Ex Parte Haase et al

Board of Patent Appeals and Interferences

Feb 16, 2010

10435158 (B.P.A.I. Feb. 16, 2010)

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.
10/435,158 05/09/2003 Jens Haase 20496-389 8880
42532 7590 02/17/2010
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
BONK, TERESA
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
02/17/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JENS HAASE, MICHAEL OPITZ, WOLFGANG REMPE,
FRANZ STEIMMEL and FRANK WAHNER
____________________

Appeal 2009-004287
Application 10/435,158
Technology Center 3700
____________________

Decided: February 17, 2010
____________________

Before TONI R. SCHEINER, MELANIE L. MCCOLLUM, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) (2002) from a Patent
Examiner’s final rejection of claims 1, 3 and 14.1 We have jurisdiction
under 35 U.S.C. § 6(b) (2002). We affirm.

1 Claims 2 and 4-13 have been canceled. (App. Br. 4).
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STATEMENT OF THE CASE
The claims are directed to a method for manufacturing an aluminum
tube.
Claims 1 and 14 read as follows:
1. A method for manufacturing an aluminum tube for
further processing in at least one subsequent deformation
process, wherein an outer surface of the aluminum tube
is textured by temper rolls including a surface machined
according to electrical discharge texturing procedure or lasertex
procedure so as to provide roughness valleys or lubricant
pockets suitable for storing lubricant on the outer surface.

14. The method according to claim 1, wherein the aluminum
tube is processed by a hydroforming procedure.

THE EVIDENCE
The Examiner relies upon the following as evidence in support of the
rejections:
McLain US 3,861,462 Jan. 21, 1975
Saunders US 3,956,915 May 18, 1976
Crahay US 4,628,179 Dec. 09, 1986
Scamans US 2004/0112104 A1 Jun. 17, 2004

THE REJECTIONS
The following rejections are before us for review:
1. Claim 14 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter regarded as the invention.
2. Claims 1, 3 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of McLain and Scamans.
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Claim 1 is the only independent claim in the application. Appellants
argue the obviousness of claims 1 and 14 separately. We select independent
claim 1 to decide the appeal regarding the obviousness rejection of claim 3,
and claim 3 will stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii)(2006).

CLAIM DEFINITENESS
The Issue
The Examiner found it unclear whether claim 14 further defined “the
functional recitation of claim 1 for ‘further processing,’ or if [A]pplicants
are claiming an active method step of processing the tube in a hydroforming
procedure.” (Ans. 3.) The Examiner “assumed for examination purposes
that the procedure of hydroforming the tube … is descriptive of an intended
use limitation since otherwise claim 14 would fall out of the scope of the
invention as described in the preamble.” (Id.)
In other words, the Examiner examined claim 14 “as if it were written
as
‘A method for manufacturing an aluminum tube for further processing
in at least one subsequent deformation process wherein the
deformation process is a hydroforming procedure... .’”

(Id.)
Appellants challenge the Examiner’s rejection by asserting that “it
would be clear, correct and unambiguous to one of ordinary skill in the art
that the ‘process’ of claim 14 refers to the functional ‘further processing’
limitation of claim 1.” (App. Br. 9). In support, Appellants assert that: (a)
base claim 1 only recites “process” in a single clause, i.e., “an aluminum
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tube for further processing in at least one subsequent deformation process;”
(b) the language of claim 14 clearly defines the further processing of claim 1
as a hydroforming procedure; and (c) the specification refers to “a
subsequent hydroforming process” and “an ensuing deformation step” that is
“in particular during hydroforming.” (Id. 8-9).
The issue for decision is whether claim 14 is indefinite.
Findings of Fact
1. The Specification refers to processing in several manufacturing
contexts, e.g., “[t]he manufacturing process yields a very smooth outside
surface,” “manufacturing defects can arise in critical deformation of the
semi-finished product, so that a flawless production process cannot be
assured,” “in conventional sheet deformation processes . . . .” (Spec. 1.)
2. The Specification explains that “good deformation properties can
be achieved in a subsequent hydroforming procedure . . . .” (Spec. 5).
Principles of Law
“[A]mbiguity in claim scope is at the heart of the definiteness
requirement of 35 U.S.C. § 112, ¶ 2.” Amgen, Inc. v. Hoechst Marion
Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). “[D]uring patent
prosecution when claims can be amended, ambiguities should be recognized,
scope and breadth of language explored, and clarification imposed. When
the applicant states the meaning that the claim terms are intended to have,
the claims are examined with that meaning, in order to achieve a complete
exploration of the applicant's invention and its relation to the prior art.” In
re Zletz, 893 F.2d 319, 321 (Fed. Cir. ). “[I]f the claims do not ‘particularly
point[ ] out and distinctly claim[ ]’, in the words of section 112, that which
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examination shows the applicant is entitled to claim as his invention, the
appropriate PTO action is to reject the claims for that reason.” Id. at 322.
During prosecution “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Ex Parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008).
“The preamble of a claim does not limit the scope of the claim when it
merely states a purpose or intended use of the invention. In re Paulsen,
30 F.3d 1475, 1479 (Fed. Cir. 1994).
Analysis
When written with the incorporated text of claim 1, claim 14 reads:
14. [A method for manufacturing an aluminum tube for further
processing in at least one subsequent deformation process,
wherein an outer surface of the aluminum tube
is textured by temper rolls including a surface machined
according to electrical discharge texturing procedure or lasertex
procedure so as to provide roughness valleys or lubricant
pockets suitable for storing lubricant on the outer surface],

