Fujibayashi, Nobue et al.Download PDFPatent Trials and Appeals BoardJan 21, 20212019005458 (P.T.A.B. Jan. 21, 2021) Copy Citation 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. 14/235,863 01/29/2014 Nobue Fujibayashi JFES-105US 7936 23122 7590 01/21/2021 RATNERPRESTIA 2200 Renaissance Blvd Suite 350 King of Prussia, PA 19406 EXAMINER ROBINSON, ELIZABETH A ART UNIT PAPER NUMBER 1787 NOTIFICATION DATE DELIVERY MODE 01/21/2021 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): PCorrespondence@ratnerprestia.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NOBUE FUJIBAYASHI, KAZUMICHI SASHI, YUSUKE OKUMURA, YASUHIDE OSHIMA, TAKAHIRO KUBOTA, and MASAYASU NAGOSHI Appeal 2019-005458 Application 14/235,863 Technology Center 1700 ____________ Before DONNA M. PRAISS, N. WHITNEY WILSON, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1 and 4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed Jan. 29, 2014 (“Spec.”), the Non-Final Office Action dated Nov. 16, 2018 (“Non-Final Act.”), the Appeal Brief filed Mar. 29, 2019 (“Appeal Br.”), the Examiner’s Answer dated May 10, 2019 (“Ans.”), the Reply Brief filed July 9, 2019 (“Reply Br.”), and the Declaration of Chiyoko Tada, filed Aug. 20, 2018 (“Decl.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies JFE Steel Corporation as the real party in interest. Appeal Br. 2. Appeal 2019-005458 Application 14/235,863 2 STATEMENT OF THE CASE The invention relates to an electrical steel sheet with an insulation coating. Spec. ¶ 1. According to the Specification, electrical steel sheets are used in a variety of applications, and their magnetic properties deteriorate from strain such as punching, shearing, and bending. Id. ¶ 2. The Specification describes stress relief annealing at a temperature of about 700 ºC to 800 ºC for solving this problem, therefore, the electrical steel sheets are provided with insulation coatings resistant to stress relief annealing. Id. The Specification states only coatings containing an inorganic component are resistant to stress relief annealing as a general-purpose product, but they normally contain a chromium compound, which is not desirable for environmental reasons. Id. ¶¶ 3, 4. Thus, the Specification states, it is an object of the invention to provide an insulation coating for an electrical steel sheet without any chromium compound contained in the insulation coating. Id. ¶ 9. Claims 1 and 4, reproduced below, are all the claims in this appeal. 1. A non-oriented electrical steel sheet with an insulation coating formed by applying a surface-treatment agent to at least one side of the non-oriented electrical steel sheet and drying the surface-treatment agent, wherein the non-oriented electrical steel sheet is a non- oriented electrical steel sheet containing Si and/or Al, an amount of the insulation coating is 0.05 g/m2 to 5 g/m2 per side, and the surface-treatment agent contains methyltrimethoxysilane (A); 3-glycidoxypropyltrimethoxysilane (B) at a mass ratio (A/B) of 0.1 to 0.5; and Appeal 2019-005458 Application 14/235,863 3 plate-like silica (C) having an average particle size of 0.08 μm to 0.3 μm and an aspect ratio of 10 to 50, and the content of the plate-like silica is 2 mass% to 30 mass% with respect to a total solid content of the surface-treatment agent, the average particle size being defined as an average length of a major axis on a plane perpendicular to a thickness of a plurality of particles of the plate-like silica. 4. The non-oriented electrical steel sheet with an insulation coating according to Claim 1, wherein the surface- treatment agent contains 0.5 mass% to 30 mass% of a lubricant (D) with respect to a total solid content of the surface-treatment agent. Appeal Br. 13 (Claims App.) (disputed elements italicized). ANALYSIS We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the argued claims and each of Appellant’s arguments, we are not persuaded of reversible error in the appealed rejections. The Examiner’s rejections rely on the following prior art references: Name Reference Date Zoch DE 102008039326 A1 Feb. 25, 2010 Morillo US 2010/0015339 A1 Jan. 21, 2010 Yamamoto JP 2003253462 A Sept. 10, 2003 Sashi WO 2011/055857 A1 Nov. 5, 2011 Appeal 2019-005458 Application 14/235,863 4 The Examiner maintains the following rejections: Claim Rejected 35 U.S.C. § References/Basis 1 103(a) Zoch, Morillo, Yamamoto 4 103(a) Zoch, Morillo, Yamamoto, Sasaki3 Rejection of Claim 1 The Examiner’s rejection of claim 1 relies on Yamamoto’s teaching that adding to a steel coating scaly silica particles having a size and aspect ratio that overlaps the claimed ranges improves the coating’s corrosion resistance. Non-Final Act. 4 (citing Yamamoto ¶¶ 13, 40). Appellant contends the Examiner erred in rejecting claim 1 because the use of plate-like silica as claimed achieves unexpected results for punchability compared to Yamamoto. Appeal Br. 3. Appellant also identifies as error the Examiner’s dismissal of Appellant’s Declaration as conclusory and characterization of the accompanying data as not commensurate in scope with the claim. Id. at 8–9. According to Appellant, the average particle size and aspect ratio of silica recited in claim 1 are critical to a non-oriented electrical steel sheet having “excellent punchability.” Id. at 5. In support of this position, Appellant directs us to compare Specification examples 132–137, 143, and 144, which are outside of the claimed ranges, with Specification examples 121–131 and 138–142, which are within the claimed ranges. Id. (citing Spec., Table 1-4). Appellant also directs us to compare additional examples 3 US 2012/0301744 A1, published Nov. 29, 2012 is used as an English language equivalent for the rejection. Non-Final Act. 4. Appeal 2019-005458 Application 14/235,863 5 presented in Table A to the Declaration that reflect “excellent tension pad resistance” attributed to the claimed average particle size and aspect ratio. Id. at 6. These are examples 161 and 162, which are outside the claimed ranges, with examples 159 and 160. Id. at 6 (citing Decl., Table A). Appellant further contends Tables B and C, which also accompany the Declaration, establish that unexpected results are achieved irrespective of the thickness and type of steel sheet. Id. at 9. Appellant’s arguments do not persuade us that the Examiner reversibly erred in rejecting claim 1 as obvious over the teachings of Zoch in view of Morillo and Yamamoto. An applicant attempting to establish unexpected results must do so with clear and convincing evidence. In re Heyna, 360 F.2d 222, 228 (CCPA 1966) (“It was incumbent upon appellants to submit clear and convincing evidence to support their allegation of unexpected . . . property.”). Whether an invention has produced unexpected results is a question of fact. In re Mayne, 104 F.3d 1339, 1343 (Fed. Cir. 1997). “[T]here is no hard-and-fast rule for determining whether evidence of unexpected results is sufficient to rebut a prima facie case of obviousness.” Kao Corp. v. Unilever U.S., Inc., 441 F.3d 963, 970 (Fed. Cir. 2006); see also In re Dillon, 919 F.2d 688, 692–93 (Fed. Cir.1990) (“Each situation must be considered on its own facts.”). However, a party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997). “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Appeal 2019-005458 Application 14/235,863 6 We agree with the Examiner that the evidence presented is not commensurate in scope with the claims to establish criticality of the claimed plate-like silica. Moreover, based on the record in this Appeal, Appellant fails to adequately show that the differences between the comparative results would have been unexpected. As the Examiner notes, Appellant provides only two data points to support the argument that the coating thickness and composition of the underlying sheet do not affect punchability. Ans. 4. One data point is a coating amount in the middle of the claimed range of 0.05 g/m2 to 5 g/m2 (0.6 g/m2), and Appellant’s second data point would not have allowed a person having ordinary skill in the art to extrapolate the behavior a coating amount ten times less or almost ten times more would exhibit. Id. at 3–4. Similarly, the Examiner notes that the data presented includes only a single different composition of the underlying sheet tested compared to the claim scope of any non-oriented electrical steel sheet that contains Si and/or Al. Id. at 4. The Examiner finds the composition of the sheet, specifically its hardness, affects the sheet’s punchability. Id. at 5. The record supports the Examiner’s finding. See Tanaka4 3:32–58, 5:53–64. Appellant’s position is that the single data points for a different thickness and composition are intended to show that these changes do not impact the contribution due to the asserted critical features (the silica’s particle size and aspect ratio). Reply Br. 2. However, Appellant does not address the Examiner’s finding that the data are insufficient to extrapolate punchability across the coating thickness and underlying sheet compositions the claim encompasses. In addition, the probative value of Appellant’s 4 US 6,340,399 B1, issued Jan. 22, 2002. Appeal 2019-005458 Application 14/235,863 7 limited data concerning punchability with respect to particle size and aspect ratio is itself limited. Comparing Specification examples 132–137, 143, and 144, which Appellant identifies as outside of the claimed ranges, with Specification examples 121–131 and 138–142, which Appellant identifies as within the claimed ranges, the punchability for these groups are recorded as +’ and +, respectively. Appeal Br. 5; Table A; Spec. Table 1-4. There is no recorded punchability difference, however, between Specification examples 161 and 162 (outside the claimed ranges) and Specification examples 159 and 160 (within the claimed ranges). Appeal Br. 6; Table A; Spec. Table 1-4. Appellant’s punchability measurements for the + and +’ data recorded in Tables 1-4, A, B, and C are broad ranges of between 1 million and 1.2 million punchings and between 700,000 and 1 million punchings, respectively. Ans. 4–5; Spec. ¶ 45. Thus, the difference (in some of the examples) between a +’ and a +, which Appellant relies upon to show criticality, can be a difference of either 1 or 200,000 punchings. The Declaration provides no insights to explain why these broad measurements indicate criticality. The Declaration also does not explain the lack of a recorded difference in punchability with Specification examples 161 and 162 that Appellant identifies as being outside of the claimed range. Rather, the Declaration lumps all of the Specification examples that Appellant identifies as out of the claimed range as having “diminished punchability or tension pad resistance.” Decl. ¶ 17 (citing Table A). The Declaration also provides no insight or explanation of what trends in punchability a person having ordinary skill in the art would have expected based on the coating amount or composition of the underlying sheet itself. Appeal 2019-005458 Application 14/235,863 8 The Declaration merely concludes from only a second data point in these respects that a person having ordinary skill in the art would have understood that the effect of the silica is independent of the type of steel and thickness of the coating. Decl. ¶¶ 18–20. In the Reply Brief, Appellant does not rebut the Examiner’s findings Tanaka supports or the significance of any difference in Appellant’s comparative data. Instead, Appellant states the “the evidence of record is provided to demonstrate improvement in punchability (as well as other properties) of a coated steel sheet relative to the same steel sheet without the claimed coating.” Reply Br. 2. At most, Appellant’s objective evidence of unexpected results purports to show only a “diminished” performance with respect to some examples in some properties. Because the burden is on Appellant to show unexpected results with clear and convincing evidence and results that do not merely differ from the prior art, the totality of the evidence of record, including Appellant’s evidence from the Specification and Declaration, supports the Examiner’s rejection of claim 1. The preponderance of the evidence in this appeal record, therefore, supports the Examiner’s conclusion that the claimed subject matter would have been obvious in view of Zoch’s organosilane insulating coating on an electrical steel sheet as modified by Morillo, which teaches the relative proportions of methyltrimethoxysilane and 3-glycidoxypropyltrimeth- oxysilane, and Yamamoto, which teaches a benefit to using scaly silica particles to a steel coating to improve corrosion resistance. Accordingly, we affirm the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) for the above reasons and those the Examiner provides. Appeal 2019-005458 Application 14/235,863 9 Rejection of Claim 4 Appellant does not present additional arguments regarding the patentability of claim 4, which depends from claim 1. Appeal Br. 11. Because we find Appellant’s arguments unpersuasive of error in the Examiner’s rejection of claim 1 for the reasons discussed above, we likewise affirm the Examiner’s rejection of claim 4 for the same reasons. CONCLUSION For these reasons and those the Examiner provides, we uphold the Examiner’s rejection of claims 1 and 4 under 35 U.S.C. § 103(a) as obvious over the cited prior art references. DECISION SUMMARY In summary: Claim Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103(a) Zoch, Morillo, Yamamoto 1 4 103(a) Zoch, Morillo, Yamamoto, Sasaki 4 Overall Outcome 1, 4 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation