Ex Parte Borgwardt et alDownload PDFPatent Trial and Appeal BoardOct 14, 201411990325 (P.T.A.B. Oct. 14, 2014) Copy Citation 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. 11/990,325 02/24/2009 Horst-Dieter Borgwardt 209,272 5467 38137 7590 10/14/2014 ABELMAN, FRAYNE & SCHWAB 666 THIRD AVENUE, 10TH FLOOR NEW YORK, NY 10017 EXAMINER NGUYEN, HUNG D ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 10/14/2014 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 HORST-DIETER BORGWARDT, KARL-HEINZ KUMMER, CHRISTIAN KEMPE, and SIEGFRIED BENDER ____________________ Appeal 2012-009099 Application 11/990,325 Technology Center 3700 ____________________ Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and SCOTT A. DANIELS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 14–22. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to an individual segment cooling device for the electrodes of a metallurgical furnace. Claim 14, reproduced below, is illustrative of the claimed subject matter: Appeal 2012-009099 Application 11/990,325 2 14. A cooling device for electrodes of a metallurgical furnace, comprising a suspension frame (6); and a plurality of individual segments (2, 3, 4, 5) arranged adjacent to each other for surrounding the electrodes and suspended from the suspension frame (6), wherein at least one of the plurality of individual segments (2, 3, 4, 5) is formed with at least one hinge (7) provided at an upper edge thereof for pivotally suspending the at least one of the plurality of individual segments from the suspension frame REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Beck Foyn Kongsgaarden Hardin Mori Salice US 1,549,431 US 2,671,816 US 2,778,865 US 3,898,364 US 4,424,611 US 5,765,262 Aug. 11, 1925 Mar. 9, 1954 Jan. 22, 1957 Aug. 5, 1975 Jan. 10, 1984 Jun. 16, 1998 Giordano US 2007/0180857 A1 Aug. 9, 2007 REJECTIONS Claims 14 and 17–22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Foyn and Hardin or Kongsgaarden. Ans. 4. Claim 15 stands rejected under 35 U.S.C. § 103(a)1 as being unpatentable over Foyn and Hardin or Kongsgaarden and further in view of Salice or Beck. Ans. 6. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Foyn and Hardin or Kongsgaarden and further in view of Giordano or Mori. Ans. 7. 1 We treat this claim as rejected under § 103 as opposed to § 102 because that is consistent with the Examiner’s discussion. Appeal 2012-009099 Application 11/990,325 3 OPINION Although the Examiner is correct regarding the issues of claim constructions raised in this appeal (see App. Br. 8–9, 11–13; Ans. 7–8, 9– 10), it is not enough to simply show that the references disclose each element of a claim; in addition, it is important to identify a reason that would have prompted a person of ordinary skill in the art to combine the elements in the manner set forth in the claim. See, e.g., Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., 617 F. 3d 1296, 1303 (Fed. Cir. 2010) (citing KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (“a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art”)); see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). Regarding a reason for combining the references, the Examiner states: It would have been obvious to one of ordinary skill in the art at the time of the invention was made to utilize in Foyn, a suspension frame and the segments suspended from the suspension frame, as taught by Hardin or Kongsgaarden, for the purpose of suspending the holder. Ans. 5. This statement is conclusory. At best, it describes the results of the proposed combination, as opposed to articulating a reason for making it. Reply Br. 5. As Appellants correctly point out, the fact that references relate to the same technical field (Ans. 9) does not, without more, demonstrate the obviousness of their combination. The relevant technical field relates to the scope and content prong of the Graham analysis. Graham v. John Deere Co. 383 U.S. 1, 17–18 (1966). Concluding references are within the same technical field does not conclude that analysis. Rather, it forms part of the background, Appeal 2012-009099 Application 11/990,325 4 upon which the obviousness or nonobviousness of the subject matter must be determined. Id. As the Examiner’s rejections fail to articulate reasoning with rational underpinnings supporting the Examiner’s determination of obviousness, the Examiner’s rejections cannot be sustained. See In re Kahn, supra. DECISION The Examiner’s rejections are reversed. REVERSED Klh Copy with citationCopy as parenthetical citation