Ex Parte Damsohn

Patent Trial and Appeal Board

Apr 2, 2013

10592584 (P.T.A.B. Apr. 2, 2013)

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.
10/592,584 10/15/2007 Herbert Damsohn 1006/0138PUS1 2398
60601 7590 04/02/2013
Muncy, Geissler, Olds & Lowe, PLLC
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
EXAMINER
GAMINO, CARLOS J
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
04/02/2013 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 HERBERT DAMSOHN1
________________

Appeal 2011-012773
Application 10/592,584
Technology Center 1700
________________

Before MARK NAGUMO, DEBORAH KATZ, and GEORGE C. BEST,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL

1 The real party in interest is listed as Behr GmbH & Co. KG (Appeal
Brief, filed 2 March 2011 (“Br.”), 1.)
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Application 10/592,584

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A. Introduction2
Herbert Damsohn (“Damsohn”) timely appeals under
35 U.S.C. § 134(a) from the final rejection3 of claims 1, 2, 4-9, and 11-20.4
We have jurisdiction. 35 U.S.C. § 6. We reverse.
The subject matter on appeal relates to a strip of solder foils from
which the individual foils can be torn or pulled away. According to the
584 Specification, such foils may be shaped to match the substrate to which
a solder joint is to be made, and they are said to be especially useful for
soldering plates of heat exchangers. (Spec., title, and 1, ll. 7-8.)
Representative Claim 1 reads:
A strip of solder foils for soldering parts, each solder foil of
the strip of solder foils having a contour matched to the parts
to be soldered,
wherein the solder foils are connected to one another by
material bridges,
wherein the solder foils comprise a metal or metal
alloy and the material bridges comprise the metal or
metal alloy and,
wherein the individual foils can be torn off individually
from the strip.
(Claims App., Br. 10; indentation, paragraphing, and emphasis added.)

2 Application 10/592,584, Solder Foil for Soldering Parts, Particularly
Plates of Heat Exchangers, filed 15 October 2007 as the national stage of an
international application filed 3 March 2005, claiming the benefit of an
application filed in Germany on 18 March 2004. The specification is
referred to as the “584 Specification,” and is cited as “Spec.”
3 Office action mailed 21 July 2010 (“Final Rejection”; cited as “FR”).
4 Claim 10 has been withdrawn from consideration by the Examiner (Br. 2.)
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Application 10/592,584

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The Examiner maintains the following grounds of rejection:5
A. Claims 1-9, 11-14, and 16-18 stand rejected under
35 U.S.C. § 102(b) in view of Moll.6
B. Claim 15 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Moll and Day.7
C. Claim 19 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Moll, Gabbianelli,8 and Clark.9
D. Claim 20 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Moll, Day, Gabbianelli, and Clark.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
It is fundamental patent law that “each and every claim limitation
must be explicitly or inherently disclosed in the prior art” for an anticipation
rejection to be proper. In re NTP, Inc., 654 F.3d 1279, 1302
(Fed. Cir. 2011). It has long been the law that “[i]nherency, however, may
not be established by probabilities or possibilities. The mere fact that a

5 Examiner’s Answer mailed 4 May 2011 (“Ans.”).
6 Helmut Moll et al., Method for the Joining and/or Welding of Parts by
Ultrasound and Semi-Finished Product For Use In these Methods,
DE 4,024,941 (1992) (USPTO translation of record).
7 Leonard Day, Solder Tape, U.S. Patent 1,698,360 (1925).
8 Gianfranco Gabbianelli et al., Apparatus and Method for Welding
Aluminum Tubes, U.S. Patent 6,689,982 B2 (2004), based on an application
filed 11 January 2002.
9 Hildegarde C. Clark, Protective Aluminum Foil for Stoves, U.S.
Patent 3,490,123 (1967).
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Application 10/592,584

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certain thing may result from a given set of circumstances is not sufficient.”
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (internal quote and citation
omitted).
In the present case the Examiner apparently finds that the foils of
width A10 separated by cross-links 22 of the solder strip shown in Moll,
Figure 3, which is reproduced below,

{Fig. 3 shows a solder foil strip with cross-links 22 at intervals A,
implemented by punch-outs 21}
in the words of claim 1, “can be torn off individually” (cf. claim 14,
“configured to break and release the first solder foil from the second solder
foil when the first solder foil is pulled away from the second solder foil”).
(Ans. 4, 3d para., “it is the examiner’s position that the apparatus of the prior
art is capable of performing the claimed function(s) with the claimed
material”; cf. FR 6, 3d para.) In light of the 584 Specification, we
understand the limitations “torn off individually” and “configured to break
and release . . . when . . . pulled away” to require that the foils remain intact
while the material bridges break in response to a separating force applied to
the two foils.

