Ex Parte Siemen et al

Patent Trial and Appeal Board

Aug 27, 2018

13257829 (P.T.A.B. Aug. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/257,829 12/02/2011
53609 7590 08/29/2018
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
FIRST NAMED INVENTOR
Andreas Siemen
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.
508765 1325
EXAMINER
RODRIGUEZ, MICHAEL P
ART UNIT PAPER NUMBER
1715
NOTIFICATION DATE DELIVERY MODE
08/29/2018 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREAS SIEMEN, GUNTER SCHUBERT, BORIS KASPAR,
JOCHEN SCHWARTZ, and ANTONIO MATEO
Appeal 2017-011077
Application 13/257,829
Technology Center 1700
Before BEYERL YA. FRANKLIN, JEFFREY B. ROBERTSON, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
July 13, 2016 decision finally rejecting claims 1-10 ("Final Act."). We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We reverse.
1 Appellant, which is the assignee of the application, identifies the real party
in interest as Hydro Aluminium Deutschland GmbH (Appeal Br. 2).
Appeal 2017-011077
Application 13/257 ,829
CLAIMED SUBJECT MATTER
Appellants' disclosure is directed to a method for producing a coated
aluminum strip (Abstract). The aluminum is unwound from a coil and fed
into an extrusion coating arrangement so that the aluminum strip is extrusion
coated with a thermoplastic polymer (id.). After cooling, the coated strip is
reheated so that the metal is above the melting point of the thermoplastic
polymer, which is then textured (id.). This order of steps is said to improve
the adhesion of the thermoplastic polymer to the aluminum strip (Spec. ,r 5).
Details of the claimed invention are set forth in claim 1, the sole independent
claim on appeal, which is reproduced below from the Claims Appendix to
the Appeal Brief:
1. Method for producing a coated aluminium strip,
compnsmg:
unwinding an aluminium strip from a coil;
feeding the aluminium strip into a unilateral or bilateral
extrusion coating arrangement;
coating the aluminium strip via extruding with a
thermoplastic polymer coating thereon; reheating the
aluminium strip with said thermoplastic polymer coating
thereon such that the temperature of the aluminium strip is
above the melting point of the thermoplastic polymer coating,
and texturing said thermoplastic polymer coating residing on
the aluminium strip using rolls which have a superficial
structure.
2
Appeal 2017-011077
Application 13/257 ,829
REJECTIONS
I. Claims 1, 2, 5-8, and 10 are rejected under 35 U.S.C. § I03(a)
as unpatentable over Levendusky2 in view of Berg. 3
II. Claims 3 and 4 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Levendusky in view of Berg, and further in view of
Corus. 4
III. Claim 9 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Levendusky in view of Berg, and further in view of Krause. 5
DISCUSSION
Appellants do not offer separate substantive arguments for any of the
dependent claims. Accordingly, we focus our discussion on the rejection of
claim 1 over Levendusky in view of Berg. The remaining claims will stand
or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds that Levendusky teaches a method for extrusion
coating both sides of an aluminum strip substrate which is unwound from a
coil with a thermoplastic polymer (Final Act. 2, citing Levendusky Abstract,
,r,r 2 and 51 ). The Examiner further finds that Levendusky teaches a casting
roll with presses the polymer extrudate to the metal strip substrate and that
the roll may be textured (Final Act. 2-3, citing Levendusky, ,r 44 and 49.
The Examiner also finds that Levendusky teaches a reheating step in which a
2 Levendusky et al, US 2004/0007175 Al, published January 15, 2004.
3 Berg et al., US 2003/0118783, published June 26, 2003.
4 Corns, EP 1 362 653 Al, published November 19, 2003.
5 Krause et al, US 5,976,652, issued November 2, 1999.
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Appeal 2017-011077
Application 13/257 ,829
metal strip with coating on one side is heated prior to coating and pressing
on the uncoated side (Final Act. 3).
The Examiner finds that Levendusky does not disclose a heating step
between application of the thermoplastic extrudate to the metal substrate and
prior to texturing of the extrudate (id). The Examiner finds that Berg
discloses a thermoplastic texturing and printing method in which and
extruded thermoplastic is textured while in a melt state (id.). The Examiner
determines that it would have been obvious to incorporate Berg's printing
and texturing technique in Levendusky's method by ensuring a melt state of
the thermoplastic polymer layer prior to texturing by heating the aluminum
strip prior to texturing of the thermoplastic polymer (id.).
Appellant argues that the cited art, either alone or in combination,
fails to teach, suggest, or otherwise render obvious the claimed step of
"reheating the aluminium strip with said thermoplastic polymer coating
thereon such that the temperature of the aluminium strip is above the melting
point of the thermoplastic polymer coating" (Appeal Br. 5). Appellant
contends that the cited art does not disclose the claimed sequence of coating,
reheating, and texturing because neither reference discloses reheating the
extruded polymer (id.).
First, we address Appellant's position that the claim requires the
specific sequence of (1) coating, (2) reheating, and (3) texturing (Appeal Br.
5). The Examiner takes the position that the claims do not require such a
sequence (Ans. 6). Based on the language of claim 1, we agree with
Appellant that the broadest reasonable interpretation of the claim requires
the foregoing sequence of events. It is well established that during
prosecution, "the PTO must give claims their broadest reasonable
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Appeal 2017-011077
Application 13/257 ,829
construction consistent with the specification." In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). In this instance, the
FIGS. 1 and 2 and the associated description (Spec. i-fi-f25-33) make clear
that the coating step precedes the reheating step 6, which in tum precedes the
texturing step. This is consistent with the language of claim 1, in which the
coating, reheating and texturing steps are presented in this order.
Thus, we construe claim 1 as requiring that the recited steps take place
in the recited order.
Although the Examiner stated that the claims do not require a specific
order of operations, the Examiner finds that:
Levendusky specifically teaches reheating a strip during
processing an aluminum strip with thermoplastic extruded
thereon in order to control heat loss from the strip (see
Levendusky at ,r,r [0057]-[0058]), and Berg teaches that
maintenance of a melt state of extruded thermoplastic is
significant with regard to transfer of features by a textured
molding device (see Berg at ,r,r [0010], [0030], [0042]).
Additionally, Levendusky teaches boost heaters disposed
throughout process locations in order to maintain optimum
processing conditions (see ,r,r [0035], [0064], [0066], [0068],
[0070], [0072]), and the reference expressly states that
alternative processing techniques from those disclosed therein
are otherwise apparent (see Levendusky at ,r [0079]).
Ans. 5---6.
As explained by Appellant (Reply Br. 8), while Levendusky does
disclose reheating during processing of the aluminum strip, such reheating is
done in the context of further extrusion and coating, not texturing
6 The use of the word "reheating" necessarily suggests that the object has
cooled somewhat prior to the reheating step.
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Appeal 2017-011077
Application 13/257 ,829
(Levendusky, ,r,r 30, 32, 35, and 37). Moreover, Berg's teaching regarding
the maintenance of the melt state of the thermoplastic is in connection with
the transfer of ink, not texture (see, Reply Br. 9).
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988). In this instance, the evidence of record does not
adequately establish that the cited art would have made obvious the claimed
sequence of the steps of coating, reheating, and texturing. The art does not
teach this sequence, and the Examiner has not provided a persuasive
rationale of why a person of skill in the art would have chosen it.
Therefore, Appellant has demonstrated reversible error in the
rejection. The same reasons require reversal of Rejections II and III.
CONCLUSION
We REVERSE the rejection of claims 1, 2, 5-8, and 10 under
35 U.S.C. § 103(a) as unpatentable over Levenduskyin view of Berg.
We REVERSE the rejection of claims 3 and 4 under 35 U.S.C. § 103(a)
as unpatentable over Levendusky in view of Berg, and further in view of
Corns.
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Application 13/257 ,829
We REVERSE the rejection of claim 9 under 35 U.S.C. § I03(a) as
unpatentable over Levendusky in view of Berg, and further in view of
Krause.
REVERSED
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