Ex Parte Zhu et al

Patent Trial and Appeal BoardJan 3, 2019

14116991 (P.T.A.B. Jan. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/116,991 11/11/2013 23280 7590 01/07/2019 Davidson, Davidson & Kappel, LLC 589 8th A venue 16th Floor New York, NY 10018 FIRST NAMED INVENTOR Kangying Zhu 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. 706.1014 4784 EXAMINER JOHNSON, JONATHAN J ART UNIT PAPER NUMBER 1734 NOTIFICATION DATE DELIVERY MODE 01/07/2019 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): ddk@ddkpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KANGYING ZHU and OLIVIER BOU AZIZ Appeal2018-003058 Application 14/116,991 Technology Center 1700 Before KAREN M. HASTINGS, MICHAEL G. McMANUS, and JANEE. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 request our review under 35 U.S.C. Â§ 134(a) of the Examiner's decision to finally reject claims 11-14 and 24--302. We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). We REVERSE. 1 Appellants identify ArcelorMittal as the real party in interest. Appeal Brief filed September 14, 2017 ("App. Br."), 2. 2 Claims 10 and 15-23 stand withdrawn from consideration. Response filed May 13, 2016 to the Restriction requirement entered March 3, 2016. Appeal2018-003058 Application 14/116,991 STATEMENT OF THE CASE Appellants claim a method for fabrication of a steel part with a completely martensitic structure. App. Br. 2--4. Claim 11 illustrates the subject matter on appeal and is reproduced below with contested language bolded: 11. A method for fabrication of a steel part with a completely martensitic structure having an average lath size of less than 1 micrometer, an average elongation factor of the laths being between 2 and 5, the elongation factor of a lath with a maximum dimension lmax and minimum dimension lmin being lnrnx defined by t min, the method comprising the following: obtaining a steel blank, a composition of the steel blank including, whereby the contents are expressed by weight, 0.15% :SC :S 0.40%, 1.5% :S Mn :S 3%, 0.005% :S Si :S 2%, 0.005% :S Al :S 0.1 %, 1.8%,:::; Cr:::; 4%,, 0% :S Mo :S 2%, whereby 2.7% :S 0.5 (Mn)+(Cr)+3(Mo) :S 5.7%, S :S 0.05%, P :S 0.1%, a remainder of the composition including iron and inevitable impurities resulting from processing, heating the blank to a temperature T 1 in a range between Ac3 and Ac3+250Â°C so that an average austenitic grain size is less than 40 micrometers; transferring the heated blank to a hot stamping press or a hot forming device; cooling the blank to a temperature T 3 in a range between 600Â°C and 400Â°C at a rate VR1 which is greater than 2Â°C/s to prevent a transformation of the austenite; 2 Appeal2018-003058 Application 14/116,991 hot stamping or hot forming the cooled blank at the temperature T 3 by a quantity 6 ,. greater than 30% in at least one "' Â·J;--iu::' + ",k:.! ,. ;;.; .i zone, to obtain a part, 8 c being defined by Â£,_, where Â£1 and Â£2 are principal deformations accumulated over all of the deformation steps at the temperature T 3; and cooling the part at a rate V R2 which is greater than a critical martensitic quenching rate. App. Br. Claims Appendix 3--4. The Examiner sets forth the following rejections in the Final Office Action entered December 14, 2016 ("Final Act."), and maintains the rejections in the Examiner's Answer entered October 19, 2017 ("Ans."): I. Claims 11 and 24--30 under 35 U.S.C. Â§ I03(a) as unpatentable over Kumagai3 in view of Ahn4; II. Claim 12 under 35 U.S.C. Â§ I03(a) as unpatentable over Kumagai in view of Ahn and Galmiche 5; III. Claims 13 and 14 under 35 U.S.C. Â§ I03(a) as unpatentable over Kumagai in view of Ahn and Yamada6; and IV. Claims 11-14 and 24--30 provisionally rejected for nonstatutory double patenting over claims 6-8 and 11-16 of copending application 14/116,980. DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellants' contentions, we reverse the Examiner's rejections of 3 Kumagai et al., US 2011/0253271 Al, October 20, 2011 (hereinafter "Kumagai"). 4 Ahn, KR 100797326 Bl, January 16, 2008. 5 Galmiche, US 3,276,903, October 4, 1966. 6 Yamada, JP 61195958 (A), August 30, 1986. 3 Appeal2018-003058 Application 14/116,991 claims 11-14 and 24--30 under 35 U.S.C. Â§ 103(a) for the reasons set forth in the Appeal Brief and below. We decline to reach the provisional obviousness-type double patenting rejection for the reasons discussed below. Rejections I-III Claim 11 recites, in part, a method for fabrication of a steel part that comprises obtaining a steel blank having a composition that includes 1. 