Ex Parte Adldinger et al

Patent Trial and Appeal Board

May 23, 2018

14491043 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/491,043 09/19/2014
76799 7590 05/25/2018
FAURECIA
c/o Carlson, Gaskey & Olds, P.C.
400 W. Maple Road, Ste. 350
Birmingham, MI 48009
FIRST NAMED INVENTOR
Martin Adldinger
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.
67 ,34 l-2922U2;
07EMC0037
CONFIRMATION NO.
4798
EXAMINER
WILENSKY, MOSHE K
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
05/25/2018 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):
Silke.Hertzsch@faurecia.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN ADLDINGER, THORSTEN KEESSER,
and MARCO RANALLI 1
Appeal2017-008167
Application 14/491,043
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision, set forth in the Non-Final Action dated July 21, 2016 (hereinafter
"Non-Final Act."), rejecting claims 1-10 and 21-30. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, EMCON Technologies Germany (Augsburg)
GmbH, which, according to the Appeal Brief, is the real party in interest.
Appeal Br. 1.
Appeal2017-008167
Application 14/491,043
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method for manufacturing exhaust gas cleaning devices that
include a housing and a gas-traversed insert clamped in the
housing, the method comprising the following steps:
a. wrapping the gas-traversed insert with an insulation mat
to form a wrapped insert;
b. starting to heat the housing in a machine tool to increase
the temperature of the housing; and
c. arranging the wrapped insert in the housing having an
increased temperature.
REJECTIONS
I. Claims 1, 2, 4--8, and 10 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Alles (US 2004/0255459 Al,
pub. Dec. 23, 2004), Hardesty (US 2003/0140495 Al, pub. July
31, 2003), Dreiman (US 2006/0171835 Al, pub. Aug. 3, 2006),
and Poiret (US 2009/0111628 Al, pub. Apr. 30, 2009).
II. Claims 3, 9, and 21-30 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Alles, Hardesty, Dreiman, Poiret, and
Gaul (US 2010/0037459 Al, pub. Feb. 18, 2010).
III. Claims 1 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Alles and Engineers Edge (Ductility-
Strength (Mechanics) of Materials, 29 Machinery Handbook,
http://www. engineersedge. com/material_science/ ductility
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(Copyright 2000-2015)) or Pearson2 (Serope Kalpakjian &
Steven Schmid, Manufacturing Engineering & Technology 56-
87 (2009)).
IV. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Alles, Engineers Edge, and Hardesty.
V. Claims 3, 9, 21, and 25 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Alles, Engineers Edge or Pearson, and
Gaul.
VI. Claims 1-10 stand rejected under the judicially-created doctrine
of obviousness-type double patenting as unpatentable over
claims 3-8, 11, 12, 18, 21, and 26 of U.S. Patent 8,910,383.
DISCUSSION
Rejection I
Claim 1:
In rejecting independent claim 1, the Examiner finds that
Alles teaches a stuffing process for manufacturing a catalytic
converter. See Alles [0043]. Alles teaches wrapping the gas-
traversed insert with an insulation mat to form a wrapped insert.
See Alles [0012]. Alles teaches that prior to the stuffing process
the housing may be radially expanded in selected sections. See
Alles [0043].
Non-Final Act. 4. The Examiner acknowledges that "Alles does not
explicitly teach what method is used to expand the housing," but finds that
"Dreiman and Poiret both teach methods of using thermal expansion to
2 The Examiner and Appellant refer to this reference as "Pearson." See,
e.g., Non-Final Act. 6; Appeal Br. 10. For consistency, we, likewise, refer
to this reference herein as "Pearson."
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achieve snug fits of components within housings." Id. In light of the
teachings of Dreiman and Poiret, the "[E]xaminer concludes that using heat
to thermally expand a housing to allow insertion of a component that is very
close in dimensions to the housing is a known process in the mechanical
arts." Id. at 5. The Examiner determines that "it would have been obvious
to use thermal expansion (and subsequent contraction) as the expansion
method within the method of Alles" because such a modification constitutes
the application of a known technique to a known method to yield predictable
results. Id. (citing MPEP § 2143(D)). According to the Examiner, "[s]uch a
method would have been predictable in view of Hardesty[,] which already
teaches that the metal housing of ... Alles is a suitable material (that
expands when heated) for thermal expansion." Id. (citing Hardesty i-f 9).
