Ex Parte Alken et al

Patent Trial and Appeal Board

Jan 26, 2018

14423729 (P.T.A.B. Jan. 26, 2018)

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.
214,089 7828
EXAMINER
SWIATOCHA, GREGORY D.
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
14/423,729 02/25/2015
38137 7590 01/26/2018
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
Johannes Aiken
01/26/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHANNES ALKEN, UWE BAUMGAERTEL,
ULRICH CRAMER, WOLFGANG FUCHS,
RUDOLF-FRANZ JAEGER, JENS KIESSLING-ROMANUS,
MATTHIAS KRUEGER, and FRANK THEOBALD
Appeal 2017-010741
Application 14/423,729
Technology Center 3700
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
ANTHONY KNIGHT, Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Johannes Aiken et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision in the Final Action (dated Jan. 23,
2017, hereinafter “Final Act.”) rejecting claims 17—34.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
1 Appellants’ Appeal Brief (filed May 4, 2017, hereafter “Appeal Br.”)
identifies SMS Group GmbH as the real party in interest. Appeal Br. 2.
2 Claims 1—16 are canceled. See Appellants’ Amendment, filed March 17,
2016.
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Application 14/423,729
SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellants’ invention relates to “a method and a device for
dynamically supplying a cooling device for cooling a metal strip or other
rolled stock with coolant.” Spec. 2,11. 2-4.
Claims 19 and 30 are independent. Claim 19 is illustrative of the
claimed invention and reads as follows:
19. A device for cooling a hot rolled stock, comprising:
a cooling device for cooling the rolled stock and having
at least one spray bar (1 , 1’) with coolant outlets for applying a
coolant to the rolling stock;
a conduit (2, 20, 20’) for conducting the coolant from a
coolant source (4) to the at least one spray bar (1 , F);
a by-pass for conducting a pre-accelerated coolant flow
from the conduit (2, 20, 20’) to a return line (3), the by-pass
being located upstream of the cooling device and spaced
therefrom by a distance such that the by-pass is spaced from
outlets of the cooling device by a distance of less than 5m; and
switchable deflection means (5, 50, 50’) spaced from the
cooling device for switchingly conducting the pre-accelerated
coolant flow through the conduit (2, 20, 20’) to the cooling
device (1 , 1 ’) or for deviating the coolant flow from the
conduit (2, 20, 20’) into the by-pass.
REJECTIONS
I. The Examiner rejected claims 19, 21, 22, and 30-32 under 35
U.S.C. § 103(a) as being unpatentable over Soederlund (US
8,634,953 B2, issued Jan. 21, 2014) and Wilson (US 2,384,225,
issued Sept. 4, 1945).
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II. The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Soederlund, Wilson, and Helms et al.
(US 5,571,563, issued Nov. 5, 1996, hereinafter “Helms”).
III. The Examiner rejected claim 23 under 35 U.S.C. § 103(a) as
being unpatentable over Soederlund, Wilson, and Lafferty (US
3,684,184, issued Aug. 15, 1972).
IV. The Examiner rejected claims 17, 24—27, 29, and 33 under 35
U.S.C. § 103(a) as being unpatentable over Soederlund, Wilson,
and Graham (US 4,497,180, issued Feb. 5, 1985).
V. The Examiner rejected claim 28 under 35 U.S.C. § 103(a) as
being unpatentable over Soederlund, Wilson, and Borgmann et
al. (US 2010/0312399 Al, published Dec. 9, 2010, hereinafter
“Borgmann”).
VI. The Examiner rejected claim 18, 30, and 34 under 35 U.S.C.
§ 103(a) as being unpatentable over Soederlund and Saikin (US
5,794,658, issued Aug. 18, 1998).
ANALYSIS
Rejections I and VI
Appellants argue that “neither Soe[d]erlund, nor Wilson and Saikin
constitute a prior art pertinent to the present invention.” Appeal Br. 6.
Appellants also contend that neither Soederlund, nor Wilson and Saikin are
“pertinent to the particular problems with which the appellants (inventors)
were concem[ed].” Id. at 7. According to Appellants, Soederlund relates to
controlling flatness of cold rolled and annealed thin metal strips by
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determining the temperature of the strips; Wilson relates to a system for
maintaining a uniform temperature of fluids in a machine tool by providing
continuous circulation of the fluids; and Saikin relates to a descaling system
of hot metal strips prior to rolling that can prolong valve and pump life and
provide high pressure fluid for the scaling process. Id. at 6—8.
“Two separate tests define the scope of analogous art: (1) whether the
art is from the same field of endeavor, regardless of the problem addressed
and, (2) if the reference is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved.” In re Klein, 647 F.3d 1343, 1348
(Fed. Cir. 2011) (quoting In re Bigio, 381 F.3d at 1325). The “field of
endeavor” test “requires the PTO to determine the appropriate field of
endeavor by reference to explanations of the invention’s subject matter in
the patent application, including the embodiments, function, and structure of
the claimed invention.” In re Bigio, 381 F.3d at 1325. If the structure and
function of the prior art would have been considered by a person of ordinary
skill in the art because of similarity to the structure and function of the
claimed invention as disclosed in the application, the prior art is properly
considered within the same field of endeavor. See id. at 1325—26.
In this case, Appellants’ Specification describes the instant invention
as directed to “a method and a device for dynamically supplying a cooling
