Ex Parte FlehmigDownload PDFPatent Trial and Appeal BoardSep 28, 201712727842 (P.T.A.B. Sep. 28, 2017) Copy Citation 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 Copy with citationCopy as parenthetical citation