Ex Parte Bodin

Patent Trial and Appeal Board

Aug 24, 2016

12310271 (P.T.A.B. Aug. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/310,271
2529 7590
MARK P, STONE
FILING DATE FIRST NAMED INVENTOR
02/17/2009 Hans Bodin
08/26/2016
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
HT-147 3909
EXAMINER
400 Columbus Avenue BRYANT,DAVIDP
Valhalla, NY 10595
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
08/26/2016 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):
stone92349@msn.com
aleitner.stonelaw@msn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HANS BODIN
Appeal2014-007097
Application 12/310,2 71
Technology Center 3700
Before LINDA E. HORNER, JILL D. HILL, and THOMAS F. SMEGAL,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Hans Bodin ("Appellant") appeals under 35 U.S.C. § 134(a) from the
Examiner's decision to reject claims 1-5, 7-10, and 18-25. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
Appeal2014-007097
Application 12/310,2 71
CLAIMED SUBJECT MATTER
Independent claims 1, 18, and 19 are pending. Claim 1, reproduced
below, illustrates the subject matter on appeal.
1. A method of forming a shaped steel product from
two blank elements, the steps of said method comprising:
forming a final shaped product in a single shaping
operation by placing together two blank elements (20, 21) with
an overlap (23); each of said two blank elements having an
inner edge and an outer edge such that an overlapping region of
said two blank elements is defined between said inner edges
thereof; selecting the two blank elements so that the
overlapping region thereof is greater in strength than either of
said two blank elements; welding said blank elements together
before shaping; heating said welded blank elements to
austenitizing temperature; and thereafter hot shaping and
hardening the portions of the two blank elements which overlap
simultaneously with hot shaping and hardening of the portions
of the two blank elements which do not overlap in a cooled
tool; wherein one of said blank elements defines a first end of
said final product, the other of said blank elements defines a
second end of said final product, and the overlapping portions
of said first and second blank elements define an intermediate
portion corresponding to said overlapping region of said final
product having a strength greater than that of either said first or
second ends of said final product.
REJECTIONS
I. Claims 1-3, 5, 7, 8, and 18-25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Goto (US 6,350,533 Bl; iss. Feb. 26, 2002),
Komatsu (US 3,703,093; iss. Nov. 21, 1972), as evidenced by Fukushima
(US 5,789,718; iss. Aug. 4, 1998). Final Act. 2.
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Appeal2014-007097
Application 12/310,2 71
IL Claims 4, 5, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Goto, Komatsu, and Chernoff (US 7,310,878 B2; iss. Dec.
25, 2007). Final Act. 6. 1
III. Claims 4, 5, and 8-10 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Goto, Komatsu, and Gehringhoff (US 6,524,404 B2;
iss. Feb. 25, 2003). Final Act. 7 .1
ANALYSIS
Independent claim 1 recites, inter alia, "selecting the two blank
elements so that the overlapping region thereof is greater in strength than
either of said two blank elements." Independent claims 18 and 19 contain
similar recitations.
The Examiner finds, in relevant part, that "it is inherent [in Goto] that
the intermediate portion has a greater strength than the first and second
blank sheets alone because it includes a combination of both the first and
second blank sheets." Final Act. 3.
Appellant argues that neither Goto nor Fukushima discloses that the
Examiner's proposed overlapping region (welded portion 3 in Goto and
interface Gin Fukushima) of the blanks is stronger than either of the blanks.
Appeal Br. 9. Appellant contends that US Patent No. 8,382,197 B2, iss.
Feb. 26, 2013 to Eberlein provides evidence that "a welded seam is a weaker
portion of the final product of two elements joined together." Id. Indeed,
Eberlein is directed to a B-column including a first steel plate welded to a
second steel plate, and Appellant's cited portion of Eberlein states that "the
1 The Final Action lists claim 19 as subject to Rejections II and III. The
Examiner clarifies that this was a typo, and that claim 19 is not subject to
Rejection II or Rejection III. Ans. 2.
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Appeal2014-007097
Application 12/310,2 71
goal in vehicle construction is not only to use stronger or harder steels, but
rather also to improve their welded bonds, because ... weld seams represent
the weakest point in the composite." Eberlein 1 :34--38.
The Examiner responds that Goto' s welded portion 3 "comprises the
thickness of both metallic sheets 1 and 2, thus having greater thickness than
either sheet individually," and contends that Goto's "increased thickness
inherently provides the overlapping region with greater compressive
strength." Ans. 5. The Examiner also notes that Eberlein refers only to
tensile strength and not compressive strength, and Appellant has not claimed
a particular strength criteria, "such that any strength may be used, including
compressive or tensile strength." Id.
Even if the Examiner is correct that Goto' s welded portion 3
"comprises the thickness of both metallic sheets 1 and 2," Appellant has the
better argument. Inherency cannot be established by mere possibilities or
even probabilities. The fact that a certain result or characteristic may be
present in cited art is not sufficient to establish the inherency of that
characteristic. See In re Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993). The
Examiner "must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art."
Ex parte Levy, 17 USPQ2d 1461, 1464 (BP AI 1990) (emphasis in original).
The Examiner supports a finding that Goto' s welded portion 3 is
stronger than either of the metal sheets 1, 2 by assuming that the illustrated
amount of overlapped material provides such increased strength, despite a
weld being present. No factual evidence is provided to support this
assumption, even regarding compressive strength. Such speculation is
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Appeal2014-007097
Application 12/310,2 71
overreaching on the Examiner's part. The Examiner has not made the initial
factual findings required to establish prima facie obviousness. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (the examiner has the initial
duty of supplying the requisite factual basis and may not resort to
speculation or unfounded assumptions to overcome deficiencies in the
factual bases). We do not sustain the rejection of independent claims 1, 18,
and 19, and the remaining claims depending therefrom. Regarding claims 4,
5, and 8-10, the Examiner does not find that Chernoff or Gehringhoff cure
the deficiencies of Goto, Komatsu, and Fukushima.
DECISION
We REVERSE the rejection of claims 1-3, 5, 7, 8, and 18-25 under
35 U.S.C. § 103(a) as unpatentable over Goto, Komatsu, and Fukushima.
We REVERSE the rejection of claims 4, 5, and 8 under 35 U.S.C.
§ 103(a) as unpatentable over Goto, Komatsu, and Chernoff.
We REVERSE the rejection of claims 4, 5, and 8-10 under 35 U.S.C.
§ 103(a) as unpatentable over Goto, Komatsu, and Gehringhoff.
REVERSED
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