device for cooling a metal strip or other rolled stock with coolant.” Spec. 2
(emphasis added). The Specification further describes providing a coolant to
a spray bar with nozzle outlets for cooling a metal strip based upon a
predetermined temperature of the strip. Id. at 4. Similarly, Soederlund
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relates to a system and method for cooling a metal strip by controlling the
cooling rate based on the temperature of the metal strip. See Soederlund,
Abstract. Specifically, in Soederlund’s system and method, after hot strip 1
moves through precooling area 4 containing cooling nozzles 5, 6, its
temperature is determined by thermoscanner 8 and each nozzle 9 is then
controlled individually to obtain a metal strip temperature as predetermined
by computer 7. Id., col. 3,1. 63 — col. 4,1. 36.
Furthermore, we appreciate Appellants’ position that Soederlund’s
system and method relates to cooling of an annealed metal strip from 1100—
1300° F to room temperature, rather than cooling a hot rolled strip, which is
from 1700—1800° F to a maximum of 1100 degrees F. See Appeal Br. 9.
However, Appellants’ Specification is not limited to a system and method
for cooling a hot rolled strip, but rather applies to a system and method for
cooling a metal strip regardless of specific cooling temperatures. See
Spec. 7 (“The device comprises a cooling device for cooling a metal strip . . .
having at least one spray bar with coolant outlets.”).
As such, in light of the similarity of structure and function of the
claimed invention and Soederlund’s system and method, a person of
ordinary skill in the art would have readily considered Soederlund’s
teachings as both are concerned with cooling a metal strip based on a
predetermined temperature of the metal strip. Therefore, Appellants have
not persuaded us that Soederlund is non-analogous art.
With respect to Wilson and Saikin, we do not agree with Appellants
that neither is pertinent to the problems with which the inventors were
concerned. See Appeal Br. 8. Appellants’ Specification describes the
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problems to be solved as: (1) controlling the cooling rate of the metal strip
and (2) reducing pressure peaks that occur when switching on and off the
coolant in a cooling system. Spec. 3; see also id. at 5.3 * * 6A skilled artisan
looking for a system and method for supplying a coolant to cool a metal strip
would consider teachings relating to cooling systems to be of particular
interest. More specifically, Wilson discloses a system and method for
maintaining a uniform temperature of a cooling fluid, and hence a uniform
cooling rate, by continuously circulating the cooling fluid. See Wilson, p.l,
col. 1,11. 1—3. Saikin discloses a system and method for reducing rapid
temperature and pressure changes in a fluid cooling system by continuously
operating the pump and recirculating the fluid. See Saikin, col. 1,11. 13—15,
col. 2,11. 61—67. As such, a skilled artisan looking for a cooling system in
which the cooling rate is controlled and fluid pressure peaks are reduced
would consider Wilson’s and Saikin’s teachings, respectively, to be of
particular interest. Hence, Wilson and Saikin would logically have
commended themselves to an inventor considering the problems of
supplying a coolant to cool a metal strip, wherein the cooling rate is
controlled and fluid pressure peaks are reduced. As such, for the foregoing
reasons, Appellants have not persuaded us that Wilson and Saikin are non-
analogous art.
Finally, Appellants argue that the “combination of S[o]ederlund and
Wilson or, alternatively, of S[o]ederlund and Saikin could result only from a
3 “By pre-acceleration of the coolant flow and diversion of the pre­
accelerated coolant flow, the pressure surges acting on the installation
components can be eliminated or noticeably reduced. Further the
cooling reaction time is noticeably improved.”
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hindsight reconstruction.” Appeal Br. 10. According to Appellants, “the
Examiner failed to provide a proper rationale why one of ordinary skill in
the art would combine S[o]ederlund and Wilson or S[o]ederlund and
Saikin.” Id. at 11. We are not persuaded because the Examiner has
provided adequate reasoning with rational underpinnings. That is, “in order
to have continuous circulation of cooling fluid in view of the teachings of
Wilson” and “in order [to] make high pressure fluid instantly available for
spraying in view of the teachings of Saikin.” See Final Act. 7, 17; see also
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on
obviousness grounds [require] some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness”) {cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Appellants have not persuasively argued that the Examiner’s conclusion
lacks rational underpinnings.
In conclusion, for the foregoing reasons, we sustain the rejections
under 35 U.S.C. § 103(a) of claims 19, 21, 22, and 30-32 as unpatentable
over Soederlund and Wilson and of claims 18, 30, and 34 as unpatentable
over Soederlund and Saikin.
Rejection II—V
Appellants do not set forth any other substantive arguments with
respect to Rejections II—V. See Appeal Br. 12—14. Accordingly, for the
same reasons as discussed supra, we also sustain Rejections II—V.
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SUMMARY
The Examiner’s decision to reject claims 17—34 under 35 U.S.C.
§ 103(a) 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)(l)(iv).
AFFIRMED
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