Appellant argues that "there is no disclosure or teaching found
anywhere in Hardesty to suggest that a housing be heated to facilitate
insertion of an insert," but, "[i]nstead, Hardesty teaches away from such a
configuration." Appeal Br. 3 (citing Hardesty i-f 9). Appellant asserts that
Hardesty "teach[ es] a process w[h ]ere the insert is stuffed into the housing
and then, only after stuffing, is the housing heated to swell the intumescent
mat." Id. at 4 (citing Hardesty i-f 26). According to Appellant, "[t]he
purpose of the heating step in Hardesty is not related to the housing or
stuffing of the insert," but, "[i]nstead, the purpose of the heating step in
Hardesty is related to the mat." Id.; see also id. (asserting that "[t]he
purpose of heating for the subject invention is to facilitate stuffing of the
insert into the housing"). These arguments are not convincing.
A reference teaches away from a claimed invention or a proposed
modification if "a person of ordinary skill, upon reading the reference,
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would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant." In re Kubin, 561F.3d1351, 1357 (Fed. Cir. 2009) (quoting In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Prior art does not teach away
from claimed subject matter merely by disclosing a different solution to a
similar problem unless the prior art also criticizes, discredits, or otherwise
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Here, Appellant does not point to, nor do we find, any
disclosure in Hardesty criticizing, discrediting, or otherwise discouraging
using heat to thennaHy expand the housing of AHes before stuffing the
insert. The fact that Hardesty discloses a different process in which a
housing is heated after stuffing does not constitute a teaching away.
l'vioreover, Appellant's argument that Hardesty fails to teach or
suggest heating a housing to facilitate insertion of an insert (see Appeal Br.
3) is not responsive to the rejection presented. As the Examiner explains,
the rejection does not rely on Hardesty for teaching or suggesting a step of
expanding a housing by heat for inserting an insert. See Ans. 10-11.
Rather, "Dreiman and Poiret are used to teach expanding [a] housing to
allow insertion of oversized elements," and Hardesty simply "show[s] that
metal housings, such as the one in Alles, will expand when heated." Id. at
1 O; see also id. at 11 (explaining that "Hardesty is only cited to prove the
suitability of the Alles housing material for a thermal expansion process").
Appellant asserts that "one of ordinary skill in the art would not
consider the methods of Dreiman and Poiret to be suitable manufacturing
techniques for the [purportedly fragile] gas-traversed inserts." Appeal Br. 4.
In particular, Appellant asserts that, "as the housings of Dreiman and Poiret
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cool down, the structures do not contract uniformly around the insert," and
"[t]his results in higher radial pressures being exerted at certain locations
than others[,] which would significantly increase the potential for a damaged
insert." Id. This argument is unpersuasive. Even assuming that the cooled
housing would exert radial pressure on the insert, Appellant does not offer
any evidence or persuasive technical reasoning to explain why such radial
pressure would necessarily be high enough to "significantly" increase the
risk of damaging the insert as alleged. See Appeal Br. 4. In this regard,
Appellant's contention amounts to nothing more than attorney argument
unsupported by evidence, and, thus, is entitled to little, if any, weight. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) (An attorney's arguments a brief cannot take
the place of evidence.).
Appellant asserts that "[t]he addition of a wrapped mat increases the
friction between the insert and the housing leading to a more complicated
insertion process." Appeal Br. 5 (citing Spec. i-f 60). According to
Appellant, "[ o ]ne of ordinary skill in the art, when reviewing the methods of
Dreiman and Poiret, would expect severe friction problems during insertion
of a wrapped insert and therefore would be discouraged from using such
methods." Id. To the extent that Appellant argues that Dreiman and Poiret
teach away from heat-expanding Alles' s housing before stuffing the insert,
such an argument is unpersuasive because Appellant does not point to, nor
do we discern, any disclosure in Dreiman or Poiret discrediting or
discouraging such a step. See In re Fulton, 391 F.3d at 1201. Moreover,
Appellant does not proffer any evidence that "severe" problems with friction
would be expected. See In re Pearson, 494 F .2d at 1405.
