JFE Steel Corporation

Patent Trials and Appeals Board

Dec 14, 2021

2021000240 (P.T.A.B. Dec. 14, 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. 15/128,451 09/23/2016 Yukihiro Shingaki SUG-16-1324 (308880-79) 6443 35811 7590 12/14/2021 IP GROUP OF DLA PIPER LLP (US) ONE LIBERTY PLACE 1650 MARKET ST, SUITE 5000 PHILADELPHIA, PA 19103 EXAMINER HECKMAN, RYAN L ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 12/14/2021 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): pto.phil@us.dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUKIHIRO SHINGAKI, YUIKO WAKISAKA, and HIROTAKA INOUE Appeal 2021-000240 Application 15/128,451 Technology Center 1700 Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and DONNA M. PRAISS, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 6, 9, 13, and 14 under 35 U.S.C. § 103 1 This Decision also cites to the Specification (“Spec.”) filed September 23, 2016, the Final Office Action (“Final Act.”) dated July 1, 2019, the Appeal Brief (“Appeal Br.”) filed March 19, 2020, the Examiner’s Answer (“Ans.”) dated August 7, 2020, and the Reply Brief (“Reply Br.”) filed October 6, 2020. 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. 1. Appeal 2021-000240 Application 15/128,451 2 as unpatentable over Kobayashi.3 Ans. 3-6. Pending claims 10 and 12 are not before us on appeal because the Examiner has withdrawn these claims from consideration. Final Act. 2; Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The invention recited in the claims on appeal relates to a primary recrystallization annealed sheet for grain-oriented electrical steel sheet production. Spec. ¶ 1. Appellant discloses that “[a] grain-oriented electrical steel sheet is a soft magnetic material used as an iron core material of transformers, generators, and the like.” Id. ¶ 2. This sheet has a crystal microstructure in which the <001> orientation (an easy magnetization axis of iron) is “highly accorded with the rolling direction of the steel sheet,” and is formed through secondary recrystallization annealing. Id. Appellant further discloses that, in the production of this sheet, it is important that an inhibitor or precipitates are uniformly dispersed in the steel. Id. ¶ 7. According to Appellant, improved magnetic properties may be achieved when a concentrated nitrogen section is present at the outermost surface layer of the steel sheet after a nitriding treatment that is substantially pure iron with low Si concentration. Id. ¶¶ 15-16. Therefore, Appellant teaches that the temperature and time of nitriding, and also of cooling thereafter, is appropriately controlled to thereby inhibit nitrogen diffusion in the steel. Id. ¶ 17. 3 Kobayashi et al., US 4,979,996, issued December 25, 1990 (“Kobayashi”). Appeal 2021-000240 Application 15/128,451 3 Claim 6, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter (paragraphing altered to improve readability): 6. A primary recrystallization annealed sheet for grain-oriented electrical steel sheet production, the primary recrystallization annealed sheet being obtainable after nitriding treatment in a series of steps for grain-oriented electrical steel sheet production in which a steel slab containing, in mass%, 0.001 % to 0.10% of C, 1.0% to 5.0% of Si, 0.01 % to 0.5% of Mn, 0.002% to 0.040% of one or two selected from S and Se, 0.001 % to 0.050% of sol.Al, and 0.0010% to 0.020% of N, the balance being Fe and incidental impurities, is subjected to: hot rolling; hot band annealing as required; subsequent cold rolling once or twice or more with intermediate annealing therebetween to obtain a final sheet thickness; subsequent primary recrystallization annealing and the nitriding treatment; and subsequent secondary recrystallization annealing after application of an annealing separator, wherein a nitrogen increase ΔN due to the nitriding treatment is 1000 ppm or less and a N intensity peak according Appeal 2021-000240 Application 15/128,451 4 to GDS emission analysis at a steel sheet surface is positioned at a surface layer-side of a Si intensity peak. OPINION We review the appealed rejection 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 Appellant’s arguments and the evidence of record, we are not persuaded of reversible error in the stated rejection. Therefore, we affirm the Examiner’s obviousness rejection based substantially on the fact findings, reasoning, and conclusions set forth in the Examiner’s Answer, which we adopt as our own. We offer the following for emphasis. The Examiner finds that Kobayashi teaches a primary recrystallization annealed sheet for grain-oriented electrical steel production whose composition overlaps the composition of the claimed sheet. Ans. 3. The Examiner further finds that Kobayashi’s sheet is obtained by a process substantially as recited in claim 6, including a nitriding treatment at a temperature of 500-900°C for 15-60 seconds. Id. at 3-4. The Examiner acknowledges that Kobayashi teaches finish