Ex Parte NAKAJIMA et al

Patent Trials and Appeals BoardJun 21, 2019

14899319 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/899,319 12/17/2015 35811 7590 06/25/2019 IP GROUP OF DLA PIPER LLP (US) ONE LIBERTY PLACE 1650 MARKET ST, SUITE 5000 PHILADELPHIA, PA 19103 FIRST NAMED INVENTOR Seiji NAKAJIMA 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. JFE-15-1525 1028 EXAMINER SCHLEIS, DANIEL J ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 06/25/2019 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 SEIJI NAKAJIMA, MINAKO MORIMOTO, and SATORU ANDO Appeal2018-008107 Application 14/899 ,319 Technology Center 1700 Before GEORGE C. BEST, GEORGIANNA W BRADEN, and ELIZABETH M. ROESEL, Administrative Patent Judges. ROESEL, Administrative Patent Judge. DECISION ON APPEAL 1, 2 Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 3 and 5. We have jurisdiction under 35 U.S.C. Â§ 6(b). We REVERSE. 1 In our opinion below, we reference: the Final Office Action mailed November 28, 2017 ("Final Action"); the Appeal Brief filed May 15, 2017 ("App. Br."); the Examiner's Answer mailed June 13, 2018 ("Ans."); and the Reply Brief filed August 7, 2018 ("Reply Br."). 2 Appellants identify JFE Steel Corporation as the real party in interest. App. Br. 1. Appeal2018-008107 Application 14/899 ,319 STATEMENT OF THE CASE The Examiner rejects claims 3 and 53 under 35 U.S.C. Â§ 102(a)(l) as anticipated by Nakamaru4 or, in the alternative, under 35 U.S.C. Â§ 103 as obvious over Nakamaru. Final Action 2--4. Claim 3 is the sole independent claim on appeal and is reproduced below from Appellants' Claims Appendix: 3. A hot-pressed member comprising a continuous coating layer containing Zn and Ni on a surface of a steel sheet of which the hot-pressed member is formed, and a continuous oxide film containing Zn on the coating layer, wherein a void formation rate is 80% or less for voids formed between the coating layer and the oxide film. App. Br. 6. ANALYSIS The Examiner finds that Nakamaru discloses a hot-pressed member including an intermetallic compound layer made from a zinc-nickel alloy coating on a surface of a steel sheet and a zinc oxide layer on the intermetallic compound layer. Final Action 3; Ans. 3 ( citing N akamaru, Abstract, ,r 4 7). Regarding the claim recitation of "continuous" layers, the Examiner asserts, "[w]hile Nakamaru expresses a preference for an island- like form, the broader disclosure of this reference does not require this form and would therefore include continuous layers." Final Action 8 ( citing N akamaru ,r,r 19, 2 0, claim 1). 3 Claims 4 and 6 are withdrawn. App. Br. 1. 4 WO 2011/052797, published May 5, 2011. We, like the Examiner, rely on and cite related US 2012/0321903, published December 20, 2012, as an English translation. 2 Appeal2018-008107 Application 14/899 ,319 Appellants contend the Examiner errs in maintaining the rejections, arguing that Nakamaru does not teach or suggest "a continuous coating layer containing Zn and Ni" and "a continuous oxide film containing Zn on the coating layer," as recited in claim 3. App. Br. 2-4; Reply Br. 1-2. Appellants additionally argue that Nakamaru teaches away from layers having non-island-like forms. App. Br. 3. After considering Appellants' arguments, the Examiner's findings and conclusions, and the evidence cited by both Appellants and the Examiner, we agree with Appellants that Nakamaru does not teach or suggest a continuous layer containing Zn and Ni and a continuous oxide film containing Zn, as recited in claim 3, and that Nakamaru teaches away from continuous layers. The Examiner relies on Nakamaru's Abstract, which discloses a hot- pressed member including a steel sheet, an intermetallic compound layer, and a zinc oxide layer. Ans. 9 ( quoting Nakamaru, Abstract). The Examiner also relies on Nakamaru claim 1, which recites a hot-pressed member including a steel sheet, an intermetallic compound layer, and a zinc oxide layer, and Nakamaru claim 3, which depends from claim 1 and recites that "the intermetallic compound layer is present in an island form." Id. at 9-10 ( quoting Nakamaru, claims 1 and 3). The Examiner also relies on Nakamaru paragraph 19, which discloses a hot-pressed member including a steel sheet, an intermetallic compound layer, and a zinc oxide layer, and Nakamaru paragraph 20, which discloses that "preferably ... the intermetallic compound layer is present in an island-like form." Id. at 12 ( citing and quoting Nakamaru ,r,r 19, 20). 