Ex Parte K¿stnerDownload PDFPatent Trial and Appeal BoardNov 7, 201713009080 (P.T.A.B. Nov. 7, 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. 13/009,080 01/19/2011 Stefan K^stner 510353 1074 53609 7590 11/09/2017 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER COZART, JERMIE E ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 11/09/2017 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 STEPHAN KASTNER Appeal 2016-006296 Application 13/009,080 Technology Center 3700 Before ALLEN R. MACDONALD, ROBERT E. NAPPI, and ERIC S. FRAHM, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-006296 Application 13/009,080 STATEMENT OF CASE1 Introduction Appellant seeks review under 35 U.S.C. § 134(a) of a Final Rejection of claims 1—4 and 6—13. Claims 5 and 14—19 have been cancelled. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We affirm. Appellant’s Disclosed Invention Appellant discloses a method for producing an aluminum composite material (Title; Spec. Tflf 2, 3, 8; Abs.). The material is produced by a process which includes sawing cladding layers (Figs. 1 and 2, cladding sheets 2-4) of an aluminum ingot (Fig. 2, ingot 5) at different thicknesses in a longitudinal direction of the ingot using a band saw (Fig. 2, 6). Spec. 17, 18; Claim 1. Exemplary Claim An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below, with emphasis added to the disputed portions of the claims. 1. A method tor producing an aluminum composite material, comprising the steps of: providing a first ingot from a first aluminum material; sawing a first cladding layer of a first specified thickness suitable for use as a cladding layer from said first ingot made from said first aluminum material in a longitudinal direction of the first ingot; sawing a second cladding layer of a second specified thickness different from the first thickness suitable for use as a 1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.” Filed October 12, 2015), Appellant’s Declaration (“Deck” filed January 27, 2012), Reply Brief (“Reply Br.” filed June 7, 2016), and the Examiner’s Answer (“Ans.,” mailed April 7, 2016). 2 Appeal 2016-006296 Application 13/009,080 cladding layer from said first ingot made from said first aluminum material in said longitudinal direction of the first ingot; providing a second ingot from a second aluminum material; placing at least one of the first cladding layer and the second cladding layer on a side of said second ingot made from said second aluminum material; and rolling each placed cladding layer and said second ingot, said rolling comprising several roll passes thereby producing said aluminum composite material. Examiner’s Rejection Claims 1—4 and 6—13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Gaul (US 7,227,134 B2) and Hu (US). Final Act. 2—7; Ans. 2—7. Related Appeals As noted by Appellant (App. Br. 2), this application is a continuation of U.S. Patent Application No. 10/019,706, which resulted in Appeal No. 2009-013038 decided on November, 19, 2010 (hereinafter, “Decision”). In the related appeal, a PTAB panel affirmed the Examiner’s obviousness rejection over the same combination of Gaul and Hu of claims directed to a method for producing a composite material from aluminum ingots which were broader than the claims in the instant application, and also included the disputed limitations of sawing a cladding layer in a longitudinal direction. The following findings and conclusions made in the related case are pertinent to the instant case on appeal: “Hu teaches a method of using a band saw to longitudinally cut a metal ingot (Hu Abst.).” Decision 3. “Hu states that sawing metals provides for lower costs, lower material 3 Appeal 2016-006296 Application 13/009,080 consumption and reduced contamination as compared to existing techniques such as rolling metals (Hu Abst.).” Decision 3. “Gaul teaches forming a composite from an aluminum plate (Gaul 3:47-50).” Decision 5. “[WJhile Hu is specifically directed to ‘steel,’ [Appellant] has failed to demonstrate that one skilled in the art would fail to understand that the advantages identified in Hu, with respect to sawing, would not also apply to other metals, such as aluminum. Accordingly, we hold that [Appellant’s] claims are directed to the use of known composite forming techniques (cladding and sawing) for their known purposes to achieve a predictable result (forming a composite).” Decision 5—6. ISSUES Appellant argues patentability for claims 1—4 and 6—13 as a group and not individually. Claims 1, 8, and 12 are independent and each set forth the subject matter of producing a composite material from aluminum ingots including sawing a cladding layer in a longitudinal direction. We consider claim 1 to be representative of the group of claims rejected under 35 U.S.C. § 103(a) over Gaul and Hu (claims 1—4 and 6—13) pursuant to our authority under 37 C.F.R. § 41.37(c)(l)(iv). Accordingly, our analysis herein will primarily address representative claim 1. Based on Appellant’s arguments, the following issues are presented: (1) Did the Examiner err in rejecting claims 1—4 and 6—13 under 35 U.S.C. § 103(a) as unpatentable over Gaul and Hu because (a) Gaul fails to teach a method for producing a composite material from aluminum ingots including providing two liners/cladding layers having different thicknesses; 4 Appeal 2016-006296 Application 13/009,080 and therefore, (b) the combination of Gaul and Hu fails to teach or suggest all of the limitations recited in representative claim 1? (2) Is Appellant’s Declaration sufficient to overcome the obviousness rejection over Gaul and Hu? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s contentions in the Appeal Brief (App. Br. 6—12), the Declaration (Decl. ]Hf 1—24), and the Reply Brief (Reply Br. 6—14) that the Examiner has erred. We disagree with Appellant’s arguments. We adopt as our own (1) the findings by the Examiner in the action from which this appeal is taken (Final Act. 2—7; Ans. 2—7), and (2) the reasons set forth by the Examiner in the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 7—11). We highlight and amplify certain teachings and suggestions of Gaul and Hu as follows. Appellant’s arguments (App. Br. 6—8; Reply Br. 7—9) that Gaul only discloses a single liner with one same thickness, as opposed to multiple liners with different thicknesses as claimed (see e.g., claim 1 reciting first and second cladding layers having different specified thicknesses), are not persuasive. Although Appellant points to Gaul’s description of alternate embodiments in which (i) only one liner is used (col. 3,11. 70—73); and multiple liners are produced using the same procedure (col. 5,1. 32) to form layers of the same thickness (col. 2,11. 31—33; col. 4,11. 73—75), Gaul discloses other embodiments, including the preferred embodiment, which forms multiple cladding layers with different thicknesses (see e.g., col. 2,11. 5 Appeal 2016-006296 Application 13/009,080 15—21 and 66—69; col. 6,11. 4—7 (claim 1) and 25—29 (claim 4)). Accordingly, Appellant’s contention, that modifying Gaul with Hu would render Gaul unsatisfactory for its intended purpose of using one same thickness for all liners that are cut (App. Br. 7—9), is unpersuasive in light of Gaul’s explicit teaching that plural metal layers having different thicknesses be used to produce composite sheets of material (Gaul col. 2,11. 15—21 and 66—68; col. 6,11. 4—7 (claim 1) and 25—29 (claim 4)). Thus, we agree with the Examiner’s determination that “modifying Gaul in view of Hu would not render Gaul unsatisfactory in its intended purpose” (Ans. 7). Appellant’s contentions (App. Br. 11; Reply Br. 11—13) that Gaul, and thus the combination of Gaul and Hu, requires a rolling machine to make composite stock and is therefore contrary to the benefits of Hu (of eliminating the cost of a rolling machine since Hu uses cogging instead of rolling) are unpersuasive of Examiner error in reaching the conclusion that it would have been obvious to modify Gaul with Hu in order to provide (i) “band sawed layers having the desired dimensions such that said sawing reduces material consumption;” and (ii) “increased working efficiency” (Final Act. 3; Ans. 3). We agree with the Examiner (Ans. 9—11) that reducing material consumption by using Hu’s sawing technique is a different problem from reducing the overall cost of the equipment used to produce the composite material, and Hu’s solution of the material consumption problem is not necessarily incompatible with the retention of Gaul’s rolling machine. One of ordinary skill in the art would understand that modifying Gaul’s method with Hu’s reduction of material consumption/costs and/or increase in efficiency by cutting layers at different thicknesses using a metal band saw may (i) still reduce the overall cost of manufacturing versus other 6 Appeal 2016-006296 Application 13/009,080 methods (see Ans. 9-11); (ii) override any additional costs caused by added equipment (i.e., having a rolling machine and a metal band saw); and/or (iii) be a more important factor for a composite material manufacturer depending on product demand. Declaration We have considered Appellant’s Declaration in assessing the obviousness of Appellants’ claimed invention. See Ruiz v. A.B. Chance Co., 234 F.3d 654, 667 (Fed. Cir. 2000) (evidence of secondary considerations must be considered in determining obviousness if present); accord Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538 (Fed. Cir. 1983). The declarant’s statements and contentions made in the Declaration that (i) “one would not choose to combine a steel layer of Hu with the teachings of Gaul to form a composite material because there is no expectation of success” (Decl. 120); and (ii) “it is not obvious to form an aluminum cladding layer by sawing it from an aluminum ingot” (Decl. 121), are not persuasive for the reasons provided by the Examiner (Final Act. 3; Ans. 3, 9—11), as well as the previous PTAB panel (see Decision 4—6) (concluding “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to form an aluminum cladding layer by sawing it from an ingot when it was known in the art to saw metal” (see Decision 6)), and as further explained below. Appellant argues (App. Br. 8—9) there is no reasonable expectation of success in the combination of Gaul and Hu due to the differences in the working materials of Gaul (steel) and Hu (aluminum) based on two contentions: (1) Gaul teaches processes used for heavy metals are not easily applied to light metals (App. Br. 9 citing Gaul col. 2,11. 13—14); and (2) the 7 Appeal 2016-006296 Application 13/009,080 Declaration shows that steel cutting methodologies cannot be applied to aluminum (App. Br. 9). Although Gaul discloses there may be difficulties in welding liners composed of light metals to ingots (Gaul col. 2,11. 