Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.)Download PDFPatent Trials and Appeals BoardDec 24, 20202020003942 (P.T.A.B. Dec. 24, 2020) 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. 15/505,666 02/22/2017 Ryota MIYATA 501067US 2627 22850 7590 12/24/2020 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER WU, JENNY R ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 12/24/2020 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 RYOTA MIYATA and TETSUO YAMAGUCHI Appeal 2019-003942 Application 15/505,666 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, DEBRA L. DENNETT, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the Examiner’s decision to reject claims 1–11. We have jurisdiction under 35 U.S.C. § 6(b). Oral argument was heard December 8, 2020. We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Kabushiki Kaisha Kobe Seiko Sho (Kobe Steel, Ltd.) of Japan. Appeal Brief dated January 7, 2020 (“Appeal Br.”) 2. Appeal 2019-003942 Application 15/505,666 2 CLAIMED SUBJECT MATTER The present application generally relates to a high-strength steel sheet. Specification dated Feb. 22, 2017 (“Spec.”) ¶ 1. The steel sheets are described as exhibiting excellent low-temperature toughness and ductility and having high tensile strength. Id. The Specification teaches a steel with prescribed quantities of carbon, silicon, manganese, phosphorus, sulfur, chromium, molybdenum, aluminum, niobium, and nitrogen. Id. ¶ 11. In addition, the Specification teaches that the composition of the steel must have an “A-value represented by formula (1)” that is 0.0015 or less, an “E- value represented by formula (3)” that is 0.95 or more, and a Brinell hardness HBW (10/3000) between 360 and 440. Id. The A-value generally relates to the suppression of formation of manganese (II) sulfide (MnS). Id. ¶ 32. MnS suppression is taught to improve the toughness and ductility of a steel sheet. Id. ¶¶ 32–33. The E- value generally relates to strength and low-temperature toughness. Id. ¶ 35. Claim 1 is illustrative of the subject matter on appeal and is reproduced below with certain limitations bolded for emphasis: A high-strength steel sheet, comprising by mass%: C: 0.13 to 0. 17%; Si: 0.1 to 0.5%; Mn: 1.0 to 1.5%; P: more than 0% and 0.02% or less; S: more than 0% and 0.0020% or less; Cr: 0.50 to 1.0%; Mo: 0.20 to 0.6%; Appeal 2019-003942 Application 15/505,666 3 Al: 0.030 to 0.085%; B: 0.0003 to 0.0030%; Nb: 0% or more and 0.030% or less; N: more than 0% and 0.0060% or less; and wherein, A-value represented by formula (1) is 0.0015 or less, E-value represented by formula (3) is 0.95 or more, and a Brinell hardness HBW 10/3000 of the steel sheet in a position at a depth of 2 mm from a surface of the steel sheet is 360 or more and 440 or less: A-value=10D ×[S] (1), where [S] is a content of S in the steel sheet by mass %, and D is a value represented by formula (2): D=0.1 × [C] + 0.07 × [Si] − 0.03 × [Mn] + 0.04 × [P] − 0.06 × [S] + 0.04 × [Al] − 0.01 × [Ni] + 0.10 × [Cr] + 0.003 × [Mo] − 0.020 × [V] − 0.010 × [Nb] + 0.15 × [B] (2), where [C], [Si], [Mn], [P], [S], [Al], [Ni], [Cr], [Mo], [V], [Nb], and [B] represent a content of C, Si, Mn, P, S, Al, Ni, Cr, Mo, V, Nb, and B in the steel sheet by mass %, respectively and a content of an element not contained in the steel sheet is defined as 0% by mass in the formula (2), E-value=1.16 × ([C]/10)0.5 × (0.7 × [Si] + 1) × (3.33 × [Mn] + 1) × (0.35 × [Cu] + 1) × (0.36 × [Ni] + 1) × (2.16 × [Cr] + 1) × (3 × [Mo] + 1) × (1.75 × [V] + 1) × (200 × [B] + 1)/(0.1 × t) (3), where [C], [Si], [Mn], [Cu], [Ni], [Cr], [V], and [B] represent a content of C, Si, Mn, Cu, Ni, Cr, Mo, V, and B in the steel sheet by mass %, respectively, t is a thickness of the steel sheet by mm, and a content of an element not contained in the steel is defined as 0% by mass in the formula (3). Appeal Br. 14–15 (Claims App.) (emphasis added) Appeal 2019-003942 Application 15/505,666 4 DISCUSSION The Examiner rejects claims 1–11 under 35 U.S.C. § 103(a) as unpatentable over Miura et al. (US 2015/0225822 A1, published Aug. 13, 2015) (hereinafter, “Miura”). Final Office Action dated Aug. 23, 2019 (“Final Act.”) 2–7. In support of the rejection, the Examiner finds that Miura discloses an abrasion resistant steel plate having excellent low- temperature toughness and high strength. Id. at 2. The Examiner finds that Miura’s steel plate has a composition that overlaps the claimed composition as shown in the following table. Element Applicant (weight%) Miura et al. (weight%) Overlap (weight%) C 0.13-0.17 0.1-0.2 0.13-0.17 Si 0.1-0.5 0.05-1 0.1-0.5 Mn 1-1.5 0.1-2 1-1.5 P 0-0.02 <=0.02 0-0.02 S 0-0.002 S <=0.005 0-0.002 Cr 0.5-1 0.07-1.2 0.5-1 Mo 0.2-0.6 0.1-0.5 0.2-0.5 Al 0.03-0.085 0.005-0.1 0.03-0.085 B 0.0003-0.003 0.0003-0.003 0.0003-0.003 Nb 0-0.03 0.005-0.1 0.005-0.03 N 0-0.006 Cu (Claim 2) 0-1.5 0.03-1 0.03-1 Appeal 2019-003942 Application 15/505,666 5 Id. at 3 (Table 1). The Examiner finds that Miura does not expressly disclose formulas 1–3, but finds that “because Miura’s steel plate has similar elemental compositions as claimed and similar thickness, it is expected to satisfy claimed formulas.” Id. at 4. The Examiner further finds that “[s]ince the steel sheet product of Miura has compositions that meet the instant application composition and is made from a similar process steps . . . it is therefore