8% :S Cr :S 4 % by weight. The Examiner finds that Kumagai discloses a method of making a steel part having a composition that includes 0.05% to 1.5% chromium by weight. Final Act. 3 ( citing Kumagai claims 1 and 2). The Examiner determines that the amount of chromium disclosed in Kumagai is "close enough" to the range of chromium recited in claim 11 to render the recited range prima facie obvious. Final Act. 3; Ans. 6. As Appellants point out (App. Br. 6 (emphasis omitted)), however, Kumagai explicitly discloses that "when Cr is excessively added, toughness may be degraded. Therefore, the amount of Cr to be added is limited to be equal to or less than 1.5%." Kumagai ,r 67. Kumagai further discloses limiting the chromium content to 1.0%, 0.5%, or 0.4% "to improve toughness." Id. It is well-established that a prima facie case of obviousness exists when a claimed composition includes amounts of components in ranges that do not overlap corresponding ranges of components in a prior art composition, but the claimed and prior art ranges are close enough that one of ordinary skill in the art would have expected the claimed and prior art compositions to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F. 2d 775, 783 (Fed. Cir. 1985) (affirming a 4 Appeal2018-003058 Application 14/116,991 rejection of a claim directed to an alloy having 0.8% nickel, 0.3% molybdenum, up to 0.1 % iron, balance titanium as obvious over a reference disclosing alloys of ( 1) 0. 7 5% nickel, 0 .25% molybdenum, balance titanium, and (2) 0.94% nickel, 0.31 % molybdenum, balance titanium, because the "proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). In the present case, however, in view of Kumagai's explicit disclosure of limiting the chromium content of the steel plate described in the reference to equal to or less than 1.5% to prevent a negative impact on the toughness of the steel plate, one of ordinary skill it the art would not have expected a steel sheet fabricated according to the method of claim 11 to have the same degree of toughness as Kumagai' s steel plate, due to the chromium content of 1.8% :S Cr :S 4% recited in claim 11. In response to Appellants' arguments directed to Kumagai' s disclosure of limiting the chromium content in Kumagai' s steel plate, the Examiner asserts in the Answer that the chromium content used in "the instant invention is for its effect of slowing down the transformation of austenite [] in order to obtain [a] completely martensitic structure." Ans. 6. The Examiner finds that Kumagai' s process is "also for making steel with completely martensitic structure, even though Cr is added for [the] (additional) purpose of enhancing hardenability and strength." Id. The Examiner determines that because the chromium content disclosed in Kumagai "also provides completely martensitic structure," it renders the range of chromium content recited in claim 11 prima facie obvious. Id. Although one of ordinary skill in the art may have expected a steel sheet fabricated according to the method of claim 11 and Kumagai' s steel 5 Appeal2018-003058 Application 14/116,991 plate to both have a completely martensitic structure, one of ordinary skill in the art nonetheless would not have expected a steel sheet fabricated according to the method of claim 11 to have the same degree of toughness as the steel plate disclosed in Kumagai, as discussed above. Accordingly, on this appeal record, the Examiner does not provide a sufficient factual basis to establish that the range of chromium included in the steel plate disclosed in Kumagai is "close enough" to the range of chromium recited in claim 11 such that one of ordinary skill in the art would have expected a steel sheet fabricated according to the method of claim 11 and Kumagai's steel plate to have the same toughness property. It follows that the Examiner does not establish a prima facie case of obviousness of the method recited in claim 11 7. We accordingly do not sustain the Examiner's rejection of claim 11 under 35 under 35 U.S.C. Â§ 103(a), and also of claims 12-14 and 24--30, which each depend from claim 1 1. Rejection IV Due to the issuance of application number 14/116,908 as U.S. Patent 9,963,756 on May 8, 2018, we decline to reach the provisional obviousness- type double patenting rejection because "at least some of the claims relied upon in the provisional obviousness-type double patenting rejection[] on appeal either clearly are, or may be, different in language or status from the claims originally relied upon when these rejections were initially made by the Examiner." Ex parte Jerg, 2012 WL 1375142, at *3 (BPAI 2012) (informative) ("Panels have the flexibility to reach or not reach provisional 7 The Examiner does not rely on Ahn for any disclosure that cures the deficiencies of Kumagai discussed above. Final Act. 3---6. 6 Appeal2018-003058 Application 14/116,991 obviousness-type double-patenting rejections."). We leave it to the Examiner to determine the propriety of this rejection upon return of jurisdiction to the Examiner. DECISION We reverse the Examiner's rejections of claims 11-14 and 24--30 under 35 U.S.C. Â§ 103(a). We decline to reach the provisional obviousness- type double patenting rejection. REVERSED 7