10 Throughout this Opinion, for clarity, all labels to elements in Figures are
presented in bold, regardless of their presentation in the original document.
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Damsohn urges that the disclosure that the individual foils are
separated from one another by vibrations produced by an ultrasonic welder
do not establish “tearing” of the foil, and that a person having ordinary skill
in the art would have recognized such a process as a melting process.
Damsohn also grants, arguendo, “that any type of foil can be torn in some
manner given sufficient force,” but challenges the Examiner’s particular
finding as “not the type of fact that can be . . . established by Official
Notice.” (Br. 5.)
Although Damsohn’s argument that the welding would have been
understood to be a melting, rather than a tearing, is not supported by
evidence, the broader point that the Examiner’s findings are not sufficient to
establish the inherent “tearability” of the foils separated by bridges is well-
taken. In this regard, we draw attention to two long-standing discussions of
the proper use of official notice. First, the predecessor to our reviewing
court explained in In re Eynde, 480 F.2d 1364, 1370 (CCPA 1973), that facts
constituting the state of the art are normally subject to the possibility of
rational disagreement among reasonable people and are not amenable to the
taking of official notice. Second, in In re Ahlert, 424 F.2d 1088, 1091
(CCPA 1970) the court held that assertions of technical fact in areas of
esoteric technology must always be supported by citation to some reference
work [admitted in evidence] and recognized as standard in the pertinent art.
Moreover, the court held, facts officially noticed should not constitute the
principal evidence upon which a rejection is based. Thus, mere assertions of
fact, unsupported by evidence of record and an explanation, are not
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persuasive. We therefore reverse the rejection of the independent claims as
anticipated.
Because the rejections of the dependent claims for obviousness do not
cure this defect, we reverse those rejections as well.
This is not a case in which the Examiner has pointed to the evidence
in the record, argued that the preponderance of that evidence indicates that
the foils could be torn at the cross-links described by Moll while leaving the
segments intact, and rejected the claims under § 102 or § 103. If such
findings and arguments could be made—a matter on which we neither
express nor imply any conclusion—the burden would then shift to Damsohn
to demonstrate error in those factual findings and conclusions. Our
reviewing court “has accepted the PTO's practice of basing rejections on
sections 102 or 103 in the alternative, provided that the appellant was fully
apprised of all the grounds of rejection.” In re Spada, 911 F.2d 705, 707 n.2
(Fed. Cir. 1990) (citation omitted). As the predecessor to our reviewing
court has explained, “[w]hether the rejection is based on ‘inherency’ under
35 U.S.C. § 102, on ‘prima facie obviousness’ under 35 U.S.C. § 103,
jointly or alternatively, the burden of proof is the same, and its fairness is
evidenced by the PTO’s inability to manufacture products or to obtain and
compare prior art products. See In re Brown, 459 F.2d 531, 59 CCPA 1036,
173 USPQ 685 (1972).” In re Best, 562 F.2d 1252, 1255 (CCPA 1977). We
leave it to the discretion of the Examiner and Damsohn, in the first instance,
to consider whether such a case could be established on the present record,
or on a record augmented by additional prior art.
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C. Order
We reverse the rejection of claims 1-9, 11-14, and 16-18 under
35 U.S.C. § 102(b) in view of Moll.
We reverse the rejection of claim 15 under 35 U.S.C. § 103(a) in view
of the combined teachings of Moll and Day.
We reverse the rejection of claim 19 under 35 U.S.C. § 103(a) in view
of the combined teachings of Moll, Gabbianelli, and Clark.
We reverse the rejection of claim 20 under 35 U.S.C. § 103(a) in view
of the combined teachings of Moll, Day, Gabbianelli, and Clark.
REVERSED

tc