reasonable to believe that the claimed structure and property limitations would have naturally flowed” from Miura. Id. In view of the foregoing, the Examiner determines that a prima facie case of obviousness has been established and the burden shifts to Appellant to show that the prior art products do not necessarily possess the characteristics of the claimed product. Id. at 5. Appellant argues that the rejection is in error and should be reversed. Appeal Brief dated January 7, 2020 (“Appeal Br.”) 5–13. Appellant argues the claims collectively. Id. We select sole independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues that the Examiner acknowledges that there is no direct teaching of the claimed formulas and Brinell hardness. Id. at 6. Appellant further argues that the evidence of record shows that the formulas and hardness requirement are not necessarily satisfied even where the prior art composition overlaps the compositional limitations. Id. Appellant directs our attention to certain testing data in the Specification. More particularly, Appellant directs us to Sample Nos. 18– 20, 22, 23, and 25. Id. at 9 (citing Spec. ¶¶ 50 (Table 1), 59–62). These samples satisfy the compositional limitations of claim 1 but do not satisfy all Appeal 2019-003942 Application 15/505,666 6 of the other limitations. Spec. ¶¶ 59–62. The A-value of Sample Nos. 18– 20, 22, and 23 exceeds the claimed range resulting in reduced ductility and low-temperature toughness. Id. ¶ 59, 61. The E-value of Sample No. 25 falls below the claimed range resulting in reduced strength and low- temperature toughness. Id. ¶ 62. Accordingly, Appellant reasons, steel plates having components falling within the claimed range may still not satisfy the A-value, E-value, and hardness limitations. Appeal Br. 9. Appellant further argues that Miura fails to provide guidance or direction as to how to achieve all of the limitations in the claims. Id. at 10. Appellant argues that “[a]bsent any salient guidance in Miura to obtain the steel as claimed, the rejection is unsustainable.” Id. at 12. In the Answer, the Examiner asserts that Miura teaches the claimed A- value and E-value. Examiner’s Answer dated March 4, 2020 (“Ans.”) 3–4. The Examiner asserts that the “claimed ranges of A and E value are for achieving desired low temperature toughness >=50 J.” Id. at 3 (citing Spec. ¶ 47)2. The Examiner finds that Miura teaches a number of examples that exhibit low-temperature toughness >50 J. Id. As a result, the Examiner concludes, many of Miura’s inventive examples would be expected to meet both the claimed A-value and E-value. Id. The Examiner additionally asserts that evidence of unexpected results is not commensurate with the claims. Id. at 3–4. The Examiner further finds that certain samples are not compared to the closest prior art. Id. at 4–5. 2 Specification paragraph 47 corresponds to Pre-Grant Publication US 2017/0275718A1, published Sep. 28, 2017, ¶¶ 69–70. Appeal 2019-003942 Application 15/505,666 7 The Examiner further determines that both Miura and the Specification teach the importance of suppressing MnS for preventing deterioration of toughness since S is precipitated as MnS. Id. at 5. The Examiner finds Appellant’s arguments regarding Sample Nos. 18–20 to be unpersuasive. Id. at 5–6. The Examiner reiterates that, because the A-value is correlated with toughness, the numerous samples of Miura exhibiting low temperature toughness are expected to have the claimed A- value. Id. In its Reply Brief, Appellant offers a table described as including the A-values for Miura’s steel compositions A through V (that is, all steel compositions listed in Table 1 of Miura). Reply Brief dated May 4, 2020 (“Reply Br.”) 5. Appellant’s calculations indicate that all steels of Miura do not satisfy the claimed A-value of “0.0015 or less.” Id. Appellant further asserts that the A-value is correlated with both the toughness and ductility of the steel plate. Id. at 6. Appellant further observes that the Examiner’s findings regarding Appellant’s data not representing a comparison to the closest prior art or not being commensurate with the scope of the claims are inapposite as Appellant does not seek to rebut the prima facie case with evidence of criticality. Id. at 6–7. Rather, Appellant argues that the Examiner’s prima facie case is in error. Id. We find the Appellant’s arguments to be persuasive. While Miura may teach the compositional limitations of the claims, the Examiner has not set forth a persuasive rationale that would have led a person of ordinary skill in the art from the teachings of Miura to the claimed range of A-values and E-values. The Examiner offers a rationale, persuasively disputed by Appeal 2019-003942 Application 15/505,666 8 Appellant, explaining why Miura would have taught one of skill in the art to achieve the claimed toughness. The Examiner, however, does not thoroughly address how one of skill in the art would have been led to the improved ductility claimed by Appellant. In view of the foregoing, a preponderance of the evidence does not lead to the conclusion that Miura teaches or suggests each limitation of claim 1. Accordingly, Appellant has shown error in this regard. CONCLUSION The Examiner’s rejection is reversed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–11 103(a) Miura 1–11 REVERSED Copy with citationCopy as parenthetical citation