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Appellant argues that "[t]here is no disclosure or teaching in Dreiman
or Poiret of using heat to expand the housing to a desired size[,] as would be
required by Alles in order for Alles to operate as intended." Appeal Br. 5.
Appellant asserts that "Alles does not merely require expansion to facilitate
stuffing of the wrapped insert but requires expansion to achieve a defined
dimension." Reply Br. 5; see also id. at 4 (asserting that, "in order for the
method of Alles to operate as intended the expansion must be controlled to a
desired dimension"). This line of argument is not convincing. Although we
appreciate Appellant's observation that Alles discloses expanding the
housing to defined dimensions (see Alles ,-r 21 ), we agree with the Examiner
that "[i]t would not be difficult for a person of ordinary skill to tailor a
heating system to expand a metal housing to a desired dimension." Ans. 10.
In this regard, Appellant does not present any evidence or persuasive
technical reasoning explaining why using a thermal expansion technique, as
taught by Dreiman and Poiret, to produce Alles' s defined dimensions would
have been beyond the technical grasp of a person of ordinary skill in the art.
"A person of ordinary skill is also a person of ordinary creativity, not an
automaton." KSR Int'! Co. v. Teleflex inc., 550 U.S. 398, 421 (2007).
Appellant also argues that the Examiner's rejection is based upon
impermissible hindsight reconstruction because "[t]here is no teaching of
heating a housing prior to stuffing other than that found in [Appellant's]
disclosure." Appeal Br. 6. According to Appellant, "the Examiner's finding
lacks a clear, articulated reasoning supported by rational underpinnings." Id.
This argument is unpersuasive. As discussed above, the Examiner
articulates adequate reasoning based on rational underpinnings as to why it
would have been obvious to one of ordinary skill in the art to use heat, rather
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than a radial expander, to expand the housing in Alles's method. See Non-
Final Act 5; see also Ans. 9 (explaining that Alles "specifically teaches pre-
expanding the housing to ease insertion," and "[t]he methods of Dreiman
and Poiret are both pre-expansion techniques"). In this regard, Appellant
does not specifically address the Examiner's articulated reasoning or explain
why the reasoning is in error. The Examiner's proposed modification of
Alles to use a thermal expansion technique to pre-expand the housing does
not amount to more than the mere application of a known technique to a
piece of prior art ready for the improvement. See KS'R, 550 U.S. at 417
(noting that such modifications are obvious where they do no more than
yield a predictable result).
In addition, Appellant does not identify, nor do we discern, any
knowledge relied upon by the Examiner that was gleaned only from
Appellant's disclosure and that was not otherwise within the level of
ordinary skill at the time of the invention. See In re McLaughlin, 443 F .2d
1392, 1395 (CCPA 1971) ("Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from [Appellant's] disclosure, such a reconstruction
is proper."). Thus, we are not persuaded by Appellant's contention that
"[t]he Examiner is clearly engaging in a hindsight reconstruction." Appeal
Br. 6.
For the above reasons, Appellant does not apprise us of error in the
Examiner's determination that the subject matter of claim 1 would have been
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obvious. Accordingly, we sustain the rejection of claim 1under35 U.S.C.
§ 103(a) as unpatentable over Alles, Hardesty, Dreiman, and Poiret.
Claim 2:
In rejecting claim 2, the Examiner finds that "Alles teaches that the
radial expander is used in conjunction with a stuffing station (60)," but "does
not include details about such a stuffing station." Non-Final Act. 5 (citing
Alles i-f 43). However, the Examiner finds that "Hardesty teaches that such
stuffing stations include a stuffing cone (30) adjacent to the housing that
compresses the matting as it is stuffed into the housing." Id. (citing
Hardesty i-f 24, Fig. 1 ). The Examiner explains that "[ o ]ne of ordinary skill
would infer that the stuffing station of Alles included such a cone, as is
typical in the art." Id.
