Ex Parte Schiessl

Board of Patent Appeals and Interferences

Jan 26, 2012

10589079 (B.P.A.I. Jan. 26, 2012)

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.
10/589,079 08/11/2006 Gerhard Schiessl 8369.036.US0000 5876
77407 7590 01/26/2012
Novak Druce + Quigg LLP
300 New Jersey Ave, NW
Fifth Floor
Washington, DC 20001
EXAMINER
LUK, VANESSA TIBAY
ART UNIT PAPER NUMBER
1733
MAIL DATE DELIVERY MODE
01/26/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte GERHARD SCHIESSEL

_________________

Appeal 2011-006128
Application 10/589,079
Technology Center 1700
_________________

Before CATHERINE Q. TIMM, RAE LYNN P. GUEST, and
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

DECISION ON APPEAL

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This appeal, under 35 U.S.C. § 134, of the rejection of independent
claim 26 and the claims that depend on it, claims 27-44, was brought by the
named inventor. (App. Br. 2.) Claims 1-25 have been previously cancelled.
(Id.) The real party-in-interest is said to be Audi AG. (Id.) We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
The Examiner maintained the following rejections:
 Claims 26-29 and 32-42 under 35 U.S.C. § 103(a) over Grange
‘3761, Schmoeckel2, Hodge3, and, optionally, Grange ‘4744 ;
 Claim 30 and 44 under 35 U.S.C. § 103(a) over Grange ‘376,
Schmoeckel, Hodge , optionally, Grange ‘474, and Hassell5;
 Claim 31 under 35 U.S.C. § 103(a) over Grange ‘376,
Schmoeckel, Hodge , optionally, Grange ‘474, and Brodt6;
 Claim 43 under 35 U.S.C. § 103(a) over Grange ‘376,
Schmoeckel, Hodge , optionally, Grange ‘474, and Smith7; and
 Claim 38 under 35 U.S.C. § 112, first paragraph, for lack of
written description support in the Specification.
With respect to the prior art rejections, Appellant does not argue for
the separate patentability of any of the claims.8 Accordingly, we focus on

1 U.S. Patent No. 3,337,376, issued August 22, 1967.
2 “Metal Forming (Warm): Comparison with Hot and Cold Forming,”
ENCYCLOPEDIA OF MATERIALS: SCIENCE AND TECHNOLOGY, vol. 6, pp. 5437-
39 (2001).
3 U.S. Patent No. 3,057,050, issued October 9, 1962.
4 U.S. Patent No. 3,891,474, issued June 24, 1975.
5 “Induction Heat Treating of Steel,” ASM Handbooks Online, vol. 4 (2002).
6 U.S. Patent Application Publication 2002/0069506 A1, published June 13,
2002.
7 “Direct-Fired Furnace Equipment,” ASM Handbooks Online, vol. 4 (2002).
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the rejection of claim 26 over Grange ‘376, Schmoeckel, Hodge, and,
optionally, Grange ‘474, in our review of the rejections over the prior art,
applying our reasoning to the rejections of the dependent claims. See 37
C.F.R. § 41.37(c)(1)(vii).
Appellant claims a method forming a component from an aluminum
coated steel blank by successive heating and cooling. The claimed method
includes a storage step between two heating and cooling steps. (See Claim
26, App. Br. 5, Claims App’x.)
Appellant’s claim 26 recites:
A method of forming a component, comprising:
[1] heating an aluminum coated steel blank to an austenization
temperature;
[2] rapidly cooling said blank;
[3] storing said heat treated blank at room temperature for an
interval of time;
[4] heating said cooled, heat treated blank a second time to an
austenization temperature greater than or equal to 850°C; and
[5] forming said blank while heated to produce said component.

(App. Br. 5, Claims App’x) (bracketed numbers inserted for reference).

