Ex Parte Fehlemann et alDownload PDFPatent Trial and Appeal BoardMar 30, 201613025903 (P.T.A.B. Mar. 30, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/025,903 02/11/2011 Gereon Fehlemann 20311 7590 04/01/2016 LUCAS & MERCANTI, LLP 30 BROAD STREET 21st FLOOR NEW YORK, NY 10004 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. HM-786-DIV 3683 EXAMINER YOON, KEVIN E ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 04/01/2016 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): info@lmiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEREON FEHLEMANN and ALBRECHT GIRGENSOHN Appeal2014-007644 Application 13/025,903 Technology Center 1700 Before LINDA M. GAUDETTE, CHRISTOPHER L. OGDEN, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal the Examiner's final rejection of claims 1, 2, 5, 7, 8, 10 and 12. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. 1 Appellants identify SMS Siemag Aktiengesellschaft as the real party in interest. App. Br. 2. Appeal2014-007644 Application 13/025,903 The Claimed Invention Appellants' disclosure relates to a continuous casting mold having at least one mechanically machined surface that is in contact with molten material during normal use of the mold. Abstract. Independent claim 1 is representative of the claims on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 9): 1. A continuous casting mold having broad sides, narrow sides adjustable relative to the broad sides, and at least one machined surface that is contactable with molten material during normal use, wherein substantially all of the at least one machined surface has an anisotropic structure so that the surface has a roughness with different values when measured in a casting direction than values when measured in a direction transverse to the casting direction so that friction between the broad sides and the narrow sides during adjustment of the narrow sides is reduced. The References The Examiner relies on the following prior art in rejecting the claims on appeal: Horst et al., US 4,665,969 May 19, 1987 (hereinafter "Horst") Scholz et al., US 6,142,212 Nov. 7, 2000 (hereinafter "Scholz") Tsujino JP 08-206786 A Aug. 13, 1996 2 Appeal2014-007644 Application 13/025,903 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 1, 2, 5, 8 and 10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Scholz in view of Horst. 2. Claims 7 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Scholz in view of Horst as applied to claim 10, and further in view ofTsujino. OPINION2 1. Rejection of Claims 1, 2, 5, 8and10 under 35 U.S.C. § 103(a) over Scholz in view of Horst Appellants argue claims 1, 2, 5, 8 and 10 as a group. We, therefore, select claim 1 as representative of this group, and the remaining claims stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013). The Examiner finds that the combination of Scholz and Horst teaches all of claim 1 's limitations. Ans. 2-3. The Examiner finds that Scholz teaches a continuous casting mold having broad sides and narrow sides adjustable relative to the broad sides. Ans. 2 (citing Scholz, Fig. 1, items 1 and 2, col. 2, 11. 20-27). The Examiner finds that Scholz teaches nearly all of claim 1 's limitations, except that it does not specifically teach the "at least one machined surface" limitation of the claim. Id. The Examiner, however, relies on Horst for teaching that 2 We affirm the Examiner's rejections for the reasons set forth in the Answer, which we adopt as our own. Nevertheless, we highlight and address specific findings and arguments for emphasis as follows. 3 Appeal2014-007644 Application 13/025,903 limitation. Id. In particular, the Examiner finds Horst teaches at least one machined surface that is contactable with molten material during normal use, wherein substantially all of the at least one machined surface has an anisotropic structure so that the surface has a roughness with different values when measured in a casting direction than values when measured in a direction transverse to the casting direction, to improve the quality of the casting product. Id. at 2-3 (citing Horst, Figs. 1 and 3, col. 6, 11. 28--42, col. 2, 11. 37--43). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of invention to modify the invention of Scholz to employ at least one machined surface having an anisotropic structure because Horst teaches the advantage of using it, which is to improve the quality of the casting product. Ans. 3 (citing Horst, col. 2, 11. 37--43). Appellants argue the Examiner's rejection should be reversed because "it would not [have been] obvious to combine the references as argued by the Examiner." App. Br. 6. In particular, Appellants argue that because "Horst disclose[ s] a mold that is paraboloid shaped and does not have sides that move relative to each other[,] it would not be obvious to utilize the textured surface of the mold of Horst" as in the claimed invention. Id. Appellants further argue that: ( 1) there is no teaching in Horst that its disclosed surface configurations "would be applicable to use with a casting mold having broad sides and narrow sides so as to reduce friction between the sides," and (2) there is no suggestion in Horst "that the textured surface of a paraboloid shaped mold would reduce the friction between the broad and narrow sides of a different type of mold." Id. at 6-7. 4 Appeal2014-007644 Application 13/025,903 We are not persuaded by Appellants' argument. First, Appellants attack the references individually, rather than considering the combined teachings of the prior art as a whole. One cannot show non-obviousness by attacking references individually where the rejection is based on a combination of references. See In re Keller, 642 F.2d 413, 425 (CCPA 1981) ("[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art."). Thus, Appellants' argument as to what Horst fails to teach or suggest individually is not persuasive. Second, considering the combined teachings of the prior art as a whole, the Examiner's finding and rationale for why one of ordinary skill would have been motivated to combine the teachings of Scholz and Horst to arrive at Appellants' claimed invention are well-supported by the record and based upon sound technical reasoning. As the Examiner found (Ans. 2-3), Scholz teaches a continuous casting mold having broad sides and narrow sides adjustable relative to the broad sides (Scholz, Fig. 1, items 1 and 2, col. 2, 11. 20-27) and Horst teaches at least one machined surface that is contactable with molten material during normal use (Horst, Figs. 1 and 3, col. 6, 11. 28--42, col. 2, 11. 37--43), as recited in claim 1. Moreover, Appellants have not shown error in the Examiner's finding (Ans. 3) that one of ordinary skill in the art at the time of invention would have been motivated to modify the invention of Scholz to employ at least one machined surface having an anisotropic structure because Horst teaches the advantage of using it, which is to improve the quality of the casting product. Horst, col. 2, 11. 37--43. Appellants' argument fails to show reversible error in the Examiner's factual findings and legal conclusions in this regard. 5 Appeal2014-007644 Application 13/025,903 Third, Appellants' conclusory assertions regarding the surface configurations and shape of Horst's mold (App. Br. 6-7), without more, are insufficient to establish reversible error in the Examiner's obviousness analysis and conclusion. Appellants do not provide an adequate technical explanation or identify sufficient evidence in the record to support these assertions, and attorney argument cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Fourth, Appellants' argument that Horst does not disclose "that friction between the broad sides and the narrow sides during adjustment of the narrow sides is reduced" is also unpersuasive because, as noted by the Examiner (Ans. 6), the fact that Appellants have "recognized another advantage [(i.e., reduced friction between the broad sides and the narrow sides during adjustment of the narrow sides)] which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise [have been] obvious." See Exparte Obiaya, 227 USPQ 58, 60 (BPAI 1985). Accordingly, based on the findings and technical reasoning provided by the Examiner (Ans. 2-5), and for the reasons discussed above, we affirm the Examiner's rejection of claims 1, 2, 5, 8, and 10 under 35 U.S.C. § 103(a) as unpatentable over Scholz in view of Horst. 2. Rejection of Claims 7and12 under 35 U.S.C. § 103(a) over Scholz in view of Horst as applied to claim 10, and further in view of Tsujino Because Appellants do not present a separate argument for claims 7 and 12, we select claim 12 as representative of this group. Claim 7, therefore, stands or falls with claim 12. 37 C.F.R. § 41.37(c)(l)(iv) (2013). 6 Appeal2014-007644 Application 13/025,903 The Examiner finds that the combination of Scholz, Horst, and Tsujino teaches all the limitations of claim 12. Ans. 4--5. Appellants do not present any specific or additional arguments for the patentability of claim 12. Instead, Appellants rely on the same arguments presented above for claim 1. App. Br. 7. Based on the findings and technical reasoning provided by the Examiner (Ans. 2-5), and for the reasons discussed above for claim 1, we find that Appellants fail to establish reversible error in the Examiner's factual findings and legal conclusions with respect to claim 12. Accordingly, we affirm the Examiner's rejection of claims 7 and 12 under 35 U.S.C. § 103(a) as unpatentable over Scholz in view of Horst as applied to claim 10, and further in view of Tsujino. DECISION/ORDER The Examiner's rejection of claims 1, 2, 5, 7, 8, 10 and 12 under 35 U.S.C. § 103(a) is affirmed. It is ordered that the Examiner's decision 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). AFFIRMED 7 Copy with citationCopy as parenthetical citation