.”) dated August 3, 2015. 2 Appellants identify Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.) as the real party in interest. App. Br. 2. 3 Claims 8 and 9 are withdrawn from consideration. Non-Final Act. 1. Appeal 2015-007268 Application 13/489,005 BACKGROUND The subject matter on appeal relates to high-strength steel sheets that exhibit workability and resistance to cold brittleness. Spec. 1. Claim 1—the only independent claim on appeal—is reproduced below from the Claims Appendix of the Appeal Brief, with italics added to highlight the key recitation in dispute: 1. A steel sheet, comprising in percent by mass: carbon (C) in a content of from 0.10% to 0.30%, silicon (Si) in a content of from 1.40% to 3.0%, manganese (Mn) in a content of from 0.5% to 3.0%, phosphorus (P) in a content of 0.1 % or less, sulfur (S) in a content of 0.05% or less, aluminum (Al) in a content of from 0.005% to 0.20%, nitrogen (N) in a content of 0.01% or less, and oxygen (O) in a content of 0. 01% or less, with the remainder including iron (Fe) and inevitable impurities; the steel sheet having a volume fraction of ferrite of from 5% to 35% and a volume fraction of bainitic ferrite and/or tempered martensite of 60% or more based on the total volume of structures as determined through observation of the structures at a position of a depth one-quarter the thickness of the steel sheet under a scanning electron microscope; the steel sheet having a volume fraction of a mixed structure (martensite-austenite constituent) of fresh martensite and retained austenite of 1% to 6% based on the total volume of structures as determined through observation of the structures under an optical microscope; the steel sheet having a volume fraction of retained austenite of 5% or more based on the total volume of structures as determined through X-ray diffractometry of retained austenite; and the steel sheet having a tensile strength of 1180 MPa or more. 2 Appeal 2015-007268 Application 13/489,005 REJECTIONS4 I. Claims 1—3, 5, 6, 10, and 13—23 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Nonaka5 and Hiwatari.6 II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Nonaka, Hiwatari, and Nakagaito.7 DISCUSSION A dispositive issue in this appeal is whether the Examiner’s finding that Hiwatari provides a reason to add a martensite-austenite mixed phase constituent to Nonaka’s steel composition constitutes reversible error. Appellants’ Claim 1 calls for a steel sheet comprising, inter alia, a martensite-austenite (“MA”) constituent, in the form of a mixed phase of fresh martensite and retained austenite, at 1% to 6% of the total structures present in the steel composition. The Examiner finds that Nonaka discloses a steel composition that includes retained austenite and tempered martensite components, but fails to disclose a mixed-phase MA constituent. Non-Final Act. 5. For that feature, the Examiner relies on Hiwatari, finding that Hiwatari teaches that including less than 6% of a fresh martensite-austenite constituent provides “high deformation and stretch flangeability.” Id. See also Ans. 6 (“The addition of <6% of combined martensite and austenite taught by Hiwatari et al. is combined with Nonaka for the improvements noted and the martensite of Hiwatari et al. do not replace the tempered 4 Non-Final Act. 3—7; Ans. 2—5. The Examiner withdraws a rejection made under 35 U.S.C. § 112, first paragraph. Ans. 5. 5 US 2008/0000555 Al, published January 3, 2008 (“Nonaka”). 6 JP2002-60898A, published February 28, 2002 (“Hiwatari”), as translated. 7 EP 2 267 176 Al, published December 29, 2010 (“Nakagaito”). 3 Appeal 2015-007268 Application 13/489,005 martensite of Nonaka but is additive.”). Thus, each of Rejections I and II is premised on the Examiner’s finding that Hiwatari teaches that it is advantageous to include a mixed-phase fraction of fresh martensite and austenite. Appellants contest that finding, arguing that Hiwatari teaches that transformation to martensite should be avoided. App. Br. 9 (citing Hiwatari 1133,37,38). The Examiner and Appellants appear to rely on the same machine generated English translation of Hiwatari. At paragraph 27 of that translation, Hiwatari states: A volume fraction makes stretch flangeability and upper yield point stress martensite and austenite be deteriorated at not less than 6%. Martensite is not still more preferable in order to inhibit the rise of dynamic yield strength. While this and other passages in the relied-upon machine translation present grammatical challenges, we agree with Appellants that the general teaching in Hiwatari appears to be that martensite, as well as any martensite- austenite mixed phase fraction, tends to cause problems in the resulting steel composition, at least when the mixed-phase fraction exceeds 6%. See, e.g., Hiwatari 133 (“Since mixing of martensite increases at the winding temperature of 350 degrees C or less, it is unsuitable.”); id. 137 (“When . . . C concentration in austenite is low, martensite generates . . . and yield strength and stretch flangeability are made to be deteriorated.”); id. 138 (disclosing a processing temperature greater than 350 degrees C because “[bjelow 350 degrees C, a lot of austenites or martensite mixes.”). Thus, while Hiwatari appears to support a finding that any mixed phase MA constituent should not exceed 6%, we find no teaching in Hiwatari that 4 Appeal 2015-007268 Application 13/489,005 supports the Examiner’s finding that adding such a MA constituent to a steel composition would be expected to yield any benefit or advantage. On this record, we are persuaded that the Examiner has not set forth a factual basis sufficient to support a determination that it would have been obvious to add a mixed structure of fresh martensite and retained austenite to Nonaka’s steel sheet composition. For that reason, we cannot sustain either Rejection I or II. DECISION The Examiner’s decision rejecting claims 1—6, 10, and 13—23 is reversed. REVERSED 5