Ex Parte Eriksson et al

Patent Trial and Appeal Board

Jul 25, 2014

11632312 (P.T.A.B. Jul. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte JAN-ERIK ERIKSSON, CONNY SVAHN,
MATS MOLANDER, CARL-FREDRIK LINDBERG, PETER LOFGREN,
STEFAN ISRAELSSON TAMPE and BENGT RYDHOLM
______________

Appeal 2012-005891
Application 11/632,312
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN and
TERRY J. OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board under 35 U.S.C. § 134(a) from the
decision of the Primary Examiner finally rejecting claims 1-17 and 19 under
35 U.S.C. § 103(a): claims 1-5, 8, 12-14, 16 and 17 over Chae (KR
2001055804 A),1 Eriksson (WO 02/14192 A1) and Kimura (US 6,471,153
B1), claims 1-7 and 11-17 over Price (GB 2 334 351 A), Eriksson and
Kimura, claims 8-10 over Price, Eriksson, Kimura and Chae, and claim 192
over Price, Eriksson, Kimura and Rydholm (WO 02/14572 A1). App. Br. 9;

1 We refer to the machine translation of Chae prepared by the Korean
Intellectual Property Office of record.
2 Canceled claim 18 is erroneously included in the rejection. See
Amendment filed November 4, 2010; Ans. 3, 14; App. Br. 2, 9, 16.
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Ans. 5, 8, 13, 14. We have jurisdiction. 35 U.S.C. § 6(b).
We affirm the decision of the Primary Examiner.
Claim 1, with reference to Specification Figure 1, illustrates
Appellants’ invention of a device for stabilizing an elongated metallic strip
of magnetic material by a process in which the strip is continuously coated,
and is representative of the claims on appeal:
1. A device for stabilizing an elongated metallic strip (1) of magnetic
material when coating the strip with a metallic layer by continuously
transporting the strip (1) through a bath of molten metal (2), wherein the
strip (1) is intended to be transported from the bath (2) in a transport
direction (16) along a predetermined transport path (x), the device
comprising:
a wiping device (4) for wiping off superfluous molten metal from the
strip (1) by applying an air flow in a line across the strip (1), wherein the
wiping device (4) comprises at least one pair of air-knives (5, 6) arranged
with one air-knife (5, 6) on each side of the strip (1),
an electromagnetic stabilizing device (7) which is arranged adjacent to
the wiping device (4) to stabilize the position of the strip (1) with respect to
the predetermined transport path (x) and which comprises at least one
electromagnetic stabilizing member (8, 9) on each side of the strip (1) such
that the electromagnetic stabilizing members (8, 9) are opposite each other,
each electromagnetic stabilizing member (8, 9) comprising an iron core (10,
11) and a coil (12a-b, 13a-b), wherein the coils (12a-b, 13a-b) are movably
arranged with respect to the strip (1) and the wiping device (4), and
a sensor (14, 15) arranged to detect the position of the strip (1) in
relation to the predetermined transport path (x) in a region adjoining the line
where the air flow from the air-knives (5, 6) hits the strip (1), wherein the
sensor comprises at least one pair of sensors (14, 15) arranged with one
sensor on each side of the strip (1) such that the sensors (14, 15) are opposite
each other, and
wherein the electromagnetic stabilizing members (8, 9) are arranged
adjacent to the air-knives (5, 6) and are arranged to apply a varying
stabilizing magnetic force to the strip (1) in dependence on the measured
position and in a direction substantially perpendicular to the predetermined
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Application 11/632,312
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transport path (x), thereby damping vibrations in the metallic strip (1),
wherein the force is varied by varying a current supplied to the
electromagnetic stabilizing members (8, 9).
App. Br. 20-21 (App’x A Claims On Appeal). Spec. 9:22-11:5.
Appellants argue the first three grounds of rejection of the claims as a
whole. See generally App. Br. Thus, we decide this appeal based on claims
1, 8 and 19.3 37 C.F.R. § 41.37(c)(1)(vii).
OPINION
We do not find Appellants’ arguments persuasively establish
reversible error on the part of the Examiner. In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (explaining that even if the examiner had failed to
make a prima facie case, the Board would not have erred in framing the
issue as one of reversible error because it has long been the Board’s practice

3 We have not considered the arguments, all of which address only the first
ground of rejection, raised for the first time in the Reply Brief. See
generally Reply Brief. Indeed, the Examiner’s first ground of rejection in
the Answer was stated in the Final Office Action mailed June 17, 2011, and
in the Answer, the Examiner addressed Appellants’ arguments in the Appeal
Brief, directed to the so rejected claims as a group, in that context. Ans. 5-8,
14-17. Thus, Appellants’ arguments in the Reply Brief, including arguments
presented with respect to claims 12 and 5, are considered waived because
Appellants have not explained why the arguments which could have been
raised in the Appeal Brief were not raised therein. 37 C.F.R. §
41.37(c)(1)(vii)(second sentence); see also In re Hyatt, 211 F.3d 1367, 1373
(Fed. Cir. 2000) (an argument not first raised in the brief to the Board is
waived on appeal); cf. Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010)
(informative) (explaining that arguments and evidence not timely presented
in the principal Brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (non-precedential) (“Properly interpreted, the Rules do
not require the Board to take up a belated argument that has not been
addressed by the Examiner, absent a showing of good cause.”).
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to require an appellant to identify the alleged error in the examiner’s
rejections) (citing Ex parte Frye, Appeal No. 2009-006013, at 9-10 [94
USPQ2d 1072, 1075] (BPAI Feb. 26, 2010) (precedential) (“The panel then
reviews the obviousness rejection for error based upon the issues identified
by appellant, and in light of the arguments and evidence produced
thereon.”)); .cf., e.g., In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed.
Cir. 1991) (“It is not the function of this court to examine the claims in
greater detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”).
We determine that the plain language of claim 1, as illustrated by
Specification Figure 1, specifies a device for stabilizing an elongated
metallic strip of magnetic material 1 after coating with a metallic layer by
continuous transporting strip 1 through a bath of molten metal 2 and then
along a predetermined transport path x, comprising at least wiping device 4
comprising at least air-knives 5, 6 arranged on opposite sides of strip 1 to
remove excess molten material; electromagnetic stabilizing device 7
comprising at least two electromagnets 8, 9, each comprising at least iron
core 10, 11 and a coil 12a, 13a, arranged adjacent to air-knives 5, 6 directly
opposite each other on respective sides of strip 1; and at least sensors 14, 15
arranged in a region adjoining the line where the air flow from air-knives 5,
6 hits strip 1 and directly opposite each other on respective sides of the strip
1, wherein vibrations in strip 1 are dampened by the magnetic force applied
by electromagnets 8, 9 in a direction substantially perpendicular to the
predetermined transport path x and varied by varying current supplied in
dependence on the measured position of strip 1.
Turning first to the rejection of claim 1 over Chae, Eriksson and
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Kimura, there is no dispute that Chae would have disclosed to one of
ordinary skill in the art, among other things, a deflexed protecting control
device, illustrated in Chae’s Figure 1, for a metallic metal strip in a coating
process which includes air-knives 3, 3', wherein the deflexed steel sheet 1 is
shown at 9. Chae abstract, 2, 3. As illustrated in Chae’s Figure 4, the
deflexed protecting control device has eddy-current displacement distance
sensors 21a-c and electromagnets 22a-c positioned on air-knives 3, 3',
wherein sensors 21a-c are arranged sequentially on air-knife 3,
electromagnets 22a, 22c are arranged on air-knife 3' directly opposite
sensors 21a. 21c, and electromagnetic 22b is arranged “in the same
location,” that is, on top, of sensor 21b on air-knife 3, wherein sensors 21a-c
and electromagnets 22a-c are interlinked and controlled by deflexed operator
23 and deflexed controller 24. Chae abstract, 2, 3, 4. Chae describes the
operation of the deflexed protecting control device in controlling deflexation
with equations based on measured distances of points along the deflexed
sheet 1 by sensors 21a-c to determine the magnetic force applied by
electromagnets 22a-c, as illustrated in Chae’s Figure 5. Chae abstract, 2, 4-
5. Ans. 5-7, 14-17; App. Br. 9-12.
There is also no dispute that Eriksson would have disclosed to one of
ordinary skill in the art, among other things, a device, illustrated in
Eriksson’s Figure 1, for stabilizing an elongated metallic strip of magnetic
material 1 during continuous transporting of strip 1 along a predetermined
path 4 in plane x, having sensors 5, 6, arranged directly opposite each other
on respective sides of strip 1, for sensing a value of a parameter depending
on the position of strip 1, and electromagnets 7, 8, arranged directly opposite
each other on respective sides of strip 1, to apply magnetic force to strip 1 in
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response to the sensed position of the strip, and control unit 13 which applies