wherein the aluminum tube is processed by a hydroforming
procedure.

Both sides of the argument before us appear to assume there can be only one
proper antecedent for claim 14’s “is processed” step. We find those
assumptions are inconsistent with interpreting the claim as broadly as
reasonable, in light of the Specification. First, the manufacturing occurring
in the method of claim 1 necessarily includes processing. If that
manufacturing did not include processing, the claim would be internally
inconsistent by indicating the tube is made for “further” processing after
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manufacturing. Second, consistent with ordinary meaning, the Specification
indicates that manufacturing includes processing. (FF1.)
Thus, we do not agree with Appellants that the “hydroforming
procedure” recited in claim 14 must be interpreted to limit only the “further
processing” recited in claim 1. A source of ambiguity in claim 14 is that it
purports to limit a method claim, but instead describes a tube that “is”
hydroformed. Reading broadly, we agree that limiting the further processing
to hydroforming could be one meaning. (FF2.) But rather than adopt a
narrow interpretation, we conclude that “tube is processed by a
hydroforming procedure” means, at least, that the tube could be
hydroformed in the “manufacturing” or in the “further processing” or both of
those steps.
We also agree with the Examiner that “a method for manufacturing an
aluminum tube for further processing” states an “intended use” for the
manufactured tube. We agree with the Examiner that a statement limiting
the intended use for the tube has no limiting effect on claim 1’s method, and
that this is an ambiguity that should be resolved.

OBVIOUSNESS
The Issue
The Examiner found McLain described a method for texturizing
various metallic tubes, including an aluminum tube, using “temper rolls (42)
for further processing (step 90) which provide pockets suitable for storing
lubricant on the outer surface (figure 1A).” (Final Rej. 2- 3). The Examiner
also found that McLain did not expressly teach that the temper rolls are
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machined by an electrical discharge texturing (“EDT”) procedure or a
Lasertex (“LT”) procedure. (Id. at 3).
However, the Examiner found that Scamans taught that it was known
in the art at the time of the invention to provide a texture surface to an
aluminum metal by using rolls with a surface machined according to an EDT
or LT procedure. (Id.)(citing Scamans [0061]). According to the Examiner,
it would have been obvious to a person of ordinary skill in the art at the time
the invention was made to manufacture McLain’s aluminum tube by using
temper rollers produced by an EDT or LT procedure, as taught by Scamans,
to provide a roller capable of supplying an aluminum tube that is cost-
effective, has good texture quality, and is durable “since such a combination
would yield predictable results.” (Id.).
Appellants contend that “McLain and Scamans do not teach or
suggest the claimed roughness valleys or lubricant pockets suitable for
storing lubricant on the outer surface.” (App. Br. 10). According to
Appellants, McLain disclosed a tube having “patterns on the inside and
outsides surfaces … to provide maximum efficiency for heat exchange
functions,” rather than to store lubricant. (Id.) Appellants also assert that
McLain does not inherently disclose roughness valleys or lubricant pockets
suitable for storing lubricant on the outer surface because the reference does
not even mention the word lubricant. (Id. at 11.) Additionally, according to
the Appellants, “Scamans does not cure the deficiencies of McLain….” (Id.
at 12). Specifically, the Appellants assert that although “Scamans discloses
rollers textured by EDT or LT,” the reference “does not disclose that the
roughened surface can store lubricant.” (Id. at 13).
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The issue for this rejection is whether Appellants established the
Examiner erred in finding that McLain inherently disclosed valleys suitable
for storing lubricant.

