Ex Parte Hartwig et alDownload PDFPatent Trial and Appeal BoardFeb 13, 201512584607 (P.T.A.B. Feb. 13, 2015) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte RUBEN HARTWIG, ANDREAS HELMRICH, DANIEL MUTTER, and ALOIS SCHALK ________________ Appeal 2013-001185 Application 12/584,607 Technology Center 1700 ________________ Before PETER F. KRATZ, KAREN M. HASTINGS, and N. WHITNEY WILSON, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1–10 under 35 U.S.C. § 103(a) as being unpatentable based on at least the combined prior art of Matsubara (WO 2005/090862 A1, published March 24, 2005),1 Andtbacka (US 6,666,945 B1, issued Dec. 23, 2003), Watanabe (US 3,941,590, issued March 2, 1976), and Blevins (US 1 Both the Examiner and Appellants rely upon the English equivalent US Pub. 2008/0318078 A1 as a translation (Ans. 3; App. Br. 7). Appeal 2013-001185 Application 12/584,607 2 2,084,889, issued June 22, 1937).2 We have jurisdiction under 35 U.S.C. § 6(b). Claim 1, the sole independent claim, is illustrative of the claimed subject matter (emphasis added): 1. A method for producing superheater tubes and connecting pipes and assembling superheater tubes inside a steam generator tube wall, where each of the superheater tubes is formed from straight tubes and bends and each of the connecting pipes includes a sleeve mounted on the outside of the connecting pipe, the method comprising the following steps: a) preparing tubes for the straight tubes, tubes for the bends, and tubes for the connecting pipes in a workshop, as well as sleeves consisting of a material that is not to be heat treated, the tubes consisting of precipitation-hardened nickel-based alloys in a solution-annealed state; b) manufacturing the bends and the connecting pipes in the workshop using bending tools; c) manufacturing the superheater tubes in the workshop by connecting the straight tubes and the bends with weld seams, and connecting the sleeves with the connecting pipes, in a penetration area of the connecting pipe at the steam generator tube wall, with weld seams; d) precipitation hardening the superheater tubes and the connecting pipes having sleeves in the workshop in a first heating device; e) connecting the superheater tubes with the connecting pipes on the assembly site inside the steam generator tube walls with a weld seam and connecting the sleeves with a take-up device with a weld seam, 2 The rejection of claims 2 and 5 also includes Wanner (US 5,059,257, issued Oct. 22, 1991) (Final Rejection 4); the rejection of claim 10 also includes Matherne (US 5,816,479, issued Oct. 6, 1998) (Final Rejection 5). Appeal 2013-001185 Application 12/584,607 3 the take-up device having been prepared in the steam generator tube walls and being a material that is not to be heat treated; and f) precipitation hardening the weld seams on the assembly site with second heating devices disposed proximate to the weld seams. OPINION We reverse the rejections. The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). We need address only independent claim 1. The Examiner admits Matsubara “does not teach the claimed sleeve jointing, or the tubes are made from nickel-based alloys subjected to precipitation hardening, or the connections is made with weld seams with the claimed welding time or welding temperature” (Answer 3). The Examiner relies upon Andtbacka to teach “sleeve joint and welding are known alternatives for one another for joining solid tubes” (id.), and thus it would have been prima facie obvious to combine sleeve jointing with the welding of Matsubara (Ans. 3), and further that the “duplication of an Appeal 2013-001185 Application 12/584,607 4 actions step [of precipitation hardening] and changing the sequence of performing the action steps is prima facie obvious” (Ans. 4). Appellants, on the other hand, state However, the method recited in claim 1 does not merely change the sequence of process steps disclosed in the cited art. The subject invention provides “a method for producing and assembling superheater tubes of steam generators in which the production and assembly takes place in a more efficient and practical way” (paragraph 0004) than conventional methods. More particularly, the subject invention separates the manufacturing and assembly process into a first set of steps that are accomplished in a workshop, producing pre-constructed portions of the steam generator, and a second set of steps that assembly the pre-constructed portions in the field at the assembly site. This “modular” approach reduces the time required for construction on site, especially the heat-treatment of the precipitation-hardened nickel-based alloys which is very time-consuming. This expedites start-up of the power plant and production of power. The workshop is a more controlled environment than the assembly site, allowing the pre-constructed portions to be more carefully manufactured and facilitating quality control without additional cost. (App. Br. 13.) Moreover, as pointed out by Appellants, while the Examiner relies upon Andtbacka to describe the alternative use of welds or sleeve joints, this does not teach or suggest the steps (c) and (e) as recited in claim 1, especially since the sleeves of the invention are not used to join the two tube ends (Reply Br. 5–7); nor does the Examiner adequately explain how the prior art teaches or suggest these steps (id.). A preponderance of the evidence supports Appellants’ position that the Examiner’s reasoning has not adequately established that the applied Appeal 2013-001185 Application 12/584,607 5 prior art teaches or suggests the required order and content of pre-assembly steps in a workshop and connecting the sleeves with a take-up device on the assembly site as recited in Appellants’ claim 1. On the record before us, the Examiner has not shown that each and every limitation of the claim is either described or suggested by the prior art or would have been obvious based on the knowledge of the ordinary artisan. See In re Fine, 837 F.2d at 1074; see also In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). Accordingly, we reverse the rejections. ORDER It is ordered that the Examiner’s decision is reversed. REVERSED lp Copy with citationCopy as parenthetical citation