Ex Parte Rieder et al

Patent Trial and Appeal Board

Jan 16, 2018

13433639 (P.T.A.B. Jan. 16, 2018)

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.
13/433,639 03/29/2012 Alfred Rieder RIED3025/JS-FJD 9479
23364 7590
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
PATEL, DEVANG R
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
MAIL @B ACONTHOMAS .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALFRED RIEDER, WOLFGANG DRAHM, and
MICHAEL WIESMANN1
Appeal 2017-003395
Application 13/433,639
Technology Center 1700
Before DONNA M. PRAISS, CHRISTOPHER C. KENNEDY, and
MICHAEL G. MCMANUS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL2
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—36. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Endress+Hauser
Flowtec AG. App. Br. 2.
2 In explaining our decision, we refer to the Specification filed Mar. 29,
2012 (“Spec.”), the Final Office Action entered Feb. 3, 2016 (“Final Act.”),
the Appeal Brief filed Aug. 2, 2016 (“App. Br.”), the Examiner’s Answer
entered Nov. 3, 2016 (“Ans.”), and the Reply Brief filed Jan. 3, 2017
(“Reply Br.”).
Appeal 2017-003395
Application 13/433,639
BACKGROUND
The subject matter on appeal relates to a method of trimming a tube,
in particular, a measuring tube of a measuring transducer of the vibration
type, to achieve a predeterminable target bending stiffness.3 Spec. 1:11—14.
Claim 1, the sole independent claim, is reproduced below from page 14
(Appendix I) of the Appeal Brief (disputed limitation italicized):
1. A method for trimming a tube to a target bending
stiffness, said tube including a tube wall and at least one
stiffening element placed on the tube wall, which stiffening
element is bonded to an outer lateral surface of the tube wall,
and the tube exhibiting an interim bending stiffness, which is
greater than the target bending stiffness, said method
comprising:
removing a volume of said stiffening element placed on the
tube wall for reducing the interim bending stiffness of the tube
to the target bending stiffness.
REJECTIONS ON APPEAL4
1. Claims 1, 10, 13, 14, 16, 19, 21—26, 35, and 36 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Normen (US 5,370,002,
issued Dec. 6, 1994) in view of Van Cleve ’265 (US 5,969,265, issued Oct.
19, 1999).
2. Claims 1—8, 12—33, 35, and 36 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Bitto (US 2010/0242624 Al, published Sept.
30, 2010) in view of Van Cleve ’265.
3 The subject matter in this appeal also is related to Appeal 2016-001725
concerning Application 13/434,109.
4 In the Examiner’s Answer, the Examiner withdraws a rejection of
claims 1—38 under 35 U.S.C. § 112,12. Ans. 2.
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Application 13/433,639
3. Claims 2—5 stand rejected stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Normen and Van Cleve ’265 and further in view of
Wheeler (US 2007/0017274 Al, published Jan. 25, 2007).
4. Claims 12 and 17—20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Normen and Van Cleve ’265 and further in view of Rieder
(US 7,216,549 B2, issued May 15, 2007).
3. Claims 9—11 and 34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Normen in view of Van Cleve ’265 or over Bitto in view
of Van Cleve ’265, and further in view of Gebhardt (US 7,213,470 B2,
issued May 8, 2007).
ANALYSIS
Appellants present arguments concerning only claim 1. Their
arguments are directed principally towards the Examiner’s reliance on
Normen and Van Cleve ’265, and Appellants do not distinguish among the
different grounds of rejection. In accordance with 37 C.F.R.
§ 41.37(c)(l)(iv), and based upon the lack of arguments directed to the
subsidiary rejections, claims 2—36 will stand or fall together with
independent claim 1 from which they depend.
After review of the cited evidence in the appeal record and the
opposing positions of Appellants and the Examiner, we determine that
Appellants have not identified reversible error in the Examiner’s rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action, and in the Examiner’s Answer. See generally Final Act. 2—11;
Ans. 2—7.
Concerning Rejection 1 over Normen and Van Cleve ’265, the
Examiner finds that Normen teaches a method of trimming a tube to a target
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Application 13/433,639
bending stiffness, that the tube comprises a tube wall and at least one
stiffening element (brace bar 300/1100), that the stiffening element is brazed
to an outer lateral surface of the tube wall, that removing a volume of
material from the stiffening element reduces stress and stiffness of the brace
bar and the flow tubes. Final Act. 2—3. The Examiner also finds that
Van Cleve ’265 similarly teaches reducing stiffness by removing material
from a center region element or stiffening element (“re-design”). Id. at 3^4.
The Examiner determines that it would have been obvious to remove
material from the stiffening elements before the stiffening element is bonded
to the tube because a skilled artisan would have known to pursue the known
options within his or her technical grasp, i.e. removing before, after, or both
before and after bonding. Id.
