Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.)

Patent Trials and Appeals Board

Jun 28, 2021

2020003602 (P.T.A.B. Jun. 28, 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.
15/509,729 03/08/2017 Yui HOSONO 501253US 8176
22850 7590 06/28/2021
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
MCGUTHRY BANKS, TIMA MICHELE
ART UNIT PAPER NUMBER
CAO
NOTIFICATION DATE DELIVERY MODE
06/28/2021 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YUI HOSONO,
MASAKI SHIMAMOTO, SHINGO YOSHIDA, and
MASATAKA TATEISHI
__________

Appeal 2020-003602
Application 15/509,729
Technology Center CA00
___________

Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
GEORGE C. BEST, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1 and 2 under 35 U.S.C. § 103 as unpatentable
over Sugiyama.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 The word “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Kabushiki Kaisha Kobe Seiko Sho
(Kobe Steel, Ltd.). Appeal Brief dated September 24, 2019 (“Appeal Br.”), at 1.
2 CA 2 766 256 A1, to Sugiyama et al., published January 27, 2011 (“Sugiyama”).
Appeal 2020-003602
Application 15/509,729

2

The claims on appeal are directed to a method for producing granular
metallic iron comprising an agglomeration step and a granulation step.
Independent claim 1 is reproduced below from the Claims Appendix to the Appeal
Brief. The limitation at issue is italicized.
1. A method for producing granular metallic iron, comprising:
an agglomeration step of obtaining agglomerates through
agglomeration of a mixture that contains an iron oxide-containing
material and a carbonaceous reducing agent; and
a granulation step of obtaining granular metallic iron by
heating the agglomerates at 1450 to 1500°C, reducing iron oxides in
the agglomerates, aggregating generated metallic iron to be granular
while separating the metallic iron from slag generated as a by-product,
and thereafter cooling and solidifying the metallic iron;
wherein agglomerates satisfying all the conditions given by
formulas (1) to (3) below are used as the agglomerates:
[(total CaO amount + total SiO2 amount + total Al2O3 amount) /
total Fe amount] ≥ 0.250 (1)
(total CaO amount / total SiO2 amount) ≥ 0.9 (2)
[total Al2O3 amount / (total CaO amount + total SiO2 amount +
total Al2O3 amount)] x 100 ≥ 9.7 (3),
wherein the total CaO amount, the total SiO2 amount, the total
Al2O3 amount and the total Fe amount in the formulas (1) to (3)
respectively represent the mass percentage of CaO, the mass
percentage of SiO2, the mass percentage of Al2O3 and the mass
percentage of Fe comprised in the agglomerates.
Appeal Br., Claims Appendix i.
B. DISCUSSION
Sugiyama discloses a method for producing granular metallic iron.
According to the Appellant, the Examiner finds that Sugiyama’s method includes
the step of preparing carbon briquettes (i.e., the claimed agglomeration step) and
the step of producing reduced iron by heating the briquettes in a moving hearth
Appeal 2020-003602
Application 15/509,729

3

furnace (i.e., the claimed granulation step). Appeal Br. 5. There appears to be no
dispute on this record that the agglomerates prepared according to Sugiyama’s
method have values that either overlap or are within the ranges of formulas (1)–(3)
recited in claim 1. See Final Act. 2–3;3 Appeal Br. 5–6.
As for the temperature in Sugiyama’s granulation step, the Appellant
contends that “Sugiyama defines the heating temperature to be at the liquidus
temperature to increase the crushing strength of the produced reduced iron.”
Appeal Br. 5. However, the Appellant argues that one of ordinary skill in the art
would not have selected a temperature within the range recited in claim 1 because
the claimed temperatures are higher than the liquidus temperature disclosed in
Sugiyama. Appeal Br. 5. To support its argument, the Appellant directs our
attention to an annotated version of Sugiyama’s Figure 3, reproduced below.

Sugiyama’s Figure 3, as annotated by the Appellant, illustrates a
MgO-CaO-Al2O3 phase diagram showing the relationship

3 Final Office Action dated February 27, 2019.
Appeal 2020-003602
Application 15/509,729

4

between the slag component of carbon composite briquettes
and the liquidus temperature.
Appeal Br. 7.
The Appellant contends that “[t]he area surrounded by the bold lines
(0.25≤C/S≤2.0, 0.34≤A/S≤0.52) in Fig. 3 of Sugiyama . . . shows the composition
required by this reference.” Appeal Br. 7. The Examiner finds that the bolded area
includes a liquidus temperature from 1300°C to 1600°C, and thus teaches a range
that encompasses the claimed range (i.e., “1450 to 1500°C”). Ans. 8;4 see also
Appeal Br. 7.
The Appellant, however, directs our attention to the following disclosure in
Sugiyama. Appeal Br. 8.
From the test results, CaO/SiO2 of carbon composite briquettes
is particularly preferably in the range of 0.25 to 1.0. However, even
when an excessive amount of CaO is present in the carbon composite
briquettes, a portion of CaO melts and CaO/SiO2 of molten slag can
satisfy the range of 0.25 to 1.0. Thus, sintering of metallic iron is
promoted by the same action as that described above and the strength
of reduced iron is developed. Accordingly, the preferred range of
CaO/SiO2 is defined as the range of 0.25 to 2.0 (more preferably 0.25
to 1.5).
Sugiyama 12 (emphasis added).
The Appellant argues that
[t]he foregoing description merely teaches that the strength of reduced
iron could be developed when the briquettes of the area surrounded by
the bold lines (0.25