Ex Parte Flehmig

Patent Trial and Appeal Board

Sep 28, 2017

12727842 (P.T.A.B. Sep. 28, 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.
12/727,842 03/19/2010 Thomas Flehmig 509747 4087
53609 7590 10/02/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
IANNUZZI, PETER J
ART UNIT PAPER NUMBER
3716
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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 THOMAS FLEHMIG
Appeal 2016-004459
Application 12/727,8421
Technology Center 3700
Before EDWARD A. BROWN, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Flehmig (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 2—6, 16, and 17.2 We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is ThyssenKrupp
Steel Europe AG. Appeal Br. 2 (filed Aug. 17, 2015).
2 Claims 1 and 7—15 have been canceled. Appeal Br. 14—15 (Claims App.).
Appeal 2016-004459
Application 12/727,842
INVENTION
Appellant’s invention “relates to a method for manufacturing a sheet
metal blank ... in which at least two metal sheets are connected to one
another at their respective connecting edges, the two metal sheets having
differing thickness.” Spec. 12.
Claims 2 and 16 are independent claims. Claim 2, reproduced below,
is illustrative of the claimed subject matter:
2. Method for manufacturing a sheet metal blank in which at
least two metal sheets are connected to one another at their
respective connecting edges, the at least two metal sheets having
differing thickness, wherein
at least a region of the connecting edge of the thicker of
the at least two metal sheets is pressed to a predefmable thickness
in a forming tool in such a way that the connecting edges of the
at least two metal sheets have substantially the same thickness;
and
wherein the connecting edge of the thicker of the at least
two metal sheets is formed in the forming tool together with the
pressing of the thicker of the at least two metal sheets by
separating off at least a part of the thicker of the at least two metal
sheets; and
wherein the at least two sheets are subsequently connected
to one another at their respective connecting edges.
Appeal Br. 14 (Claims App.).
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 2—6, 16, and 17 under 35 U.S.C.
§ 112, second paragraph, as indefinite.
2
Appeal 2016-004459
Application 12/727,842
II. The Examiner rejected claims 2—6, 16, and 17 under 35 U.S.C.
§ 102(b) as anticipated by Keys (US 2011/0151271 Al, pub.
June 23, 2011).
III. The Examiner rejected claims 16 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Keys and Neurohr (WO
9,619,306, pub. June 27, 1996).
ANALYSIS
Rejection I—Indefiniteness of Claims 2—6, 16, and 17
The Examiner concludes claims 2 and 16 are indefinite because
the preamble portion of the claims, as amended, recite “two metal
sheets connected to one another” and the last sentence of the
claims recites that “the sheets are subsequently connected to one
another.” Sheets that are connected to one another cannot be
subsequently connected to one another, which renders the claims
unclear.
Final Act. 2. Appellant argues this conclusion is erroneous because, when
considering the claim as a whole and in light of the Specification, a skilled
artisan would readily recognize claims 2 and 16 recite a manufacturing
method for connecting sheet metal parts in which a connection between the
parts occurs in the last step of the method. Appeal Br. 8. We agree with
Appellant for the following reasons.
To determine whether a claim is sufficiently definite, a determination
must be made “whether those skilled in the art would understand what is
claimed when the claim is read in light of the specification.” Morton Int’l,
Inc. v. Cardinal Chem. Co., 5 F.3d 1464, 1470 (Fed. Cir. 1993). The
Specification in this case unambiguously describes a process for taking two
separate and distinct sheet metal parts, each with a different thickness,
performing steps to reconfigure an end of the thicker sheet metal part to
3
Appeal 2016-004459
Application 12/727,842
match the thinner sheet metal part, and finally connecting the reconfigured
thicker sheet metal part to the thinner sheet metal part. See, e.g., Spec.
Abstract, || 14, 24, 25, 27, 28, 29, 33, Figs. 1—3c. With this supporting
disclosure, it is clear when claims 2 and 16 recite, “[mjethod for
manufacturing a sheet metal blank in which at least two metal sheets are
connected to one another at their respective connecting edges, the at least
two metal sheets having differing thickness, wherein” (Appeal Br. 14, 15
(Claims App.)), the claim is representing what the intended result sought to
be achieved by the method and indicating the necessary manufacturing steps
to accomplishing this result are to follow.3
Consistent with this understanding, after the transition “wherein”
term, the claims step through a process for reconfiguring the thicker of the
two sheet metal parts to have an edge that is “substantially the same
thickness” of the thinner sheet metal part and, lastly, “the at least two sheets
are subsequently connected to one another at their respective connecting
edges.” Appeal Br. 14, 15 (Claims App.). A skilled artisan would readily
recognize that these manufacturing steps would create the “connecting
edges” that are used later to connect the sheet metal parts. The result, of
course, would be sheet metal parts that “are connected to one another at their
respective connecting edges.” As such, in view of the Specification and the
claims, an interpretation of the claims requiring sheets that are already
connected to one another to be subsequently connected to one another is
3 Because resolution of whether the preamble of claims 2 and 16 is limiting
is not necessary to decide the challenges raised in this appeal, we do not
reach that issue and this opinion should not be understood as suggesting it is,
or is not, limiting.
4
Appeal 2016-004459
Application 12/727,842
unreasonable. Therefore, we do not sustain the Examiner’s indefiniteness
rejection of claims 2—6, 16, and 17.
Rejection II—Anticipation of Claims 2—6, 16, and 17
The Examiner finds Keys discloses each of the manufacturing steps
claims 2 and 16 recite. Final Act. 3^4. Appellant disagrees because Keys
discloses a manufacturing process that first welds (i.e., connects) the parts,
and only afterwards are the reconfigure steps of the sheet metal parts taken.
Appeal Br. 9-10. In other words, Appellant asserts that the steps of claims 2
and 16 are temporally limited to connecting the parts only after the
reconfiguration of the thicker sheet metal part has occurred. Id. In response,
the Examiner disagrees a temporal limitation exists between the claimed
method steps, and concludes “[gjiven that no such temporal limitation exists
between the claimed method steps, Keys discloses all the claimed method
steps as mapped in Examiner’s [Final Rejection].” Ans. 7. The resolution
of this dispute, therefore, turns on whether the limitations of claims 2 and 16
have a temporal component, which is a matter of claim interpretation.
Although the Examiner correctly notes that the steps of a claimed
process are not ordinarily limited to the order in which they are recited, such
a limitation can result when the method steps expressly or implicitly require
that they be performed in the order written. Interactive Gift Express, Inc. v.
CompuServe Inc., 256 F.3d 1323, 1343—44 (Fed. Cir. 2001). In evaluating
whether the claims are limited to the order recited, it is appropriate to
consider the language of the claims and the Specification. Loral Fairchild
Corp. v. Sony Corp., 181 F.3d 1313, 1322 (Fed. Cir. 1999). Appellant
argues persuasively that the use of “subsequently” in the last step of claims 2
5
Appeal 2016-004459
Application 12/727,842
and 16 indicates an order that temporally limits that step to occurring after
the first two recited steps. Appeal Br. 9—10.
Looking contextually at that term within the claims, the broadest
reasonable interpretation of “subsequently” requires the final step to occur
after the previous two recited steps. The first two steps describe a process
for reconfiguring the thicker of the two sheet metal parts to create a
“connecting edge” and, the final step the claims recite, the “two metal sheets
are subsequently connected to one another at their respective connecting
edges.” Appeal Br. 14, 15 (Claims App.). It would be unreasonable to
construe this claim limitation to mean connecting the connecting edges
before they are even formed. Our interpretation is consistent with the
Specification, which describes a process for taking two separate and distinct
sheet metal parts, each with a different thickness, performing steps to
reconfigure an end of the thicker sheet metal part to match the thinner sheet
metal part (i.e., pressing and forming the edge), and finally connecting the
reconfigured thicker sheet metal part to the thinner sheet metal part. See
Spec. Abstract, || 14, 24, 25, 27, 28, 29, 33, Figs. 1—3c. As a result, we find
the Examiner’s conclusion that no temporal limitation exists between the
claimed method steps was erroneous.
Therefore, because the Examiner’s finding of anticipation of claims
2—6, 16, and 17 was predicated on an improper interpretation, we do not
sustain the rejection.
Rejection III— Obviousness of Claims 16 and 17
The Examiner’s rejection of claims 16 and 17 as unpatentable over
Keys and Neurohr is based on the same erroneous interpretation discussed
above (see supra Rejection II) for claim 16. See Final Act. 5—6. Therefore,
6
Appeal 2016-004459
Application 12/727,842
for the reasons set forth above for claim 16, we likewise do not sustain the
Examiner’s rejection of claims 16 and 17 as unpatentable over Keys and
Neurohr.
DECISION
We reverse the Examiner’s decision to reject claims 2—6, 16, and 17.
REVERSED
7