Ex Parte Patberg

Patent Trial and Appeal Board

Sep 30, 2016

12558107 (P.T.A.B. Sep. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/558, 107 09/11/2009
53609 7590 10/04/2016
REINHART BOERNER VAN DEUREN P,C
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Lothar Patberg
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.
509606 5781
EXAMINER
TOLAN, EDWARD THOMAS
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
10/04/2016 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 LOTHAR P ATBERG1
Appeal2014-007802
Application 12/558, 107
Technology Center 3700
Before STEFAN STAICOVICI, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Lothar Patberg (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision to reject claims 1-8 and 17.2 Appeal Br. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the Real Party in Interest is Thyssenkrupp Steel
Europe AG. Appeal Br. 2.
2 Claims 9-14 have been withdrawn and claims 15 and 16 have been
canceled. Id.
Appeal2014-007802
Application 12/588, 107
CLAIMED SUBJECT MATTER
The subject matter of Appellant's claimed invention "relates to a
method for producing a metal profile, in which a metal component is
produced from a semi-finished product or a blank by a hot forming and press
hardening process and the metal component is bent along at least one
bending edge." Spec. i-f 2. Claim 1, the only independent claim, is
representative of the claimed subject matter, and recites:
1. Method for producing a metal profile, wherein a
metal component is produced from a semi-finished product or a
blank by a hot forming and press hardening process and the metal
component is bent along at least one bending edge, wherein the
metal component, before forming, is heated at least partially
along at least one bending edge in such a way that strength is
reduced in a heated region after heating and wherein the metal
component exhibits a substantially W-shaped cross section.
Appeal Br. (Claims App.) (emphasis added).
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1--4 and 17 under 35 U.S.C.
§ 102(b) as anticipated by Carlsson (US 6,868, 708 B2, iss. Mar.
22, 2005).
II. The Examiner rejected claims 1-5 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Mittinger and Carlsson (US
1,042,946, iss. Oct. 29, 1912).
III. The Examiner rejected claims 6-8 under 35 U.S.C. § 103(a) as
unpatentable over Mittinger, Carlsson, and Briiggenbrock (US
8,042,368 B2, iss. Oct. 25, 2011).
2
Appeal2014-007802
Application 12/588, 107
ANALYSIS
Rejection I
Appellant contends the Examiner erred by finding Carlsson discloses
"wherein the metal component exhibits a substantially W-shaped cross
section." Appeal Br. 4. Relying on Carlsson's Figures 3 and 4 (reproduced
below), the Examiner finds Carlsson discloses that limitation. Non-Final
Act. 2.
I
4
Figure 3 of Carlsson shows a workpiece with bending notches to
facilitate bending a predetermined shape and Figure 4 of Carlsson shows the
final shaped product. Carlsson 2: 15-21. Appellant argues neither of the
above figures exhibit a substantially W-shape. See Appeal Br. 4---6.
The Examiner responds that he "is reading the claim limitation of
'substantially W-shaped cross-section' broadly as a waveform as disclosed
by Carlsson." Ans. 4. A general W-shape "is inherent ... when a longer
workpiece is provided [with] crests and troughs," according to the Examiner.
Id. Notably, the Examiner does not provide any support from the
Specification supporting this broad interpretation, nor are we able to find
any support. For example, the Specification states, in various ways,
3
Appeal2014-007802
Application 12/588, 107
the inventive method 1s characterized in that the metal
component exhibits a substantially W-shaped cross section,
wherein optionally at least one bending edge is arranged
substantially in the center of the cross section. The W-shaped
cross section of the metal component for example permits a
closed metal profile to be produced in a simple way, since closing
can already be achieved by bending at just one bending edge.
Spec. i-f 11. Appellant's Figure la (reproduced below oriented upside down)
illustrates metal component Appellant characterizes as having a W-shaped
cross section.
6 6
The above Figure 1 a of the present disclosure is rotated 180 degrees and
depicts "a first exemplary embodiment of an inventive metal component,
during the process for producing an inventive metal profile." Id. i-f 24.
Absent adequate support from the Specification, we do not agree the
breadth of the plain meaning of "W-shaped cross-section" can be reasonably
interpreted to cover "waveform" and/or anything with crests and troughs.
"The broadest-construction rubric ... does not give the PTO an unfettered
license to interpret claims to embrace anything remotely related to the
claimed invention." In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed.
Cir. 2010).
Since it would be unreasonable for the PTO to ignore any
interpretive guidance afforded by the applicant's written
description ... the PTO applies to the verbiage of the proposed
4
Appeal2014-007802
Application 12/588, 107
claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary
skill in the art, taking into account whatever enlightenment by
way of definitions or otherwise that may be afforded by the
written description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Because the Examiner's
interpretation of "W-shaped cross-section" is unreasonably broad, and
Figures 3 and 4 of Carlsson do not disclose a "W-shaped cross-section" as
would be understood by a person of ordinary skill in the art in light of
Appellant's Specification (i.e., a cross-section that resembles a W), we do
not sustain the Examiner's anticipation rejection of claim 1.
Claims 2--4 and 17 depend from claim 1, either directly or indirectly.
Because the Examiner's rejection of those claims also relies on the
deficiencies described above regarding claim 1 (Non-Final Act. 2), we
likewise do not sustain the Examiner's anticipation rejection of claims 2--4
and 17.
Rejection II
Appellant argues for patentability of claims 1-5 and 17 together as a
group. Appeal Br. 6-7. We select claim 1 as representative of this group,
and claims 2-5 and 17 stand or falls with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
The Examiner finds Mittinger discloses the elements of claim 1,
except "wherein the metal component, before forming, is heated at least
partially along at least one bending edge in such a way that strength is
reduced in a heated region after heating." Non-Final Act. 3. The Examiner
