Ex Parte Lydic et al

Board of Patent Appeals and Interferences

Feb 4, 2003

08712369 (B.P.A.I. Feb. 4, 2003)

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for publication and is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TODD L. LYDIC and TAMO BIANCHI
____________
Appeal No. 2002-0694
Application No. 08/712,369
____________
ON BRIEF
____________
Before COHEN, NASE, and BAHR, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 19, 29 through 31, and 33. These claims constitute all
of the claims remaining in the application.
Appellants' invention pertains to a center sill for a
railroad car, a beam for use with the underframe of a vehicle,
and to a center sill for use with the underframe of a railroad
car. A basic understanding of the invention can be derived from
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Application No. 08/712,369
2
a reading of exemplary claims 1, 14, and 19, respective copies of
which appear in the "APPENDIX A" of the main brief (Paper No.
20).
As evidence of anticipation and obviousness, the examiner
has applied the documents listed below:
Slick 1,279,600 Sep. 24, 1918
Heap 4,254,714 Mar. 10, 1981
Meyer 5,157,883 Oct. 27, 1992
The following rejections are before us for review.
Claims 1, 3 through 5, 10 through 12, 14 through 17, 29, and
31 stand rejected under 35 U.S.C. § 102(b) as being anticipated
by Slick.
Claims 1, 3 through 5, 14 through 17, and 29 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Heap.
Claims 2, 13, and 30 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Slick.
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Application No. 08/712,369
1 In our evaluation of the applied prior art, we have
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the Board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
3
Claims 6 through 9, 18, 19, and 33 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Heap in view of
Meyer.
The full text of the examiner's rejections and response to
the argument presented by appellants appears in the answer (Paper
No. 21), while the complete statement of appellants' argument can
be found in the main and reply briefs (Paper Nos. 20 and 23).

OPINION
In reaching our conclusion on the anticipation and
obviousness issues raised in this appeal, this panel of the board
has carefully considered appellants' specification and claims,
the applied teachings,1 and the respective viewpoints of
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Application No. 08/712,369
4
appellants and the examiner. As a consequence of our review, we
make the determinations which follow.
The anticipation rejections
We do not sustain the rejection of claims 1, 3 through 5, 10
through 12, 14 through 17, 29, and 31 under 35 U.S.C. § 102(b) as
being anticipated by Slick.
Independent claims 1, 14, and 29 address at least the
following features. Claim 1 requires a cold formed center sill
being formed from a single flat member. Claim 14 specifies a
beam comprising a one piece cold formed steel member. Claim 29
sets forth a center sill comprising a steel member having an
elongated body with portions interconnected by cold hardened
curved portions.
Like the examiner, we readily appreciate the relevance of
the Slick patent to the now claimed subject matter. More
specifically, this panel of the Board perceives that one versed
in the center sill art would comprehend the center sill 3 of
Slick (Fig. 3) as being configured of one piece pressed or rolled
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Application No. 08/712,369
2 Appellants have attached a copy of an earlier submitted
Chapter 19 ("PLASTIC DEFORMATION OF STEEL") from a text ("The
Making, Shaping and Treating of Steel") which is indicated to be
the authoritative reference work in the steel industry (main
brief, page 6). The Chapter 19 documentation informs us of the
knowledge and level of skill in the art, at the time of
appellants' invention, as to hot and cold working processes
pertaining to steel.
5
steel. However, the Slick reference fails to disclose cold
forming or cold hardening, which we understand to be processes
which do render a resulting workpiece with distinguishable
characteristics that are discernible in the formed workpiece.2
Since the Slick reference, in and of itself, does not expressly
teach or inherently require cold forming or hardening in
fabricating the disclosed rolled steel center sill, the evidence
before us does not support an anticipation rejection of
appellants' claims. It is for this reason that the rejection
under 35 U.S.C. § 102(b) founded upon the Slick patent cannot be
sustained.
We do not sustain the rejection of claims 1, 3 through 5, 14
through 17, and 29 under 35 U.S.C. § 102(b) as being anticipated
by Heap.
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Simply stated, we find that the Heap patent is silent as to
the fabrication of the continuous center sill 20 (Fig. 3). Thus,
the teaching of Heap, lacking any disclosure of cold forming or
hardening, clearly cannot support the rejection of appellants'
claims as being anticipated thereby. For the foregoing reason,
we do not sustain the anticipation rejection based upon the Heap
patent.
The obviousness rejections
We do not sustain the rejection of claims 2, 13, and 30
under 35 U.S.C. § 103(a) as being unpatentable over Slick.
Dependent claims 2, 13, and 30 address specific yield
strength, thickness ranges, and strength and thickness,
respectively, of a center sill that is cold formed or cold
hardened. We earlier addressed the circumstance, however, that
the Slick reference, in and of itself, does not expressly teach
or inherently require cold forming or hardening in fabricating
the disclosed rolled steel center sill. Since the sole reference
relied upon lacks a teaching of cold forming or hardening a
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Application No. 08/712,369
3 The test of whether a reference is from a nonanalogous
art is first, whether it is within the field of the inventor's
endeavor, and second, if it is not, whether it is reasonably
pertinent to the particular problem with which the inventor was
involved. See In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174
(CCPA 1979). A reference is reasonably pertinent if, even though
it may be in a different field of endeavor, it is one which
(continued...)
7
center sill, parameters for a fabricated center sill resulting
from such processes, as now claimed, would not have been obvious.
We do not sustain the rejection of claims 6 through 9, 18,
19, and 33 under 35 U.S.C. § 103(a) as being unpatentable over
Heap in view of Meyer.
From our perspective, the applied evidence, collectively
considered, would not have been suggestive of the rejected
dependent claims at issue. First, the Heap document lacks a
disclosure of cold forming or hardening of a center sill or beam
and any suggestion therefor, as now claimed. Second, the Meyer
document does not overcome the deficiency of the Heap reference.
We do not share the examiner's view (answer, page 6) that
appellants' center sill or beam for use with the underside of a
vehicle is essentially in the same field as Meyer's structural
frame (metal wall stud).3
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Application No. 08/712,369
3(...continued)
because of the matter with which it deals, logically would have
commended itself to an inventor's attention in considering his
problem. In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061
(Fed. Cir. 1992).
8
REMAND TO THE EXAMINER
We remand this application to the examiner to consider a
rejection of appellants' claims based upon the combined teachings
of Slick and the Chapter 19 documentation of record. The
examiner should determine whether it would have been obvious to
one having ordinary skill in the art, at the time appellants'
invention was made, to select cold rolling from among the known
hot rolling and cold rolling method alternatives (Chapter 19
documentation) when fabricating the rolled steel center sill of
Slick to achieve the desired, known, and expected advantages of
the cold rolling method that would be reflected in the
characteristics of the resulting center sill. As to the chosen
particular parameters and configuration for a cold worked center
sill (dependent claims), the examiner should determine whether
these features would have been obvious to one having ordinary
skill in the center sill and beam art, relying upon relevant and
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reasonably pertinent evidence and/or a sound technical line of
reasoning.

In summary, this panel of the board has not sustained any of
the rejections on appeal. Further, we have remanded the
application to the examiner to consider the matter discussed
above.
The decision of the examiner is reversed.
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Application No. 08/712,369
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REVERSED AND REMANDED
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IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
ICC/lbg
Appeal No. 2002-0694
Application No. 08/712,369
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DAVID C. HANSON
700 KOPPERS BUILDING
436 SEVENTH AVENUE
PITTSBURGH, PA 15219-1818