Ex Parte Weiland

Patent Trial and Appeal Board

Feb 25, 2013

10533108 (P.T.A.B. Feb. 25, 2013)

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.
10/533,108 05/27/2005 Josef Weiland LORWER P37AUS 4794
84386 7590 02/25/2013
Daniels Patent Law PLLC
43 Centre Street
Concord, NH 03301
EXAMINER
MULLER, BRYAN R
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
02/25/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOSEF WEILAND
____________________

Appeal 2010-012116
Application 10/533,108
Technology Center 3700
____________________

Before: JAMES P. CALVE, HYUN J. JUNG, and
RICHARD E. RICE, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Josef Weiland (Appellant) appeals under 35 U.S.C. § 134 from a
rejection of claims 39-44, 46, 48-50, 52, 53, 55-76, and 78-85. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2010-012116
Application 10/533,108

2
THE CLAIMED SUBJECT MATTER
Claim 39, reproduced below, is illustrative of the claimed subject
matter:
39. An apparatus for machining a metallic workpiece
being one of strip or plate form and having first and
second opposed main surfaces and extending
therebetween at least an edge surface angularly
disposed relative to the first and second opposed main
surfaces, the apparatus performs at least one of
removing an oxide layer, grinding, deburrinq and
descalinq at least the edge surface of the workpiece,
wherein the apparatus comprises at least first,
second, third and fourth conveyor devices (2, 2, 2, 2)
and each of the first, the second, the third and the fourth
conveyor devices (2, 2, 2, 2) has at least one brush (3),
each of at least the first, the second, the third and the
fourth conveyor devices (2, 2, 2, 2) guides the
respective at least one brush (3) at least approximately
linearly along the first main surface and the edge
surface of the workpiece (1) to be machined
transversely with respect to an advance direction of the
workpiece (1), two of the conveyor devices (2,2) rotate
in opposite directions and are positioned for treating at
least the edge surface of the workpiece (1), the two
other conveyor devices (2,2) rotate in opposite
directions and are positioned for treating at least the
edge surface of the workpiece (1), and the first, second,
third and the fourth conveyor devices (2, 2) rotate so as
to guide the brushes (3) along an entirety of a length of
the apparatus available for the workpiece to pass
through; and
wherein the at least one brush of each of the first
and second conveyor devices machine substantially all
the edge surface of the workpiece in opposite directions,
and the at least one brush of each of the third and fourth
conveyor devices machine substantially all the edge
surface of the workpiece in opposite directions.
Appeal 2010-012116
Application 10/533,108

3
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Derby
Herrington
McCormick
Lisec
Hutchinson
US 559,166
US 2,767,413
US 2,958,882
US 5,237,716
US 5,634,397
Apr. 28, 1896
Oct. 23, 1956
Nov. 8, 1960
Aug. 24, 1993
Jun. 3, 1997

Wandres GmbH micro cleaning, “Ingromat-Cleaner CH29 Null-
Fehler-Strategie in der Produktion,” May 1999, pp. 4-7 (hereinafter
“Ingromat”).