Appellant argues "that one of ordinary skill in the art would not infer
that Alles includes a stuffing cone[,] and ... modifying Alles to include a
stuffing cone would render Alles unsatisfactory for its intended purpose."
Appeal Br. 7. Appellant asserts that Alles "discloses expanding the housing
to a specific inner dimension based on the outer dimension of the mat and
monolith before stuffing the wrapped monolith in the housing." Id.
According to Appellant, "[u]sing a stuffing cone as taught by Hardesty does
not achieve either of these requirements as the outer diameter of the wrapped
assembly is changing as it is stuffed into the housing." Id. This argument is
not persuasive.
Alles discloses that "monolith 12 ... wound around with the
mounting mat 14 is subsequently fed to the pressing means 62 of a stuffing
station 60, in which the mounting mat 14 being held on the monolith 12 is
pressed together to a predetermined size." Alles i-f 43. Hardesty discloses
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"stuffing the substrate and mat into a metal housing through the use of a
stuffing cone, the cone serving to compress the matting so that it can slide
into the housing (see FIG. 1)." Hardesty i-f 6; see id. i-f 24 (teaching that
"[t]he stuffing operation is ordinarily conducted through the use of a stuffing
cone"). The Examiner takes the position that, given this disclosure of
Hardesty, "a person of ordinary skill would reasonably infer that the stuffing
station of Alles included a stuffing cone." Ans. 11; see also id. (explaining
that Hardesty "teaches in both its background and main specification that a
stuffing station for a wrapped insert would typically include a funnel" (citing
Hardesty i-fi-16, 24)). In this regard, Appellant does not persuasively refute
the Examiner's findings or reasoning. 3
Appellant also does not provide factual evidence or persuasive
technical reasoning to explain how or why the use of a stuffing cone in the
method of Alles would render the method unsatisfactory for its intended
purpose. Appellant asserts that a stuffing cone would be superfluous in
Alles's method because "[t]he mat is already compressed and the housing is
already expanded prior to stuffing." Reply Br. 7. However, Appellant does
not explain why a stuffing cone would destroy Alles's principle of operation
or yield anything other than a result that would have been predictable to one
of ordinary skill in the art. See KSR, 550 U.S. at 416 ("The combination of
familiar elements according to known methods is likelv to be obvious when
~ ~
it does no more than yield predictable results.").
3 Although Appellant cites to various case law regarding inherency (see
Appeal Br. 6-7), the Examiner did not find that Alles inherently discloses a
stuffing cone. Rather, the Examiner finds that Hardesty teaches a stuffing
cone, and reasons that one of ordinary skill in the art would infer the use of a
stuffing cone in Alles's stuffing station. See Non-Final Act. 5; Ans. 11.
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Accordingly, we sustain the rejection of claim 2 as unpatentable over
Alles, Hardesty, Dreiman, and Poiret.
Claim 4:
In rejecting claim 4, which recites measuring an insert characteristic
of the insert and bringing the housing to a desired dimension based on that
insert characteristic (see Appeal Br. 18 (Claims App.)), the Examiner finds
that "Alles teaches that the wrapped monolith (12) is pressed to a
predetermined size," and " [ o ]ne of ordinary skill would infer that this step
would involve measuring the insert." Non-Final Act. 6. The Examiner finds
that "Alles also teaches that the housing is expanded, meeting the second
limitation of claim 4." Id. (citing Alles i-f 43). The Examiner explains that
Alles's "wrapped monoliths are pressed to a desired diameter," and, "[i]f one
presses an object to a desired diameter, one must necessarily measure to
ensure the diameter has been reached." Ans. 12 (citing Alles i-f 43).
Appellant argues that, "[b]ased on the Examiner's reasoning, the
modified Alles process would include measuring the insert, expanding the
housing to a desired dimension based on the measurement, and then heating
the housing to further expand the housing size." Appeal Br. 7. Appellant
asserts that Alles' s radial expansion step "would necessarily correspond to
the claimed step of bringing the housing to a desired dimension based on the
insert characteristic prior to the heat step, i.e.[,] step (b)." Reply Br. 7-8.
