Ex Parte Karner

Board of Patent Appeals and Interferences

Jun 22, 2004

09363038 (B.P.A.I. Jun. 22, 2004)

The opinion in support of the decision being entered today
was not written for publication and is not binding
precedent of the Board
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILHELM KARNER
____________
Appeal No. 2004-0759
Application No. 09/363,038
____________
HEARD: May 20, 2004
____________
Before GARRIS, WALTZ, and KRATZ, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal to
allow claims 14-18 and 22-27, which are all of the claims pending
in this application.
BACKGROUND
Appellant's invention relates to an apparatus for producing
electrolytically coated steel and includes a pickling tank and an
electro-coating tank positioned downstream therefrom. A further
understanding of the invention can be derived from a reading of
exemplary claims 14 and 18, which are reproduced below.
Appeal No. 2004-0759
Application No. 09/363,038
Page 2
14. An apparatus for producing an electrolytically coated
hot-rolled steel substrate, said apparatus comprising:
a pickling tank having a feed device for feeding a hot-
rolled steel substrate into said pickling tank for pickling said
steel substrate, and a discharge for discharging a pickling steel
substrate; and
an electro-coating tank positioned immediately downstream of
said pickling tank to receive said pickled steel substrate
directly from said pickling tank substantially without any
intermediate processing stages between said pickling tank and
said electro-coating tank, said electro-coating tank containing
an electrolyte solution and electrodes for producing an electric
current in the solution to electro-coat said pickled steel
substrate.
18. The apparatus according to claim 14, further comprising
a conduit from said electro-coating tank to said pickling tank
for directing spent electrolyte solution to said pickling tank.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Oshima et al. (Oshima) 5,236,574 Aug. 17, 1993
Ishibashi et al. (Ishibashi) 5,766,438 Jun. 16, 1998
Claims 14-16, 22 and 23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Oshima. Claims 17, 18
and 24-27 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oshima in view of Ishibashi.
Appeal No. 2004-0759
Application No. 09/363,038
Page 3
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant in the briefs
and the examiner in the answer, including the rejection
incorporated therein. In so doing, we find ourselves in
agreement with the examiner with respect to the first stated
rejection. Thus, we affirm the § 103(a) rejection of claims
14-16, 22 and 23 as being obvious over Oshima for reasons as set
forth in the answer and further discussed below. However, we
reverse the examiner’s § 103(a) rejection of claims 17, 18 and
24-27. Our reasoning follows.
Rejection of claims 14-16, 22 and 23
Appellant maintains that each of the claims are separately
patentable. Accordingly, to the extent that separate arguments
have been presented and maintained for each of the rejected
claims consistent with 37 CFR § 1.192(c)(7 and 8)(2001), we shall
treat the claims separately.
Independent claim 14 is drawn to an apparatus that includes
at least a pickling tank and an electro-coating tank located
Appeal No. 2004-0759
Application No. 09/363,038
Page 4
downstream from the pickling tank. As reasonably determined by
the examiner, Oshima, like appellant, discloses steel treating
apparatus including: (1) a tank (9, fig. 1) that is useful for
treating steel with acid to remove a surface oxide therefrom and
corresponds to appellant’s pickling tank; and (2) a downstream
electroplating tank (14, fig. 1) that corresponds with the
claimed electro-coating tank.
Appellant maintains that Claim 14 provides for a hot rolled
steel treating apparatus and is constructed without any
intermediate processing stages between the pickling and electro-
coating tanks and such an equipment arrangement is not suggested
by Oshima. We disagree.
At the outset, we note that whether the claimed apparatus is
used for treating cold or hot rolled steel is immaterial since
the appealed claims are drawn to an apparatus, not a method.
Thus, the material that may be acted upon by the structure does
not serve to distinguish the claimed apparatus from the applied
prior art. Moreover, the tank (9, fig. 1) of Oshima is taught as
being useful for treating steel with an acid as disclosed at
column 5, lines 58-60 and column 6, lines 17-21 of the patent.
We are not persuaded by appellant’s argument that the
language of claim 14 concerning the positioning of an electro-
Appeal No. 2004-0759
Application No. 09/363,038
Page 5
coating tank immediately downstream of the pickling tank excludes
any intermediate processing stages as appellant alleges to be
required by Oshima. This is so because that tank positioning
limitation is qualified by the language “substantially without
any intermediate processing stages” and claim 14 employs the open
“comprising” term.
During patent prosecution, claims are to be given their
broadest reasonable interpretation consistent with the
specification, as the claim language would have been read by one
of ordinary skill in the art in view of the specification and
prior art. See In re Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989). It is proper to use the specification to
assist in interpreting the claims. See In re Morris, 127 F.3d
1048, 1053-56, 44 USPQ2d 1023, 1027-30 (Fed. Cir. 1997). As