THE REJECTIONS
The Appellant seeks our review of the following rejections:
Claims 39-44, 48-50, 52, 53, 55-75, and 85 stand rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Claims 78 and 79 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 39-42, 46, 48-50, 57-61, 71-74, and 78 stand rejected under 35
U.S.C. §103(a) as unpatentable over Ingromat or Ingromat and Herrington.
Claim 43 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ingromat and McCormick or Ingromat, Herrington, and McCormick.
Claim 44 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ingromat and Derby or Ingromat, Herrington, and Derby.
Claims 52, 55, 56, and 75 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ingromat and Herrington.
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Claims 53, 76, 79-81, and 83-85 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Ingromat and Lisec or Ingromat, Herrington,
and Lisec.
Claim 82 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Ingromat, Lisec, and Hutchinson or Ingromat, Herrington, Lisec, and
Hutchinson.
ANALYSIS
Written Description
The Examiner finds no support for the limitation “wherein the at least
one brush of each of the first and second conveyor devices machine
substantially all the edge surface of the workpiece . . . and the at least one
brush of each of the third and fourth conveyor devices machine substantially
all the edge surface of the workpiece . . . ,” recited by independent claim 39.
Ans. 4. The Examiner finds that the limitation suggests that at least one
brush from one conveyor machines the entire edge surface. Id.
The Appellant argues that paragraph [011] of the Specification points
out that known brushes and rollers are prevented from penetrating into and
machining cut-outs, holes, or apertures in a metal plate. Br. 9. The
Appellant states that the claims were amended to clarify that the brushes are
arranged and positioned to penetrate deeply into such cut-outs, holes, and
apertures to machine all cut surfaces and edges of the metal plate. Id. The
Appellant also argues that the Examiner is not giving the term
“substantially” the broadest reasonable interpretation and instead giving it a
narrow interpretation and that the broadest interpretation of the term should
encompass not only portions “but all the edge surface” and “all, i.e., the
entire and complete cut surface and cut edges.” Br. 10-11 and 13. The
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Appellant further argues that the disclosure explains and describes an
apparatus intended for the simultaneous removal of an oxide layer on the
entirety of the main surfaces, cut surfaces, and edge surfaces of the metal
workpiece, which improves over known methods that require subsequent
machining steps on different machines to remove the oxide layers from all
the cut surfaces of the metal plate. Br. 11 (referring to paragraphs [009],
[069], and [070] of the Specification); see also id. at 12. The Examiner
responds there is no support that “each one of the conveyors is capable of
individually machining the entire edge of a workpiece.” Ans. 23-24.
The recitation of claim 39 that “the at least one brush of each of the
first and second conveyor devices machine substantially all the edge
surfaces of the workpiece” means that the at least one brush of the first
conveyor device and the at least one brush of the second conveyor device
machine substantially all of the edge surfaces of the workpiece, and the
recitation of claim 39 that “the at least one brush of each of the third and
fourth conveyor devices machine substantially all the edge surfaces of the
workpiece” means that the at least one brush of the third conveyor device
and the at least one brush of the fourth conveyor device machine
substantially all of the edge surfaces of the workpiece. This is the only
reasonable construction of these recitations consistent with the
Specification.1 Indeed, the Examiner’s interpretation that each of the

1 Our reviewing court “has instructed that any such construction be
‘consistent with the specification, … and that claim language should be read
in light of the specification as it would be interpreted by one of ordinary skill
in the art.’” In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir.
2010)(quoting In re Bond, 910 F.2d 831, 833 (Fed. Cir. 1990)(quoting In re
Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983))); accord In re Morris, 127
F.3d 1048, 1054 (Fed. Cir. 1997) (“[I]t would be unreasonable for the PTO
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conveyors is capable of individually machining the entire edge of a
workpiece would exclude the Appellant’s preferred embodiment.2 In this
regard, paragraph [070] of the Specification states that “. . . according to the
invention with four conveyor devices 2, the workpiece is fully machined by
a single pass,” which indicates that the four conveyor devices, and not just
one, together machine the workpiece during a single pass. Further, Figures
1-4 and 18 show more than one conveyor device for machining all the edge
surfaces.
Accordingly, we cannot sustain the rejection of claim 39 and its
dependent claims 40-44, 48-50, 52, 53, 55-75, and 85 as failing to comply
with the written description requirement.
The Examiner also finds no support for the limitation “the first and
second conveyor devices (2, 2) both rotate so as to guide the brushes (3)
along an entirety of the edge surface of the workpiece,” as recited by
independent claim 78. Ans. 5. The Examiner states there is no support that
each of the brushes is guided along the entire edge surface of the workpiece.
Id. The Appellant relies on arguments provided with respect to claim 39.
Br. 17-18.
For the reasons discussed supra, we also cannot sustain the rejection
of claim 78 and its dependent claim 79 as failing to comply with the written
description requirement.

to ignore any interpretive guidance afforded by the applicant's written
description.”).
2 See Modine Mfg. Co. v. Int'l Trade Comm'n, 75 F.3d 1545, 1550
(Fed.Cir.1996) (A claim construction that excludes a preferred embodiment
“is rarely the correct interpretation; such an interpretation requires highly
persuasive evidentiary support.”).

