Ex Parte NOÉ

Patent Trial and Appeal Board

Dec 10, 2018

14056372 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/056,372 10/17/2013
535 7590 12/12/2018
KFROSS PC
311 E York St
Savannah, GA 31401-3814
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Andreas NOE
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
30612 7968
EXAMINER
KASTLER, SCOTT R
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
savannah@kfrpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS NOE
Appeal2017-000321
Application 14/056,372
Technology Center 1700
Before LINDA M. GAUDETTE, JAMES C. HOUSEL, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-13. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2017-000321
Application 14/056,372
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. An apparatus for continuously treating metal strip
of aluminum, an aluminum alloy, a nonferrous metal, or a
nonferrous metal alloy, the apparatus comprising:
at least one noncontact tunnel furnace having relative to a
strip-travel direction
an upstream inlet end,
a downstream outlet end,
a heating zone at the upstream end, and
a cooling zone formed by a row extending in the
direction of at least two cooling subzones;
guide means for movement of the strip in the heating and
cooling zones in a plane including the strip-travel direction with
the strip moving without contact through the heating and
cooling zones; and
a strip-centering device outside the furnace between the
cooling sub zones for adjusting a position of the metal strip in
the strip-travel plane and transverse thereto.
Appellant1 requests review of the Examiner's decision to finally reject
claims 1-13 under 35 U.S.C. § 103(a) as unpatentable over the admitted
prior art of the instant disclosure and Boyer et al. (US 5,798,007, issued
August 25, 1998) (hereinafter "Boyer"). Final Act. 2; App. Br. 7.
Appellant essentially argues the claims together. See generally App.
Br. Accordingly, we select claim 1 as representative of the subject matter
claimed and decide the appeal based principally on the arguments made by
Appellant in support of its patentability. To the extent that Appellant
1 The real party in interest is identified as BWG Bergwerk- und Walzwerk-
Maschinenbau GmbH of Germany. App. Br. 1.
2
Appeal2017-000321
Application 14/056,372
presents arguments for claims 9 and 13, we address these arguments
separately.
OPINION
After review of the respective positions provided by Appellant2 and
the Examiner, we affirm the Examiner's prior art rejection of claims 1-13
for the reasons presented by the Examiner.
Claim 1
The Examiner finds that the disclosure on pages 1--4 of the
Specification (including the illustration of the prior art in Figure 1) teaches
an apparatus for continuously treating a metal strip that differs from the
claimed invention in that the admitted prior art does not disclose placement
of a strip centering device within the cooling zone between cooling sub-
zones. Final Act. 2. The Examiner finds Boyer teaches an apparatus for the
continuous treatment of metal strips that includes strip centering devices
2 We have also considered the arguments in the Reply Brief filed Jul. 30,
2016 in our deliberation to the extent that they are consistent with the
Appeal Brief. We note, however, that Appellant argues for the first time that
Boyer's centering device does not ensure alignment. Reply Br. 2. Any
argument not presented in the Appeal Brief will not be considered when
filed in a Reply Brief, absent a showing of good cause explaining why the
argument could not have been presented in the Appeal Brief. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("The reply
brief is not an opportunity to make arguments that could have been made
during prosecution, but were not. Nor is the reply brief an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner's rejections, but were not."); see also 37 C.F.R.
§ 41.41 (b )(2 ). Appellant has not shown good cause why these arguments
should now be considered.
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Appeal2017-000321
Application 14/056,372
within heating and cooling sections to center the strip at various locations
within the apparatus. Final Act. 2; Boyer col. 3, 11. 5-15. The Examiner
determined that it would have been obvious to one of ordinary skill in the art
to modify the apparatus of the prior art to incorporate a centering device
within a cooling section to ensure that the metal strip is properly centered for
effective processing of the strip. Final Act. 2-3.
Appellant argues that the admitted prior art does not teach or suggest a
centering device inside the heat-treatment device, much less between two
cooling subzones but, instead, teaches that it is known to provide the
centering device downstream of the cooling zone that comprises the cooling
subzones. App. Br. 9. Appellant also argues that Boyer shows strip-
centering devices that are all inside the furnace. Id. at 10. With respect to
claims 1, 9, and 13, Appellant contends that Boyer's device moves the strip
back and forth between large numbers of rollers in the heat-treatment
apparatus that are in contact with the strip, so there is nothing "noncontact"
about the Boyer system. App. Br. 9-10.
We are unpersuaded of Examiner error. It is well-established that
non-obviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413, 425-26 (CCPA 1981) ("[T]he test [for obviousness] is
what the combined teachings of the references would have suggested to
those of ordinary skill in the art.").
Appellant's arguments are unavailing because they do not address the
rejection presented by the Examiner. Appellant does not dispute the
Examiner's specific findings with respect to the admitted prior art. See App.
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Appeal2017-000321
Application 14/056,372
Br. 7-9. Instead, Appellant argues that the admitted prior art does not
suggest placing a centering device between two cooling subzones. Id. at 9.
However, as the Examiner explains, Boyer is relied upon to teach this
feature as known in the heat treatment art. Ans. 2. Given Boyer's
disclosure, Appellant has not adequately explained why one skilled in the art
would not have been capable of modifying the apparatus of the admitted
prior art so as to place a centering device between two cooling zones or
subzones, as suggested by Boyer, and reasonably expect this technique to
provide the requisite alignment of the metal strip across the apparatus. In re
O'Farrell, 853 F.2d 894,904 (Fed. Cir. 1988) ("For obviousness under§
103, all that is required is a reasonable expectation of success.").
Appellant's argument that Boyer discloses all the strip-centering
devices are inside the furnace is also unavailing because it appears premised
on bodily incorporation and does not adequately address the Examiner's
reason for combining the cited art. Final Act. 2-3; Ans. 2. It is well
established that the obviousness inquiry does not ask "whether the
references could be physically combined but whether the claimed inventions
are rendered obvious by the teachings of the prior art as a whole." In re
Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en bane); see also In re Keller,
642 F.2d 413,425 (CCPA 1981) (stating "[t]he test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
into the structure of the primary reference").
Moreover, the admitted prior art teaches placement of the centering
device downstream of the cooling zone. Spec. 3. The prior art represented
in Figure 1 also shows the centering device outside the furnace in a manner
similar to the illustration of the invention in Figure 2. Thus, Appellant's
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Appeal2017-000321
Application 14/056,372
arguments do not point to Examiner error.
We also find Appellant's argument that Boyer's device does not use a
noncontact means to move the metal strip within a furnace unpersuasive.
App. Br. 9--10. As the Examiner explains, the admitted prior art teaches the
use of a bed of pressurized fluid from fluid jets to pass the strip through the
furnace in a non-contact manner. Ans. 2; see Spec. 1.
Accordingly, we affirm the Examiner's prior art rejection of claims
1-13 for the reasons presented by the Examiner and given above.
ORDER
The Examiner's prior art rejection of claims 1-13 under 35 U.S.C.
§ 103(a) is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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