Appellants do not dispute that Normen and Van Cleve ’265 teach
tubes for use in flow meters that possess stiffening elements on tube walls.
See App. Br. 10-12. Appellants also do not dispute that Normen teaches
that the stiffening element is bonded to the tube wall. Id. Nor do Appellants
dispute that Normen and Van Cleve ’265 teach reducing stiffness in a
stiffening element by removing material from the element. Id. at 11.
Finally, Appellants do not meaningfully dispute the Examiner’s finding
(Final Act. 4) that “the technique of modifying stiffness by selectively
adding/removing mass/material [was] known in the art.” Id. at 11—12.
Instead, Appellants argue that the removal of material taught by the
prior art occurs “before the stiffening element is bonded to the tube” (id. at
11, emphasis added) rather than “bonding a stiffening element to the tube
wall, and then removing a volume of said stiffening element placed on the
tube wall” (id. at 10, emphasis omitted). Appellants also argue that “the
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Application 13/433,639
bending stiffness of the tube is not effected by bending flexibility of the
brace” inNormen’s arrangement. Id. at 12 (emphasis omitted). According
to Appellants, claim 1 requires that “the bending stiffness of the tube is a
property of the tube only, but not a property of the whole tube arrangement
including two or more tubes as well as brace bars etc.” Id. (emphasis
omitted).
The Examiner responds that “Normen does teach reducing stiffness of
the tube through the void in the brace bar.” Ans. 5 (quoting Normen 6:55—
59 “Each shape [of the void] shifts the stresses of manufacturing to different
locations in brace bar 300. An easy flexing of the flow tubes about these
axes contributes to an enhanced sensitivity for Coriolis motion detection
purposes.”); see also Ans. 3. Based on these teachings, the Examiner
determines that a skilled artisan would understand that “removing material
and forming voids reduces stiffness, stress of the tube arrangement and
allows easy flexing of the flow tube.” Id. at 3^4. Regarding the removal of
material from the stiffening element after bonding to the tube wall, the
Examiner finds that there are a finite number of identified, predictable
solutions because Normen evidences that removing some material from the
stiffening element at any point is to reduce stiffness, stress of the tube
arrangement, and allow easy flexing of the tube. Id. at 5.
Regarding bending stiffness of the tube being a property of the tube
only, the Examiner finds that this is neither required by the claim nor
supported by Appellants’ Specification. Id. at 6. The Examiner finds that,
like Normen’s Figure 5, Appellants’ Figure 6 shows a volume of material
removed from stiffening element 151 bonded on the wall of tube 11. Id.
The Examiner states that Appellants have not established how or why the
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Application 13/433,639
tube arrangement in Normen is structurally different from that of claim 1.
Id. at 7.
In the Reply Brief, Appellants argue that the passages from Normen
quoted by the Examiner teach that elimination of material reduces the
stiffness of the brace bar, but not the stiffness of the tube. Reply Br. 3
(emphasis omitted). According to Appellants, “the Examiner appears to
conflate stiffness and stress” {id. at 2) because Normen addresses reducing
stress in the flow tube by reducing stiffness in the brace bar, rather than
altering stiffness of the flow tube by the stiffness of the brace bar {id. at 3).
Appellants further contend that Normen teaches away from the claimed
method because Normen provides voids in the brace bar before the brace bar
is bonded to the flow tube. Id. at 4 (citing Normen 2:42—3:3, 8:8—35, Fig.
9).
Appellants’ arguments do not persuade us of reversible error in the
rejection of claim 1. In this proceeding, we interpret the claims according to
their broadest reasonable interpretation consistent with the Specification.
See, e.g., In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Appellants do
not persuasively explain why the broadest reasonable interpretation of
claim 1 encompasses removal of material only after assembly. We
recognize that claim 1 recites “removing a volume of said stiffening element
placed on the tube wall” (emphasis added). See App. Br. 10-11; Reply Br.
4. That language mirrors earlier structural language in claim 1 stating that
“said tube including a tube wall and at least one stiffening element placed on
the tube wall, which stiffening element is bonded to an outer lateral surface
of the tube wall.” Under the broadest reasonable interpretation consistent
with Specification, it appears that the plain language of the phrase “placed
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Application 13/433,639
on the tube wall” encompasses the ultimate location of the stiffening element
and is not necessarily limited to describing the location of the stiffening
element during the removal process. The claim does not, for example, recite
that volume is removed from the stiffening element while it remains attached
to the tube wall, or that volume is removed from the stiffening element after
bonding the stiffening element to the tube wall, nor does it preclude the
volume being removed before the stiffening element is bonded to the tube,
as Appellants suggest. See App. Br. 10-11.
Appellants appear to ask us, effectively, to read the word “after” into
claim 1. We decline to do so. Cf. In re Zletz, 893 F.2d 319, 321 (Fed. Cir.
