Ex Parte Niesten et al

Patent Trial and Appeal Board

Jan 29, 2013

11512948 (P.T.A.B. Jan. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/512,948 08/30/2006 Meike Niesten PO-8802/BMS051075 1958
23416 7590 01/30/2013
NOVAK DRUCE CONNOLLY BOVE & QUIGG LLP
P O BOX 2207
WILMINGTON, DE 19899-2207
EXAMINER
LOEWE, ROBERT S
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
01/30/2013 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 MEIKE NIESTEN, JORG TILLACK,
and MICHAEL STRUWE
____________

Appeal 2011-004389
Application 11/512,948
Technology Center 1700
____________

Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection under 35 U.S.C. § 103(a) of claims 16-31 are rejected under
35 U.S.C. §103(a) as being unpatentable over Kubitza in view of Reiners.
The prior art relied upon by the Examiner in rejecting the claims on
appeal are:
Kubitza et al. (Kubitza) 5,057,370 Dec. 24, 1991
Reiners et al. (Reiners) US 2005/0222368 A1 Oct. 6, 2005

Appeal 2011-004389
Application 11/512,948

2
We sustain the above rejection based on the findings of fact,
conclusions of law, and rebuttal to arguments expressed by the Examiner in
the Answer.
We add, in response to Appellants’ argument that one skilled in the art
concerned with high hardness coatings would not be motivated to consider
the teachings of Reiners (Br. 4-5), that the reason for combining references
does not have to be identical to that of the applicant in order to establish
obviousness. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). “As
long as some motivation or suggestion to combine the references is provided
by the prior art taken as a whole, the law does not require that the references
be combined for the reasons contemplated by the inventor.” In re Beattie,
974 F.2d 1309, 1312 (Fed. Cir. 1992).
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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