finds Carlsson discloses the above recited element. Id. Appellant does not
challenge any of these factual findings. Appeal Br. 6-7. Instead, Appellant
5
Appeal2014-007802
Application 12/588, 107
challenges the Examiner's conclusion that it would have been obvious to a
skilled artisan to combine Mittinger and Carlsson. Id. We, therefore, must
decide whether the Examiner's reasoning for modifying Mittinger with
Carlsson in the manner claimed has rational underpinnings. In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.").
The Examiner correctly finds,
Carlsson teaches producing heat treated zones (2,3) on a high or
maximum strength steel (high strength steel and stainless steel
have an ultimate strength of about 1000 MP a) .... Carlsson heat
treats the zones with a laser (col. 2, line 62) in order to form a
bent product in further processing.
Non-Final Act. 3. Appellant does not challenge these findings. Appeal Br.
6. Appellant does assert, however, the Examiner erred in concluding, "[i]t
would have been obvious to one skilled in the art at the time of invention to
heat an area (5,5') of Mittinger that is to be bent at a later time as taught by
Carlsson in order to create a more easily bendable region of reduced
strength." Id.; Non-Final Act. 3. Appellant argues "that such a modification
would not be made because it would render Mittinger unsatisfactory for its
intended purpose." Appeal Br. 6.
Appellant asserts there are two reasons the combination of Mittinger
and Carlsson would render Mittinger unsatisfactory for its intended purpose.
Id. at 7. Appellant first argues that, because Mittinger states the invention is
particularly adapted for forming a metal bilged barrel shell from a sheet of
cold metal, the addition of Carlsson' s heating step would render Mittinger
unacceptable to form with cold metal. Id. However, this argument is
6
Appeal2014-007802
Application 12/588, 107
unpersuasive because the addition of Carlsson's heating step, which only
heats localized areas on a workpiece to improve the bending operations
(Carlsson 2:25--42), does not actually require changing the operation, or
structure, of the Mittinger apparatus.
Instead, the Carlsson heating step is an additional processing step of
the workpiece before the Mittinger apparatus is used. In other words, a
skilled artisan would readily recognize that the Mittinger apparatus is still
adapted to form a shell with cold metal, even if it were also used in a process
that first heats localized areas to create a more easily bendable region of
reduced strength. An artisan must be presumed to know something about
the art apart from what the references explicitly disclose. See In re Jacoby,
309 F.2d 513, 516 (CCPA 1962). Mittinger states the disclosed invention is
"adapted for forming the shell from a sheet of cold metal" (Mittinger 1: 11-
14 (emphasis added)), which a skilled artisan would understand as an
exemplary application, rather than criticizing, discrediting, or otherwise
discouraging the addition of Carlsson's heating step prior to the bending
operations.
Appellant's second argument is that,
Mittinger states that its primary object is to provide an apparatus
that can produce its parts in two operations. Adding a third step
would thus completely undermine this primary object as well as
increase the overall cost and complexity of the Mittinger system.
In other words, the addition of this third heating step would also
render Mittinger unsatisfactory for its intended purpose of
providing an apparatus that can produce its parts in two
operations.
Appeal Br. 7. Because this characterization of Mittinger's intended purpose
is too narrowly stated, Appellant's argument is unpersuasive. Specifically,
we disagree with Appellant's contention that the "two operations" Mittinger
7
Appeal2014-007802
Application 12/588, 107
identifies extends beyond the bending operations an apparatus applies to
transform an initial blank into a bilged barrel shell. The "primary objective"
Mittinger identifies "is to provide an apparatus by means of which a bilged
metal barrel shell can be produced by two operations." Mittinger 1: 15-18
(emphasis added). Mittinger further states, "[ m ]y present invention pertains
only to the forming of ... an initial blank and then forming this initial blank
into ... a bilged barrel shell." Id. at 1 :42--45 (emphasis added). Mittinger
notes that other steps may be taken outside the forming of the shell (e.g.,
uniting the edges of the barrel shell and applying heads to the shell) without
affecting the disclosed invention. Id. at 1 :45-51.
A skilled artisan would not have viewed the Carlsson heating step as
an additional "operation" because it is wholly separate and apart from the
processing steps necessary to bend a workpiece into an initial blank and then
bend the initial blank into a bilged barrel shell. As the Examiner correctly
notes (see Ans. 5), Appellant's Specification, at paragraph 25, characterizes
the heating step as occurring before the production process (i.e., before the
bending operations), which further supports the Examiner's position that a
skilled artisan would not consider the heating step as an "operation," as that
term is used in Mittinger. As a result, we do not agree that the addition of
the Carlsson heating step would render Mittinger unsatisfactory for its
"primary objective" of providing an apparatus that can bend a workpiece
into a bilged barrel shell in two operations.
For the foregoing reasons, Appellant has not shown persuasively that
the Examiner's combination of Mittinger and Carlsson was improper.
Therefore, we sustain the Examiner's rejection of claim 1 as unpatentable,
8
Appeal2014-007802
Application 12/588, 107
which means we also sustain the related rejection of claims 2-5 and 17,
which fall with claim 1.
Rejection III
For claims 6-8, Appellant asserts "[t]he addition of Briiggenbrock to
Mittinger in view of Carlsson does not rectify the deficiencies discussed ...
relative to the inability to combine Mittinger in view of Carlsson." Appeal
Br. 8. Because we are not persuaded any such deficiencies exist with the
combination of Mittinger and Carlsson (see supra Rejection II), we sustain
the Examiner's rejection of claims 6-8 as unpatentable.
DECISION
We reverse the decision of the Examiner to reject claims 1--4 and 17
as anticipated under 35 U.S.C. § 102(b ).
We affirm the decision of the Examiner to reject claims 1-8 and 17 as
unpatentable under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
9