Ex Parte Franz et al

Patent Trial and Appeal Board

Feb 26, 2018

13127855 (P.T.A.B. Feb. 26, 2018)

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.
13/127,855 10/14/2011 Rolf Franz 30214 5256
535 7590
KF ROSS PC
311 E York St
Savannah, GA 31401-3814
EXAMINER
WALCK, BRIAN D
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
02/28/2018 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):
savannah@kfrpc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROLF FRANZ, KARL-HEINZ SPITZER,
HELLFRIED EICHHOLZ, and MARKUS
SCHAEPERKOETTER
Appeal 2017-005692
Application 13/127,8551
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—3 and 5. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Siemag
Aktiengesellshaft. Appeal Br. 1.
Appeal 2017-005692
Application 13/127,855
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a method of producing
hot-rolled strips made of cast metal. Spec. 1:3—15.3 Claim 1, reproduced
below with emphases added to certain key recitations, is illustrative of the
claimed subject matter:
1. A method of making hot-rolled strips of cast steel, where
a cast steel strip is subjected as a rough strip to at least one
heat-treatment step and subsequently wound or stacked as
a hot strip, the method comprising the steps of
sequentially:
subjecting the rough strip obtained from the casting step in
a protective gas atmosphere to an upstream step of
homogenizing its structure by maintaining a
temperature at approximately 900 to 1000 2C, by
reducing the temperature by approximately 200 2C, or
by increasing the temperature by approximately 250
2C;
subjecting the homogenized rough strip to at least one
additional heat-treatment step by maintaining the
temperature at 880 to 940 2C, by reducing the
temperature by approximately 50 2C, or by increasing
the temperature by approximately 50 2C;
subjecting the heat-treated rough strip to a hot-rolling step
having at least one pass, with the rough strip undergoing a
reduction in thickness of less than 49%;
subjecting the hot-rolled rough strip to a downstream
homogenization step or recrystallization of its structural
composition, by maintaining the temperature at
approximately 700 to 900 2C, by reducing the temperature
2 In this opinion, we refer to the Final Office Action dated July 30, 2015
(“Final Act.”), the Appeal Brief filed March 9, 2016 (“Appeal Br.”), and the
Examiner’s Answer dated October 7, 2016 (“Ans.”).
3 Reference is made to the April 14, 2015, amended Specification (“Spec.”).
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Application 13/127,855
by approximately 100 °C, or by increasing the temperature
by approximately 50 -C; and
passing the rough strip through a cutter that is synchronized with
the transport or belt speed to cut the strip into pieces of
rolled hot strip.
Appeal Br. 12 (Claims App’x).
REJECTION AND REFERENCES
On appeal, the Examiner maintains the rejection of claims 1—3 and 5
under 35 U.S.C. § 103(a) as unpatentable over Wehage et al., U.S. Patent
No. 6,527,882 Bl, March 4, 2003; hereinafter “Wehage.” Final Act. 3.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellants and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections”)). After considering
the evidence presented in this Appeal and each of Appellants’ arguments, we
are not persuaded that Appellants identify reversible error. Thus, we affirm
the Examiner’s rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellants argue all claims as a group. See Appeal Br. 6—10.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv)
(2013), we limit our discussion to claim 1, and all other claims on appeal
stand or fall together with claim 1.
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Application 13/127,855
The Examiner finds that Wehage generally teaches each step of claim
1 but does not make findings regarding Wehage explicitly teaching the
specific temperatures recited in claim 1. Final Act. 3^4 (citing Wehage
Abstract, Fig. 1, 4:38—8:17). With respect to temperature, the Examiner
finds that “Wehage recognizes temperature as a result effective variable for
controlling micro structure.” Id. at 4. The Examiner concludes that the
recitations of claim 1 would have been obvious to a person having ordinary
skill in the art because “[i]t would require little more than routine
experimentation by one of ordinary skill in the art to determine the optimal
or workable ranges of temperature for the various steps of Wehage.” Id.
Appellants argue that the Examiner’s rejection is in error because
“Wehage only discloses a cooling step that allows one to variably set the
rolling temperature in the first rolling pass.” Appeal Br. 6. The Examiner,
however, correctly explains that one of claim 1 ’s recited methods of
homogenizing the strip is by cooling. Ans. 4. Thus, the Examiner
appropriately compares the function of Wehage’s cooling device 2 (Fig. 1,
6:62—7:9 (“a first device 2 for cooling the cast strip under inert gas”)) to
claim 1 ’s “subjecting the rough strip” step.
Appellants also argue that “Wehage does not disclose a two-step heat
treatment before the first rolling pass of which one heat treatment step is a
homogenization step.” Appeal Br. 6—7. Appellants’ argument
misapprehends the scope of claim 1. Under the broadest reasonable
construction, the “subject the rough strip” step of claim 1, for example,
requires (a) “maintaining a temperature at approximately 900 to 1000 °C” or
(b) “reducing the temperature by approximately 200 -C” or (c) “increasing
the temperature by approximately 250 -C.” The “subjecting the
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Application 13/127,855
homogenized rough strip” step similarly recites three alternative ways of
satisfying the step. Thus, Appellants’ argument does not squarely address or
identify error in the Examiner’s finding that these two steps are met by
Wehage. Ans. 5—6 (quoting Wehage 4:44—52).
Appellants also argue that steel making is an “ancient and widely
known process[]” such that “we are down to small advances that give critical
advantages.” Appeal Br. 8. Appellants argue that the Examiner errs by
asserting that “a specific type of temperature control is not patentable
because it is generally known to manipulate workpiece temperature after
casting.” Id. at 9. The Examiner’s reasoning, however, is not so broad. The
Examiner properly rejected claim 1 based on the language of claim 1 and the
teachings of Wehage.
The Examiner correctly explained that “[wjhere the general conditions
of a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.” Final Act. 4
(quoting In reAller, 220 F.2d 454, 456 (CCPA 1955); see also In re Boesch,
617 F.2d 272, 276 (CCPA 1980) (“discovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the
art”). Moreover, Appellants present no argument disputing the Examiner’s
finding that Wehage teaches that temperature is a result effective variable
(Final Act. 4), and the preponderance evidence supports the Examiner’s
position. See, e.g., Wehage 3:52—57 (“the starting material runs through a
furnace or an inductive heating system for the purpose of heating or
temperature equalization over thickness and width or homogenization of the
starting material before rolling”), 4:48—52 (“the hot pre-rolled strip being
cooled, heated or its temperature maintained, according to choice”); see also
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Application 13/127,855
In re Applied Materials, 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.”).
Appellants argue that only the recited combination prevents “negative
influence on the quality and the material properties of the cast strip being
produced” (Appeal Br. 7) and argue that claim 1 ’s method provides “critical
advantages” (id at 8). The burden to establish unexpected results rests with
Appellants. In re Geisler, 116 F.3d 1465, 1469—70 (Fed. Cir. 1997). Here,
however, Appellants present no evidence supporting that the claimed
invention provides any advantage and therefore do not meet that burden. In
re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995) (“It is well settled the unexpected
results must be established by factual evidence. Mere argument or
conclusory statements ... do[] not suffice.”) (internal quotes and citation
omitted).
DECISION
For the above reasons, we affirm the Examiner’s rejection of
claims 1—3 and 5.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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