9—14), Gaul does not describe the application of welding or other processes to aluminum as being impossible. Moreover, Gaul’s method broadly applies to all metals, as made clear by the Title (“Method of Making Composite Stock”); column 1, lines 15—17 (“methods of producing composite metal stock”); and claims 1^4 (col. 6,11. 4-44) (methods of making composite sheets from layers of metals (claims 1 and 4), such as magnesium metals (claim 2) or aluminum metals (claim 3)). Because Gaul discloses operating on aluminum as well as other metals (see claim 3 at col. 6,11. 23—24), Gaul teaches or suggests that, although not easily done, the disclosed methods for producing composite materials from ingots may be applied to aluminum. Thus, although we agree with Appellant that Gaul teaches that operations/processes used for heavy metals are not easily applied to light metals, this fact does not preclude the desirability of modifying Gaul’s composite material production method with Hu’s longitudinal sawing technique to cut aluminum cladding layers. Indeed, we agree with the Examiner (see Final Act. 3; Ans. 3, 10, 11) that the motivation for making the combination of Gaul and Hu would be (i) to reduce the amount of material consumed when cutting an ingot; (ii) widen the range of applications available; and (iii) to increase working efficiency, by cutting layers at different thicknesses using a metal band saw. In this light, Appellant’s contention (App. Br. 8—9) that there is no reasonable expectation of success in the combination of Gaul and Hu is not persuasive. 8 Appeal 2016-006296 Application 13/009,080 Appellant’s arguments (App. Br. 9; Reply Br. 10-11) that the Declaration is demonstrative evidence that steel saw cutting techniques (such as the saw cutting techniques described by Hu) cannot be applied to aluminum (as in Gaul) are unpersuasive for at least the following three reasons. First, in paragraph 6 of the Declaration, the declarant only claims to be qualified “as someone skilled in the field of producing aluminum sheet and composite,” and not sheets/composites made of steel, magnesium, or any other metal, including metals heavier than aluminum. Second, although the Declaration (see Decl. ]Hf 18, 20) is persuasive evidence to show that the physical properties (e.g., melting point, malleability and/or hardness, etc.) of heavy metals like steel and light metals like aluminum are different, this fact does not prove that one of ordinary skill in the art of metal working and composite material production would think it impossible to apply the saw cutting technique of Hu to aluminum materials. Indeed, Hu discloses (Abst.) using a metal band saw capable of multi-position longitudinal cutting of metal that predictably would be able to cut different metals at different thicknesses using different blades (depending on the metal operated on). Knowing that aluminum and steel have different properties, one of ordinary skill in the art of metal working and composite material production would predictably use a different cutting blade/saw and cut at different thicknesses based on the type of metal to be cut (e.g., aluminum or light metals as in Gaul, or steel or heavy metals as in Gaul and/or Hu). Third, Gaul discloses operating on aluminum as well as other metals (see claim 3 at col. 6,11. 23—24). Thus, “Gaul teaches forming a composite 9 Appeal 2016-006296 Application 13/009,080 from an aluminum plate (Gaul 3:47—50)” (Decision 5); and “while Hu is specifically directed to ‘steel,’ [Appellant] has failed to demonstrate that one skilled in the art would fail to understand that the advantages identified in Hu, with respect to sawing, would not also apply to other metals, such as aluminum” (Decision 5—6). Summary On the record before us, Appellant has not sufficiently shown that Gaul fails to teach or suggest a method for producing an aluminum composite material, as recited in representative claim 1. Furthermore, the Declaration is not sufficient to overcome the Examiner’s obviousness rejection over the combination of Gaul and Hu. The evidence of obviousness presented by the Examiner far outweighs Appellant’s limited showing of any lack of motivation to apply Hu’s metal sawing technique to Gaul’s aluminum cladding layers due to differences in the properties of aluminum and steel materials. We agree with the Examiner’s reasoning (see Final Act. 3; Ans. 3, 10, 11) that the motivation for making the combination would be (i) to reduce the amount of material consumed; (ii) widen the range of applications; and (iii) to increase working efficiency. Accordingly, we sustain the rejection of representative claim 1, and claims 2—\ and 6—13 grouped therewith. CONCLUSIONS (1) The Examiner has not erred in rejecting claims 1—4 and 6—13 under 35 U.S.C. § 103(a) as unpatentable over Gaul and Hu because (a) Gaul teaches a method for producing a composite material from aluminum ingots 10 Appeal 2016-006296 Application 13/009,080 including providing two liners/cladding layers having different thicknesses; (b) Hu teaches sawing cladding layers in a longitudinal direction; and therefore, (c) the combination of Gaul and Hu teaches or suggests all of the limitations recited in representative claim 1. (2) The Declaration is insufficient to overcome the obviousness rejection of claims 1—4 and 6—13. DECISION The Examiner’s decision to reject claims 1—4 and 6—13 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation