Ex Parte Fehlemann et al

Patent Trial and Appeal Board

Mar 30, 2016

13025903 (P.T.A.B. Mar. 30, 2016)

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
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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.
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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.
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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.
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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).
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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
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