Bayerische Motoren Werke Aktiengesellschaft

Patent Trials and Appeals Board

Apr 1, 2020

14565670 - (D) (P.T.A.B. Apr. 1, 2020)

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.
14/565,670 12/10/2014 Christian ROOS 080437.66811US 9818
23911 7590 04/01/2020
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
MCGRATH, ERIN E
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
04/01/2020 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):
edocket@crowell.com
mloren@crowell.com
tche@crowell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CHRISTIAN ROOS and FLORIAN OEFELE
____________________

Appeal 2019-005042
Application 14/565,670
Technology Center 3700
____________________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

BAHR, 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 1, 3, 5, 7–11, 13, and 14. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Bayerische Motoren
Werke Aktiengesellschaft. Appeal Br. 2.
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THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method for laser remote welding of two coated sheets, the
method comprising the acts of:
directing a laser beam onto the two coated sheets to be
joined to one another and guiding the laser beam on the two
coated sheets by way of a scanner;
producing an end fillet weld on a lap joint between the
two coated sheets in order to join the two coated sheets to one
another;
continuously recording images of a production of the end
fillet weld, via a camera;
comparing the continuously recorded images to a desired
weld course by identifying a position of the generated end fillet
weld on the recorded images and comparing a course of the
generated end fillet weld to a step offset that is formed by an
abutment between the two coated sheets that have not yet been
welded;
determining an actual position of the laser beam;
calculating a correction movement amount; and
correcting a path of the laser beam to match it to the
desired weld course, based on the correction movement amount
to ensure continuous production of the end fillet weld.
EVIDENCE
The prior art relied upon by the Examiner is:

2 An English translation of Becker was made of record on September 22,
2016, and citations to Becker refer to pages from the English translation.
Name Reference Date
Xie US 6,608,278 B1 Aug. 19, 2003
Boillot US 2005/0247681 A1 Nov. 10, 2005
Schwarz US 2012/0234805 A1 Sept. 20, 2012
Michihashi JP 61 – 159292 A July 18, 1986
Becker2 DE 10 2010 005 896 A1 Oct. 14, 2010
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REJECTIONS
I. Claims 3, 13, and 14stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.3
II. Claims 1, 7–9, 11, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Becker and Schwarz.
III. Claim 3 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Becker, Schwarz, and Michihashi.
IV. Claim 5 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Becker, Schwarz, and Xie.
V. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Becker, Schwarz, and Boillot.
OPINION
Rejection I — Indefiniteness
Claim 3 recites “vaporizing coatings of the two coated sheets with the
laser beam in a region of the end fillet weld to be produced; and
subsequently removing the coatings of the two coated sheets with the laser
beam.” Appeal Br. 16 (Claims App.). The Examiner’s stated basis for
rejecting this claim as indefinite is that “[i]t is unclear how the second step
relates to the first, since ‘vaporizing’ a coating is a way of removing a
coating.” Final Act. 3. The Examiner rejects claim 13 as being indefinite
for lacking proper antecedent basis for “the recorded images.” Id.;
Ans. 3, 10.

3 The Examiner’s inclusion of claim 15 in the statement of this rejection on
page 2 of the Final Action is presumed to be an inadvertent error, as this
claim was cancelled in the amendment filed March 15, 2018, and, thus, is
not involved in this appeal.
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Appellant does not present any arguments contesting these rejections.
See Appeal Br. 4–14 (presenting arguments only with respect to the
rejections under 35 U.S.C. § 103(a)); Reply Br. 2–10. Consequently,
Appellant has waived any argument of error, and we summarily sustain the
Examiner’s rejection of claims 3, 13, and 14 under 35 U.S.C. § 112, second
paragraph. See In re Berger, 279 F.3d 975, 984–85 (Fed. Cir. 2002)
(holding that the Board did not err in sustaining a rejection under 35 U.S.C.
§ 112, second paragraph, when the appellant failed to contest the rejection
on appeal); see also 37 C.F.R. § 41.31(c) (“An appeal, when taken, is
presumed to be taken from the rejection of all claims under rejection unless
cancelled by an amendment filed by the applicant and entered by the
Office.”).

