Ex parte Vondracek et al.

Board of Patent Appeals and Interferences

Mar 31, 1998

08098594 (B.P.A.I. Mar. 31, 1998)

Application for patent filed July 28, 1993.1
As far as can be determined by the Board, a response 2
to the final rejection was received August 30, 1995, from
appellants. The response was responded to by the examiner
(continued...)
1
Paper No. 21
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte HANS VONDRACEK
and HEINZ KROBER
______________
Appeal No. 96-4172
Application 08/098,5941
_______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge,
ABRAMS and PATE, Administrative Patent Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims
16, 17, 19 through 22 and 28 through 30. These are the only
claims remaining in the application.2
Appeal No. 96-4172
Application 08/098,594
(...continued)2
in an Advisory action mailed on October 26, 1995. Evidently,
the August response to the final rejection did not include any
amendments to the clams. These papers are missing from the file.
2
The claimed invention is directed to an apparatus for hot
coiling curved helical springs. A curved helical spring is one
in which the central axis of the spring is bent. With reference
to Figure 1, the apparatus includes a kiln 1 for heating rod
stock, and a roller conveyor 2,3 which conveys the hot rod to a
coiling bench 4. The coiled hot rod 4 is conveyed to a spring
curving tool 5 which curves the spring and submerges the spring
into the quenching tub 6.
Claim 28, reproduced below, is further illustrative of the
claimed subject matter.
28. Apparatus for manufacturing hot-coiled helical springs
with a bent major central axis that are curved when unstressed
from sections of wire or rod, comprising: heating means for
heating sections of wire or rod to coiling temperature; coiling
means communicating with said heating means for coiling the
heated sections and forming a straight spring; curving mean
downstream of said coiling means for receiving said straight
spring from said coiling means for curving said spring to a
specific shape taken by said spring when in the unstressed state;
said coiling means having a kiln, rollers, and a coiling bench,
said rollers conveying the heated sections from said kiln to said
coiling bench; a quenching tub communicating with said curving
means for quenching said spring after leaving said curving means;
said curving means curving helical springs between said coiling
bench and said quenching tub; a drum rotating over said tub and
partially immersed in said tub, said curving means comprising a
Appeal No. 96-4172
Application 08/098,594
3
plurality of spring-curving tools distributed around said drum
and immersed into said tub by said drum, said kiln, rollers, and
coiling bench forming a hot-coiling production line, said central
axis being bent as a whole even when free of load.
The references of record relied upon by the examiner as
evidence of obviousness are:
Hobracht 1,816,377 July 28, 1931
Widgren 2,218,864 Oct. 22, 1940
Bayerische Motoren Werke
(Great Britain) 1,198,713 July 15, 1970
Claims 16, 17, 19-22, and 28-30 stand rejected under
35 U.S.C. § 103 as unpatentable over Widgren in view of the
British patent to BMW and Hobracht.
According to appellants, the claims do not stand or fall
together. However, the appellants have not provided separate
arguments with respect to the claims on appeal, excepting claim
19, which was separately argued on page 5 of the brief.
Consequently, all claims, excepting claim 19, are held to stand
or fall with claim 28.
OPINION
We have carefully reviewed the rejection on appeal in light
of the arguments of the appellants and the examiner. As a result
of this review, we have determined that the prior art does not
establish a prima facie case of obviousness with respect to the
Appeal No. 96-4172
Application 08/098,594
4
subject matter of the claims on appeal. Therefore, the rejection
of these claims on obviousness grounds is reversed. Additionally,
pursuant to our authority under 37 CFR § 1.196(b), this Board
enters rejections under 35 U.S.C. § 112, first and second
paragraphs.
It is the examiner’s finding of fact that Widgren teaches a
means for “forming, tempering, flattening, bending, and cooling
the helical springs” (examiner’s answer, page 3).
Apparently, this finding comes from the first sentence of
Widgren’s specification. However, we must note that Widgren
relates to forming and tempering a helical spring only to the
extent that the spring is formed by flattening the end coil
portions so that the ends of the spring lie in a transverse plane
to the spring’s axis. See column 2, lines 5 through 16. In
fact, Widgren does not disclose forming a coil spring from a rod
stock. The fact that Widgren is only concerned with flattening
the ends of the spring and not coiling the stock can be seen with
reference to column 1 of page 3, lines 69 through 73. Therein,
Widgren discusses that the spring is formed by flattening the
ends. We further note that the Hobracht patent which deals with
leaf springs and the British patent to BMW also are not concerned
with coiling a proto-spring from a rod stock. Thus, the combined
Appeal No. 96-4172
Application 08/098,594
5
references, when considered collectively, do not teach the
coiling means of appellants’ independent claims on appeal. The
examiner and appellants reached this issue when they argued about
whether Widgren hot coils or cold coils the rod stock. Since a
coiling means is not disclosed in Widgren, it is impossible to
state, without making assumptions, whether Widgren uses cold work
or hot coiling to form the springs. Since the combined
references do not teach the claimed coiling means, the examiner
has not established a prima facie case of obviousness with
respect to the subject matter of the claims on appeal. The
obviousness rejection of these claims must be reversed.
Pursuant to our authority under 37 CFR § 1.196(b), this
Board enters the following rejections.
Claims 16, 17, 19 through 22, and 28 through 30 are rejected
under 35 U.S.C. § 112, first paragraph, as based on disclosure
which lacks descriptive support of the claimed invention. If a
person of ordinary skill in the art would have understood the
inventor to have been in the possession of the claimed invention
at the time of filing the description requirement is met. In re
Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1584 (Fed. Cir. 1996).
Precisely how close the original description must come to comply
with the description requirement must be decided on a case-by-
Appeal No. 96-4172
Application 08/098,594
6
case basis. Id. at 1172, 37 USPQ2d at 1581 (quoting Eiselstein
v. Frank, 52 F.3d 1035, 1039, 34 USPQ2d 1467, 1470 (Fed. Cir.
1995)). The three independent claims on appeal call for a
heating means for heating sections of wire or rod to coiling
temperature and coiling means communicating with said heating
means for coiling the heating sections to form straight springs.
Subsequently, these same claims recite that the coiling means has
a kiln, rollers, and a coiling bench. With reference to Figure
1, there is no disclosure in the drawings or in the written
specification of both a heating means and a kiln which forms part
of the coiling means. In fact, these two means for heating would
appear to be entirely redundant. At any rate, appellants’
disclosure does not convey the possession of a heating means and
a coiling means having its own separate kiln. For this reason,
the claims fail to comply with the description requirement of 35
U.S.C. § 112, first paragraph.
Claims 16, 17, 19 through 22 and 28 through 30 are rejected
under 35 U.S.C. § 112, second paragraph, for failing to particu-
larly point out and distinctly claim the subject matter appel-
lants regard as the invention. In view of the fact that all
three independent claims on appeal are directed to the subject
matter of a heating means and a coiling means, with said coiling
Appeal No. 96-4172
Application 08/098,594
7
means having its own kiln, these claims are misdescriptive or
inaccurate with regard to the subject matter that appellants
regard as the invention. Appellant’s claims improperly define
the kiln as part of a coiling means. However, according to
appellant’s disclosure the only structure which performs the
coiling function is the coiling bench which does not include a
kiln. These claims, which also specify the additional heating
means, are misdescriptive of the invention as disclosed.
SUMMARY
The rejection of claims 16, 17, 19 through 22 and 28 through
30 under 35 U.S.C. § 103 has been reversed. Pursuant to our
authority under 37 CFR § 1.196(b), we have entered a rejection of
claims 16, 17, 19 through 22 and 28 through 30 under 35 U.S.C.
§ 112, first and second paragraphs.
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
Appeal No. 96-4172
Application 08/098,594
-8-
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
HARRISON E. McCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
WILLIAM F. PATE, III )
Administrative Patent Judge )

Appeal No. 96-4172
Application 08/098,594
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