Fujibayashi, Nobue et al.

Patent Trials and Appeals Board

Jan 21, 2021

2019005458 (P.T.A.B. Jan. 21, 2021)

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.
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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
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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

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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.
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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).
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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.
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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.
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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.
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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