8 In the Reply Brief, for the first time, Appellant notes that claims 27 and 34
“further distinguish[]” over the method of claim 26. (Reply Br. 4-5.) We do
not review the rejections of these claims separately. See 37 C.F.R.
§ 41.37(c)(1)(vii) (“Any claim argued separately should be placed under a
subheading identifying the claim by number. . . . A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”)
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35 U.S.C. § 103(a)
The following facts are supported by at least a preponderance of the
evidence. Numbers in brackets correspond to the numbers added to claim 26
to identify individual steps of the claimed method.
Grange ‘376 teaches treating steel to improve its mechanical
properties by [1] heating it to a temperature of about 1700 to 2000o F to
convert ferrite to austenite (austenization), [2] quenching the steel,
optionally performing an intermediate step of cooling the steel to room
temperature, and [4] rapidly reheating it to 1425o C to 1600o C. (See Grange
‘376, col. 2, ll. 6-35, and col. 2, l. 69, through col. 3, l. 6; Ans. 4-5.)
Schmoeckel teaches that steel can be used in [5] “warm-forming,” at
temperatures between 600o C and 900o C, to construct tools. (Schmoeckel,
p. 5437, left col. and p. 5438, left col.; Ans. 5.)
Hodge teaches that coatings of aluminum on ferrous metal are highly
desirable, indicating that it was known in the art to use aluminum coated
steel when forming a component. (See Hodge, col. 1, ll. 20-29; Ans. 5-6.)
The Examiner found that Grange ‘376 teaches cooling the steel to
room temperature before reheating to 1425o to 1600o F. (Grange ‘376, col. 2,
ll. 69-72.) Though Appellant argues that Grange ‘376 does not teach storing
for “an interval of time” (App. Br. 3-4), Appellant’s claim does not provide
a limit on how short such an “interval of time” can be. Nor does Appellant
point to a definition in the specification that defines the claimed “interval of
time.” Accordingly, any time period during which the steel in Grange ‘376
is at room temperature is within the scope of the “interval of time” that
Appellant’s method provides for storing. (See Ans. 12.)
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Appellant argues that because Grange ‘376 teaches “rapidly
reheat[ing]” the steel after it is cooled to room temperature (see Grange
‘376, col. 2, ll. 71-72), it does not disclose storing the steel at room
temperature. (App. Br. 3-4.) We are not persuaded that the rate at which
steel is reheated impacts the time period during which the steel is at room
temperature. Accordingly, we are not persuaded by Appellant’s argument.
Appellant also argues that Grange ‘376 teaches away from storing the
blank because it teaches, in a preferred embodiment, that:
the sample was held in the oil barely long enough to reach the
temperature of the bath before proceeding with the next step in
order to minimize microcracks. It has been found that the
formation of microcracks is time dependent and immediate
reheating after quenching in warm oil will minimize
microcracking.