annealing “under usual conditions,” but fails to recite cooling performed at 200°C or lower within 24 hours after the nitriding treatment. Id. at 4. However, the Examiner finds that an ordinary artisan would readily understand that maintaining a nitrided sheet above 200°C for more than 24 hours would exponentially increase production costs and significantly affect Kobayashi’s sheet product due to Appeal 2021-000240 Application 15/128,451 5 “inherent Arrhenius-type diffusion.” Id. Therefore, the Examiner concludes that, at the very least, it would have been obvious to select as short a finish annealing time to achieve the desired properties in the sheet so as to minimize production costs. Id. As to the nitrogen content, the Examiner finds that Kobayashi teaches a range of up to 0.010 wt.%, which encompasses the claimed range of 0.001-0.002 wt.%. Ans. 4. With regard to a nitrogen increase, ΔN, due to the nitriding treatment being 1000 ppm or less and a N intensity peak (according to GDS emission analysis) at a steel sheet surface being positioned at a surface layer-side of a Si intensity peak, the Examiner finds that such would be inherent properties of Kobayashi’s sheet because Kobayashi teaches the same or substantially the same process and composition as claimed. Id. at 5 (Table I, comparing Kobayashi and claim 6 compositions). Appellant argues that the Examiner ignores key differences between Kobayashi’s process and the process disclosed in the Specification. Appeal Br. 3. Specifically, Appellant contends that Kobayashi fails to disclose either a nitriding treatment at 600°C or lower for 20 seconds or less or cooling performed at 200°C or lower within 24 hours after nitriding. Id. Appellant contends that the absence of substantially identical processes between Kobayashi and that disclosed “undermines the rejection’s position that the claimed nitrogen increase ΔN and N intensity peak are inherent in Kobayashi.” Id. at 4. Appellant asserts, therefore, that Kobayashi is non- enabling with respect to teaching how to perform such treatments. Id. at 3. Appellant also asserts that such treatments would have an impact on the resulting properties of the sheet product and provide unexpected results. Id. Appeal 2021-000240 Application 15/128,451 6 Moreover, Appellant asserts that the Specification establishes that the prior art products do not necessarily possess the claimed characteristics. Appeal Br. 4. Appellant urges that the Specification shows that the nitriding treatments at 600°C or lower are indispensable in obtaining the claimed nitrogen increase, ΔN, and the N intensity peak. Id. In particular, Appellant asserts that, even for steel sheet compositions that are the same or almost the same, ΔN and N intensity peak are distinctly different for different nitriding treatment conditions and subsequent cooling conditions. Id. (referring to “Conditions 10-15). Appellant states that [w]hen the (a) nitriding treatment is conducted at 600°C of lower, and (b) cooling [is] performed at 200°C or lower within 24 hours after the nitriding treatment, as in the Examples in Table 1, the nitrogen increase ΔN is 1000 ppm or less and a N intensity peak is positioned at a surface layer-side of a Si intensity peak. Id. at 5. In contrast, Appellant also states that when the nitriding temperature is 650°C, as in Conditions 8 and 24 of Table 1 of the Appellant’s [S]pecification, the “nitrogen increase ΔN and N intensity” thereof cannot fall within the claimed conditions. Id. Appellant contends that Kobayashi teaches nitriding temperatures, preferably 750-850°C, for only a short time in the opposite direction as the disclosed nitriding conditions and does not teach the disclosed cooling conditions. Id. at 5-6. Appellant’s arguments are not persuasive of reversible error. Initially, we note that a prior art disclosure is not limited to its preferred embodiments nor its examples. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“[A]ll disclosures of the prior art, including unpreferred Appeal 2021-000240 Application 15/128,451 7 embodiments, must be considered.” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982) (explaining that a prior art reference’s disclosure is not limited to its examples). In this regard, as the Examiner finds, Kobayashi clearly teaches that the nitriding treatment is performed at a temperature in the range of 500-900°C for 15 to 60 seconds. Kobayashi 6:68-7:7 and claim 1. As such, absent evidence of unexpected results, Kobayashi renders a nitriding temperature of 600°C or lower for 20 seconds or less prima facie obvious. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (explaining that overlapping ranges typically support a conclusion of obviousness and where the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling); see also In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). We further note that although Appellant contends that a nitriding treatment at 600°C or lower for 20 seconds or less is critical, such is neither recited in the method for obtaining the primary recrystallization annealed sheet recited in claim 6 nor is such consistent with the Specification. Indeed, claim 6, though reciting a nitriding treatment, fails to recite any conditions for this treatment. On the other hand, the Specification teaches that inhibiting nitrogen diffusion requires, in part, “appropriately controlling . . . the temperature and time of nitriding treatment.” Spec. ¶ 17. The Specification further teaches that “[n]o specific limitations are placed on the nitriding method so long as the amount of nitriding can be controlled.” Id. ¶ 43. In addition, the Specification teaches the nitriding treatment is, in particular, preferably performed at a temperature of 600°C or lower in order to suppress inward diffusion of nitrogen in the steel. Note that even in a situation in Appeal 2021-000240 Application 15/128,451 8 which the nitriding temperature is greater than 600°C, it is still possible to increase the N intensity near the surface by shortening the treatment time. Id. ¶ 45. As to the nitriding time, the Specification teaches that “it is preferable to aim for a short operation time of 10 minutes or less.” Id. Most of the examples set forth in Table 1 include a nitriding treatment performed for times greater than 20 seconds. Id. ¶ 63 (only Condition 26 includes nitriding at 580°C for 20 seconds). Appellant fails to direct our attention to any disclosure that the time range should be “20 seconds or less,” much less that this time period is critical. Regarding Appellant’s statement that a nitriding temperature above 600°C, e.g., 650°C, cannot produce a steel sheet having a ΔN and N intensity as claimed (Appeal Br. 5, referring to Spec. ¶ 63, Table 1, Conditions 8 and 24), we reiterate that the Specification also teaches that “even in a situation in which the nitriding temperature is greater than 600°C, it is still possible to increase the N intensity near the surface by shortening the treatment time.” Moreover, the Specification teaches that it may be possible to realize the same [primary recrystallization annealed sheet] through various conditions other than the conditions considered herein by considering . . . the potential with which nitriding is performed (for example, the concentration of NH3 relative to H2 in the case of gas nitriding and the type of salt used in the case of salt bath nitriding), or a completely different nitriding method. Spec. ¶ 47. These disclosures are inconsistent with Appellant’s contention that a nitriding temperature of 600°C or less and a nitriding time of 20 seconds or less are critical process parameters for obtaining the nitrogen properties recited in claim 6. Appeal 2021-000240 Application 15/128,451 9 Similarly, we are not persuaded by Appellant’s assertion that, even for steel sheet compositions that are the same or almost the same, ΔN and N intensity peak are distinctly different for different nitriding treatment conditions and subsequent cooling conditions (Appeal Br. 4, referring to Spec. ¶ 63, Table 1, Conditions 10-15). Condition 10 is not relevant because these samples were not subjected to either a nitriding treatment nor a cooling treatment. As the Examiner correctly points out (Ans. 9), Conditions 14 and 15 have significantly different compositions from each other and from Conditions 10-13. Only Conditions 11-13 use the same composition, but each is nitrided at the same temperature (480°C over varying times) and cooled to 200°C within the same time (0.5 hrs.). However, none of these Conditions was nitrided for 20 seconds or less, the time period Appellant contends is critical to obtain the appropriate nitrogen properties recited in the claims. As to the cooling step performed at 200°C or lower within 24 hours after nitriding, the Specification teaches that appropriately controlling the cooling stage and temperature hysteresis after the nitriding treatment, in part, inhibits nitrogen diffusion in the steel. Spec. ¶ 25. The Specification further teaches that, to achieve the nitrogen intensity peak positioned at the surface- layer side of the Si peak in GDS, “it is important that cooling is performed to 200°C or lower within 24 hours after the nitriding treatment in order to restrict the time for diffusion across the entire process.” Id. ¶ 52. The Specification also discloses 30 examples with cooling times in the range of 0.5-50 hours, presumably for the period after nitriding and including the secondary recrystallization step. Id. ¶ 74, Table 1. However, in this regard, we note that the Specification teaches that the secondary recrystallization Appeal 2021-000240 Application 15/128,451 10 step (performed after nitriding and before cooling) involved heating at 300- 700°C for 6 hours and 700-800°C for 2 hours. Id. ¶ 66. Thus, it is unclear how cooling times less than 8 hours after nitriding are possible, unless the reported cooling times in