Rejection II — Obviousness based on Becker and Schwarz
Claims 1, 8, and 11
In contesting this rejection, Appellant presents arguments for
independent claim 1 (see Appeal Br. 4–10) and does not separately argue
dependent claims 8 and 11 (see id. at 10–14). We select claim 1 as
representative, and claims 8 and 11 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
The Examiner finds that Becker teaches a method for laser welding
that includes, in relevant part,
continuously recording images of a production of the end
fillet weld (Par. 0035), via a camera (20, Fig. 2a; Par. 0015);
determining an actual position of the laser beam (the
position of ‘the laser beam focus’ as in Par. 0052),
calculating a correction movement amount (“online
position detection” is performed by the camera, after which “the
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laser scanner mirrors are used to position correction,” Par. 0035
according to lines 6–7 or Par. 0021), and
correcting a path of the laser beam to match it to the
desired weld course, based on the correction movement amount
to ensure continuous production of the end fillet weld
(Par. 0034–0035, Par. 0052, and Par. 0021 lines 6–10).
Final Act. 4. The Examiner finds that Becker does not disclose “comparing
the continuously recorded images to a desired weld course by identifying a
position of the generated weld on the recorded images and comparing a
course . . . of the generated weld to the joint between the two coated sheets
that have not yet been welded.” Id. However, the Examiner finds that
Schwarz discloses
a laser welding process including the step of comparing the
recorded images (of a produced weld, joint 62, Fig. 2A, Par.
0049) to a desired weld course (60, Fig. 2A, Par. 0048) by
identifying a position of the generated weld on the recorded
images and comparing a course of the generated weld to an
offset that is formed by an abutment between the two coated
sheets that have not yet been welded (Par. 0055).
Id. at 4–5. The Examiner determines that
[m]odifying the apparatus of Becker by adding the step of
comparing, taught by Schwarz (and applied to the lap joint with
step offset of Becker) would have been obvious to one of
ordinary skill in the art, at the time of invention, for the purpose
of allowing the system to compensate for changes to the joint
that may arise mid-welding, such as “deformations during the
joining process or modifications due to...[the use of a] clamping
device” (Schwarz, Par. 0064).
Id. at 5 (second alteration in original).
Appellant argues that Schwarz fails to disclose the “comparing” step
recited in claim 1. See Appeal Br. 5–7. In particular, Appellant asserts that
Schwarz only discloses “a leading light source that is ahead of the area being
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welded, which illuminates said area so that geometric data of the site to be
welded can be recorded with a camera. Schwarz, however expressly
discloses that i[t]s teachings regarding geometry correspond to height, not to
a ‘step offset.’” Id. at 5; see also id. at 7 (asserting that “Schwarz is silent
regarding any ‘step offset’”). Appellant also contends that
Becker merely teaches a wire fed type of welding process, in
which the laser head detects the position of the wire being fed
to make a correction. Nowhere, however, does Becker disclose
or even suggest “comparing the continuously recorded images
to a desired weld course by identifying a position of the
generated end fillet weld on the recorded images and comparing
a course of the generated end fillet weld to a step offset that is
formed by an abutment between the two coated sheets that have
not yet been welded,” as is required by Appellant[’s] claim.
Reply Br. 5 (underlining omitted). We are not persuaded by these
arguments against Becker and Schwarz because they attack the references
individually rather than as combined by the Examiner in the rejection.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
Here, the Examiner relies on Schwarz for teaching a step of
comparing recorded images to a weld course by identifying the generated
weld and comparing the course of the generated weld to a joint formed by
abutting sheets. See Final Act. 4–5; see also Ans. 12 (explaining that
Schwarz “teaches comparing a continuously recorded image (of the
produced weld, Par. 0049) to a desired weld course (the site 60 to be joined)
and comparing a course of the generated weld to a joint between two sheets
which have not yet been welded (Par. 0055)”). The Examiner explains that
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Schwarz does not specifically teach comparing “to a step
offset,” since Schwarz teaches a butt joint, not a lap joint.
However, Becker’s invention is drawn to a method of welding a
lap joint, and a step offset is an inherent component of a lap
joint (Applicant states in Par. 0014 of the Specification: “the
step offset between the sheets...is necessarily present on
account of the overlap.”).
Ans. 12; see also id. (explaining that “Becker discloses the joint being an
offset that is formed by an abutment between the two coated sheets that have
not yet been welded (Figs. 1a and Par. 0019)”). In other words, the
Examiner’s rejection does not rely on either Becker or Schwarz individually
as teaching the “comparing” step, but rather, the Examiner determines that
the combined teachings of the references render obvious the disputed
limitation. See Final Act. 4–5; see also Ans. 12 (explaining that “a
modification of Becker by Schwarz in which the position of the generated
weld is identified, and in which the course of the generated weld is
compared with an unwelded joint, necessarily results in comparing the
course of the generated weld with a step offset, because the step offset is an
inherent part of an unwelded lap joint”). Appellant’s arguments against the
references individually do not apprise us of error in the Examiner’s
determination that the disputed limitation is rendered obvious by the
combined teachings of Becker and Schwarz.
Appellant argues that “Becker and Schwarz do not disclose the
claimed ‘continuously recording images of a production of the end fillet
weld, via a camera.’” Appeal Br. 7 (underlining omitted). We are not
persuaded by this argument. In support of the argument, Appellant merely
reproduces portions of Becker cited by the Examiner and asserts that Becker
“is silent” with regard to “continuously recording images of a production of
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the end fillet weld, via a camera,” as recited in claim 1. See id. (quoting
paragraphs 15 and 35 of Becker). However, Appellant does not offer any
explanation as to why the disclosure of Becker fails to teach or suggest the
disputed limitation. The Examiner takes the position that paragraph 35 of
Becker “discloses a continuous recording.” Ans. 13; see id. (explaining that
“[a]n image of the weld production is continuously recorded by a camera”).
In this regard, Appellant does not persuasively refute the Examiner’s
position.
Appellant argues that “Becker and Schwarz do not disclose the
claimed ‘determining an actual position of the laser beam.’” Appeal Br. 7
(underlining omitted). In particular, Appellant asserts that “Becker merely
teaches determining the position of the joint, and expressly teaches ‘a target
value predetermined for the laser.’” Id. at 8 (underlining omitted).
Appellant further asserts in the Reply Brief that
a welding system may function by estimating a position of the
welding head, and then correcting the estimated position of the
welding head based on the actual position of the joint. This is
precisely how Becker operates. And, in such a system,
“determining an actual position of the laser beam” is not
necessary. Such a system would still function because the weld
head would be corrected to match the actual location of the
joint being welded.
Reply Br. 6. We are not persuaded by Appellant’s argument.
Regarding the step of “determining an actual position of the laser
beam,” Appellant’s Specification describes that
recorded images can be evaluated with regard to the weld
course with reference to the step offset between the sheets,
which is necessarily present on account of the overlap. As a
result of the step offset, the position of the generated fillet weld
can be easily identified on the recorded images and correlated
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with the step offset. This then allows a determination of the
actual position of the laser beam and the calculation of a
corrective movement, which is then realized by appropriate
conversion by use of the scanner or the scanner mirror
incorporated therein.
Spec. ¶ 14; see also id. ¶ 25 (describing “two coated flat sheets 10 and 20,
which are arranged overlapping one another or with a lap joint and are
joined to one another by material-to-material bonding by way of a straight
end fillet weld 30”). In other words, according to the Specification, the
actual position of the laser beam is determined by correlating the position of
the generated weld with the step offset produced by the sheets overlapping
(i.e., a lap joint). Determining the position of the laser beam relative to the
identified weld joint position allows a corrective movement to be calculated.
Becker discloses that
a detection device is provided which can be arranged in or on
the laser head. This serves to determine the position of the joint
to the component relative to the laser beam focus. The
detection device is operatively coupled with the electronic
control of the laser head so that detected by the detection device
signals can be validated by an included advantageous control
computer. If it is determined that the location of the joining
point is deviated from a predetermined target value for the laser
beam focus, can take place by the transmission of
corresponding correction values to the electronic control device
of the laser head, a correction of the position of the laser beam
focus.
Becker ¶ 52. In other words, Becker determines the position of the joint
relative to the laser beam focus so that, if the joint deviates from the laser
beam focus, the position of the laser beam focus is corrected. Appellant has
not set forth sufficiently persuasive evidence or technical reasoning to
convince us of a patentable distinction between Becker’s determining the
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position of the laser beam focus relative to the joint, and “determining an
actual position of the laser beam,” as recited in claim 1, when read in view
of the Specification.
Appellant argues that “Becker and Schwarz do not disclose or suggest
the claimed ‘calculating a correction movement amount.’” Appeal Br. 8
(underlining omitted). Appellant reproduces a portion of paragraph 21 of
Becker (see id.) and asserts that “Becker merely teaches comparing
deviations between the actual position of the joint to that of a stored target
position, and then directing the laser to move to the actual position of the
joint” (id. at 9). We are not persuaded by Appellant’s argument.
The Examiner responds, referring to paragraph 21 of Becker, that
a “corrected control parameter” is determined (i.e., calculated)
by comparing an actual position of a joint with a target position
of a joint, and the laser head is moved an amount according to
these corrected control parameters. Without calculating a
correction movement amount, the apparatus would not know
how much to move the laser head to correct the path.
Ans. 15. In this regard, Appellant does not persuasively refute the
Examiner’s position. See Reply Br. 7 (asserting only that “the Examiner
fails to rebut Appellant[’s] arguments regarding how Becker operates”).
Appellant does not provide persuasive evidence or technical explanation to
apprise us of error in the Examiner’s interpretation that Becker’s corrected
control parameter constitutes “a correction movement amount,” as recited in
claim 1. See Ans. 15.
Appellant argues that “Becker and Schwarz do not disclose or suggest
the claimed ‘correcting a path of the laser beam to match it to the desired
weld course, based on the correction movement amount to ensure continuous
production of the end fillet weld.’” Appeal Br. 9 (underlining omitted).
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Appellant reproduces a portion of paragraph 21 of Becker and asserts that
“Becker corrects the path of the laser bea[m] to match it to actual position of
the joint, not to match it to the desired weld course, as is required by
independent claim 1.” Id. (underlining omitted). Appellant also reproduces
a portion of paragraph 52 of Becker (see id. at 9–10) and asserts that
“Becker emphasizes that its method corrects the path of the laser bea[m] to
match it to actual position of the joint, not to match it to the desired weld
course, as is required by independent claim 1” (id. at 10 (boldface and
underlining omitted)). We are not persuaded by Appellant’s argument.
The Examiner responds in the Answer that “the desired weld course is
along the joint as this is the purpose of joint welding. Thus, Becker
discloses correcting the path of the beam to match the desired weld course.”
Ans. 15. In this regard, Appellant does not persuasively refute the
Examiner’s position. Moreover, Appellant’s assertion in the Reply Brief
that “the art of record fails to disclose or suggest a ‘correction movement
amount’” (Reply Br. 7) is unpersuasive here for the same reasons discussed
above with respect to the Examiner’s finding that Becker discloses
“calculating a correction movement amount,” as recited in claim 1.
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 1 would have been
obvious. Accordingly, we sustain the rejection of claim 1, and claims 8 and
11 falling therewith, as unpatentable over Becker and Schwarz.

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Claim 7
In rejecting claim 7, which depends from claim 1, the Examiner finds
that “Becker discloses checking a quality of the produced end fillet weld
(Par. 0055: ‘images of...welding operations can be evaluated online...match
captured actual values with desired values.’).” Final Act. 5. Appellant
contests this finding, asserting that “Becker merely teaches evaluating joints
or the welding process.” Appeal Br. 11. We agree with Appellant that a
sustainable case of obviousness has not been established.
Becker discloses “that captured images of joints or welding operations
can be evaluated online, the designated storage media can match captured
actual values with desired values.” Becker ¶ 55. The Examiner takes the
position that Becker “teach[es] evaluating the joint or welding processes.
The purpose of evaluating a joint or welding process is to determine whether
or not the quality of the weld is suitable.” Ans. 17. However, although
captured images of the welded joint may be capable of being used to check
the quality of the weld, the Examiner does not point to sufficient disclosure
in Becker that evaluating captured images of the welded joint necessarily
involves “checking a quality of the produced end fillet weld” (e.g.,
concerning spatter, pores, cracks).4 Thus, the Examiner’s finding that
Becker discloses the disputed limitation lacks adequate evidentiary support.
Accordingly, we do not sustain the rejection of claim 7 as
unpatentable over Becker and Schwarz.

4 Appellant’s Specification describes “checking the quality of the generated
end fillet weld, for example with regard to spatter, pores, cracks and the
like.” Spec. ¶ 17.
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Claim 9
The Examiner finds that “Becker discloses the step of, before
producing the end fillet weld, determining the desired weld course (Par.
0066).” Final Act. 5. Appellant argues that “Becker merely teaches
predetermining the location of the laser focus. Becker, however, does not
disclose or even suggest the claimed ‘before producing the end fillet weld,
determining the desired weld course.’” Appeal Br. 12 (boldface and
underlining omitted). We are not persuaded by this argument.
The Examiner responds in the Answer, referring to paragraph 67 of
Becker, that “[t]he set of desired positions of the laser focus is equivalent to
the desired weld course.” Ans. 18. In this regard, Appellant does not
specifically address or persuasively refute the Examiner’s position. Thus,
Appellant does not apprise us of error in the Examiner’s finding that Becker
discloses “determining the desired weld course,” as recited in claim 9.
Accordingly, we sustain the rejection of claim 9 as unpatentable over
Becker and Schwarz.

Claims 13 and 14
In contesting the rejection of independent claim 13, Appellant initially
relies on the arguments presented for patentability of independent claim 1.
See Appeal Br. 10 (stating that “claim 13 recites similar features to those
discussed above, [and] the rejection of claim 13 is respectfully traversed for
at least the same reasons discussed above, regarding the rejection of
independent claim 1”). However, the Examiner responds in the Answer that
she “respectfully disagrees that claim 13 may be treated in the same way as
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claim 1. Claim 1 is a method claim, while claim 13 is drawn to a system.”
Ans. 16. The Examiner explains that,
[f]or example, the limitation in claim 13 “a scanner that guides
a laser beam onto the two coated sheets to be joined to one
another” is construed by the examiner as “a scanner” capable of
guiding a laser beam onto two coated sheets to be joined to one
another. Becker discloses this as set forth above.
Id.
Appellant argues in the Reply Brief that the Examiner’s “claim
interpretation is improper . . . because [it] lacks express support in the claim
language. This is because nowhere do Appellant[’s] claims recite ‘capable
of.’” Reply Br. 8. This argument does not apprise us of error in the
Examiner’s rejection because Appellant has not pointed to any evidence
suggesting that the Examiner’s interpretation is inconsistent with the
Specification, much less offered an alternative claim construction for the
claim limitation.5 Appellant also has not explained why the Examiner’s
finding that Becker’s laser head 10 corresponds to the claimed “scanner”
(Final Act. 6) is in error, nor explained why Becker’s laser head fails to
satisfy the claim language purportedly misconstrued by the Examiner.
Moreover, to the extent that Appellant suggests that the Examiner
fails to give certain functional claim limitations “full patentable weight”
(Reply Br. 8), this argument is both untimely and unconvincing. The
argument is untimely because it was raised for the first time in the Reply

5 Notably, the particular claim language “a scanner that guides a laser beam
onto the two coated sheets to be joined to one another” does not contain the
phrase “adapted to” or “configured to.” Thus, Appellant’s reliance on In re
Giannelli, 739 F.3d 1375 (Fed. Cir. 2014), does not appear to be pertinent to
the language of claim 13 interpreted by the Examiner on page 16 of the
Answer.
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Brief and is not responsive to an argument raised in the Answer. See
37 C.F.R. § 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d 1473, 1474
(BPAI 2010) (designated informative) (“[T]he reply brief [is not] an
opportunity to make arguments that could have been made in the principal
brief on appeal to rebut the Examiner’s rejections, but were not.”).
Appellant does not specify the particular limitations Appellant believes the
Examiner misinterpreted, much less offer any explanation as to how the
Examiner interpreted such claim limitations as not having patentable weight.
Thus, Appellant does not apprise us of error in the rejection.
Accordingly, we sustain the rejection of claim 13, and its dependent
claim 14, for which Appellant does not present any separate arguments (see
Appeal Br. 10–14), as unpatentable over Becker and Schwarz.

Rejection III — Obviousness based on Becker, Schwarz, and Michihashi
Appellant does not present any separate arguments contesting this
rejection of claim 3, and, thus, appears to rely on the arguments asserted for
claim 1, from which claim 3 depends. See Appeal Br. 4–14 (presenting
arguments only with respect to Rejections II, IV, and V). For the reasons
discussed above, these arguments fail to apprise us of error in the rejection
of claim 1, and, likewise, fail to apprise us of error in this rejection of
claim 3. Accordingly, we sustain the rejection of claim 3 as unpatentable
over Becker, Schwarz, and Michihashi.

Rejection IV — Obviousness based on Becker, Schwarz, and Xie
In rejecting dependent claim 5, the Examiner finds that “Becker fails
to disclose[] first vaporizing the coatings of the sheets.” Final Act. 8.
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However, the Examiner finds that “Xie teaches a welding process including
the steps of, first, vaporizing coatings of the two coating sheets with a
separate laser beam (42 in Figure) in a region of the weld to be produced
and, second, producing a weld with the coatings removed via a separate laser
beam (40).” Id. The Examiner determines that it would have been obvious
“to modify the method of Becker by first vaporizing coatings of the two
sheets for the purpose of removing a zinc coating which is the cause of weld
zone defects (Col. 6, lines 1–15).” Id. The Examiner also explains in the
Answer that
Xie teaches a leading and a trailing laser beam (42 and 40,
respectively) which vaporize coatings, and the end fillet weld is
not required to be taught by Xie as it is present in the primary
reference, Becker–and thus the modification of Becker . . . by
Xie results in a leading and trailing laser beam vaporizing
coatings in a region of the end fillet weld to be produced.
Ans. 17.
In contesting this rejection, Appellant reproduces the cited portion of
Xie (Appeal Br. 10 (quoting Xie, col. 6, ll. 1–15)) and asserts that Xie
does not disclose or suggest a leading and a trailing laser beam,
let alone “vaporizing coatings of the two coated sheets with a
separate laser beam in a region of the end fillet weld to be
produced, wherein the separate laser beam leads the laser beam
that produces the end fillet,” as is expressly required by
independent claim 5.
Id. at 11 (boldface and underlining omitted); see Reply Br. 8–9 (asserting
that the reproduced passages of Xie do not disclose or suggest the recited
claim elements). This contention is unpersuasive, however, because
Appellant does not include any explanation as to why the Examiner’s fact
finding is in error. Such statements do not constitute substantive arguments
for patentability of claim 5. Cf. In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
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2011) (holding that the Board had reasonably interpreted 37 C.F.R.
§ 41.37(c)(1)(vii) (the predecessor to 37 C.F.R. § 41.37(c)(1)(iv)) as
requiring “more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art”).
For the above reasons, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 5 would have been
obvious. Accordingly, we sustain the rejection of claim 5 as unpatentable
over Becker, Schwarz, and Xie.

Rejection V — Obviousness based on Becker, Schwarz, and Boillot
In rejecting claim 10, the Examiner finds that “Becker discloses the
determining of the desired weld course taking into account an optimization
of speed (Par. 0003), a sequence planning of a plurality of end fillet welds
(Par. 0031), and a cycle time optimization (Par. 0003).” Final Act. 9. The
Examiner finds that “Becker fails to disclose the determining taking into
account a shortening and smoothing of the weld course, and an accessibility
and collision check.” Id. However, the Examiner finds that “Schwarz
teaches ‘determining a desired weld course’ taking into account a shortening
and smoothing of the weld course (Par. 0018) (since the desired weld path is
updated in real time, any changes to the weld course are taken into account,
and if the weld seam is placed).” Id. The Examiner determines that it would
have been obvious, given the teachings of Schwarz, to take into account
shortening and smoothing in determining the weld course “for the purpose of
allowing the desired course to more closely match the real geometry of the
joint.” Id.
Appeal 2019-005042
Application 14/565,670

18
The Examiner also finds that “Boillot teaches ‘determining a desired
weld course’ taking into account an accessibility and collision check (Par.
0008 and 0010).” Final Act. 9. The Examiner determines that it would have
been obvious, given the teachings of Boillot, to take into account an
accessibility and collision check in determining the weld course “for the
purpose of ensuring that the path is accessible and that the tool and
workpiece or other objects will not collide.” Id.
Appellant contests the Examiner’s findings regarding the disclosures
of Becker, Schwarz, and Boillot as applied to each limitation recited in claim
10. See Appeal Br. 12–14. However, Appellant simply restates claim
elements, reproduces the corresponding portions of Becker, Schwarz, and
Boillot cited in the rejection, and asserts that the claim elements are not
found in the references. See id. at 13–14 (asserting that each reference “is
silent” as to the corresponding claim element for which it is cited in the
rejection). Appellant does not include any explanation as to why the
Examiner’s fact finding is in error. Appellant’s conclusory statements that
the cited references are “silent” as to claim limitations do not constitute
substantive arguments for patentability of dependent claim 10, and, thus, do
not identify error in the Examiner’s rejection. Cf. In re Lovin, 652 F.3d at
1357.
For the above reason, Appellant does not apprise us of error in the
Examiner’s determination that the subject matter of claim 10 would have
been obvious. Accordingly, we sustain the rejection of claim 10 as
unpatentable over Becker, Schwarz, and Boillot.
CONCLUSION
In summary:
Appeal 2019-005042
Application 14/565,670

19
Claim(s)
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
3, 13, 14 112(b) Indefinite 3, 13, 14
1, 7–9, 11,
13, 14
103(a) Becker, Schwarz 1, 8, 9, 11,
13, 14
7
3 103(a) Becker, Schwarz,
Michihashi
3
5 103(a) Becker, Schwarz,
Xie
5
10 103(a) Becker, Schwarz,
Boillot
10
Overall Outcome 1, 3, 5, 8–11,
13, 14
7
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 IN PART