Ex Parte Halken et al

Patent Trials and Appeals Board

Jun 20, 2013

12287482 - (D) (P.T.A.B. Jun. 20, 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.
12/287,482 10/09/2008 Troels Halken 2007P21191US 8954
22116 7590 06/21/2013
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
STONER, KILEY SHAWN
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
06/21/2013 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 AND TRIAL APPEAL BOARD
____________

Ex parte TROELS HALKEN, BJORN PEDERSEN,
and NICOLAI HALLUM STEENSGAARD

____________

Appeal 2012-003069
Application 12/287,482
Technology Center 1700
____________

Before JEFFREY T. SMITH, GEORGE C. BEST, and
DONNA M. PRAISS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003069
Application 12/287,482

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STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 15 through 21, 23, and 24. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ invention is directed to a method for strengthening a
welded connection. App. Br. 2. Claim 15 is illustrative of the subject matter
on appeal and is reproduced below:
15. A method for the strengthening of a welded connection
comprising:

rolling a plate from a first end section to a second end
section, to form a cylindrical tube with a slit between the first
and second end sections;

closing the slit based on forming the welded connection
between the first and second end sections, said welded
connection comprising an X-butt joint including a weld seam;

welding the first end section with the second end section,
where the weld seam adjoins the first and second sections, the
weld seam having a convex face at an outer surface of the weld
seam;

removing the outer surface of a welding material from
the weld seam; and

removing material from at least one of the sections such
that the geometry of the weld seam and of the at least one of the
sections is specifically modified, the material being adjacent to
the removed outer surface.

Appeal 2012-003069
Application 12/287,482

3
The Examiner relied on the following references in rejecting the
appealed subject matter:
Bowman US 2,716,691 Aug. 30, 1955
Niederstrasser US 3,497,943 Mar. 3, 1970
Allen US 2004/0099644 A1 May 27, 2004
VanderPol US 2007/0102488 A1 May 10, 2007

Appellants, App. Br. 3, request review of the following
rejections from the Examiner’s final office action:
1. Claims 15-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Bowman and Allen.
2. Claims 19-21 and 23-24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Bowman, Allen, and VanderPol.
3. Claims 15-18 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Niederstrasser and Allen.
4. Claims 19-21 and 23-24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Niederstrasser, Allen, and VanderPol.
OPINION
The dispositive issue for this rejection is: Did the Examiner err in
determining that it would have been obvious to one of ordinary skill in the
art to remove material from the weld seam and from the plate end section as
required by the subject matter of independent claim 15?1

1 We will limit our discussion to independent claim 15. Appellants have not
argued the dependent claims separately. Accordingly, claims not argued
separately will stand or fall together with independent claim 15. 37 C.F.R.
§ 41.37(c)(1)(vii).
Appeal 2012-003069
Application 12/287,482

4
After thorough review of the respective positions provided by
Appellants and the Examiner, we answer in the negative and AFFIRM for
the reasons presented by the Examiner and add the following.
The Examiner found that Bowman and Niederstrasser (hereinafter, the
primary references) disclose a method of making tubes comprising the steps
of rolling a plate having a first and second end sections to form a cylindrical
tube with a slit between the first and second end sections, closing the slit to
form an X-butt joint between the first and second sections, and welding the
first and second sections together resulting in a weld seam having a convex
face outer surface. Ans. 5-6; 8-9. The Examiner also found that the primary
references do not disclose the steps of removing the outer surface of the
weld seam; and removing material from at least one of the sections as
required by the subject matter of independent claim 15. Id. at 6. The
Examiner found that it was known in the tube making art to remove the
outer surface of a weld seam as well as material from the end sections once
the tube is made. Ans. 6, 9-10; see Allen, Background Art ¶¶ [0006],
[0007].2 The Examiner concluded that it would have been obvious to one
skilled in the art to modify the processes of the primary references to
incorporate the known post-weld treatment steps to improve reliability of the
welded areas and eliminate stress risers. Ans. 6, 10.
Appellants argue that Allen teaches away from the claimed invention
because Allen emphasizes the disadvantages of conventional methods for
manufacturing pipes. App. Br. 4-5; Allen ¶¶ [0006], [0007]. Appellants

2 VanderPol, cited in a separate rejection of the dependent claims, also
discloses removing material from a weld seam, including a small amount of
the parent metal. Ans. 8; VanderPol ¶ [0017].
Appeal 2012-003069
Application 12/287,482

5
also argue that the Examiner benefitted of impermissible hindsight by
relying on the alleged similarity between the teachings of Allen and
Appellants’ Specification. App. Br. 9.
We are unpersuaded by these arguments and agree with the
Examiner’s conclusion of obviousness. Ans. 5-10. Certainly, a preference
for not using certain post-weld treatment techniques for removal of material
from the weld seam and the plate end sections also provides a teaching that
such post-weld treatment techniques may be used while accompanied by
certain disadvantages, such as surface imperfections. See, e.g., In re Gurley,
27 F.3d 551, 552-53 (Fed. Cir. 1994) (“We share Gurley’s view that a
person seeking to improve the art of flexible circuit boards, on learning from
Yamaguchi that epoxy was inferior to polyester-imide resins, might well be
led to search beyond epoxy for improved products. However, Yamaguchi
also teaches that epoxy is usable and has been used for Gurley’s purpose.”).
Furthermore, it is well settled that the use of non-preferred embodiments of
the prior art are obvious to one of ordinary skill in the art. In re Burckel, 592
F.2d 1175, 1179 (CCPA 1979); In re Susi, 440 F.2d 442, 446 n.3 (CCPA
1971).
Appellants have not disputed that the known post-weld treatment
techniques disclosed in Allen’s Background Art are known to persons of
ordinary skill in the art. A person of ordinary skill in the art would have
sufficient knowledge of the prior art and skill to utilize known techniques for
obtaining the desired welded product.
Accordingly, we affirm the Examiner’s rejections of claims 15-18
under 35 U.S.C. § 103(a) as unpatentable over Bowman and Allen and over
Appeal 2012-003069
Application 12/287,482

6
Niederstrasser and Allen for the reasons given above and presented by the
Examiner.
We note that Appellants rely on the same arguments in addressing the
separate rejections of claims 19-21 and 23-24 under 35 U.S.C. § 103(a) as
unpatentable over Bowman, Allen and VanderPol and over Niederstrasser,
Allen and VanderPol. App. Br. 19. Accordingly, we will also sustain this
rejection for the reasons given above and presented by the Examiner.

ORDER
The rejection of claims 15-18 under 35 U.S.C. § 103(a) as being
unpatentable over Bowman and Allen is affirmed.
The rejection of claims 19-21 and 23-24 under 35 U.S.C. § 103(a) as
being unpatentable over Bowman, Allen, and VanderPol is affirmed.
The rejection of claims 15-18 under 35 U.S.C. § 103(a) as being
unpatentable over Niederstrasser and Allen is affirmed.
The rejection of claims 19-21 and 23-24 under 35 U.S.C. § 103(a) as
being unpatentable over Niederstrasser, Allen, and VanderPol is affirmed.
TIME PERIOD
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).

AFFIRMED
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