Table 1 are after the secondary recrystallization anneal step, rather than after nitriding per se. In that case, the cooling times after nitriding actually range from 8.5-58 hours. In any event, Appellant fails to respond to the Examiner’s position that cooling the sheet to 200°C or less within 24 hours would have been obvious because maintaining the steel sheets above 200°C would exponentially increase production costs and significantly affect Kobayashi’s sheet product due to “inherent Arrhenius-type diffusion.” See Ans. 4, 7. In addition, Appellant fails to demonstrate any criticality to the cooling time of 200°C per se, as all the examples were cooled to this temperature, and there are a number of comparative examples that were cooled to this temperature in less than 24 hours that did not achieve the nitrogen properties recited in claim 6. Turning to Appellant’s assertion that Kobayashi is non-enabling with regard to the nitriding and cooling steps, for achieving the nitrogen properties recited in claim 6, we note that prior art references are presumed enabling. In re Sasse, 629 F.2d 675, 681 (CCPA 1980) (it is applicant’s burden to demonstrate non-enablement of a reference), discussed further in In re Antor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012) (“we now hold that a prior art printed publication cited by an examiner is presumptively enabling”). “[A] prior art printed publication cited by an examiner is presumptively enabling barring any showing to the contrary by a patent applicant or patentee.” In re Morsa, 713 F.3d 104, 109 (Fed. Cir. Appeal 2021-000240 Application 15/128,451 11 2013). Here, Appellant fails to direct our attention to any showing attempting to demonstrate Kobayashi is non-enabling for the nitriding and cooling steps. With regard to Appellant’s assertion that treating a steel sheet product by nitriding at 600°C for 20 seconds or less and cooling the sheet to 200°C or less within 24 hours of nitriding provides unexpected results, we note that the burden of establishing unexpected results rests with Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). “[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.” In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991). “[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.” See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Additionally, the relied-upon results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003). Finally, “it is well settled that unexpected results must be established by factual evidence. ‘Mere argument or conclusory statements in the specification does not suffice.’” See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). Here, Appellant fails to direct our attention to any evidence that the results set forth in the Specification would have been unexpected to those of ordinary skill in the art. In addition, as discussed above, the Specification data fails to demonstrate that nitriding at 600°C for 20 seconds or less and Appeal 2021-000240 Application 15/128,451 12 cooling to 200°C or less within 24 hours of nitriding yields consistent unexpected results. Moreover, Appellant has not demonstrated that the results are commensurate with the scope of the claims which recite ranges of elements in the steel sheet and do not recite the very conditions which Appellant alleges are critical to nitrogen properties recited in claim 6. To the contrary, the record before us supports, by a preponderance of the evidence, the Examiner’s position that Kobayashi discloses a primary recrystallization annealed sheet that would have been prima facie obvious to one of ordinary skill in the art, wherein the sheet inherently possesses the nitrogen properties recited in claim 6. In the Reply Brief, Appellant presents a new argument not raised in the Appeal Brief that, in addition to the nitriding and cooling conditions, the steel sheet of claim 6 is obtained through a batch process (in contrast to Kobayashi’s alleged strip running process). Reply Br. 2-3. Under regulations governing appeals to the Board, any new argument not timely presented in the Appeal Brief will not be considered when filed in a Reply Brief, absent a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1476-77 (BPAI 2010) (informative); see also 37 C.F.R. § 41.41(b)(2). Appellants have not provided this record with such showing. Accordingly, we will not consider this new argument in the Reply Brief.Accordingly, we sustain the Examiner’s obviousness rejection of claim 6, and claims 9, 13, and 14, which depend therefrom. CONCLUSION Upon consideration of the record and for the reasons set forth above and in the Examiner’s Answer, the Examiner’s decision to reject claims 6, 9, Appeal 2021-000240 Application 15/128,451 13 13, and 14 under 35 U.S.C. § 103 as unpatentable over Kobayashi is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 6, 9, 13, 14 103 Kobayashi 6, 9, 13, 14 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED