Ex Parte Yuki et al

Patent Trial and Appeal Board

Nov 14, 2018

13386314 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/386,314 01/20/2012
20277 7590 11/16/2018
MCDERMOTT WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
WASHINGTON, DC 20001
FIRST NAMED INVENTOR
Hiroshi Yuki
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.
070456-0345 1047
EXAMINER
VAN,QUANGT
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
ipdocketmwe@mwe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIROSHI YUKI, CHIKARA OHKI, and KAZUHIRO Y AGITA
Appeal2018-001293
Application 13/3 86,314
Technology Center 3700
Before STEVEN D.A. McCARTHY, JEREMY M. PLENZLER, and
ERIC C. JESCHKE, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
Decision rejecting claims 1-5. 1 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Claims 6-15 are withdrawn. Non-Final Act. 1.
Appeal2018-001293
Application 13/3 86,314
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, with claims 2-5
depending therefrom. Claim 1 is reproduced below:
1. A method for heat-treating a ring-shaped member,
comprising the steps of:
forming, by relatively rotating one or more induction
heating members arranged to face part of a ring-shaped formed
body made of steel for induction-heating said formed body along
a circumferential direction of said formed body, an annular
heated region heated to a temperature of at least an A1 point on
said formed body;
cooling simultaneously the whole of said heated region to
a temperature of not more than an Ms point; and
after forming the annular heated region and before cooling
simultaneously, suppressing dispersion in temperature in the
circumferential direction on the surface of the annular heated
region to not more than 20° C by retaining the formed body in a
state where the heating is stopped.
REJECTIONS
1. Claims 1 and 3-5 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Bracht (US 2004/0000053 Al, published January 1, 2004)
and Fujita (US 2008/0073003 Al, published Mar. 27, 2008).
2. Claim 2 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Bracht, Fujita, and Cogley (US 4,808,779, issued Feb. 28, 1989).
OPINION
Claims 1-4
The Examiner finds that Bracht teaches the majority of limitations
recited in claim 1 (Non-Final Act. 3), but acknowledges, for example, that
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Appeal2018-001293
Application 13/3 86,314
Bracht "does not teach the step of suppressing." Id. at 4. The Examiner
finds that "Fujita teaches that after heating and before cooling, there is a
suppressing step to check for via temperature measuring means ( 5) (para.
0032)," without further explanation. Id. The Examiner acknowledges that
"Fujita does not explicitly teach the suppression to not more than 20 deg. C,"
but determines that additional limitation would have been obvious. Id.
Appellants respond that the Examiner erred because Fujita does not teach
even the general suppression asserted by the Examiner. Appeal Br. 5.
Appellants' contentions are persuasive.
Claim 1 requires "after forming the annular heated region and before
cooling simultaneously, suppressing dispersion in temperature in the
circumferential direction on the surface of the annular heated region." The
Specification describes "suppressing," explaining that "[i]n order to suppress
dispersion in temperature in the circumferential direction, a step of retaining
the formed body in a state where the heating is stopped is preferably
provided after completion of the induction heating and before the cooling"
and, more specifically, "retaining ... in the state where the heating is
stopped for three seconds after completion of the heating." Spec. 40:26-
41 :4. That is, "suppressing" is an active process step of removing from heat
for a time before cooling.
Appellants contend that, contrary to the claim, "Fujita ... discloses a
method where the heating continues until a temperature measurement
triggers cooling to begin 'immediately."' Appeal Br. 5 ( citing Fujita ,r,r 39,
43, 49, 59, 75, 84). Consistent with Appellants' contentions, paragraph 43
of Fujita, for example, explains that "[ w ]hen Dep [ ( a temperature dependent
variable)] at any time exceeds D* ep' cooling the object immediately starts."
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Application 13/3 86,314
The Examiner acknowledges that "[a]lthough[] Fujita['s] temperature
measurement triggers cooling to begin 'immediately', ... there is still a little
time (millisecond or micro-second) gap between the heating means stop and
cooling start." Ans. 3.
When giving the "suppressing" step its proper meaning (i.e., an active
step in a process of removing from heat for a time before cooling, rather than
a slight unintended delay during a desired immediate switching from heating
to cooling), the Examiner's rejection fails because there is no finding that the
prior art meets this limitation.
Accordingly, we determine that the Examiner erred in rejecting claim
1. The stated bases for the rejections of claims 2--4, which each depend
from claim 1, do not cure the deficiency in the rejection of claim 1.
Claim 5
Claim 5 recites "[a] steel ring-shaped member produced according to
the method for producing a ring-shaped member according to claim 4."
Claim 4 is "[a] method of producing a ring-shaped member" dependent from
claim 1. For purposes of this appeal, we treat claim 5 as an independent
claim reciting product-by-process limitations resulting from the method
steps recited in claims 1 and 4. Indeed, there is no dispute that the
limitations recited in claim 5 are product-by-process limitations. See Final
Act. 4; Appeal Br. 5---6.
Appellants contend that the Examiner has failed to consider the
structure resulting from the process steps recited in claims 1 and 4. Appeal
Br. 5---6. Appellants note, for example, "the residual stress values" resulting
from the recited process steps. Id. at 6 (citing Spec. 88:5-10, Fig. 40).
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Appeal2018-001293
Application 13/3 86,314
Appellants correctly note that these are structural characteristics. Reply Br.
4.
We agree with Appellants that the Examiner erred in rejecting claim
5. The Examiner makes clear that the claim is being read such that "the
claims do not claim any structural characteristics that are developed by the
claimed method" and only require "a steel ring shaped member,"
independent of any structure imparted by the process steps. Ans. 3. The
Examiner clearly states that "the steps of the method for producing the ring
shaped member are not given patentable weight." Id.
"[E]ven though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product itself'
and "[i]f the product in a product-by-process claim is the same as or obvious
from a product of the prior art, the claim is unpatentable even though the
prior product was made by a different process." In re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985) (internal citations omitted). Because the Examiner fails
to consider the structure resulting from the process steps in claim 5, the
Examiner fails to properly establish that structure would have been obvious,
and we do not sustain the Examiner's decision to reject claim 5.
DECISION
We REVERSE the Examiner's decision to reject claims 1-5.
REVERSED
5