Ex Parte Brinkman et al

Patent Trial and Appeal Board

Nov 15, 2017

13340225 (P.T.A.B. Nov. 15, 2017)

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.
13/340,225 12/29/2011 Henk-Jan Brinkman 509005 5061
53609 7590 01/26/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
SU, XIAO WEI
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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 HENK-JAN BRINKMAN,
THOMAS WIRTZ, DIETMAR SCHRODER,
EIKE BRUNGER, and
KAI-FRIEDRICH KARHAUSEN
Appeal 2017-004234
Application 13/340,225
Technology Center 1700
Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON REQUEST FOR REHEARING
This is in response to a Request for Rehearing (“Request”), dated
January 5, 2018, of our Decision, mailed November 17, 2017 (“Decision”).
In that Decision, we affirmed the Examiner’s § 103 rejection of claims 1,3,
4, 17—19, 23, and 24 over Lorentzen et al. (US 2004/0011438 Al, published
Jan. 22, 2004) (“Lorentzen”), as evidenced by Matweb1, in view of Murtha
(US 5,919,323, issued July 6, 1999), Sano et al. (US 2007/0151635 Al,
1 Matweb, 6016 Aluminum Composition Spec, http://www.matweb.com/
search/Data.Sheet.aspx?MatGUID=f6ed02219a874e868afa00abf4967314
(last visited Apr. 16, 2015) (“Matweb”).
Appeal 2017-004234
Application 13/340,225
published July 5, 2007) (“Sano”), and Oleksiak (US 6,060,438, issued May
9, 2000) and reversed the Examiner’s § 103 rejection of claims 6 and 21
over the same references.
We have reconsidered our Decision in light of Appellants’ comments
in the Request and we find no error in the disposition of the § 103 rejection
of claims 1,3,4, 17—19, 23, and 24.
In the Request, Appellants argue “the Board has misapprehended the
consequences of modifying Lorentzen from a continuous process to a batch
process as disclosed in Murtha” (Request 2). Specifically, Appellants assert
it would not have been obvious to modify the continuous process of
Lorentzen to homogenize coiled strip in a batch process because it “is
technically impracticable in view of the high temperatures [for
homogenization]” and because using the homogenization process of Murtha
to homogenize strip would involve “an extremely long and technically as
well as economically unfeasible oven” to heat strip that is “up to several
hundred feet long” (id. at 2—3).
While we appreciate Appellants’ arguments, they are nonetheless
unpersuasive. Appellants do not cite any evidence or persuasive technical
reasoning that modifying Lorentzen in view of Murtha would have been
“technically impracticable” except to assert that homogenization involves
“high temperatures” (id. at 2) and homogenizing strip would require an
“unfeasible oven” to heat “strip of up to several hundred feet long”
(Appellants appear to mean uncoiled strip when referencing “strip of up to
several hundred feet long”) (id. at 3). Thus, Appellants’ assertions regarding
technical unfeasibility amount to mere attorney argument and, in any event,
appear to arise to the modification of Lorentzen being technically difficult,
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which is not demonstrative of non-obviousness (i.e., that the modified prior
art would be inoperative or would not work) in the absence of supporting
evidence or specific explanation that identifies a reversible error with
sufficient particularity.
As stated by Appellants, “the proper frame of reference for an
obviousness rejection is the perspective of one of ordinary skill in the art”
{id. at 3). Moreover, “the test for combining references is not what the
individual references themselves suggest but rather what the combination of
disclosures taken as a whole would suggest to one of ordinary skill in the
art.” In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Here, the applied prior art provides evidence of obviousness. As
explained in the Decision, Murtha discloses it was known to continuously
cast an aluminum alloy, homogenize the cast ingot, and then roll the ingot in
separate processes (Murtha 5:47—61). Murtha discloses that homogenization
improves the homogeneity of solute and refines recrystallized grains for a
final product {id. at 5:49-52). Thus, the disclosure of Murtha demonstrates
it was known to process an aluminum alloy in separate processes and
provides reasons to include a homogenization process. In view of an
absence of evidence or persuasive technical reasoning to support Appellants’
position, a preponderance of the evidence in the record, including the
disclosures of Lorentzen and Murtha, supports a conclusion that it would
have been obvious for one of ordinary skill in the art to modify the process
of Lorentzen so it uses batch processing and includes homogenization for
strip, whether coiled or uncoiled, to improve solute homogeneity and to
refine recrystallized grains in its final product, as disclosed by Murtha.
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As noted above, Appellants contend modifying Lorentzen to include
homogenization would be “economically unfeasible” (Request 2).
Appellants further argue that Lorentzen’s disclosure “dissuades from
adopting a batch process, such as the high operating expenses and capital
equipment costs,” citing paragraph 11 of Lorentzen {id. at 4)
These arguments are also unpersuasive. As discussed in the Decision,
simply making a process more costly does not render a process
unsatisfactory for its intended purpose when the process is otherwise
functional to achieve its purpose (i.e., produce rolled solution heat treated
aluminum strip in the case of Lorentzen’s process). Moreover, to the extent
Appellants assert Lorentzen teaches away from the inclusion of Murtha’s
homogenization process because it would incur additional cost, we note that
something that is known or obvious does not become patentable simply
because it has been described as somewhat inferior to some other product for
the same use. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994); see also In re
Farrenkopf, 713 F.2d 714, 718 (Fed. Cir. 1983) (“additional expense
associated with the addition of inhibitors would not discourage one of
ordinary skill in the art”).
Lorentzen recognizes that conventional processes, which are
functional to produce solution heat treated aluminum alloy, are less desirable
because they are more costly {see, e.g., Lorentzen 111). However, one of
ordinary skill in the art would have understood that modifying the process of
Lorentzen to include the homogenization process of Murtha would provide
the benefits of improved solute homogeneity and refined grains in a final
product, as taught by Murtha. One of ordinary skill in the art may be
motivated to pursue the desirable properties taught by one reference, even if
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that means foregoing the benefit taught by another reference. In re
Urbanski, 809 F.3d 1237, 1244 (Fed. Cir. 2016); see also Winner Int 7
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.”).
Appellants’ arguments do not identify a reversible error in such an
analysis. Appellants contend that “common sense” would dictate that one of
ordinary skill in the art would have selected either Lorentzen’s or Murtha’s
process, not a combination of the two (Request 3 4) and that although
Murtha formed prior art for Lorentzen’s disclosure, “Lorentzen still
emphasizes the benefit of cost saving by skipping a homogenization step and
adopting a continuous, [micro]-mill process” (id at 4—5). These arguments
ignore the disclosure of Murtha, including its disclosed benefits for
homogenization (Murtha 5:49-52) and what this would have suggested to
one of ordinary skill in the art, as discussed above.
Therefore, one of ordinary skill in the art would have had a reason to
modify the process of Lorentzen to include the homogenization process of
Murtha because they would have understood the homogenization process
would provide the additional benefits disclosed by Murtha, even though it
could incur additional cost. See Orthopedic Equipment Co., Inc. v. United
States, 702 F.2d 1005, 1013 (Fed. Cir. 1983) (“the fact that the two disclosed
apparatus would not be combined by businessmen for economic reasons is
not the same as saying that it could not be done because skilled persons in
the art felt that there was some technological incompatibility that prevented
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their combination. Only the latter fact is telling on the issue of
nonobviousness.”).
Appellants contend there has been no weighing of benefits in making
a conclusion of obviousness but the Examiner and the Board has “only
speculated that perhaps a person having ordinary skill in the art may desire
the benefits of improving homogeneity and refining the recrystallized
grains,” especially when “Lorentzen already discloses that the cast strip
‘typically has a temperature of from about 700 to about 1100° F,’ which ‘is
generally above the solvus’” so there is “no need for homogenization,” and
Lorentzen, thus, recognizes the properties Murtha discloses for its
homogenization process (Request 4). However, Lorentzen does not
disclose the time period at which the cast strip remains at the temperature
disclosed by Lorentzen, such as a time period falling within the range
disclosed by Murtha for its homogenization process (Murtha 2:61—62), and
Lorentzen does not disclose or suggest that its process would otherwise
provide the benefits of homogenization disclosed by Murtha.
In addition, Appellants argue that the “Board may come to the
conclusion that Lorentzen could be further modified to cast a rolling ingot
instead of a strip” but that such a modification would not have been obvious
because an ingot “in reality is much shorter in length and much greater in
thickness” and the rolling mills of Lorentzen are impractical or incapable of
hot rolling such an ingot (Request 3). This argument is unpersuasive.
Lorentzen discloses casting strip and subsequently hot rolling the strip
(Lorentzen 112). It would have been obvious to divide Lorentzen’s casting
and hot rolling operation into separate processes in view of Murtha’s
disclosure of using batch processing. Thus, there is no need to modify
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Lorentzen’s casting process to produce an ingot. There is no evidence in the
record that Lorentzen’s rolling process would not have been capable of
rolling the strip produced by its casting process. Nor is there any evidence
or persuasive technical reasoning in the record that Murtha’s
homogenization process would be inapplicable to the cast strip of Lorentzen
or that Murtha’s homogenization process would not provide the
homogeneity and recrystallization refinement benefits disclosed by Murtha
for Lorentzen’s material.
Accordingly, no persuasive merit is present in Appellants’ argument
that our Decision “misapprehended the consequences of modifying
Lorentzen from a continuous process to a batch process as disclosed in
Murtha” (Request 2).
Thus, we decline to modify our decision to affirm the Examiner’s
§ 103 rejection of appealed claims 1,3,4, 17—19, 23, and 24 and reverse the
Examiner’s § 103 rejection of claims 6 and 21.
In conclusion, based on the foregoing, Appellants’ Request is granted
to the extent that we have reconsidered our Decision, but is denied with
respect to making changes to the final disposition of the rejections therein.
This Decision on the Request for Rehearing incorporates our
Decision, mailed November 17, 2017, and is final for the purposes of
judicial review. See 37 C.F.R. § 41.52 (a)(1).
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)(v).
DENIED
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