Ex Parte Brodt et al

Patent Trial and Appeal Board

Mar 31, 2017

13371610 (P.T.A.B. Mar. 31, 2017)

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.
13/371,610 02/13/2012 MARTIN BRODT TS/ZAT 1101 US-PAT-C 6047
96897 7590 03/31/2017
PATENT LAW OFFICES OF DR. NORMAN B. THOT
POSTFACH 10 17 56
RATINGEN, 40837
GERMANY
EXAMINER
OMGBA, ESSAMA
ART UNIT PAPER NUMBER
3746
MAIL DATE DELIVERY MODE
03/31/2017 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 MARTIN BRODT, ROLAND WENDLER,
LEONID LEVINSKI, and VICTOR SAMOILOV
Appeal 2015-005610
Application 13/371,610
Technology Center 3700
Before JENNIFER D. BAHR, LINDA E. HORNER, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Brodt et al. (“Appellants”)1 appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—29, 31—38, 40, and 41. See
Br. 3. Claims 30 and 39 have been canceled. See id. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
According to Appellants, the real party in interest is Thermission AG.
Br. 2.
Appeal 2015-005610
Application 13/371,610
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “relates to a press-hardened
component and a process for producing a press-hardened component.”
Spec. 12. Claims 1 and 13 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A process for producing a press-hardened component
from a semi-finished product made of unhardened, hot-
formable steel sheet, the process comprising:
forming a component blank from the steel semi-finished
product using a cold-forming process, the component blank
including a margin contour corresponding approximately to a
contour of the press-hardened component and a margin edge;
trimming the component blank at the margin edge to the
margin contour;
heating and press-hardening the trimmed component
blank using a hot-forming tool; and
covering the press-hardened component blank with a
corrosion-prevention layer in a coating step, wherein the
coating step includes a thermal diffusion process.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kirk US 1,552,059 Sept. 1, 1925
Schoeps US 4,291,074 Sept. 22, 1981
Bronsema US 5,669,992 Sept. 23, 1997
Gehringhoff US 2003/0066582 A1 Apr. 10, 2003
Buschsieweke DE 19743802 A1 Mar. 11, 1999
2
Appeal 2015-005610
Application 13/371,610
Wilke2 DE 19951133 A1 Apr. 26,2001
REJECTIONS
The following rejections are before us for review:3
I. Claims 1—23, 28, 32, 37, and 41 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gehringhoff, Bronsema,
and Kirk. Final Act. 3—6.
II. Claims 24, 25, 33, and 34 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gehringhoff, Bronsema,
Kirk, and Wilke. Id. at 6—7.
III. Claims 26, 27, 31, 35, 36, and 40 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Gehringhoff,
Bronsema, Kirk, and Buschsieweke. Id. at 7—8.
IV. Claims 29 and 38 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gehringhoff, Bronsema, Kirk, and
Schoeps. Id. at 8—9.
2 We note that this reference identifies the first named inventor as
Lorenz, but the Examiner refers to this reference as Wilke (another named
inventor). For consistency, we adopt the convention used by the Examiner
and refer to the reference herein as Wilke.
3 The Final Office Action (dated May 7, 2014) includes rejections of
claims 30 and 39 under 35 U.S.C. § 112, second paragraph, as being
indefinite, and under 35 U.S.C. § 103(a) as being unpatentable over
Gehringhoff, Bronsema, Kirk, and Schoeps. Final Act. 2—3, 8—9.
Appellants subsequently filed an Amendment (dated Oct. 6, 2014), which
was entered by the Examiner (see Advisory Action (dated Oct. 21, 2014)),
canceling claims 30 and 39 and, thus, rendering moot these rejections.
3
Appeal 2015-005610
Application 13/371,610
ANALYSIS
Rejection I— Claims 1—23, 28, 32, 37, and 41 as
unpatentable over Gehringhoff, Bronsema, and Kirk
Appellants present arguments against the rejection of independent
claim 1, and do not present separate arguments for dependent claims 2—12,
28, and 32. See Br. 7—17. We select claim 1 as representative of this group,
with claims 2—12, 28, and 32 standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv). Appellants separately argue against the rejection of
independent claim 13 and its dependent claims 14—23, 37, and 41, which we
address infra. See Br. 17—23.
