VALMET AKTIEBOLAG

Patent Trials and Appeals Board

Mar 23, 2021

2020001794 (P.T.A.B. Mar. 23, 2021)

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.
15/021,803 03/14/2016 Stefan MODEN 041013/476359 2240
826 7590 03/23/2021
ALSTON & BIRD LLP
ONE SOUTH AT THE PLAZA
101 SOUTH TRYON STREET
SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
TRAN, THIEN S
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
03/23/2021 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEFAN MODEN, MAGNUS HOEGMAN, and
ANDREAS HJAERTQVIST
____________________

Appeal 2020-001794
Application 15/021,803
Technology Center 3700
____________________

Before JOHN C. KERINS, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 7–12.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies VALMET AB as the real party in
interest. Appeal Br. 3.
2 Claims 1–6 are cancelled. Appeal Br. 19 (Claims App.)
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THE CLAIMED SUBJECT MATTER
Claim 7, the sole independent claim, is reproduced below.
7. A method of making a steel Yankee cylinder (1) by welding
a cylindrical shell (2) to two end walls (3, 4) such that the
cylindrical shell (2) and the end walls (3,4) together form the
Yankee cylinder (1), wherein each end wall (3,4) is welded to the
cylindrical shell (2) by a single circumferential weld between
opposing surfaces (5, 6) of each end wall and the cylindrical
shell (2) respectively, wherein the welding operation is carried
out exclusively from an outside of the Yankee cylinder (1), and
wherein the welding operation is carried out as a butt welding
operation in which a backing material (7) is used on an inside of
the Yankee cylinder (1) such that, between each end wall (3, 4)
and the cylindrical shell (1), a single weld bead (8) is formed
which extends all the way between the opposing surfaces (5, 6)
and completely fuses the opposing surfaces (5, 6) of each end
wall (3, 4) and the cylindrical shell (2), respectively.

EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Name Reference Date
Arikawa US 3,153,719 Oct. 20, 1964
Krasser WO 2012/125502 A1 Sept. 27, 2012
Deying CN203091112 (U) July 31, 2013
Mennucci WO 2013/117975 A1 Aug. 15, 2013

THE REJECTIONS
I. Claims 7, 11, and 12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Mennucci and Deying. Final Act. 3–6.
II. Claim 8 stands rejected under 35 U.S.C. § 103 as unpatentable
over Mennucci, Deying, and Arikawa. Id. at 6–7.
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III. Claims 9 and 10 stand rejected under 35 U.S.C. § 103 as
unpatentable over Mennucci, Deying, and Krasser. Id. at 7–8.
OPINION
Rejection I
The Examiner finds that Mennucci teaches
a method of making a steel Yankee cylinder (Fig 1, Yankee
cylinder 2, Pg 12) by welding a cylindrical shell to two end walls
such that the cylindrical shell and the end walls together form the
Yankee cylinder (Figs 1, 6, cylindrical shell 11, end heads 13,
15, Pg 12, Lines 30-33, the cylindrical shell 11 is joined to the
ends heads 13 and 11 by a weld made with circular weld beads
20).
Final Act. 3–4. The Examiner acknowledges that Mennucci fails to disclose
the claimed particulars of the welding, including, that (i) the welding is “a
single circumferential weld between opposing surfaces of each end wall and
the cylindrical shell respectively,” (ii) “the welding operation is carried out
exclusively from . . . outside of the Yankee cylinder,” and (iii) “the welding
operation is carried out as a butt welding operation in which a backing
material is used on . . . the inside of the Yankee cylinder.” Id. at 4. The
Examiner finds that Deying teaches a welding operation in accordance with
these particulars. Id. at 4–5 (citing Deying 2–3, Fig. 2). The Examiner also
finds that
Deying teaches that [a] conventional welding technique of
welding from both the inside and outside of the cylinder . . . as
seen in [F]igure 1 of Deying can be replaced with a suitable
welding structure that has backing material used on . . . the inside
of the cylinder and where a single weld bead is formed which
extends all the way between the opposing surfaces and
completely fuses the opposing surfaces of each end wall and the
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cylindrical shell, [and] the welding operation is carried out
exclusively from an outside (Fig. 2, Deying).
Id. at 9. The Examiner concludes that it would have been obvious to
“apply[] the known technique taught by Deying to the welded Yankee
cylinder of Mennucci” and this “would have yielded predictable results and
resulted in an improved system, namely, a welded Yankee cylinder where
improved welding quality and efficiency is ensured.” Id. at 6.
Appellant argues that a person of ordinary skill in the art would not
have recognized that Deying’s welding technique for centrifuge drums
would have been applicable to or provided predictable results in connection
with Mennucci’s Yankee cylinder. Appeal Br. 10, 13–15. In support of
such an argument, Appellant points to the Rule 37 C.F.R. § 1.132
Declaration of John T. Larkey (hereinafter the “Larkey Declaration” or
“Larkey Decl.”). The Larkey Declaration sets forth “the unique operational
stress loads that Yankee cylinders experience” and explains that “Deying is
focused solely upon manufacturing a product unrelated to and structurally
inferior to [Steel Yankee Dryers] [(]SYDs[)].” Larkey Decl. ¶¶ 6, 7, 11.
Appellant also points to the “strict certification standards and associated
safety considerations governing Yankee cylinder construction.” Appeal
Br. 12.
Although a Yankee cylinder and a centrifuge drum may be different,
we are not persuaded that any differences between them would have
precluded one of ordinary skill in the art from viewing Deying’s welding
technique as applicable to or providing predictable results in connection with
Mennucci’s Yankee cylinder. The Examiner finds that Mennucci’s Yankee
cylinder and Deying’s centrifuge drum “hav[]e very similar structure.” Final
Act. 9. In addition, Deying teaches that “welding quality requirements are
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higher” for “the centrifuge drum for high-speed rotating parts” and discusses
a “prior art” weld requiring both an “inner seam” and “outer seam.”
Deying 2. In light of the structural similarity, the explicit reference to higher
welding quality requirements in Deying, and the use of Deying’s single-
sided welding technique specifically to replace a known prior art welding
technique involving an inner seam and outer seam, we are not persuaded that
the differences between a centrifuge drum and Yankee cylinder would have
precluded one of ordinary skill in the art from recognizing that application of
the single-sided welding technique would have predictably resulted in a
replacement for a prior art welding technique involving an inner seam and
outer seam.
Appellant also argues that “Mennucci consistently describes
throughout its disclosure the importance of achieving a high reliability in
terms of mechanical strength” and refers to its “two welding beads.” Appeal
Br. 10–11. Appellant asserts that “Mennucci—and the teachings that it is
based upon—requires two distinct and separate welds and/or weld beads for
the purpose of satisfying safety concerns related specifically to Yankee
drying cylinders.” Id. at 11. To the extent Appellant is arguing that
Mennucci teaches away from the use of a single weld configuration, we do
not find such an argument convincing. In order to “teach away,” a reference
must “criticize, discredit, or otherwise discourage the solution claimed.” In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Here, Appellant has not
identified any passage in Mennucci that actually criticizes, discredits, or
discourages the use of a single weld configuration. We do not view
reference to the stresses to which Yankee drying cylinders are subjected, or
the reference to a “safe construction system” coupled with reference to
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Figure 3 (Appeal Br. 10–11), to be a teaching away of a single weld
configuration. We note that “[a] reference does not teach away . . . if it
merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting Fulton, 391 F.3d at 1201).
Appellant also argues that a person of ordinary skill in the art “would
have readily recognized that the only weld taught in Deying is not analogous
in location to the weld required for Yankee cylinder construction.” Appeal
Br. 15 (emphasis omitted). In particular, Appellant explains that “the single
weld in Deying is provided at an intersection point of its drum base and
barrel body,” whereas Mennucci’s Yankee cylinder “has a welded joint that
must be located between the outside of an inner surface of the head thereof
and a rib area of the shell” in an area “known as the transition area.” Id.
(emphasis omitted). Appellant continues that one of ordinary skill in the art
would have had to “still further physically move the location of the weld of
Deying from . . . its existing placement to that analogous to that provided in
Mennucci” and “[s]uch extensive modification would also have to further
assume that such combined alteration and movement of the provided weld
would not (adversely or otherwise) impact its strength, durability, and/or
reliability specifically in the context of satisfying Yankee cylinder
construction requirements.” Id. at 16.
We do not find this line of argument persuasive because it is not
responsive to the rejection articulated by the Examiner. The Examiner’s
rejection is not based on any modification of Deying, so one of ordinary skill
in the art would not need to “physically move the location of the weld of
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Deying from . . . its existing placement” as asserted by Appellant. Appeal
Br. 16. Rather, Mennucci already teaches its weld in the location required
by the claims, and no modification of Mennucci with respect to weld
location is necessary. As to the weld construction, the Examiner
acknowledges that Mennucci is silent regarding the use of a single weld
construction, and this is why the Examiner turns to Deying—i.e., for its
recognition that a double-weld configuration may be replaced by a single-
weld configuration. Moreover, Appellant does not explain adequately why
the fact that Mennucci’s weld is in a different position than Deying’s weld,
relative to a rib area, would preclude a person of ordinary skill in the art
from looking to Deying for its teaching regarding the replacement of a
double-weld construction technique with a single-weld construction
technique.
For the foregoing reasons, we do not find that the Examiner erred in
concluding that the combination of Mennucci and Deying renders obvious
the subject matter of claim 7. In contesting the rejection of dependent
claims 11 and 12, Appellant relies on the same arguments and reasoning we
found unpersuasive in connection with independent claim 1. Appeal Br. 8,
17. We sustain the Examiner’s rejection of claims 7, 11, and 12 under
35 U.S.C. § 103(a) as unpatentable over Mennucci and Deying.
Rejections II and III
Appellant relies on the same arguments and reasoning we found
unpersuasive in connection with independent claim 7 as the basis for seeking
reversal of the rejection of dependent claims 8–10. Appeal Br. 8, 17.
Accordingly, for the same reasons discussed above in connection with the
rejection of claim 7, we also sustain the rejections, under 35 U.S.C. § 103,
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of: claim 8 as unpatentable over Mennucci, Deying, and Arikawa; and
claims 9 and 10 as unpatentable over Mennucci, Deying, and Krasser.

DECISION
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
7, 11, 12 103 Mennucci, Deying 7, 11, 12
8 103 Mennucci, Deying,
Arikawa
8
9, 10 103 Mennucci, Deying,
Krasser
9, 10
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED