Ex Parte Hohenbichler et al

Board of Patent Appeals and Interferences

Sep 26, 2007

11203777 (B.P.A.I. Sep. 26, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GERALD HOHENBICHLER
and GERALD ECKERSTORFER
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Appeal 2007-3581
Application 11/203,777
Technology Center 1700
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Decided: September 26, 2007
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Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 22-43, which are the only
claims pending in this application. We have jurisdiction pursuant to
35 U.S.C. § 6(b).
According to Appellants, the invention is directed to an apparatus for
continuous production of a rolled metal strip comprising a strip-casting
Appeal 2007-3581
Application 11/203,777

device, at least one rolling stand, and a strip-diverting device along the path
of the metal strip between the strip-casting device and the rolling stand,
spaced at a distance of 1.0 to 10.0 times the width of the strip upstream of
the rolling stand (Br. 2). Independent claim 22 is illustrative of the invention
and a copy of this claim is reproduced below:
22. Apparatus for continuous production of a rolled metal strip
comprising:
a strip-casting device for producing a cast metal strip having an initial
strip thickness when produced of less than 20 mm, and the strip passing
from the strip casting device along a path;
at least one rolling stand downstream of the strip-casting device along
the path and the rolling stand is adapted for in-line roll deforming of the cast,
undivided metal strip;
a strip-diverting device along the path of the metal strip between the
strip-casting device and the rolling stand, wherein the strip-diverting device
is spaced at a distance of 1.0 times to 10.0 times the width of the strip
upstream of the rolling stand.
The Examiner has relied on the following prior art references as
evidence of obviousness:
Takahara (JP ‘743), as translated JP 63-157743 Jun. 30, 1988
Hasegawa (JP ‘359), as translated JP 02-070359 Mar. 09, 1990
Ziegelaar (WO ‘612) WO 01/58612 A1 Aug. 16, 2001

ISSUES ON APPEAL
Claims 22-43 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over WO ‘612 in view of either JP ‘359 or JP ‘743 (Answer 3).
Appellants contend that there is no disclosure in any applied reference
as to the distance between the strip-diverting device and the rolling stand
(Br. 3).
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Application 11/203,777

Appellants contend that even if the references are properly combined,
they do not teach every feature of claim 22 on appeal (Br. 4). Appellants
contend that the Examiner assumes the adjustable dams of the prior art have
an infinite range of widths to satisfy the claim requirement, but the Examiner
has not provided any evidentiary basis for this assumption (Br. 3-4; Reply
Br. 2).1
The Examiner contends that WO ‘612 shows every limitation of claim
22 on appeal but is silent with regard to the distance requirement (Answer
3). The Examiner further contends that either JP ‘743 or JP ‘359 shows that
the width of the strip can be easily controlled, thus resulting in widths where
the strip-casting device would be within the distance from the rolling stand
as specified in claim 22 on appeal (Answer 3-4).
Accordingly, the issue presented from the record in this appeal is as
follows: Would the distance between the strip-diverting device and the
rolling stand have been obvious to one of ordinary skill in this art in view of
the applied prior art evidence?
We determine that a prima facie case of obviousness has been
established, which prima facie case has not been adequately rebutted by
Appellants’ arguments. Therefore, we AFFIRM the sole ground of rejection
presented in this appeal essentially for the reasons stated in the Answer, as
well as those reasons set forth below.

1 We note that Appellants, in addition to the arguments for the patentability
of claim 22, present specific arguments regarding claims 25, 27, 30-32, and
33 (Br. 4-7; Reply Br. 2-4). Accordingly, we consider these claims
separately in our remarks below.
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Appeal 2007-3581
Application 11/203,777