3 Appeal2018-008107 Application 14/899 ,319 Because the Abstract, paragraph 19, and claim 1 ofNakamaru are silent on whether the intermetallic layer is in island-like form, the Examiner asserts that "the broader disclosure" ofNakamaru "is directed to an intermetallic compound layer that would include both continuous and discontinuous, i.e., island form, layers within its scope." Ans. 9; see also id. at 11 ("the scope of the independent claim includes a broader scope, namely an intermetallic compound layer that is not present in an island form, viz. a continuous form"); id. at 12 (the layer in Nakamaru paragraph 19 is "not defined and would therefore include continuous layers within its scope"). The Examiner applies an incorrect legal standard. For purposes of determining whether Appellants' claim is patentable over Nakamaru, the relevant question is not whether the scope ofNakamaru's disclosure and claim is broad enough to encompass Appellants' claimed subject matter. The relevant inquiry is whether N akamaru discloses or suggests all limitations of Appellants' claim. See, e.g., Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1367 (Fed. Cir. 2016) (reversing the Board's determination of unpatentability where a claim limitation was missing from the sole prior art reference, and the record did not support the Board's conclusion that the missing limitation would have been obvious to one of skill in the art). The Examiner does not direct us to any teaching or suggestion in Nakamaru of a continuous layer of zinc and nickel and a continuous layer of zinc oxide. The Examiner asserts that Nakamaru's preference for an intermetallic layer having an island-like form "would have reasonably suggested to one having ordinary skill in the art that the intermetallic layer need not have" an island-like form. Ans. 13. We disagree. The Examiner does not direct us to any disclosed embodiment or example in Nakamaru 4 Appeal2018-008107 Application 14/899 ,319 having a continuous layer continuous layer of zinc and nickel and a continuous layer of zinc oxide. Nakamaru's disclosure of a preferred embodiment in which the intermetallic layer has an "island-like form" is not a teaching or suggestion of an alternative embodiment in which the intermetallic layer is continuous. The Examiner also relies on the process disclosed and claimed in Nakamaru, asserting "there is no indication that the method steps would necessarily or inherently product an intermetallic layer that must have an island form" and "N akamaru does not set forth that the process necessarily or inherently produces an island form." Ans. 12, 15 (citing Nakamaru ,r,r 46-85, claims 5-11). The Examiner applies an incorrect legal standard for inherency. The Examiner needs to show a "sound basis for believing" that Nakamaru's disclosed process would produce a product having the continuous layers recited in Appellants' claim before the burden shifts to Appellants to show that the claimed product would not necessarily or inherently be produced. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The Examiner asserts that he "has demonstrated a sound basis that the product of the applicant and the prior art are the same." Ans. 16. The Examiner's analysis is directed to whether Nakamaru's product has the same void formation rate as recited in Appellants' claim. Id. at 18-21 ( asserting that Nakamaru teaches the heating conditions that Appellants' Specification teaches are necessary for producing a void formation rate of 80% or less). The Examiner provides no analysis providing a sound basis for believing that Nakamaru's product has the "continuous" layers as recited in Appellants' claim. 5 Appeal2018-008107 Application 14/899 ,319 In addition, we agree with Appellants that Nakamaru teaches that an intermetallic layer having an island-like form is important for fulfilling Nakamaru's objective of providing corrosion resistance. App. Br. 3; Reply Br. 1-2. More specifically, Nakamaru discloses that an intermetallic compound layer is effective for improving corrosion resistance, if the abundance of the intermetallic compound layer is controlled such that the spontaneous immersion potential is within a certain range. Nakamaru ,r,r 34--36. Nakamaru discloses that "[t]his abundance is preferably realized by allowing the intermetallic compound layer to be present in an island form." Id. ,r 36. Appellants are correct that Nakamaru discloses no technique or mechanism for controlling the abundance of the intermetallic compound layer, other than an island-like form. App. Br. 3; Reply Br. 2. Accordingly, we agree with Appellants that Nakamaru teaches that an island-like form for the intermetallic compound layer is essential for achieving Nakamaru's objective of providing corrosion resistance. Accordingly, for the foregoing reasons, we do not sustain the Examiner's rejection over Nakamaru, and the decision of the Examiner is reversed. REVERSED 6