Claims 1—12, 28, and 32
The Examiner found that Gehringhoff
discloses a process for producing a press-hardened component
from a semi-finished product made of unhardened, hot-formable
steel sheet, the process comprising forming a component blank
from the semi-finished product using a cold-forming process
(paragraphs [0002], [0003], [0009], [0010] and [0024], the
component blank including a margin contour corresponding
approximately to a contour of the press-hardened component and
a margin edge (paragraph [0025] discloses that forming into the
final shape involves only minor forming), heating and press­
hardening the formed component blank using a hot-forming tool
(paragraph [0025]), and trimming the component blank at the
margin edge to the margin contour (paragraph [0017]).
Final Act. 3. The Examiner acknowledged that Gehringhoff discloses that
“trimming tak[es] place after[, rather than prior to,] hot-forming and
hardening the component^] and does not disclose coating the component.”
Id. at 3—4. However, the Examiner found that Bronsema discloses “a
process for producing a press-hardened component from a semi-finished
4
Appeal 2015-005610
Application 13/371,610
product made of unhardened, hot-formable steel sheet wherein the semi­
finished component is cut or trimmed prior to[] or after being hot-formed
and hardened, [and] then provided with a coating.” Id. at 4 (citing
Bronsema, col. 1,1. 48 — col. 2,1. 14; col. 3,1. 60 — col. 4,1. 8).
The Examiner concluded that, given the teachings of the prior art, it
would have been obvious to one of ordinary skill in the art “to have trimmed
the component of Gehringhoff. . . prior to hot-forming and press-
hardening[,] and after cold forming,... as a matter of obvious design
choice.” Id. The Examiner also concluded that it would have been obvious
“to have coated the trimmed hot-formed and press-hardened component for
corrosion protection or aesthetic purposes as is known in the art.” Id.
Additionally, the Examiner found that Kirk discloses that “it is known to
coat a component with a corrosion protection layer through thermal
diffusion.” Id. (citing Kirk, col. 1,11. 19-27). The Examiner concluded that,
given the teachings of the prior art, it would have been obvious to “use[] a
thermal diffusion process to coat the press-hardened component of
[Gehringhoff as modified by Bronsema], in light of the teachings of Kirk, as
is known in the art.” Id.
Appellants argue that “Gehringhoff does not disclose . . . ‘the
component blank including a margin contour corresponding approximately
to a contour of the press-hardened component and a margin edge’ and
‘trimming the component blank at the margin edge to the margin contour.’”
Br. 12 (emphasis omitted). In particular, Appellants assert that “Gehringhoff
discloses two optional cutting steps, [but] none of said steps teach or suggest
that a press-hardened component blank be formed which has a margin
contour corresponding approximately to the press-hardened component and
5
Appeal 2015-005610
Application 13/371,610
a margin edge.” Id.; see also id. (asserting that “Gehringhoff. . . nowhere
discloses this feature” (citing Gehringhoff 117)). Appellants’ argument
does not persuade us of error in the Examiner’s rejection.
According to Appellants’ Specification, “[t]o be able to ensure high-
quality forming of the component geometry, . . . plate 3 has margin
regions 11 which project beyond an outer contour 12 of the component 1
that is to be formed.” Spec. 138; see also id., Figs. 2a, 2b. The
Specification describes that “the trimming can be carried out with the aid of
conventional mechanical cutting means 14, such as for example cutting
blades, edge-removal and/or punching tools” {id. 139), and that “margin
regions 11 which have been cut off are discharged” (id. 141). Cutting off
margin region 11 “produce[s] a component blank 17 which has been
trimmed to near net shape from the plate 3; its three-dimensional shape and
its marginal contour 12' deviate only slightly from the desired shape of the
component 1.” Id. 141; see also id., Fig. 2c. In light of the Specification,
we understand “trimming the component blank at the margin edge to the
margin contour” to require cutting away peripheral material projecting
beyond the desired shape of the component to be produced, such that the
shape of the trimmed blank approximates the shape of the component to be
produced.
In this regard, Gehringhoff discloses that “the sheet metal article may
be cut or trimmed in a post-operation,” and that “the sheet metal article itself
may be subjected to cutting operations.” Gehringhoff 117. The Examiner
explains that the trimming4 in Gehringhoff “suggests] that the component
4 Ordinary meanings of “trim” are simply “to make trim and neat esp.
by cutting or clipping,” or “to free of excess or extraneous matter by or as if
6
Appeal 2015-005610
Application 13/371,610
includes a margin contour of the press-hardened component, and since the
component is trimmed it has a margin edge before the trimming operation.”
Ans. 9 (citing Gehringhoff 117); see also id. (stating that “Appellants]
provide[] no standard to assess what represents ‘a margin contour
corresponding approximately to a contour of the press-hardened
component’”). According to the Examiner, because “forming the
component to a desired final and precise shape involves only minor forming
during the hot-forming pressing operation (paragraph [0025]), it is
reasonable to assume that the component blank includes a margin contour
corresponding approximately to a contour of the press-hardened
component.” Id.
The Examiner’s explanation in the Answer as to why the disclosure of
Gehringhoff meets the disputed claim limitations is reasonable. Appellants
do not submit a Reply Brief to address the Examiner’s explanation, and the
Appeal Brief does not include any factual evidence or persuasive technical
reasoning to refute the Examiner’s reasoned position. Thus, Appellants’
bare contention that “Gehringhoff does not disclose . . . ‘the component
blank including a margin contour corresponding approximately to a contour
of the press-hardened component and a margin edge’ and ‘trimming the
component blank at the margin edge to the margin contour’” (Br. 12
(emphasis omitted)) does not persuade us of error.
by cutting.” See Merriam-Webster’s Collegiate Dictionary (11th ed. 2003).
These ordinary meanings are consistent with the claim language and with
Appellants’ Specification, which does not impart any special definition to
compel a different, or narrower, construction of “trimming,” as recited in the
claim. See, e.g., Spec. H 38, 39, 41.
7
Appeal 2015-005610
Application 13/371,610
Appellants argue that Gehringhoff does not disclose trimming “prior
to heating and press-hardening the trimmed component blank.” Br. 12. In
particular, Appellants assert that “the sole optional trimming step in
Gehringhoff always follows the heat treatment to a hardening temperature
and cooling steps.” Id. (citing Gehringhoff H 14, 15, 17). However, this
argument is not persuasive of error because it attacks Gehringhoff
individually, rather than considering the combined teachings of the cited
references presented in the rejection. See In re Merck & Co., 800 F.2d 1091,
1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
As discussed supra, the Examiner acknowledged that Gehringhoff discloses
trimming after hardening, and relied on Bronsema for disclosing trimming
prior to hardening. See Final Act. 3^4.
Appellants also assert that “the order in Gehringhoff. . . cannot be
rearranged at will.” Br. 9. To the extent that Appellants appear to argue that
Gehringhoff s process could not be modified based on the teachings of
Bronsema as proposed by the Examiner, Appellants do not offer any factual
evidence or technical explanation in support of such an argument, which we,
therefore, do not find convincing.
Appellants further argue that each of Gehringhoff, Bronsema, and
Kirk fails to “teach or suggest the technical effects of reduced tool wear and
the reduction in the maintenance costs for the cutting tools which achieved
when the trimming step always precedes the heating and press-hardening
step.” Id. at 12, 16. We do not find this argument persuasive of error
because it is not commensurate in scope with claim 1, which does not recite
any language with respect to reducing wear or maintenance costs for cutting
tools. As stated by our reviewing court in In re Hiniker Co., 150 F.3d 1362,
8
Appeal 2015-005610
Application 13/371,610
1369 (Fed. Cir. 1998), “the name of the game is the claim.” It is well
established that limitations not appearing in the claim cannot be relied upon
for patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Additionally, Appellants do not offer any evidence or technical reasoning to
refute the Examiner’s position that it would be “within the general skill level
of a worker in the art to understand that there will be less resistance in
cutting a component prior to hardening the component versus cutting the
component after hardening” Ans. 11; see also id. (explaining that “a cutting
tool would be subject to less wear when cutting the component in an
unhardened state versus when cutting the component in a hardened state,
which would increase the life of the cutting tool and save on maintenance or
replacement costs”).
After careful consideration of all the evidence, Appellants’ arguments
do not apprise us of error in the Examiner’s findings or reasoning for the
conclusion of obviousness with respect to claim 1. Accordingly, we sustain
the rejection of claim 1, and of claims 2—12, 28, and 32 falling therewith,
under 35 U.S.C. § 103(a) as unpatentable over Gehringhoff, Bronsema, and
Kirk.
Claims 13—23, 37, and 41
In contesting the rejection of independent claim 13, Appellants
essentially repeat some of the arguments presented for patentability of
claim 1. Compare Br. 17—22, with id. at 7—17. Namely, Appellants assert
that “none of Gehringhoff, Bronsema and Kirk teach[es] or suggests] at
least the features of ‘a press-hardened component blank, having a margin
contour corresponding approximately to the press-hardened component and
9
Appeal 2015-005610
Application 13/371,610
a margin edge’ and then ‘trimming the press-hardened component blank at
the margin edge to the margin contour.’” Id. at 18 (emphasis omitted).
Appellants also assert that each of the references does not “teach or suggest
the technical effect of ensuring that the component is protected from
corrosion even in the region of the trimmed margins.” Id. at 19, 22—23.
These arguments are not persuasive of error for the same reasons, discussed
supra, that the arguments presented with respect to claim 1 are not
persuasive.
Accordingly, we sustain the rejection of independent claim 13, and of
its dependent claims 14—23, 37, and 41, for which Appellants do not present
any additional arguments, under 35 U.S.C. § 103(a) as unpatentable over
Gehringhoff, Bronsema, and Kirk.
Rejections II—IV— Claims 24—27, 29, 31, 33—36, 38, and 40 as
unpatentable over Gehringhoff, Bronsema, Kirk, and
one of Wilke, Buschsieweke, and Schoeps
With respect to the rejections of claims 24—27, 29, 31, 33—36, 38, and
40, Appellants rely on the same arguments presented against Rejection I,
discussed supra, adding only that each of Wilke, Buschsieweke, and
Schoeps does not cure the asserted deficiencies of Gehringhoff, Bronsema,
and Kirk, and otherwise relying on dependency from one of independent
claims 1 and 13. Br. 23—28. Accordingly, for the same reasons that
Appellants’ arguments do not apprise us of error in Rejection I, Appellants
also do not apprise us of error in Rejections II—IV. Accordingly, we
likewise sustain the rejections of claims 24—27, 29, 31, 33—36, 38, and 40
under 35 U.S.C. § 103(a) as being unpatentable over Gehringhoff,
Bronsema, Kirk, and one of Wilke, Buschsieweke, and Schoeps.
10
Appeal 2015-005610
Application 13/371,610
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1—23, 28, 32,
37, and 41 under 35 U.S.C. § 103(a) as being unpatentable over
Gehringhoff, Bronsema, and Kirk.
We AFFIRM the Examiner’s decision rejecting claims 24, 25, 33, and
34 under 35 U.S.C. § 103(a) as being unpatentable over Gehringhoff,
Bronsema, Kirk, and Wilke.
We AFFIRM the Examiner’s decision rejecting claims 26, 27, 31, 35,
36, and 40 under 35 U.S.C. § 103(a) as being unpatentable over
Gehringhoff, Bronsema, Kirk, and Buschsieweke.
We AFFIRM the Examiner’s decision rejecting claims 29 and 38
under 35 U.S.C. § 103(a) as being unpatentable over Gehringhoff,
Bronsema, Kirk, and Schoeps.
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)(l)(iv).
AFFIRMED
11