OPINION
We determine the following factual findings from the record
presented in this appeal:
(1) WO ‘612 discloses a strip-casting device for producing a cast
metal strip of various thicknesses, a rolling stand downstream of the strip-
casting device used for in-line deforming of the cast, undivided metal strip,
and a strip-diverting device (steering device 14) between the strip-casting
device and the rolling stand (Abstract; 1:9-14; 4:4-18; 5:6-25; and 6:20-33);
(2) WO ‘612 teaches the use of side dams to confine the casting pool
and thus determine the width of the cast metal strip (1:22-24 and 7:3-9);
(3) WO ‘612 teaches the problem of “wandering” of the cast metal
strip along its processing path, and the need for control of the direction and
the tension of the cast metal strip along its path (Abstract; 1:29-34; 2:1-4;
2:18-23; 3:9-10; 3:15-21; 4:4-18; 8:23-34; 9:5-12; 10:16-11:12; and 12:28-
33);
(4) WO ‘612 exemplifies the strip-diverting device in relation to the
rolling stand as about four widths of the cast metal strip (see Fig. 4); and
(5) JP ‘359 and JP ‘743 both teach the use of side dams at the ends of
the rolls so that the width of the cast metal strip may be varied (Answer 3;
JP ‘359, 2 (last four lines); 4:1-2; 7 (second full paragraph); 8 (first full
paragraph); 10 (last three lines); and Fig. 1; JP ‘743, 4 (second full
paragraph); 5 (first paragraph); 7 (last full paragraph); and 8 (first three
paragraphs).
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
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differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. See Graham v.
John Deere of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
“[A]nalysis [of whether the subject matter of a claim is obvious] need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex, Inc., 127 S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007),
quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir.
2006). See also In re Hoeschele, 406 F.2d 1403, 1406-07, 160 USPQ 809,
811-12 (CCPA 1969) (“[I]t is proper to take into account not only specific
teachings of the references but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom…”). Although patent
drawings need not be drawn to scale, this does not mean that relative
proportions shown in the drawings should be disregarded. See In re Mraz,
455 F.2d 1069, 1072, 173 USPQ 25, 27 (CCPA 1972).
Applying the preceding legal principles to the factual findings of
record in this appeal, we determine that a prima facie case of obviousness
has been established by the reference evidence, which prima facie case has
not been adequately rebutted by Appellants’ arguments. As shown by
factual finding (1) listed above, and not contested by Appellants, we
determine that WO ‘612 discloses the three required devices arranged in the
same order as required by claim 22 on appeal. As shown by factual finding
(2) listed above, we determine that WO ‘612 teaches the use of side dams.
Therefore, we determine that one of ordinary skill in this art would have
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employed any side dams, such as those of the secondary references, in the
process and apparatus of WO ‘612, to produce cast metal strips of any width
(see factual finding (5) listed above). We also determine that one of
ordinary skill in this art would have been aware of the problem of
“wandering,” and by routine experimentation located the strip-diverting
device a sufficient distance away from the rolling mill to control the position
and tension of the cast metal strip as it moved along the process path (see
factual finding (3) listed above). This determination is reinforced by the
drawing of WO ‘612, which shows the two devices approximately four strip
widths apart, well within the large range required by claim 22 on appeal (see
factual finding 4 listed above). We note that Appellants have not presented
any evidence of criticality for the claimed range. See In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
With regard to Appellants’ arguments concerning claim 25 (Br. 4),
this argument is answered by our remarks above. With regard to the
argument concerning claim 27 (Br. 4; Reply Br. 2), we note that control of
the tension of the cast metal strip has been suggested by WO ‘612 (see
factual finding (3) listed above). Accordingly, absent a showing of
criticality, we determine that setting of a tension for the cast metal strip
would have been well within the ordinary skill in this art. With regard to
Appellants’ arguments concerning claims 30-32 (Br. 5; Reply Br. 3), we
refer to and adopt the position of the Examiner (Answer 5). We note that
this feature has been suggested by WO ‘612 (12:28-37). With regard to the
argument concerning claim 33 (Br. 6-7; Reply Br. 3), we determine that
adjusting the location of the strip-diverting device would have been within
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the ordinary skill in this art to control the tension and eliminate “wandering”
as desired by WO ‘612 (see factual finding (3) listed above).
For the foregoing reasons and those stated in the Answer, we affirm
the sole ground of rejection presented in this appeal. Thus, we affirm the
decision of the Examiner.
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).
AFFIRMED

clj

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