1989) (“During patent examination the pending claims must be interpreted
as broadly as their terms reasonably allow. . . . [SJcope and breadth of
language [should be] explored, and clarification imposed.”). Appellants
point to nothing persuasive in the Specification that would counsel in favor
of the construction that they propose. In the context of the broadest
reasonable interpretation applicable to this proceeding, the Appellants’
arguments do not persuade us that the scope of the claim should be so
limited. Accordingly, Appellants fail to persuade us of reversible error in
the rejection.
However, even if we were to interpret the claim to require removal
of volume after the stiffening element has been placed on the tube wall,
Appellants do not persuasively show that the cited prior art references would
not reasonably have taught or suggested such a method to a person of
ordinary skill in the art. See Ans. 3—5; cf. In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
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Application 13/433,639
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”). Appellants assert, with little explanation, that
the cited prior art suggests removal of mass only prior to assembly. See
App. Br. 11.
Appellants fail to provide a persuasive explanation as to why a person
of ordinary skill in the art would not have understood the “void” described
by Normen or the “re-design” described by Van Cleave ’265 to be
applicable to stiffening elements that are already attached to the tube, for
purposes of adjusting stiffness. See KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418—19 (2007) (“[T]he [obviousness] analysis 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.”). Nor do Appellants argue that a
person of ordinary skill in the art, through the use of only ordinary creativity,
would not have considered removing material before, after, or before and
after bonding the stiffening element to be three predictable options available
to implement the teachings of Normen and Van Cleave ’265. See Ans. 3^4;
see also KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”). On this record, we are persuaded
that a person of ordinary skill in the art would have been motivated to
implement, and capable of implementing, Normen’s “voids” and Van Cleve
’265’s “re-design” to modify the stiffening element before or after attaching
the stiffening element to the tube.
We note that, according to Appellants’ own characterization, the prior
art teaches or suggests first removing material from the stiffening element
and then attaching the stiffening element to the tube, whereas claim 1
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Application 13/433,639
allegedly requires first attaching the stiffening element to the tube and then
removing material from it. See generally App. Br. 10—11. Even if we were
to adopt that characterization of the prior art and claim 1 (which, for reasons
discussed above, we do not), whether material is removed before or after
attachment of the stiffening element to the tube wall concerns the sequence
in which steps of the method are carried out. Generally, the selection of any
particular sequence of performing process steps is prima facie obvious in the
absence of new or unexpected results. See In re Burhans, 154 F.2d 690, 692
(CCPA 1946); see also In re Gibson, 39 F.2d 975, 976-77 (CCPA 1930)
(selection of any order of mixing ingredients is prima facie obvious).
Appellants do not direct us to any persuasive evidence or explanation as to
how or why removal of material after assembly, rather than before, produces
new or unexpected results. See Ans. 7. As noted above, Appellants do not
meaningfully challenge the Examiner’s determination that “the technique of
modifying stiffness by selectively adding/removing mass/material [was]
known in the art.” E.g., Final Act. 4. On this record, we are not persuaded
that whether the removal occurs before or after attachment of the stiffening
element to the tube results in a patentable distinction.
Finally, Appellants fail to rebut the Examiner’s finding that Normen
teaches flexing of the flow tubes in addition to the brace bar as a
consequence of eliminating material (void) in the brace bar that is bonded to
the tube. Ans. 5. The Examiner’s finding is supported by the record. See,
e.g., Normen 6:55—59 (“Each [void] shape shifts the stresses of
manufacturing to different locations in brace bar 300. An easy flexing of the
flow tubes about these axes contributes to an enhanced sensitivity for
Coriolis motion detection purposes.”). Appellants’ distinction between
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Application 13/433,639
stress and stiffness (Reply Br. 2—3) does not distinguish the portion of
Normen quoted by the Examiner that describes the flexibility of the flow
tubes as a consequence of the voids in the brace bar. Nor do Appellants
adequately explain why the arrangement of Normen is structurally different
from the claimed arrangement such that Normen’s stiffening element 300
bonded on wall of tube 12/14 in Figure 5 would not be expected to reduce
bending stiffness of the tube similar to Appellants’ stiffening element 151
bonded on the wall of tube 11 depicted in Figure 6. See Ans. 6—7.
Appellants’ assertion that a skilled artisan would understand Normen to tune
the resonant frequency by positioning the brace bars, not by removing
material from the tube (Reply Br. 3) does not address the effect of the
removal of material from Normen’s brace bars (stiffening agent) on the
flexibility or stiffness of the tubes to which the brace bars are bonded.
Accordingly, we find Appellants’ arguments unpersuasive of error by the
Examiner.
For the above reasons, and in view of the arguments presented, we
discern no reversible error in the Examiner’s conclusion that the subject
matter of claim 1 would have been obvious in view of the cited prior art.
We affirm the Examiner’s rejection of claim 1 under the rationale set forth in
Rejection 1.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1—36.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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