Ex Parte Becker et alDownload PDFPatent Trial and Appeal BoardMay 3, 201813538084 (P.T.A.B. May. 3, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/538,084 06/29/2012 53609 7590 05/07/2018 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 FIRST NAMED INVENTOR Jens-Ulrik Becker 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. 509259 4063 EXAMINER YANG,JIE ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 05/07/2018 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JENS-ULRIK BECKER and HARALD HOFMANN Appeal2017-006976 Application 13/538,084 1 Technology Center 1700 Before JAMES C. HOUSEL, CHRISTOPHER L. OGDEN, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 2-19. We have jurisdiction. 35 U.S.C. § 6(b). We REVERSE. 1 According to Appellants, the real party in interest is ThyssenKrupp Steel Europe AG. Appeal Br. 2. Appeal2017-006976 Application 13/538,084 STATEMENT OF THE CASE2 Appellants describe the invention as relating to a hot rolled strip that could be used for vehicle construction or other areas where minimum weight and mechanical properties must be met. Spec. ,r 2. In particular, the Specification describes a metal strip whose mechanical properties vary from section to section. See, e.g., id. at ,r 11. Claim 3 is illustrative of the claimed subject matter: 3. A metal strip comprising: steel and produced by hot rolling and by cold rolling of the metal strip, wherein after the cold rolling the metal strip is of constant thickness and has, section by section, regions whose mechanical properties vary; and[], wherein the metal strip to be cold rolled is produced by one of flexible hot rolling, by flexible casting or by flexible cold rolling with subsequent annealing, the metal strip thus having regions of varying thicknesses before the cold rolling, and the regions of varying thickness thus having varying degrees of rolling-down after the cold rolling. Appeal Br. 15 (Claims App.) (formatting added). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Becker et al. ("Becker") Yamamoto et al. ("Yamamoto") US 2009/0010793 Al Jan. 8, 2009 JP 59082104 (A) May 12, 1984 2 In this opinion, we refer to the Non-Final Office Action dated August 24, 2015 ("Non-Final Act."), the Final Office Action dated March 16, 2016 ("Final Act."), the Appeal Brief filed November 14, 2016 ("Appeal Br."), the Examiner's Answer dated January 27, 2017 ("Ans."), and the Reply Brief filed March 24, 2017 ("Reply Br."). 2 Appeal2017-006976 Application 13/538,084 REJECTIONS The Examiner maintains the following rejections on appeal: Rejection 1. Claims 2-19 under 35 U.S.C. § 112 as indefinite. Ans. 2; Final Act. 2; Non-Final Act. 3--4. Rejection 2. Claims 2--4, 6, 8-14, and 18 under 35 U.S.C. § 102 as unpatentable over Yamamoto. Ans. 2; Final Act. 2-3; Non-Final Act. 5-7. Rejection 3. Claims 5, 7-10, 15-17, and 19 under 35 U.S.C. § 103 as unpatentable over Yamamoto in view of Becker. Ans. 2-3; Final Act. 3; Non-Final Act. 7-9. ANALYSIS Rejection 1. The Examiner rejects claims 2-19 under 35 U.S.C. § 112 as indefinite. Ans. 2; Final Act. 2; Non-Final Act. 3--4. In particular, the Examiner determines (a) that claim 3 's 3 recitation of "flexible" is indefinite because it does not provide a standard for ascertaining the required degree of flexibility, (b) that claim 3's recitations of"cold-rolling" and "produced by one of flexible hot rolling, by flexible casting or by flexible cold rolling with subsequent annealing" render the claim indefinite because it is unclear whether hot rolling is required, and ( c) it is unclear what "cold rolling" claim 3 's recitation of "the cold rolling" refers to. Non-Final Act. 3--4. During prosecution, "'[a] claim is indefinite when it contains words or phrases whose meaning is unclear."' Ex parte McAward, Appeal 2015- 3 The August 24, 2015, Non-Final Office Action refers to, for example, claims 1 and 11. Non-Final Act. 4. Claim 1 was not pending, however. We presume the Examiner intended to refer to independent claim 3. 3 Appeal2017-006976 Application 13/538,084 006416, slip op. at 11 (quoting In re Packard, 751 F.3d 1307, 1314 (Fed. Cir. 2014) (per curium)). Although claim 3 may not exemplify ideal claim drafting, we do not agree with the Examiner that, given context provided by the Specification, the meaning of claim 3 is unclear. We first address the claim 3 's recitations that include the word "flexible": "flexible hot rolling," "flexible casting," and "flexible cold rolling with subsequent annealing." The Specification indicates that flexible hot rolling and flexible cold rolling are known processes for creating a metal strip whose thickness varies section by section. Spec. ,r 3. The Specification indicates the recited techniques are used in one step of the instant invention. Id. at ,r 8 ("In a further embodiment of the metal strip according to the invention, the metal strip to be cold rolled is produced by flexible hot rolling, by flexible casting or by flexible cold rolling with subsequent annealing, so that before the cold rolling the metal strip has regions whose thicknesses vary."). The Specification further explains that a "metal strip having mechanical properties which vary section by section can easily be produced by flexible hot rolling followed by cold rolling." Id. at ,r 11. The Specification describes its Figure 1 (not reproduced here) as depicting "hot- rolled strip 1 which has been hot rolled by means of the working rolls 7a, 7b by changing the roll gap during the rolling, thus producing regions 2, 3, 4, 5, 6 which have various thicknesses." Id. at ,r 31. The Specification refers back to the metal strip created by its process as "produced by the flexible rolling." Id. at ,r 36. Given this context, we agree with Appellants that claim 3 's recitations of "flexible hot rolling," "flexible casting," and "flexible cold rolling with 4 Appeal2017-006976 Application 13/538,084 subsequent annealing" each refer to manufacturing techniques that are understood in the art. Appeal Br. 5-7. Appellants provide extrinsic evidence that further reinforces this construction (id.), and the Examiner does not address this extrinsic evidence. Accordingly, we do not sustain the Examiner's Section 112 rejection regarding the recitation "flexible" being indefinite. We also do not sustain the Examiner's other two bases for a Section 112 rejection. First, given the context provided by the Specification (see, e.g., Spec. Figs. 1, 2, ,r,r 31-3 6), it is reasonably clear that the claim requires a metal strip that is produced by either (a) flexible hot rolling, (b) flexible casting, or ( c) flexible cold rolling with subsequent annealing. After one of these techniques is applied, the strip is cold rolled to a constant thickness. Given the recitations of claim 3, hot rolling must be used at some point in processing the strip (whether by choosing flexible hot rolling or otherwise). Second, when claim 3 recites "the cold rolling," it refers to the cold rolling to a constant thickness that occurs after (a), (b ), or ( c) because the strip has "regions of varying thickness before the cold rolling," and regions of varying thickness are produced by use of one of the three recited "flexible" techniques. See Spec. Figs. 1, 2, ,r,r 31-36. Rejection 2. The Examiner rejects claim 3 as anticipated by Yamamoto. Ans. 2; Final Act. 2-3; Non-Final Act. 5-7. In assessing this rejection, we first note that claim 3 is written in product by process format because the recited metal strip is defined "at least in part in terms of the method or process by which it is made." Smithkline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed. Cir. 2006) (internal quotes and citation omitted). 5 Appeal2017-006976 Application 13/538,084 Because claim 3 includes product-by-process recitations, "determination of patentability is based on the product itself," not on "its method of production." In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) ( citations omitted). "If 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." Id. (citation omitted). The Examiner "bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature than would be the case when a product is claimed in the more conventional fashion." Application of Fessmann, 489 F.2d 742, 744 (CCPA 1974). Thus, "when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable." Id. ( quote and citation omitted). Once the examiner establishes a prima facie case of anticipation or obviousness, the burden "'to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product"' shifts to the Appellants. Thorpe, 777 F .2d at 698 ( citation omitted). Here, Appellants argue that Yamamoto does not teach a flexible rolling process (i.e., one of the three such processes recited by claim 3), followed by cold rolling to a constant thickness, which thereby results in a metal strip having, section by section, regions whose mechanical properties vary. Appeal Br. 10-12. We agree with Appellants that the Examiner has not adequately explained how Yamamoto teaches the same process as that 6 Appeal2017-006976 Application 13/538,084 recited by claim 3. Although Yamamoto depicts that its steel has varying thickness at an intermediate stage of its process (Yamamoto Fig. 3), the Examiner has not explained how Yamamoto teaches that this is achieved via rollers with a changeable roll gap (as required by claim 3 when properly construed). Nor has the Examiner explained how Yamamoto's process produces a metal strip having, section by section, regions whose mechanical properties vary, especially in view of Yamamoto' s silence regarding the temperatures of the process steps. Appellants also argue that claim 3 's process recitations lead to a metal strip with materially different mechanical properties than the strip resulting from Yamamoto's process. Appeal Br. 10-12. On the present record, the Examiner has not adequately explained why the process of Yamamoto would result in a metal strip identical to or only slightly different than a metal strip resulting from claim 3 's recited process. The Examiner finds that Yamamoto teaches "dB differences" at different locations of its strip (Ans. 7) and finds that any metal strip will have a varying thickness (id. at 5), but neither or these findings is sufficient to establish that the Yamamoto strip is identical or only slightly different than the claim 3 strip. Moreover, the Examiner finds that the metal strip's "mechanical properties ... fully depend on the microstructure of the steel and working process." Non-Final Act. 6. Given this finding, the Examiner's failure to adequately explain why the process of Yamamoto is the same or similar to the process of claim 3 further supports that the two resulting metal strips may not necessarily have identical or only slightly different properties. 7 Appeal2017-006976 Application 13/538,084 Accordingly, we do not sustain the Examiner's rejection of claim 3. We also do not sustain the rejection of claims 2, 4, 6, 8-14, and 18 because each of those claims include the recitations of claim 3. Rejection 3. The Examiner rejects claims 5, 7-10, 15-1 7, and 19 as unpatentable as obvious over Yamamoto in view of Becker. Ans. 2-3; Final Act. 3; Non-Final Act. 7-9. Because each of these claims include the recitations of claim 3 and because the Examiner's use of Becker does not cure the error addressed above with respect to the Examiner's anticipation rejection (Non-Final Act. 7-9; Ans. 7), we also do not sustain this rejection. DECISION For the above reasons, we reverse the Examiner's rejections of claims 2-19. REVERSED 8 Copy with citationCopy as parenthetical citation