According to Appellant, if the radial expansion step of Alles were replaced
by a heating step, "the heating/expansion of Alles would be performed prior
to step (b )," which "would then require an additional heating step to further
increase the diameter in order to meet the claim language of step (b ). " Id.
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We are not persuaded by this argument because it is not responsive to the
rejection presented. As discussed above, the Examiner does not propose
adding a heating step to further expand the housing of Alles after it is
expanded by a radial expander. Rather, the Examiner proposes using a
thermal expansion technique as an alternative to Alles' s radial expander.
See Non-Final Act. 5. Further, the Examiner explains that "[t]he rejection
considers ordering [the] housing to a specific diameter to meet the step of
bringing the housing to a desired diameter," and "Alles ... provides
housings designed for this pre-set diameter." Ans. 12. In this regard,
Appellant does not apprise us of error in the Examiner's finding that Alles
provides housings of specific dimensions or in the Examiner's determination
that ordering a housing to a specific diameter constitutes bringing the
housing to a desired diameter as claimed.
Accordingly, we sustain the rejection of claim 4 as unpatentable over
Alles, Hardesty, Dreiman, and Poiret.
Claim 5:
In rejecting claim 5, the Examiner finds that "using heat a[s] the
expander of Alles would work only if the wrapped insert is arranged in the
housing while the housing is heated." Non-Final Act. 6. The Examiner
explains that, "when using thermal expansion to increase the size of the
housing (as taught by Alles)[,] the housing would need to still be hot during
insertion." Ans. 13.
Appellant asserts that "using heat in Alles to replace the radial
expander disclosed in Alles would result in a process where the wrapped
insert would not be in the housing while it was heating." Appeal Br. 8. This
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bald assertion that the Examiner's proposed modification of Alles would not
result in the claimed process does not specifically address the Examiner's
position that, in using heat to expand the housing, the housing would need to
be hot during insertion. See Non-Final Act. 6; Ans. 13. Thus, Appellant
does not apprise us of error in the rejection.
Accordingly, we sustain the rejection of claim 5 as unpatentable over
Alles, Hardesty, Dreiman, and Poiret.
Claims 6--8:
Each of claims 6-8, which depend from claim 1, recites a temperature
or range of temperatures to which the housing is heated. See Appeal Br. 18
(Claims App.). In rejecting these claims, the Examiner finds that "Alles and
Hardesty do not teach any specific temperature ranges[, b Jut if heat were
used to expand the housing of Alles, one of ordinary skill would know that
each metal expands at a predictable rate based on temperature." Non-Final
Act. 6. The Examiner explains that "the heat required to expand the housing
to a desired new radius is the result effective variable (i.e. a given
temperature will result in a given new diameter)." Id. (citing In re Aller, 220
F.2d 454, 456 (CCP A 1955)). The Examiner determines that "it is obvious
to optimize a result effective variable, when the prior art teaches variation of
the value of the variable will affect a known result." Id. (citing MPEP
§ 2144.05(A-B)).
Appellant asserts that the cited references fail to disclose the
temperatures recited in claims 6-8. See Appeal Br. 8-10. With regard to the
Examiner's determination that the temperatures are result effective variables,
Appellant asserts that "[t]he Examiner offers no explanation as to what this
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assumption is based on, and as such, fails to provide sufficient articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." Id. at 9. Appellant's first argument is unpersuasive because it
is not responsive to the rejection presented by the Examiner. As discussed
above, the Examiner does not specifically find that any cited reference
expressly discloses the temperature values recited in claims 6-8. See Non-
Final Act. 6. Rather, the Examiner determines that the claimed temperature
values would have been obvious as a matter of routine optimization of a
result-effective variable. See id. Further, with respect to Appellant's second
argument, as noted above, the Examiner provides a technical explanation as
to why temperature is a result-effective variable. Id. In this regard,
Appellant does not specifically address the Examiner's reasoning presented
in the rejection or explain why it is deficient.
Accordingly, we sustain the rejection of claims 6-8 as unpatentable
over Alles, Hardesty, Dreiman, and Poiret.
Claim 10:
In rejecting claim 10, the Examiner explains that "claim 10 recites the
same features as claim 6, but allows that the housing may cool slightly
between heating and stuffing." Id. (boldface omitted). Appellant asserts
that "[ n ]one of the references disclose or teach stuffing a wrapped insert into
a heated housing while it cools." Appeal Br. 10; see also id. (asserting that
"Alles does not disclose or teach heating the housing at all," and "Hardesty
discloses heating a wrapped insert inside a housing after the insert has been
stuffed"). This argument does not apprise us of error. The Examiner takes
the position that it is well-known that "[m]etals begin[] cooling towards
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ambient temperature once a heat source is removed." Non-Final Act. 6; see
also Alles i-f 43 (disclosing pretreating the housing by radial expansion
before stuffing). In this regard, Appellant's argument does not specifically
address or point out error in the Examiner's findings with respect to the
knowledge of one of ordinary skill in the art at the time of the invention.
Accordingly, we sustain the rejection of claim 10 as unpatentable over
Alles, Hardesty, Dreiman, and Poiret.
Rejection II
Claims 3 and 9:
In contesting Rejection II of claims 3 and 9, which depend from claim
1, Appellant argues that Gaul does not disclose "using an induction element
in a tool to heat a housing while something is being inserted into the
housing" and "Alles does not disclose or teach heating anything." Appeal
Br. 12. As such, Appellant asserts that "none of the references disclose or
teach heating 'the housing while the wrapped insert is inserted into the
heated housing through the funnel part.'" Id. This argument is unpersuasive
because it attacks the references individually, and is not responsive to the
rejection presented. "Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references." In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Here, the
Examiner acknowledges that Alles and Hardesty do not disclose an
induction element, but finds that "induction heating elements that surround
an object and heat it are well known." Non-Final Act. 7. In particular, the
Examiner finds that "Gaul teaches an oval induction heating element (810)
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suitable for the purpose." Id. at 7-8 (citing Gaul i-f 33). The Examiner
determines that, "[ o ]nee the decision to heat the housing is made, any known
heating system in the mechanical arts would be obvious as a mere design
choice." Id. at 8; see also id. (determining that "it is obvious to apply a
known technique to a known product or method, ready for improvement, to
yield predictable results" (citing MPEP § 2143(D)). In this regard,
Appellant's argument does not specifically address the Examiner's findings
and reasoning for the conclusion of obviousness presented in the rejection,
and, thus, does not apprise us of error in Rejection II of claims 3 and 9.
Accordingly, we sustain the rejection of claims 3 and 9 as
unpatentable over Alles, Hardesty, Dreiman, Poiret, and Gaul.
Claims 21 and 27-30:
In Rejection II of claim 21, the Examiner finds that "Hardesty and
Gaul do not teach explicitly integrating the induction heating element into
the tool of Al[l]es," but determines "that it is obvious to make known
separate components integral." Non-Final Act. 8 (citing MPEP
§ 2144.04(V)(B); In re Larson, 340 F.2d 965, 968 (CCPA 1965)).
Appellant argues that "Gaul does not disclose or teach induction heating of a
housing as claimed." Appeal Br. 13. In particular, Appellant asserts that
"Gaul discloses using heat to reshape the tool itself, [but] Gaul does not
disclose using heat for the part the tool is making." Id.; see also id.
(asserting that "none of the references disclose integrating a heating device
into a machine tool to heat a product that the tool is producing").
Appellant's argument does not identify error in the Examiner's
rejection because it attacks the references individually, rather than as
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combined by the Examiner. Merck, 800 F.2d at 1097 (citing Keller, 642
F.2d at 425). Here, the Examiner does not find that any one reference alone
teaches "including integrating a heating device in the machine tool to
increase a temperature of the housing to a first temperature," as recited in
claim 21. Rather, as discussed above, the Examiner determines that, based
on the teachings of Gaul, it would have been obvious to integrate an
induction heating element in Alles's tool. In this regard, Appellant's
argument is not responsive to the Examiner's reasoning articulated in the
rejection, and, thus, does not apprise us of error in Rejection II of claim 21.
In contesting the rejection of claims 27-30, which depend from claim
21, Appellant relies on the same argurnents advanced for claim 21. See
Appeal Br. 15. \Vith respect to claims 28----30, Appellant also relies on the
arguments advanced for similar claims 7, 8, and 10, subject to Rejection I.
See id. For the reasons discussed above, Appellant's arguments do not
apprise us of error in the rejections of claims 7, 8, 10, and 21, and, likewise,
do not apprise us of error in Rejection II of claims 27-30.
Accordingly, we sustain the rejection of claims 21 and 27-30 as
unpatentable over Alles, Hardesty, Dreiman, Poiret, and Gaul.
Claim 22:
In contesting the rejection of claim 22, Appellant initially relies on the
arguments advanced for claim 21, as well as the arguments advanced for
similar claim 2, subject to Rejection I. See Appeal Br. 13. These arguments
are unpersuasive for the reasons discussed above. Appellant further asserts
that "[t]here certainly is no disclosure or teaching of surrounding the housing
with the induction element while the wrapped insert is inserted into one end
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of the housing through the funnel part." Id. This argument is also
unpersuasive. Other than the bald assertion that the cited references fail to
disclose the limitation recited in claim 22, Appellant does not explain with
any specificity why the Examiner's findings and reasoning (see Non-Final
Act. 8) are deficient. Thus, Appellant does not apprise us of error in the
rejection.
Accordingly, we sustain the rejection of claim 22 as unpatentable over
Alles, Hardesty, Dreiman, Poiret, and Gaul.
Claim 23:
In contesting the rejection of claim 23, Appellant asserts that "none of
[the] references disclose or teach a heating duct in a machine tool itself
through which a heating fluid flows." Appeal Br. 13; see also id. (asserting
that "Alles, Dreiman, and Poiret do not disclose heating a machine tool," and
"Hardesty discloses an oven and Gaul discloses induction heating to reshape
a tool"). This argument does not identify error in the Examiner's rejection
because it attacks the references individually, rather than as combined by the
Examiner. See Merck, 800 F.2d at 1097 (citing Keller, 642 F.2d at 425).
Here, in rejecting claim 23, the "Examiner takes Official Notice that heating
ducts are a known method type of heating system, and indeed are standard in
home central heating systems everywhere." Non-Final Act. 8. The
Examiner determines that "[i]t would ... have been obvious as a mere
design choice to use heating ducts to apply heat to the housing." Id. In this
regard, Appellant's argument is not responsive to the rejection presented by
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the Examiner, and does not specifically address the particular findings and
reasoning presented in support of the conclusion of obviousness. 4
Accordingly, we sustain the rejection of claim 23 as unpatentable over
Alles, Hardesty, Dreiman, Poiret, and Gaul.
Claims 24-26:
In addition to relying on the unpersuasive arguments advanced for
claim 21, Appellant recites elements of dependent claims 24--26 and baldly
asserts that the cited references fail to disclose these features. See Appeal
Br. 14. Appellant makes no attempt to point out where the Examiner's
findings relative to the presence of these elements in the prior art or in the
rationale for combining the teachings of the prior art articulated by the
Examiner with regard to these limitations on pages 7 and 8 of the Non-Final
Action are deficient. Appellant's vague statements do not constitute
separate arguments for patentability of claims 24--26 pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board had reasonably interpreted 3 7 C.F .R.
§ 41.37(c)(l)(vii) (the predecessor to§ 41.37(c)(l)(iv)) as requiring "more
4 The Appeal Brief states that "Appellant has repeatedly traversed the taking
of Official Notice" (Appeal Br. 13), and "Appellant respectfully requests
that the Examiner provide a reference that teaches a machine tool that
[includes] heating ducts as defined in claim 23" (id. at 14). To the extent
that Appellant suggests that the Examiner took Official Notice that a
machine tool including heating ducts as recited in claim 23 was old and
well-known in the art, this is not responsive to the Examiner's position. The
Official Notice is limited to a finding that "heating ducts are a known
method type of heating system, and indeed are standard in home central
heating systems everywhere." Non-Final Act. 8.
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substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art").
Accordingly, we sustain the rejection of clairns 24-26 as unpatentable
over Alles, Hardesty, Dreiman, Poiret, and Gaul.
Rejection III
In the alternative 35 U.S.C. § 103(a) rejection of claim 1, the
Examiner acknowledges that "Alles does not explicitly discuss heating the
housing during the expansion," but finds that Engineers Edge and Pearson
teach that increasing the temperature of metals increases ductility. Non-
Final Act. 7 (citing Engineers Edge 2; Pearson 60, 64). The Examiner
determines that "it would have been obvious to heat the housing of Alles
prior to mechanical expansion, because the heating process would make the
metal more ductile." Id.
Appellant argues that "there is nothing in Alles that would have led
one of ordinary skill in the art to believe that Alles' s radial expander method
was in any way deficient for Alles' s purposes or was in need of
modification." Appeal Br. 11. However, it is not necessary for a
determination of obviousness that the reference to be modified recognize or
acknowledge a deficiency with its own design in order for there to be a
reason with rational underpinnings for modifying or improving it. See
KSR, 550 U.S. at 417. According to Appellant, "[a]dding an additional step
of heating the housing prior to radially expanding the housing with a radial
expander as suggested by the Examiner would increase cost, increase labor,
and is completely unnecessary." Appeal Br. 11. This argument is
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unpersuasive because Appellant does not set forth any evidence or
explanation as to why any alleged increase in cost or labor would necessarily
have dissuaded one of ordinary skill in the art from making the modification
of Alles's method proposed by the Examiner. Moreover, even if the
proposed modification of Alles would reduce increase cost and/or labor, our
reviewing court has recognized that a given course of action often has
simultaneous advantages and disadvantages, and this does not necessarily
obviate any or all reasons to combine teachings. See Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) (if there are tradeoffs
involved regarding features, such things do not necessarily prevent the
proposed combination); Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340,
1349 n.8 (Fed. Cir. 2000) ("The fact that the motivating benefit comes at the
expense of another benefit, however, should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.").
Appellant also asserts that "[t]he Examiner is clearly engaging in a
hindsight reconstruction." Appeal Br. 11. This argument is unpersuasive
because Appellant does not identify, nor do we discern, any knowledge
relied upon by the Examiner that was gleaned only from Appellant's
disclosure and that was not otherwise within the level of ordinary skill at the
time of the invention. See In re McLaughlin, 443 F.2d at 1395.
For the above reasons, Appellant does not apprise us of error in the
Examiner's determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and its dependent
claim 4, for which Appellant relies on the same arguments (see Appeal Br.
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11), under 35 U.S.C. § 103(a) as unpatentable over Alles and Engineers
Edge or Pearson.
Rejections IV and V
AppeHant does not assert any separate arguments against Rejection IV
or Rejection V, and, instead, relies on the arguments advanced for claim 1,
subject to Rejection IIL and the arguments advanced for claims 2, 3, 9, 21,
and 25, subject to Rejections I and IL See Appeal Br. 11, 16. For the
reasons discussed above, Appellant's arguments fail to apprise us of error in
Rejections I-III, and, thus, likewise, fail to apprise us of error in Rejections
IV and V, which we sustain.
Rejection VJ
Appellant does not present any substantive arguments contesting the
Examiner's rejection of claims 1-10 on the ground of obviousness-type
double patenting. See Appeal Br. 16-17 (stating that "Appellant will
consider whether it is appropriate to file a terminal disclaimer once there has
been final resolution with regard to the claims of the present application").
Consequently, Appellant has waived any argument of error, and we
summarily sustain the rejection of claims 1-10 on the ground of
obviousness-type double patenting. See In re Berger, 279 F.3d 975, 984,
985 (Fed. Cir. 2002) (holding that the Board did not err in sustaining a
rejection when the applicant failed to contest the rejection on appeal).
DECISION
The Examiner's decision rejecting claims 1-10 and 21-30 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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