voltage to the electromagnetic in response to the sensed position parameter,
wherein electromagnetics 7, 8 have cores 9', 9'' and windings or coils 11',
11''. Eriksson abstract, 2-8. Ans. 5-6; App. Br. 11. We find that Eriksson
would have disclosed that the stabilizing device can be used in metal coating
applications involving continuous transport of a metallic strip. Eriksson
1:25-32.
There is no dispute that Kimura would have disclosed to one of
ordinary skill in the art an apparatus for controlling vibration in a steel sheet
along the running surface of a surface treating line in a steel mill which can
include, among other things, electromagnets 52A, 52B arranged directly
opposite each other on respective sides of strip, wherein either electromagnet
52A, 52B alone contains sensor 57A, such as illustrated in Kimura’s Figure
23, or both electromagnets 52A, 52B contain sensors 57A, 57B, such as
illustrated in Kimura’s Figure 24, and a control device which controls the
current to the electromagnets 52A, 52B in response to the separation
distance detected by the sensors 57A, 57B. Kimura, abstract, col.1 ll.7-10,
col.3 ll,19-37, col.13 l.31 to col.14 l.26. Ans. 6; App. Br. 11, 12.
There is no dispute that neither Eriksson nor Kimura discloses that the
coating or surface treating operations include air-knives. Ans. 15; App. Br.
11.
The Examiner submits that the combination of Chae, Eriksson and
Kimura would have led one of ordinary skill in the art to use Eriksson’s
stabilizing arrangement of opposite sensors and electromagnets on each side
of the magnetic metal strip in place of Chae’s arrangement of sensors on one
side and electromagnets on the other arranged adjacent to air-knives because
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Eriksson and Kimura would have established that the opposing arrangements
of sensors and electromagnets will work, that the references establish that
one of ordinary skill in the art would have been familiar with the interaction
of sensors and electromagnets in stabilizing a metal strip and that a workable
arrangement of the sensors and electromagnets is a result effective variable
which one of ordinary skill in the art would arrive at workable or optimum
arrangements of sensors and electromagnetics by routine experimentation,
thus arriving at a stabilizing device falling within claim 1. Ans. 5-6, 14-17.
We are not convinced by Appellants that the Examiner erred in these
respects. We cannot agree with Appellants that the modification of Chae’s
deflexed protecting control device by using opposing arrangements of
sensors and electromagnets as shown by Eriksson and Kimura, which do not
disclose air-knives, would have required more than routine experimentation
and thus would have predictably resulted in non-functional sensors and
electromagnets that change the function of Chae’s sensors and
electromagnets and thus of the deflexed protecting control device. App. Br.
9-13. Indeed, each of Chae, Eriksson and Kimura would have disclosed to
one of ordinary skill in the art that various combinations of sensors and
electromagnets arranged on both sides of the strip and controlled by a
controller are effective in controlling the magnetic metal strip in continuous
coating and surface treating processes, and in this respect, each of Eriksson
and Kimura show that sensors and electromagnets arranged together on
opposite sides are effective for this purpose. We are not dissuaded by the
absence of any disclosure of air-knives in Eriksson and Kimura. We
determine that one of ordinary skill in the art would have recognized from
Chae that air-knives affect the stability of the magnetic metal strip, and
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would have followed the teachings of Chae, in this respect, to arrive at
control parameters based on equations similar to those in Chae for a desired
arrangement of sensors and electromagnetics in controlling the stability of
the magnetic metal strip. Appellants have not supported the contention that
modifying Chae’s equations to accommodate the control of other
arrangements of sensors and electromagnets would have been “well beyond
any routine experimentation” by one of ordinary skill in this art, and
particularly in view of the disclosure of control devices for other
arrangements of sensors and electromagnets by Eriksson and Kimura.
We agree with the Examiner that Appellants’ argument that the
claimed arrangement of sensors and electromagnets “provides superior
stabilization[] as described in the specification” is not supported by factual
evidence. Ans. 16; App. Br. 12 (citing Spec. 5:9-13). See, e.g., In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is well settled that
unexpected results must be established by factual evidence.”); In re Hoch,
428 F.2d 1341, 1343-44 (CCPA 1970) (evidence must provide an actual
comparison of the properties of the claimed invention with the disclosure of
the reference); cf., e.g., Baxter Travenol Labs., 952 F.2d at 392.
Accordingly, on this record, we affirm the ground of rejection of
claims 1-5, 8, 12-14, 16 and 17 over Chae, Eriksson and Kimura under
35 U.S.C. § 103(a).
With respect to the grounds of rejection of claims 1, 8 and 19 based
on the principal combination of Price, Eriksson and Kimura, we set forth
above the undisputed teachings of Eriksson and Kimura. See above pp. 5-6.
We cannot agree with Appellants’ contentions that Price would not have
disclosed to one of ordinary skill in the art “the arrangement of the position
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sensors or electromagnetic stabilizers” which are “magnetic actuators,”
“other than they are arranged in banks.” App. Br. 13-14, 15.
We find that Price would have disclosed to one of ordinary skill in the
art a device for controlling a strip of magnetic metal that is continuously
transported through a coating bath and then from the bath along a
predetermined transport path which is subject to vibration as it passes
between a pair of gas-knives 20 as illustrated in Price’s Figure 1. Price
1:2-16, 2:13-20, 2:26-3:5. Price discloses that the device includes
electromagnetic actuators 112, which have operating parameters based on
coil resistance and coil inductance, and sensors 110, which function with a
controller 118, that are arranged in control banks 108 located on opposite
sides of strip 100, that rises from the molten metal bath 102, above and
below gas-knives 104, 106. Price 5:15-17, 6:17-23, 8:11-25, Figs 1, 6-8; see
Fig. 1, 1:2-16. Price discloses that “each [of banks 108] comprise position
sensors 110 and magnetic actuators 112,” and controller 118 “sends control
signals to [magnetic] actuators 112,” such that the strip 100 “can be carefully
guided during its passage between the gas [knives] 104, 106.” Price
8:17-25.
We further find that Price describes to one of ordinary skill in the art,
in Figures 7 and 8, banks 108 each of which has alternating position sensors
110 and magnetic actuators 112, and can have magnetic actuators arranged
directly opposite each other on respective sides of strip 100. We determine
that one of ordinary skill in the art would have reasonably inferred from
Price’s disclosure and Figures that banks 108 of alternating position sensors
110 and magnetic actuators 112, can be arranged directly opposite each
other on respective sides of strip 100, such that position sensors 110 and the
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magnetic actuators 112 of each bank are arranged directly opposite the
position sensors 110 and the magnetic actuators 112 of the bank on the other
side of strip 100.4
On this record, we further cannot agree with Appellants that the
Examiner erred in determining that the combination of Price, Eriksson and
Kimura would have led one of ordinary skill in the art to modify Price’s
banks of sensors and magnetic actuators by using iron core and coil
magnetic actuators, and to arrange the sensors and the magnetic actuators of
each bank directly opposite the sensors and the magnetic actuators,
respectively, of the bank on the other side of magnetic metal strip, as
suggested by Eriksson and Kimura, in the reasonable expectation of
dampening vibrations of the magnetic metal strip by varying the magnetic
force applied by the magnetic actuators on opposite sides of the strip, which
is all that claim 1 requires. Ans. 8-10, 17-19; App. Br. 13-15.
We determine that claim 8 modifies claim 1 by specifying that “the
sensor is secured to the air-knife.” On this record, we cannot agree with
Appellants that the Examiner erred in determining that the combination of
Price, Eriksson, Kimura and Chae would led one of ordinary skill in the art
to modify Price’s banks of sensors and magnetic actuators by securing the

4 It is well settled that a reference stands for all of the specific teaching
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom. See, e.g., In re Fritch, 972
F.2d 1260, 1264-65 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826-27
(CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to
take into account not only specific teachings of the reference but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom.” (citation omitted)), presuming skill on the part of this person. In
re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985).
Appeal 2012-005891
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same to the air-knives as suggested by Chae with a reasonable expectation of
success because Chae discloses sensors and magnets secured to air-knives.
Ans. 13, 19-20; App. Br. 15-16. Indeed, we found that Price teaches that the
banks of sensors and magnetic actuators are arranged above and below the
air-knives.
With respect to claim 19, Appellants’ contention directed to the
“shortcomings of all of the references and their combinations . . . discussed
above” does not constitute a specific argument with respect to error in the
Examiner’s position. Ans. 14; App. Br. 16-17.
Accordingly, on this record, we affirm the grounds of rejection of
claims 1-17 and 19 over Price, Eriksson and Kimura alone and as further
taken with Chae and with Rydholm under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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)(1)(iv).
AFFIRMED

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