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Obviousness based on Ingromat
The Examiner finds that Ingromat discloses an apparatus for
machining a workpiece and being obviously capable of removing material,
as required by claim 39. Ans. 6 (citing pages 16, 17, and 31 of Ingromat).
The Appellant argues that Ingromat does not disclose “removing an
oxide layer from a surface, grinding a surface or an edge and treating or
deburring a surface or edge of at least one of the first and second main
surfaces of the workpiece,” as required by claim 39. Br. 21. In particular,
the Appellant argues that the brushes of Ingromat wipe and do not machine
the side edges of holes and grooves in a workpiece. Br. 21-22. Appellant
also argues that the brushes do not machine a workpiece but instead clean a
top and bottom surface of a workpiece. Br. 19.
The Appellant’s arguments are persuasive. Ingromat does not
unambiguously indicate that it “performs at least one of removing an oxide
layer, grinding, deburring and descaling at least the edge surface of the
workpiece,” as recited by claim 39. Page 16 of Ingromat discloses an
“Ingromat-Web-Cleaner WB 30/H/A”; however, Ingromat does not clearly
reveal whether the cleaning includes “at least one of removing an oxide
layer, grinding, deburring and descaling.” Also, we cannot state that a
preponderance of the evidence supports the Examiner’s finding that the
brushes of Ingromat may be capable of at least partially removing an oxide
layer from a workpiece over a period of time with the pressure of the
brushes being adjustable by the height adjustment of the machine. Ingromat
does not clearly disclose whether its brushes can remove an oxide layer,
whether adjusting the pressure of its brushes can remove an oxide layer of its
web, or whether the brushes can have their period of time extended so as to
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meet both removing an oxide layer and the requirements of its “High-Speed-
Channel.”
Accordingly, we cannot sustain the rejection of claims 39-42, 46, 48-
50, 57-61, 63, 71-74 and 78 as unpatentable over Ingromat. The Examiner
does not rely on McCormick, Derby, Lisec, or Hutchinson for any finding
that remedies the deficiencies of Ingromat discussed supra. Ans. 16-18, 19-
23. Therefore, we cannot sustain the rejections of claims 43, 44, 53, 76, and
79-85 as unpatentable over Ingromat and at least one of McCormick, Derby,
Lisec, or Hutchinson.
Obviousness based on Ingromat and Herrington
The Examiner finds that Herrington discloses an apparatus used to
remove scale, which is well known in the art as being an oxide layer, and
discloses specific bristle material for brushes that is capable of removing the
oxide layer. Ans. 9-10. The Examiner also finds that the brushes of
Ingromat are removable and interchangeable. Ans. 10. The Examiner
concludes that it would have been obvious to provide Ingromat with brushes
having the bristles of Herrington to allow the Ingromat apparatus to remove
oxide layers as an alternative, interchangeable function for Ingromat. Br. 10.
The Appellant argues that Ingromat provides for merely cleaning a
surface without structurally working the workpiece, whereas Herrington is
intended to machine or work the surface of a workpiece to remove scale. Br.
22. The Appellant thus argues that Ingromat and Herrington provide
entirely and fundamentally different devices and functions. Br. 22. The
Examiner responds that both references provide an apparatus using rotating
brushes to treat flat narrow workpieces and the Examiner is proposing to
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modify the bristles on the brushes of Ingromat in view of the teachings of
Herrington. Ans. 26.
The Appellant’s argument is not persuasive as the Examiner’s
proposed modification provides the Ingromat apparatus with the function of
removing scale as taught by Herrington by modifying the brushes of
Ingromat with the bristles of Herrington. See Ans. 9-10. Thus, the
Examiner’s proposed modification considers the different devices and
functions of Ingromat and Herrington and provides a rationale for combining
the teachings of the two devices, which the Appellant has not shown is
unreasonable or lacks a rational underpinning.
The Appellant argues that replacing the brushes of Ingromat with the
brushes of Herrington would destroy the material to be cleaned in Ingromat.
Br. 23. However, a person of ordinary skill is also a person of ordinary
creativity, not an automaton. Therefore, such a skilled artisan could modify
Ingromat with the bristles of Herrington such that the brushes remove scale
without destroying the underlying material. Furthermore, the Appellant has
not shown that such a skilled artisan is incapable of modifying Ingromat
with Herrington as proposed by the Examiner without destroying the
material to be cleaned.
The Appellant also argues that the fundamental differences between
the cleaning in Ingromat and the machining in Herrington teach away from
the combination. Br. 23. The Appellant’s argument is not persuasive as the
Appellant has not identified any portion of either Ingromat or Herrington
that, upon reading, would lead one of ordinary skill in the art in a direction
divergent from the path taken by the Appellant or that criticizes, discredits,
or otherwise discourages the solution claimed.
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The Appellant further argues that the only basis for combining
Ingromat and Herrington is based on conjecture and hindsight. Br. 23.
However, the Examiner finds that Herrington discloses an apparatus with
multiple rotary brushes and that the brushes can remove scale. Ans. 9.
Thus, Herrington provides a reason and a suggestion to make the Examiner’s
proposed combination, so that there is no basis to conclude that the
Examiner improperly relied upon on conjecture or hindsight to reach a
conclusion of obviousness as the Appellant suggests.
The Appellant also argues Ingromat combined with Herrington is not
reasonable or feasible because neither reference discloses an apparatus with
opposing conveyor brushes which machine any, substantially all, or the
entire edge surface of the workpiece, as recited by claim 39. Br. 23. The
Appellant’s argument is not persuasive because the Examiner finds that
Ingromat teaches opposing conveyor brushes that clean edge surfaces of a
workpiece and Herrington teaches bristles that can machine. See Ans. 8-10.
For claims 43, 44, 52, 55, 56, and 75, which depend from claim 39,
the Appellant asserts the arguments for claim 39. Br. 27, 28. The Appellant
also asserts the arguments for claim 39 in arguing against the rejection of
independent claim 46. Br. 24.
As for independent claim 78, the Appellant argues that Ingromat
reveals nothing regarding machining the side edges of a workpiece. Br. 26.
However, the Examiner relies on the combination of Ingromat and
Herrington for the machining of side edges. Ans. 16 (referring to Ans. 6-
10). The Appellant also argues that Ingromat does not disclose that bristles
can do anything other than skim across the surface of a workpiece and that
there is no express or inherent disclosure that would lead one of skill in the
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art to modify the brushes so that they machine or treat the edge surface of a
workpiece, as suggested by the Examiner. Br. 27. While the presence of an
explicit reason to combine prior art references within the references
themselves is persuasive evidence that the combination would have been
obvious, there is no requirement that the references contain an explicit or
inherent reason for making the proposed combination.
For claims 76 and 80, the Appellant argues that Ingromat and
Herrington further combined with Lisec would be inoperable because Lisec
aligns rollers differently from the transverse sweeping rotation of Ingromat
and Herrington. Br. 28-29. However, the Examiner does not rely on Lisec
for alignment of rollers, and instead relies on Lisec as teaching angled
bristles. Ans. 21, 28-29.
The Appellant also argues that Ingromat teaches away from any sort
of combination with brushes aligned in the manner of Lisec and cites a
figure from Ingromat. Br. 30. The Appellant thus argues that Ingromat with
Herrington further combined with Lisec would be a fundamental structural
change to the transverse brush travel of Ingromat and Herrington. Id.
However, the figure cited by the Appellant does not appear in Ingromat but
appears in another document that the Examiner did not cite. See Br., Evid.
App’x 6 and Ans. 3. Thus, we are not persuaded.
For claim 82, which depends from claim 80, the Appellant asserts the
arguments for claim 80. Br. 30. We are not persuaded for the reasons
above.
Accordingly, for the reasons supra, we sustain the rejections of claims
39-44, 46, 48-50, 52, 53, 55-61, 71-76, and 78-85 as unpatentable over
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Ingromat and Herrington or Ingromat, Herrington, and at least one of
McCormick, Derby, Lisec, and Hutchinson.
DECISION
We reverse the rejection of claims 39-44, 48-50, 52, 53, 55-75, and 85
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We reverse the rejection of claims 78 and 79 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
We reverse the rejection of claims 39-42, 46, 48-50, 57-61, 71-74, and
78 under 35 U.S.C. §103(a) as unpatentable over Ingromat.
We affirm the rejection of claims 39-42, 46, 48-50, 57-61, 71-74, and
78 under 35 U.S.C. §103(a) as unpatentable over Ingromat and Herrington.
We reverse the rejection of claim 43 under 35 U.S.C. § 103(a) as
unpatentable over Ingromat and McCormick.
We affirm the rejection of claim 43 under 35 U.S.C. § 103(a) as
unpatentable over Ingromat, Herrington, and McCormick.
We reverse the rejection of claim 44 under 35 U.S.C. § 103(a) as
unpatentable over Ingromat and Derby.
We affirm the rejection of claim 44 under 35 U.S.C. § 103(a) as
unpatentable over Ingromat, Herrington, and Derby.
We affirm the rejection of claims 52, 55, 56, and 75 under 35 U.S.C. §
103(a) as unpatentable over Ingromat and Herrington.
We reverse the rejection of claims 53, 76, 79-81, 83, 84, and 85 under
35 U.S.C. § 103(a) as unpatentable over Ingromat and Lisec.
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We affirm the rejection of claims 53, 76, 79-81, 83, 84, and 85 under
35 U.S.C. § 103(a) as unpatentable over Ingromat, Herrington, and Lisec.
We reverse the rejection of claims 76, 80, and 81 under 35 U.S.C.
§ 103(a) as unpatentable over Ingromat and Lisec.
We affirm the rejection of claims 76, 80, and 81 under 35 U.S.C.
§ 103(a) as unpatentable over Ingromat, Herrington, and Lisec.
We reverse the rejection of claim 82 under 35 U.S.C. § 103(a) as
unpatentable over Ingromat, Lisec, and Hutchinson.
We affirm the rejection of claim 82 under 35 U.S.C. § 103(a) as
unpatentable over Ingromat, Herrington, Lisec, and Hutchinson.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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