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

Patent Trials and Appeals Board

Dec 24, 2020

2020003942 (P.T.A.B. Dec. 24, 2020)

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.
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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%;
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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)
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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

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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
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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.
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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
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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