Ex Parte Lund et alDownload PDFPatent Trial and Appeal BoardJul 26, 201814122215 (P.T.A.B. Jul. 26, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 14/122,215 81598 7590 Mark Ussai SKF USA Inc. 890 Forty Foot Road PO Box 352 Lansdale, PA 19446 FILING DATE FIRST NAMED INVENTOR 03/20/2014 ThoreLund 07/30/2018 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2012P00045WOUS 2243 EXAMINER DUNN, COLLEEN P ART UNIT PAPER NUMBER 1736 NOTIFICATION DATE DELIVERY MODE 07/30/2018 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): ipr@skf.com mark.ussai@skf.com bryan. peckj ian @skf.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THORE LUND 1 and Tobias Meyer Appeal2017-010730 Application 14/122,215 Technology Center 1700 Before MARK NAGUMO, A VEL YN M. ROSS, and LILAN REN, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Aktiebolaget SKF ("SKF") timely appeals under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 1-18 and 22. (FR 3.) We have jurisdiction. 35 U.S.C. § 6. We affirm. 1 The applicant under 37 C.F.R. § 1.46, and hence the appellant under 35 U.S.C. § 134, is the real party in interest, identified as Aktiebolaget SKF. (Appeal Brief, filed 28 April 2017 ("Br."), 1.) 2 Office Action mailed 29 November 2016 ("Final Rejection"; cited as "FR"). Appeal2017-010730 Application 14/122,215 A. Introduction 3 OPINION The subject matter on appeal relates to an improved method for heat- treating carbonitrided steel, which, although stronger and harder, is more susceptible to cracking in certain high stress applications such as bearings in wind turbines than non-carbonitrided steels. (Spec. 1, 11. 19-31.) The initial treatment steps are illustrated in Figure 1, below. T / -------------------t {Fig. 1: initial steps of carbonitriding, cooling, reheating, and quenching} In step a), the steel sample is brought to a temperature of 930-970°C (to the austenitic phase) in the presence of, e.g., methane-ethane-propane (for carbon) and ammonia (for nitrogen). (Id. at 7, 11. 18-21.) The high temperature is said to ensure that all carbides are dissolved. (Id. at 2, 11. 2- 3.) In step b ), the sample is cooled below the A 1 transformation temperature (the lowest temperature at which the austenite phase exists in equilibrium). 3 Application 14/122,215, Method and steel component, filed 20 March 2014, as the national stage under 35 U.S.C. § 371 of PCT/SE2012/000079, filed 22 May 2012. We refer to the '"215 Specification," which we cite as "Spec." 2 Appeal2017-010730 Application 14/122,215 In step c), the steel is reheated to 780-820°C (to the austenite phase), and in step d) the steel is quenched "to achieve the full case hardness." (Id. at 11. 31-34.) The '215 Specification teaches that in the prior art, "[ s ]teel is firstly austenitized and then quenched. The steel is then isothermally tempered by heating at a temperature just above the martensite formation temperature (Ms)." (Id. at 8, 11. 7-9.) The step of isothermal tempering is illustrated in Figure 2, reproduced below, right. As shown, at successively lower temperatures i, ii, and iii, the hardness of the bainite- transformed steel increases, but it takes ever longer (note that the horizontal time scale is logarithmic) to start (Bs) and to finish (Bf) the process. PRIOR ART log Tin1e {Figure 2 shows a prior art isothermal bainite-transformation process} Two alternative improvements to the prior art isothermal tempering are revealed: step e), in Figure 3 (left); and step f), in Figure 5 (right), below. I~_) Temperature Ms 1--~....;.;.;,;;;,;.;.;.::.:.::.;;;:::,,;.:.:.;~.;..;.;..;.;.;:,.. 60HRC j 60 HRC log Time Ti~ain {Fig. 3: shorter time, about as hard ~,;h•,v,,,..-,~.-c-.... ..,,,,. ... ..,_..,,,,..,..,...,... ......... ~ • ..._ .... ,,. ......... V,, .. ',...,......,,.,.......,... ............................... _ ....... ......,, ................... . Temp j ; Jog Ti.m~ Fig 5, same time, harder} 3 Appeal2017-010730 Application 14/122,215 In method step e ), the steel, which has already been austenitized and quenched (Spec. 8, 11. 17-19), is brought to a temperature slightly above the martensite transition temperature, Ms, and is then held at that temperature after the transition to bainite begins at Bs. (Id. at 11. 20-22.) After some large fraction of the bainite transition is completed, the temperature is raised as indicated in Figure 3 to a level at which the bainite transformation is completed quickly at Bf. (Id. at 11. 22-23.) The resulting steel is said to be almost as hard, but to be obtained in a significantly shorter time (note that the time axis is logarithmic). (Id. at 11. 23-25.) Alternative method step f) is said to be "based on the insight that the martensite formation temperature (Ms) decreases during the bainite transformation at that this may be utilized to lower the bainite transformation temperature to a temperature below the initial martensite formation temperature (Ms) during the bainite transformation in order to form harder bainite." (Spec. 3, 1. 32-3, 1. 2.) Thus, after the steel has been austenitized and quenched (id. at 8, 11. 32-34), the steel is transformed to a certain extent to bainite (e.g., 15--40%; (id. at 4, 11. 4--5)) at a temperature above the initial martensite transformation temperature, Ms, the temperature is lowered below Ms, but still be above the (now lower) temperature of transition to martensite. Thus, in the words of the Specification, the "[ m ]artensitic transformation is avoided at all times." (Id. at 2, 11. 22-23.) The resulting bainite will be correspondingly harder, and the temperature may be raised back to a temperature above the initial Ms to complete the bainite transformation in the same overall period of time. (Id. at 11. 10-12.) 4 Appeal2017-010730 Application 14/122,215 Claim 1 is representative and reads: A method for heat treating a steel component comprising the steps of: a) carbonitriding the steel component at a temperature of 930-970°C b) cooling the steel component, c) re-heating the steel component to a temperature of 780-820°C and d) quenching the steel component, wherein the method further comprises one of the following steps e) performing a bainite transformation at a temperature above the martensite formation temperature, or transforming 25-99% of the austenite into bainite at that temperature and then increasing the temperature to speed up the transformation of the remaining austenite into bainite, f) holding the steel component at an initial temperature (T 1) above the initial martensite formation temperature (Ms), and lowering the initial temperature (T 1) to a temperature (T 2) that is below the initial martensite formation temperature (Ms) but above the actual martensite formation temperature during the bainite transformation. (Claims App., Br. 10; some indentation, paragraphing, and emphasis added.) Remaining independent claim 22 is similar, but requires expressly the sequence of steps recited in claim 1. (Id. at 12-13.) 5 Appeal2017-010730 Application 14/122,215 The Examiner maintains the following grounds of rejection 4, 5 : A. Claims 1-8 and 22 stand rejected under 35 U.S.C. § I03(a) in view of the combined teachings of Maezawa, 6 ASM, 7 and Lund '743 8 (step e) or Volkmuth9 (step f). Al. Claims 9-18 stand rejected under 35 U.S.C. § I03(a) in view of the combined teachings of Maezawa, ASM, and either (Lund '743 or Volkmuth) and Lund '867. 10 B. Claims 1-8 and 22 stand rejected under 35 U.S.C. § I03(a) in view of the combined teachings of Beswick, 11 and either (Lund '743 or Volkmuth). Bl. Claims 9-18 stand rejected under 35 U.S.C. § I03(a) in view of the combined teachings of Beswick, and either (Lund '743 or Volkmuth) and Lund '867. 4 Examiner's Answer mailed 14 June 2017 ("Ans."). 5 Because this application has an effective filing date before the 16 March 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 6 Tatsu Maezawa, Heat-treatment method for steel, JP 2009-052119 A (2009) (translation by Patent Translate (EPO & Google) (2016 7 ASM E9310 datasheet, visited June 3, 2016. 8 Thore Lund et al., Method of complete bainite hardening, U.S. Patent No. 6,149,743 (2000). 9 Johann Volkmuth and Martin Goebel, Process for heat treatment of steel or cast iron workpieces, U.S. Patent Application Publication 2008/0190522 Al (2008). 10 Thore Lund and Ingemar Strandell, Bearing component, WO 2010/134867 Al (2010). 11 John Michael Beswick et al., Wear- and fracture-resistant steel, WO 00/77265 Al (2000). 