Ex Parte Lorenz

Board of Patent Appeals and Interferences

Dec 10, 2008

11118359 (B.P.A.I. Dec. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte RAINER LORENZ
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Appeal 2008-2503
Application 11/118,359
Technology Center 1700
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Decided: December 10, 2008
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Before CHUNG K. PAK, THOMAS A. WALTZ, and
PETER F. KRATZ, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests rehearing of our Decision of June 19, 2008
(“Decision”) wherein we affirmed the Examiner's rejection of claims 21
through 30 under 35 U.S.C. § 103(a) as unpatentable over Hagenmeyer and
Kluczynski, and the rejection of claims 21, 22, and 24 through 30 under
35 U.S.C. § 103(a) as unpatentable over Cage and Kluczynski.
Appellant contends that the Board erred in finding at page 5 of the
Decision that:
Appeal 2008-2503
Application 11/118,359
Hagenmeyer and Cage, by virtue of not specifying the brazing
compositions useful for their soldering operation, leave it to one
of ordinary skill in the art to select appropriate conventional
brazing compositions useful for soldering titanium and stainless
steel parts… [See Request 1.]

Specifically, Appellant argues that the Board erred by improperly inferring
the above finding from the disclosures of Hagenmeyer and Cage using an
incorrect legal standard (Request 1-2).
We have reviewed our Decision in light of the arguments presented by
Appellant in the Request. However, we are not persuaded that our Decision
was in error.
As found at pages 4 and 5 of Decision, Appellant does not challenge
that both Hagenmeyer and Cage teach joining conventional titanium and
stainless steel parts of a Coriolis mass flow meter by brazing them (i.e.,
soldering them). Thus, it can be reasonably inferred from both Hagenmeyer
and Cage that some sort of conventional brazing (soldering) compositions
well within the ambit of one of ordinary skill in the art are used in joining
the conventional titanium and stainless steel parts of a Coriolis mass flow
meter since the brazing (soldering), by definition, involves melting a brazing
(hard solder) composition between two pieces of metal to join them together.
See Decision, page 4, footnote 2. Thus, we find no reversible error in
finding at page 5 of Decision that:
Hagenmeyer and Cage, by virtue of not specifying the brazing
compositions useful for their soldering operation, leave it to one
of ordinary skill in the art to select appropriate conventional
brazing compositions useful for soldering titanium and stainless
steel parts…

No incorrect or new legal standard was applied in making this finding. As
our reviewing court has stated, “in considering the disclosure of a reference,
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Application 11/118,359
it is proper to take into account not only specific teachings of the reference
but also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968);
In re Hoeschele, 406 F.2d 1403, 1406-407(CCPA 1969); see also KSR Int’l
Co., v. Teleflex Inc., 127 S. Ct. 1727, 1740-41 (2007) (“[A]nalysis [of
whether the subject matter of a claim would have been 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”). To do
otherwise is to presume “stupidity” on the part of one of ordinary skill in the
art. See In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985) (the law presumes
skill on the part of the artisan rather than “stupidity”).
Even if we have improperly inferred the above finding, the outcome
would not be altered. As indicated at pages 5 and 6 of Decision, Kluczynski
teaches a brazing alloy containing silver, palladium, and copper useful for
brazing (soldering) low carbon stainless steel and titanium metals.
Moreover, Appellant does not contest our finding at page 6 of Decision that
“Appellant acknowledges at page 1 of the Specification that such [claimed]
brazing alloy is commercially available and is known to be useful for
brazing components made of stainless steel or possibly titanium.” (Compare
Decision 6 with Request 1-2). Thus, there is no reversible error in our
determination at page 6 of the Decision that:
[O]ne of ordinary skill in the art would have been led to
appropriate conventional brazing compositions, such as a
[commercially available] brazing alloy containing silver,
palladium, and copper, with a reasonable expectation of
successfully brazing (soldering) titanium and stainless steel
parts of Hagenmeyer’s or Cage’s Coriolis mass flow meter.
KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. at 1740 (quoting
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Appeal 2008-2503
Application 11/118,359
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)) (“[W]hen a
patent ‘simply arranges old elements with each performing the
same function it had been known to perform’ and yields no
more than one would expect from such an arrangement, the
combination is obvious.”)

In view of the foregoing, we have granted Appellant’s Request to the
extent that we have reconsidered our Decision, but we deny Appellant’s
Request to make any change therein.
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).
DENIED

cam

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