Findings of Fact
3. McLain described a method for forming a heat exchanger tube
having a pattern formed on the outside and/or inside surfaces using
embossing rolls. (McLain, Abstract; 7:17-29).
4. McLain Figure 1A is reproduced below:

{Figure 1A shows a perspective view of the heat exchanger
tubing made in accordance with McLain’s invention. (Id. 2:50-52).}

5. McLain taught that the particular patterns which may be formed
on the surfaces may be chosen as desired. (Id. 6:16-18).
6. McLain taught that after the tube is manufactured, the tube may be
subjected to further processing, including, shaping/sizing, cleaning, coiling
and/or packaging. (Id. 6:49-52, 63-68).
7. Scamans described a method and apparatus for texturing an
aluminum sheet or strip using rollers that were made using electro-discharge
treatment (EDT) or laser beam treatment (LT). (Scamans [0001], [0004] and
[0061]).
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8. Saunders described the production of flat rolled sheet metal
having a pattern of surface indentations including linearly extended
impressions providing a textured surface for holding lubricant on the
surface. (Saunders, Claim 1).
9. Saunders Figure 3 is reproduced below:

{Figure 3 shows a portion of the surface contact rolls of a single roll stand
treatment of Saunders’ invention. (Id. 2:42-44).}

10. Crahay described a method of improving the surface of a roll by
using a laser beam. (Crahay, Abstract).
11. Appellants’ Specification states that hydroforming was known in
the art as a subsequent deformation process in manufacturing an aluminum
tube. (Spec. 1).

Principles of Law
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR International Co. v. Teleflex Inc., 550 U.S.
398, 406 (2007). “The combination of familiar elements according to
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known methods is likely to be obvious when it does no more than yield
predictable results.” Id. at 416.
“The inherent teaching of a prior art reference, a question of fact,
arises both in the context of anticipation and obviousness.” In re Napier,
55 F.3d 610, 613 (Fed. Cir. 1995); see also In re Wiseman, 596 F.2d 1019,
1023 (CCPA 1979) (rejecting the notion that “a structure suggested by the
prior art, and, hence, potentially in the possession of the public, is patentable
... because it also possesses an [i]nherent, but hitherto unknown, function
which [patentees] claim to have discovered. This is not the law. A patent on
such a structure would remove from the public that which is in the public
domain by virtue of its inclusion in, or obviousness from, the prior art.”).
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Mere arguments unsupported by evidence must fail. Wiseman,
596 F.2d at 1022.

Analysis
Claim 1 recites a method for manufacturing an aluminum tube
“wherein an outer surface of the aluminum tube is textured … so as to
provide roughness valleys or lubricant pockets suitable for storing lubricant
on the outer surface.” We interpret the claim limitation “suitable for storing
lubricant on the outer surface” as an intended use. As the Examiner
explained, the recitation of the intended use of the claimed invention must
result in a structural difference between the claimed invention and the prior
art in order to patentably distinguish the claimed invention from the prior art.
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(See Ans. 5-6). If the prior art structure is capable of performing the
intended use, then it meets the claim. See Schreiber, 128 F.3d at 1477.
Although McLain does not expressly recite storing lubricant on its
outer surface, the Examiner reasoned that McLain’s tube would be capable
of performing the recited intended use. Specifically, the Examiner found
that Saunders discloses an article having a pattern similar to McLain’s tube,
which article has an express purpose of holding lubricant on the exterior
surface. (Ans. 6; Saunders, Abstract). Thus, the Examiner established that
texturing a surface to provide line impressions, i.e., roughness valleys or
lubricant pockets, results in a surface that is suitable for holding or storing
lubricant. The Appellants have not established otherwise with persuasive
evidence. See In re Wiseman, 596 F.2d 1019, 1022 (CCPA 1979).
Nor are we persuaded by the Appellants’ assertion that the surface
patterns of McLain and Saunders are distinguishable because “McLain’s
pattern appears to be of a significantly different dimension (e.g., welded
strip versus 0.02 to 0.15 mils),” and McLain’s pattern functions as a heat
exchanger while Saunders functions as a lubricant reservoir to improve
ironing operations. (App. Br. 12 fn. 3). As the Examiner stated, “an
impression, no matter the depth, will inherently have the ability to hold a
certain amount of lubricant by its very nature of having a pocket.” (Ans. 6).
Additionally, the different intended uses of McLain and Saunders do not
result in a structural difference in the texture/pattern on the articles’ surfaces.
Therefore, Saunders’ disclosure that its texture/pattern functions to store
lubricant is sufficient to establish that McLain’s similar texture/pattern is
suitable to function similarly. Consequently, we find that Appellants have
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not established error on the part of the Examiner. See Napier, 55 F.3d at
613.
The Appellants also challenge the Examiner’s rejection by asserting
that the proposed “combination does not yield a predictable result” because:
(1) the combination “does not perform the function of the claimed roughness
valleys or lubricant pockets suitable for storing lubricant;” (2) “the
combination represents an improper use that is contrary to the element’s
established function;” and (3) “one skilled in the art could not have
combined the elements, by known methods, to produce claim 1 without
changing the elements’ respective functions.” (App. Br. 14-16).
These arguments are also unpersuasive. The Appellants’ arguments
are not commensurate in scope with the claim which only describes a
method of manufacturing a textured aluminum tube such that it is “suitable
for storing lubricant” as an intended use. Neither the claim, nor the
Examiner’s proposed combination, require lubricant to be added to the
textured surface.
Inherency exists here in a similar manner as it existed in In re
Wiseman, 596 F.2d 1019, 1023 (CCPA 1979). In Wiseman, the Appellants’
invention was directed to a disc brake assembly in which each of the brake
discs were provided with a plurality of grooves on its face to vent steam
generated during braking by the action of frictional heat on moisture present
on the disc. Id. at 1020. The primary prior art reference disclosed a disc
brake assembly wherein the discs where formed of carbon or carbon
composite and the structure of the brake was substantially similar to
Wiseman’s invention, except that it did not disclose that the disc faces had
grooves. Id. at 1020-1021. The secondary reference disclosed a brake
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assembly that included a series of grooves to cool the frictional faces of the
braking members and to vent dust produced by consumption of the brake
linings. Id. at 1021. Wiseman argued that a skilled artisan would not have
been motivated to provide grooves to the primary reference because its
carbon brakes neither required cooling nor produced dust. Id. In other
words, Wiseman asserted that the purpose of the grooves, as disclosed in the
secondary reference, would not be accomplished by the combination. The
Board found that although the prior art disclosed grooving the braking
surfaces to solve a different problem than identified by Wiseman, the
addition of grooves is the same solution as that in Wiseman’s invention and
would inherently overcome the problem cause identified by Wiseman, as
well as the cause recognized in the prior art. Id. at 1023. The Court
affirmed the Board and rejected the notion that “a structure suggested by the
prior art, and hence, potentially in the possession of the public is
patentable… because it also possesses an [i]nherent, but hitherto unknown,
function which [Applicants] claim to have discovered.” Id. As the Court
explained, “A patent on such a structure would remove from the public that
which is in the public domain by virtue of its inclusion in, or obviousness
from, the prior art.” Id.
Here, the prior art disclosed providing a textured pattern, or grooves,
to an aluminum tube to solve a different problem than the instant invention.
However, the disclosed solution of texturizing the tube inherently overcomes
the problem identified by Appellants, i.e., providing a tube that is “suitable
for storing lubricant,” while also serving the function of the prior art, that is,
providing a heat exchanger tube. Therefore, as in Wiseman, the Appellants’
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solution, albeit to a different problem, is obvious from the solution disclosed
in the prior art.
Moreover, the Examiner’s combination merely modifies McLain by
substituting Scaman’s temper roll. It is well settled that a prima facie
conclusion of obviousness may be supported by a showing that the claims
are directed to a process, machine, manufacture, or composition of matter
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, and such modification yields a
predictable result. See KSR 127 S. Ct. 1739)(citing United States v. Adams,
383 U.S. 39, 40).
Consequently, we do not find that the Appellants’ have established
with any persuasive evidence that the Examiner erred in rejecting the claim
as obvious over the combined prior art.
The Appellants next assert that the Examiner erred in rejecting the
claims because “McLain, as the primary reference, does not provide any
teaching or suggestion to combine with, or modify according to, Scamans.”
(App. Br. 16). According to the Appellants, a person of ordinary skill in the
art would not have been motivated to modify McLain in view of Scamans
“because Scaman’s roughening of a surface by EDT or Lasertex procedure
for the application of an adhesive in no way benefits heat transfer properties
as described by McLain.” (Id. at 16-17). Additionally, the Appellants assert
that “there is no motivation to combine McLain and Scamans because they
differ in the nature of the problem to be solved (e.g., cooling pipes versus
adhering coating to lithographic plates).” (Id. at 17).
This argument is unpersuasive. Motivation to combine teachings need
not be expressly stated in any prior art reference. In re Kahn, 441 F.3d 977,
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989 (Fed. Cir. 2006). There need only be an articulated reasoning with
rational underpinnings to support a motivation to combine teachings. Id.,
441 F.3d at 988. While McLain and Scamans may be addressing different
problems, “both references are directed to the process and equipment for the
manufacture of a textured pattern of a metal sheet through the use of rolls.”
(Ans. 7). The Examiner found that McLain describes using temper rolls to
manufacture an aluminum tube. The Examiner also found that Scamans
describes that using EDT and LT procedures were known in the art for
machining temper rolls. As the Examiner explained, Crahay evidences that,
in the art, LT was recognized as an improvement over previous methods to
produce a better quality pattern on the roller and on the rolled sheet. (Ans.
8).
Therefore, the Examiner rationally reasoned that a skilled artisan at
the time of the invention would have been motivated to employ Scamans’
EDT or LT procedure to machine the surface of the temper rolls used in
McLain to produce a better quality pattern on the roller. The Appellants
have not established otherwise with persuasive evidence. Consequently, we
do not find that the Appellants have established Examiner error.
In the Reply, the Appellants assert, for the first time, a separate
argument challenging the obviousness rejection of claim 14, i.e., “that
McLain’s further processing 90 step does not teach or suggest a subsequent
deformation process that is a hydroforming procedure.” (Reply Br. 4).
According to the Appellants, “McLain’s further processing 90 relates to
cleaning, coiling, and packaging a heat exchanger,” which “do not implicate
hydroforming.” (Id. at 5). The Appellants further assert that McLain’s
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“shaping and/or sizing mill 80 is disclosed as separate and distinct from
further processing 90.” (Id. 5-6).
This argument is also unpersuasive. As discussed, supra, we interpret
claim 14 broadly as further defining the recitation of “for further processing
in at least one subsequent deformation process” recited in claim 1. We also
found that this recitation in claim 1 is an intended use limitation. The
Examiner found that “the aluminum tube of McLain encompasses the ability
to be further processed by a hydroforming procedure if so desired and
therefore encompasses the claimed limitations.” (Ans. 5). We agree. After
describing the last step of the process for forming the tube of the invention,
McLain expressly stated, “The tubing … may be subjected as desired to
shaping and/or sizing by conventional means and any other further
processing as, for example, cleaning, coiling, and/or packaging.” (McLain
6:49-68, (emphais added)). We interpret this statement as describing
shaping and/or sizing as a subsequent and additional processing step by
which the manufactured tube may be further subjected. In other words,
McLain described shaping and/or sizing as “further processing” and then
goes on to describe “other further processing” to include, but not limited to,
“cleaning, coiling and/or packaging.” (See id.). We find McLain taught a
method of manufacturing an aluminum tube that expressly encompassed the
capability of further processing in a subsequent deformation process,
including by a hydroforming procedure.
Further, according to the Appellants’ Specification, it was known in
the art at the time of the invention that hydroforming was an effective
subsequent deformation process applied to aluminum tubes. (See Spec. p.
1)(“The use of straight bead welded or extruded aluminum tubes as semi-
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finished products in subsequent deformation processes is known in the art,
for example. In particular hydroforming makes it possible to use aluminum
tubes for manufacturing component with complex shape….”). Therefore, a
person of ordinary skill in the art would have found it obvious to employ
hydroforming, a well known subsequent deformation process for aluminum
tubes, as a further processing step in McLain. We do not find that the
Appellants have established otherwise with persuasive evidence.
To the extent that Appellants assert that claim 14 recites a functional
limitation, the claim remains obvious over the combined prior art for the
reasons discussed supra. See Zletz, 893 F.2d at 321 (when the applicant
states the meaning that the claim terms are intended to have, the claims are
examined with that meaning, in order to achieve a complete exploration of
the applicant's invention and its relation to the prior art). In particular, the
Examiner found that McLain disclosed a method of manufacturing a tube
that not only encompassed the ability to be further processed in a subsequent
deformation process, but was also specifically envisioned to do so. (See
Ans. 5)(citing McLain 6:63-[68]).
Consequently, we do not find that the Appellants have established that
the Examiner erred in rejecting claim 14 as obvious. See KSR International
Co. v. Teleflex Inc., 127 S. Ct. 1727, 1734 (2007)(“Section 103 forbids
issuance of a patent when ‘the differences between the subject matter sought
to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains.’”).

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CONCLUSION
Appellants have not established error in the Examiner’s conclusion
that claim 14 is indefinite.
Appellants have not shown error in the Examiner’s obviousness
rejection.
DECISION
We affirm the rejection of claim 14 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter regarded as the invention.
We affirm the rejection of claims 1, 3 and 14 under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of McLain and
Scamans.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006).

AFFIRMED

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