6 Appeal2017-010730 Application 14/122,215 C. Claims 1-18 and 21 [sic: 22] stand rejected under provisional obviousness-type double patenting in view of claims 1-7 of 14/111,693. 12 B. Discussion The Board's findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Rejection C, provisional obviousness type double patenting SKF waives expressly substantive argument in this appeal against rejection in view of the claims of the co-pending application (Br. 9, § E), so we summarily affirm this rejection. Rejections A and B: obviousness SKF does not dispute the Examiner's determination that steps a) through d) of claim 1 read on the steps disclosed by Maezawa, or that step e) reads on the disclosure of Lund '743. Rather, SKF points to the quenching step of Maezawa and asserts that martensite will be formed as a result. (Br. 3., 11. 15-17.) SKF urges (id. at 4, 11.14--22) that Lund '743 teaches that "[b ]ainite hardening is sometimes preferred in steels compared to martensite hardening." (Lund '743, col. 1, 11. 9-10.) SKF urges that Lund '743 discloses two different steel hardening processes, but that "the art does not show that either is clearly better for all bearing applications." (Br. 5, 11. 4-- 6.) Moreover, in SKF's view, "nothing [in the record] suggests that steel 12 Staffan Larsson and Peter Neuman, Method of heat treating a steel component, U.S. Application 14/111,693, filed 14 October 2013, is pending as of the date of this Decision. 7 Appeal2017-010730 Application 14/122,215 should be first hardened by a martensite hardening process and that a second hardening process should then be performed on this already-hardened steel." (Id. at 11. 7-9.) Thus, SKF argues, the Examiner has not shown any proper reasoning for combining the references. These arguments are not well-taken. SKF describes the process of bainite hardening disclosed by Lund '743 as an improvement on the conventional process of isothermal tempering "by heating at a temperature just above the martensite formation temperature (Ms)." (Spec. 8, 11. 6-9.) Moreover, Maezawa discloses that the quenched steel is tempered by heating to tempering temperature T4, between 150°C and 220°C, for example 180°C. (See Maezawa, Figure 8 and 15 [0043] (first embodiment, carbiding treatment); Figure 9 and 16 [0048] (second embodiment, carbonitriding treatment).) Thus, the rejection maintained by the Examiner is merely the substitution of an improved method of bainite tempering known to the prior art for a standard method, disclosed by Maezawa, of tempering applied to an already quenched austenitic steel. Put another way, the combined teachings ofMaezawa and Lund '743 provide both the motivation and the reasonable expectation of success required for a prima facie case of obviousness. See, e.g., In re Dow Chemical Co., 837 F.2d 469, 473 (Fed. Cir. 1988) ("Both the suggestion and the expectation of success must be founded in the prior art, not in the applicant's disclosure."). SKF also criticizes the Examiner's finding that Volkmuth discloses steps corresponding to step f). As SKF points out, "Volkmuth's figures all depict an austenitizing phase followed by a temperature decrease to a level that always remains above the martensite start temperature." (Id. at 4, 11. 29- 30.) The weight of the evidence supports SKF in this matter. However, the 8 Appeal2017-010730 Application 14/122,215 error by the Examiner is harmless because in every claim before us, both steps e) and f) are alternative options. Thus, every claim can be rendered obvious by a disclosure of step e) that can be combined properly with disclosures of steps a) through d). SKF does not raise substantively distinct arguments for the patentability of the remaining claims. In particular, SKF dismisses Rejections B and B 1 based on Beswick as merely cumulative with Rejections A and Al based on Maezawa. (Br. 8, § C.) Finally, we observe that SKF does not raise arguments for patentability based on so-called secondary considerations, such as unexpected results. We therefore affirm the appealed rejections. C. Order It is ORDERED that the rejection of claims 1-18 and 22 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation