Ex parte Derks et al.

Board of Patent Appeals and Interferences

May 31, 2001

08019500 (B.P.A.I. May. 31, 2001)

The Board rendered a previous decision in this application, wherein the1
examiner’s rejections under 35 U.S.C. § 103 were reversed and a new rejection under 35
U.S.C. § 112, second paragraph, was entered (Paper No. 21, mailed Dec. 11, 1997).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLI DERKS, HANS-JURGEN REISMANN and EGON SIPPEL
____________
Appeal No. 2000-0590
Application No. 08/019,500
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 2, 4-111
and 13. Subsequently, claims 2, 4, 5, 7 and 13 were canceled, and claim 14 was added,
leaving claims 6, 8-11 and 14 before us on appeal.
We REVERSE.
Appeal No. 2000-0590 Page 2
Application No. 08/019,500
BACKGROUND
The appellants’ invention relates to a rolling mill stand. An understanding of the
invention can be derived from a reading of exemplary claim 14, which appears in the
appendix to the appellants’ Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Soderberg et al. (Soderberg) 1,865,286 Jun. 28, 1932
Bond 4,557,130 Dec. 10, 1985
Poloni et al. (Poloni) 4,907,437 Mar. 13, 1990
Seto et al. (Seto) 5,031,435 Jul. 16, 1991
Claims 6, 8 and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Soderberg in view of Bond.
Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Soderberg in view of Bond and Seto.
. Claims 10 and 11 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Soderberg in view of Bond, Seto and Poloni.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellants regarding the above-noted rejections, we make reference to the Answer (Paper
No. 29) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 28) and Reply Brief (Paper No. 30) for the appellants’ arguments thereagainst.
Appeal No. 2000-0590 Page 3
Application No. 08/019,500
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
The appellants’ invention is directed to improvements in rolling mill stands with
regard to allowing improved accessibility of the yokes that support the rollers so that the
rollers can be replaced easily. As manifested in independent claim 14, the invention
comprises a stand comprising horizontal and vertical rolls, spaced first and second drive
roll stand posts parallel to each other for supporting the rolls, with the second post being
axially movable relative to the first, bearing means located in the roll stand posts for
supporting the horizontal rolls therein, a horizontal guide frame located in each of the roll
stand posts for supporting a respective vertical roll therein, tie rods for connecting the
horizontal guide frame to the roll stands, an adapter for receiving the respective vertical
rolls arranged in said horizontal guide frame and having “spaced separate horizontally
extending top and bottom plates” for holding a vertical support axle for supporting a vertical
roll, the guide frame comprising a recess for the adapter and “accessible from a space
between said first and second roll stand posts,” and
a U-shaped abutment part located in said recess for positioning said
adapter in said recess, wherein said guide frames are configured in two
Appeal No. 2000-0590 Page 4
Application No. 08/019,500
parts, an adapter support part and a crosshead connected to said adapter
support part and located on a side of a respective roll stand post remote
from the space between said roll stand posts,
wherein the universal rolling mill stand further comprises a vertical roll
screw-down or adjustment system disposed in each crosshead, said U-
shaped abutment part being disposed between said adapter and said roll
screw-down or adjustment system.
As explained on page 4 of the specification, this arrangement causes the vertical and the
horizontal rolls to be exposed and accessible from the inside of the space between the
pulled apart stand posts, and permits adjustment of the vertical rolls in the horizontal plane.
It is the examiner’s view that all of the claimed structure is disclosed by Soderberg,
with the exception that the Soderberg spaced apart horizontal support plates are not
separate, the guide frames are not of two-part construction, and the vertical roll screw-
down or adjustment system is not located in accordance with the claim. In the examiner’s
opinion, however, whether or not the horizontal support plates are separate is a matter of
design choice, and it would have been obvious to reconfigure the vertical roll guide frames
and the roll adjustment system to the manner recited in claim 14 in view of the teachings of
Bond. The appellants argue that one of ordinary skill in the art would not have been
motivated to combine the teachings of the two references in the manner proposed by the
examiner because it would result in complete destruction of the intended arrangement in
Soderberg, and that even if such were done, the result would not be the claimed invention
(Brief, pages 11 and 12).
Appeal No. 2000-0590 Page 5
Application No. 08/019,500
Soderberg discloses, inter alia, a roll mounting arrangement in which each of the
vertical rolls is fixedly mounted in a chuck (32). The opening in the chuck that faces the
space between the roll stand posts is closed by a removable cap 40 (Figure 6). As
explained on page 3, at line 11 et seq. and shown in Figure 2, the chuck is secured to a
cross-head (56), and adjustment of the position of the vertical rolls in the horizontal plane is
accomplished by moving the cross-head by means of a pair of flanking screw shafts (67)
which are far removed from the location of the roll itself. This differs in concept from the
appellant’s system, in which the adjusting mechanism is located within a recess in the
guide frame, immediately adjacent to the adapter (chuck) that holds the vertical roll, and
the vertical roll is moved with respect to the guide frame. With regard to claim 14, it is our
view that Soderberg fails to disclose a horizontal two-part guide frame having a recess in
which an adapter for receiving the vertical roll is positioned, with the guide frame
comprising an adapter support part and a crosshead located on the side of the roll stand
post remote from the space between the posts, a U-shaped abutment part located in the
recess for positioning the adapter in the recess, and a vertical screw-down or adjustment
system disposed in each crosshead, the U-shaped abutment part being disposed
between the adapter and the roll screw-down or adjustment system.
Bond discloses a system for adjusting the position of a vertical roll in the horizontal
direction which comprises a chuck (43; Figure 3) that holds the vertical roll. The chuck is
Appeal No. 2000-0590 Page 6
Application No. 08/019,500
similar to that of Soderberg. A one-piece guide frame (15) defines a recess within which
the chuck is slidably mounted, and an adjusting screw (45) moves the chuck and the
vertical roll mounted thereon within the recess in the guide frame. The adjusting screw is
located between the chuck and the cross-piece of the guide frame.
The test for obviousness is what the combined teachings of the prior art would have
suggested to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
skill in the art would have been led to modify a prior art reference or to combine the
reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from
some teaching, suggestion or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
Soderberg states that “[t]he way in which the vertical rolls 5 and 6 are rotatably
mounted in the roll chucks and the way in which the chucks are mounted in the windows of
the roll housings . . . form novel and important features of our invention” (page 2, lines 1-6).
Basic to this arrangement is that a substantial portion of the rolling mill structure is moved
Appeal No. 2000-0590 Page 7
Application No. 08/019,500
along with the vertical roll and its chuck by the action of a pair of spaced screws located
remotely from the chuck. While Bond teaches that it was known in the art at the time of the
appellants’ invention to adjust the horizontal position of the vertical roll more directly by
screw means mounted in the vertical roll guide means, the mere fact that the Soderberg
structure could be modified does not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). In the present case, we fail to perceive any teaching,
suggestion or incentive in either Soderberg or Bond which would have led one of ordinary
skill in the art to modify the Soderberg apparatus by replacing the disclosed adjustment
means with the one of Bond. Moreover, to do so would necessitate a wholesale
reconstruction of the Soderberg rolling mill, in the course of which what is characterized by
Soderberg as “a novel and important” feature of the invention would be discarded; that, in
our opinion, would act as a disincentive for one of ordinary skill in the art to do so.
In addition, even if one were to combine the two references in the manner proposed
by the examiner, the resulting construction would fail to include the separate spaced-apart
top and bottom support plates for the roll axle and the two part guide frame, which the
appellants assert provides advantages over the prior art systems and which the examiner
has simply written off, without providing any reasoning or evidence, as design choices.
Appeal No. 2000-0590 Page 8
Application No. 08/019,500
It therefore is our conclusion that the combined teachings of Soderberg and Bond
fail to establish a prima facie case of obviousness with regard to the subject matter recited
in independent claim 14. This being the case, we will not sustain the rejection of claim 14
or, it follows, of dependent claims 6 and 8.
Dependent claim 9 stands rejected on the basis of the references cited against
claim 14, taken further with Seto, which is cited for its teaching of using multi-part horizontal
rolls so as to enable the mill to produce products of various sizes. Be this as it may, Seto
does not overcome the shortcomings we have focused upon above in the basic
combination of Soderberg and Bond, and therefore we will not sustain this rejection.
We reach the same conclusion with regard to dependent claims 10 and 11, wherein
Poloni has been added to the other three references for its teaching of using eccentric
adjustment means for horizontal rolls.
SUMMARY
Appeal No. 2000-0590 Page 9
Application No. 08/019,500
None of the rejections are sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA:pgg
DAVID TOREN, ESQ.
Appeal No. 2000-0590 Page 10
Application No. 08/019,500
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