(Grange ‘376, col. 3, ll. 65-71; App. Br. 4.) To teach away, a prior art
reference must have discouraged those in the art from what is claimed. In re
Gurley, 27 F3d 551, 553 (Fed. Cir. 1994). Moreover, disclosed examples
and preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971). We are not persuaded that this passage would have
discouraged those in the art from maintaining the steel at room temperature
for an “interval of time” as claimed.
In addition to Grange ‘376, Grange ‘474 teaches heating treating steel
blanks. (Ans. 6-7.) Grange ‘474 teaches carburizing steel to increase the
carbon content of the outer case by heating to a temperature within the range
of 1700o to 2000o F. (Grange ‘474, col. 2, ll. 38-45.) Grange ‘474 teaches
that following carburization, the steel is quenched in oil to room temperature
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and can be stored at room temperature, followed by reheating to below
950o F (510o C) for transformation to bainite, and ultimately reheating for
reaustenization. (Grange ‘474, col. 2, ll. 46-51, col. 3, ll. 12-19, and Figure
1.)
Appellant argues that Grange ‘474 teaches away from a method
including reheating to a temperature greater than or equal to 850º C, because
Grange ‘474 teaches a first reheating step only to a temperature below
510o C (App. Br. 4.) The Examiner is relying on Grange ‘376 for all of the
process steps of claim 1 and relies on Grange ‘474 only as evidence that it
would have been obvious to the skilled artisan to store the steel at room
temperature. Appellant attacks the references separately and fails to
specifically address the Examiner’s articulated rationale. Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. In re
Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellant also argues that the teachings in Grange ‘376 and Grange
‘474 cannot be applied to a method using aluminum coated steel. (Reply Br.
3-4.) Although Appellant cites a discussion in Grange ‘474 about the
difficulties associated with treating case carburized steel (id.), Appellant has
not directed us to sufficient evidence that aluminum coated steel, as taught
by Hodge, would have significantly different properties such that those of
skill in the art would not have applied the teachings of the Grange references
to aluminum coated steel. “Argument of counsel cannot take the place of
evidence lacking in the record.” Meitzner v. Mindick, 549 F.2d 775, 782
(CCPA 1977). Furthermore, “the reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
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rebut the Examiner’s rejections, but were not.” Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (Informative).
The Examiner rejected dependent claims 30, 44, 31, and 43 under 35
U.S.C. § 103(a) over Grange ‘376, Schmoeckel, Hodge, and Grange ‘474, as
well as over Hassell, Brodt, or Smith for teachings of the elements in
addition to those recited in claim 26. (See Ans. 7-11.) Appellant does not
provide any arguments specific to these rejections. Accordingly, we are not
persuaded that these rejections are improper.

35 U.S.C. § 112, first paragraph
Appellant’s claim 38 recites:
The method according to claim 35, wherein the second
manufacturing process is continuous.

(App. Br. 6, Claims App’x.)
Appellant’s claim 35 recites:
The method according to claim 26, wherein the step of heating
the aluminum coated steel blank takes place in a first
manufacturing process, and wherein the step of heating the
cooled, heated treated blank takes place in a second
manufacturing process.

(Id.)
The Examiner rejected claim 38 under 35 U.S.C. § 112, first
paragraph, for failure to provide a written description of a second
manufacturing process that is continuous. (Ans. 4.)
Appellant argues that page three of the Specification explains that the
invention can involve decoupling the sequences of a continuous process and
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that, thus, the second process would be continuous as was the coupled
process. (App. Br. 3.)
While the Examiner pointed to a claim element not expressly provided
for in the Specification, “[t]he test for determining compliance with the
written description requirement is whether the disclosure of the application
as originally filed reasonably conveys to the artisan that the inventor had
possession at that time of the later claimed subject matter, rather than the
presence or absence of literal support in the specification for the claim
language.” In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). Page three
of the Specification supports decoupling sequences of conventional
continuous heating and cooling processes, as Appellant argues. The
Examiner has not provided sufficient reason to explain why those of skill in
the art would not have considered the decoupled first and second heating
steps (i.e., first and second process) to be anything other than the
conventional continuous heating processes, just decoupled. Accordingly, we
reverse the Examiner’s decision to rejection claim 38 under 35 U.S.C. § 112,
first paragraph.
ORDER
Upon consideration of the record and for the reasons given,
the rejection of claims 26-29 and 32-43 under 35 U.S.C. § 103(a) over
Grange ‘376, Schmoeckel, Hodge, and, optionally, Grange ‘474 is sustained;
the rejection of claims 30 and 44 under 35 U.S.C. § 103(a) over
Grange ‘376, Schmoeckel, Hodge, optionally, Grange ‘474, and Hassell is
sustained;
the rejection of claim 31 under 35 U.S.C. § 103(a) over Grange ‘376,
Schmoeckel, Hodge , optionally, Grange ‘474, and Brodt is sustained;
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the rejection of claim 43 under 35 U.S.C. § 103(a) over Grange ‘376,
Schmoeckel, Hodge , optionally, Grange ‘474, and Smith is sustained; and
the rejection of claim 38 under 35 U.S.C. § 112, first paragraph, for
lack of written description support in the Specification is not sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

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