illustrated in appellant’s drawing figure 1 and as described in
the specification in the paragraph bridging pages 6 and 7
thereof, another optional stage (tank 34) and associated
equipment can be inserted between a second pickling tank (18) and
an electro-coating station (18) which stage may be used for
rinsing the steel. Also, see appealed claim 16, which depends
from claim 14. Given that disclosure in the specification and
giving the claim term “substantially” the broadest reasonable
Appeal No. 2004-0759
Application No. 09/363,038
Page 6
construction consistent therewith, it is clear that appealed
claim 14 is not so narrow in scope as to preclude the presence of
other treating equipment between the pickling tank and the
electro-coating tank as argued.
Furthermore, as pointed out by the examiner in the answer in
considerable detail, Oshima teaches that the location of the
post-galvanizing treating (pickling) tank (9, fig. 1) is not
critical and the location of a skin pass rolling mill (11) and
leveller (12) between the tank (9) and electroplating tank (14)
is disclosed as optional in the patent. See, e.g., column 5,
lines 1-18 and column 6, lines 43 and 44 of Oshima.
Furthermore, the pretreatment tank (13) and tank (10) are washing
facilities which are not precluded by the appealed claim 14
language for reasons discussed above. Alternatively, it would
have been prima facie obvious to one of ordinary skill in the art
to eliminate those washing facilities together with the optional
rolling mill (11), leveller (12) and associated bridle rolls (19)
of Oshima, as desired, to avoid the additional expense associated
with such processing because Oshima makes manifest that the only
essential equipment that is required downstream of the
galvanizing apparatus is the surface treatment apparatus (tank 9,
fig. 1) and the electroplating apparatus (tank 14, fig. 1). See,
Appeal No. 2004-0759
Application No. 09/363,038
Page 7
e.g., column 3, lines 47-58 of Oshima. One of ordinary skill in
the art would have desired to omit the optional equipment because
doing so would reduce the cost of the apparatus. See In re
Thompson, 545 F.2d 1290, 1294, 192 USPQ 275, 277 (CCPA 1976);
In re Clinton, 527 F.2d 1226, 1229, 188 USPQ 365, 367 (CCPA
1976).
Concerning dependent claim 15, appellant maintains that
Oshima does not teach the use of a continuous feed device as
required. We disagree because Oshima (column 2, lines 60-68
and column 3, lines 47-58) expressly states that providing a
continuous plating line operation is an object of their disclosed
apparatus and consequently the illustrated feed rollers depicted
in figure 1 of Oshima would have been understood by one of
ordinary skill in the art as being constructed for continuous
operation. Concerning claim 16, the recited rinse tank reads on
the tank (10, fig. 1) and/or pretreatment tank (13, fig. 1) of
Oshima. Appellant’s argument concerning the immediateness of the
downstream location of the equipment is not found persuasive for
reasons discussed above and in the answer. With regard to
dependent claim 17 and the recited pickling acid limitation, we
note that appellant’s counsel withdrew that argument at the oral
hearing when questioned as to why some of the tank acids
Appeal No. 2004-0759
Application No. 09/363,038
Page 8
1 See column 6, lines 17-21 of Oshima. We further observe
that Ishibashi discloses hydrofluoric acid, one of Oshima’s
described acids, as a pickling liquor component.
2 See, e.g., Kirk-Othmer, Encyclopedia of Chemical
Technology, 3rd Ed., Vol. 8, p. 833 (copy attached).
disclosed by Oshima would not meet that limitation.1 With
respect to claim 22, Oshima describes an electroplating tank,
which would have fairly suggested the use of an anode as part of
such a structure to one of ordinary skill in the art.2
Consequently, appellant’s arguments are not persuasive. It
follows that we will sustain the examiner’s rejection of claims
14-16, 22 and 23.
Rejection of claims 17, 18 and 24-27
Each of claims 17, 18 and 24-27 require conduits connecting
the electro-coating tank and the pickling tank directly or via a
metal dissolving tank. The examiner has not fairly explained how
the teachings of Ishibashi with respect to an electrolyzer that
is disclosed as being useful for treating spent pickling liquor
would have suggested conduit connection(s) between the
electroplating tank (14) and surface treatment (pickling) tank
(9) of Oshima. In this regard, the electrolyzer of Ishibashi as
used in treating spent pickling liquor for recirculation to the
Appeal No. 2004-0759
Application No. 09/363,038
Page 9
pickling tank has not been established as an electroplating
device or equivalent. It follows that we will not sustain the
examiner’s second rejection on this record.
CONCLUSION
The decision of the examiner to reject claims 14-16, 22 and
23 under 35 U.S.C. § 103(a) as being unpatentable over Oshima is
affirmed. The decision of the examiner to reject claims 17, 18
and 24-27 under 35 U.S.C. § 103(a) as being unpatentable over
Oshima in view of Ishibashi is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Bradley R. Garris )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Thomas A. Waltz ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
Peter F. Kratz )
Administrative Patent Judge )
Appeal No. 2004-0759
Application No. 09/363,038
Page 10
Roylance, Abrams, Berdo & Goodman, LLP
1300 19th Street, N.W.
Suite 600
Washington, DC 10036-2680
PFK/cam