Ex Parte Heimann et al

Board of Patent Appeals and Interferences

May 30, 2012

11821803 (B.P.A.I. May. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BERNHARD HEIMANN and JOHANNES KAMPS
___________

Appeal 2010-001775
Application 11/821,803
Technology Center 3700
___________

Before SCOTT R. BOALICK, BRADLEY W. BAUMEISTER, and
DENISE M. POTHIER, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
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SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1-13:
1. Claims 1-4 and 7-13 stand rejected under 35 U.S.C. § 103(a) as
obvious over Chang (US 3,472,053) and Abbey (US 5,865,053).
2. Claim 5 stands rejected under 35 U.S.C. § 103(a) as obvious
over Chang, Abbey, and Kuramoto (US 4,770,019).
3. Claim 6 stands rejected under 35 U.S.C. § 103(a) as obvious
over Chang, Abbey, and Zubcevic (US 2003/0074943 A1).
We reverse.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection.

INVENTION
Appellants disclose a device for bending metal strips into pipes.
(Spec. 1.) Appellants’ Fig. 1 (reproduced below) shows a perspective view,
with cross-sectional cutouts, of an exemplary device bending a metal strip 2.
(Spec. 6.) The strip 2 is repeatedly passed between internal rollers 4, 5 and
external forces F (e.g., external, starter rollers) that curl the lengthwise edges
of the strip 2 inward. (Id.). Once sufficient curling is achieved, the
lengthwise edges are pressed and welded together to complete the pipe.
(Spec. 1.)
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Appellants’ Fig. 1 shows perspective view, with cross-sectional
cutouts, of the invention while bending a metal strip 2.
The tilting of the rollers 4, 5 is adjusted by rotating the roller holders
14, 15 about holder pivot axes 8, 9. (Spec. 6.) As best shown for the
left-side roller holder 15, the holder pivot axes 8, 9 extend orthogonally
through the roller axes 4A, 5A (i.e., axles). (Id.) According to Appellants,
this configuration helps place the rollers 4, 5 in flush contact with the strip 2.
(Spec. 3-4.)
Claim 1, which is illustrative of the claimed invention, is reproduced
below with emphasis on, inter alia, the orientation of the claimed holder
pivot axes.
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1. An internal tool for bending a strip passing in a
strip-travel direction into a tube, the tool comprising:
a support juxtaposab1e with a face of the passing strip;
at least two roller holders pivotal on the support about
respective offset holder pivot axes generally parallel to the
strip-travel direction; and
respective rollers carried in the holders and rotatable
about respective roller axes generally perpendicular to the
respective holder axes, the holder pivot axes extending through
the rollers generally at the respective roller axes.

CONTENTIONS
The Examiner finds that Abbey teaches a pipe-forming device with
the claimed orientation of holder pivot axes. (Ans. 4-5.) As supporting
evidence, the Examiner reproduced Abbey’s Fig. 3 with added labels for an
alleged holder pivot axis, roller axis, and strip-travel direction. (Ans. 7.)
We reproduce the Examiner’s marked-up figure (below) with our own
additional labels for a “first pin” and “second pin” of the right-side roller
holder 24.
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Abbey’s Fig. 3, reproduced with labels added by the Examiner
(unboxed) and the Board (boxed), shows a schematic view of
Abbey’s device while bending a metal strip 10.
Appellants argue that the applied prior art does not teach or suggest
the claimed orientation of holder pivot axes, i.e., extending orthogonally
through roller axes and parallel to a strip travel direction. (App. Br. 8.)

ANALYSIS
The Examiner has unreasonably interpreted the claimed strip-travel
direction. The Examiner illustrates a “strip travel direction” as a line
representing the strip’s curling movement, stating that “[t]he strip-travel
direction is taken at an incremental moment while the strip is traveling
upward as it is being formed into a tube.” (Ans. 7.) In view of the claim
language describing the strip as “passing in a strip-travel direction,” a skilled
artisan would instead have construed the claimed strip-travel direction as a
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line representing the fixed direction that the strip travels while passing
through the rollers 28, 30 (i.e., orthogonal to the page).
The Examiner has also unreasonably interpreted the claimed holder
pivot axes. The Examiner illustrates what she interprets to be a “holder
pivot axis”: a line that passes through two pins of the right-side roller holder
24. The first pin is the one about which an upper portion of the roller holder
24 rotates to swing the roller 28 along a plane parallel to the page, and the
second pin is the one about which a lower portion of the roller holder 24
rotates to swing the roller 28 along a plane orthogonal to the page. At best,
these roller holders pivot about distinct points on this proposed axis.
However, in view of the claim language describing the roller holders as
“pivotal … about … holder pivot axes,” a skilled artisan would have instead
construed the claimed holder pivot axes as lines representing the roller
holders’ axes of rotation. The illustrated line that the Examiner interprets to
be a holder pivot axis, in fact, is neither a rotational axis for either the noted
first or second pin of the roller holder 24, nor a rotational axis for any other
illustrated component.
Given the Examiner’s erred interpretations regarding the claimed
strip-travel direction and holder pivot axes, the Examiner has not shown that
Abbey teaches or suggests the claimed orientation of holder pivot axes, i.e.,
extending orthogonally through roller axes and parallel to a strip travel
direction. Accordingly, we do not sustain the obviousness rejection of claim
1. As the Examiner applies the same deficient interpretations to dependent
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claims 2-11 (Ans. 4-6), we likewise do not sustain the obviousness rejections
of those claims for the same reasons.
Unlike claim 1, independent claim 12 additionally recites that “the
rollers can move angularly freely about the respective holder axes.”
Appellants argue that the Examiner has failed to address the “angularly
freely” movement of the rollers. (Reply Br. 4.) We agree. The Examiner
merely concludes, without supporting explanation, that Abbey teaches this
feature at column 3 and Fig. 3. (Ans. 4-6.) We, therefore, do not sustain the
Examiner’s rejection of independent claim 12, or of claim 13, which
depends from claim 12.

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
claim 1 under 35 U.S.C. § 102(b) as anticipated by Kuramoto. Kuramoto
discloses an “internal tool for bending a strip passing in a strip-travel
direction into a tube,” as recited by claim 1. More specifically, Kuramoto’s
Fig. 7, reproduced below left, shows a schematic view of its device for
bending metal strips into pipes. (Kuramoto 1:6-14; 6:61-63.) As shown, a
metal strip 10 is passed through upper rollers 18 and lower rollers 5, 6 of the
device. (Kuramoto 8:51-58.) The passing motion of the strip 10 establishes
a strip-travel direction that extends into the page.
Kuramoto’s Fig. 9, reproduced below right, shows a schematic view
of an included roller 18, roller holder 19, and components that adjustably tilt
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them. (Kuramoto 6:66-68; 10:52-68.) As shown, such tilting entails
rotation of a gear 24 that, in turn, rotates a circularly arced pinion 22 of the
roller holders 19. (Kuramoto 10:52-68.) Restated, the arced pinion
produces a pivot axis for holder 19, the pivot axis being offset from the
pinion 22 in the direction of the roller 18 and orthogonal to the page of
Figures 7 and 9. This roller holder pivot axis is perpendicular to the axes of
the rollers, themselves, as these roller axes are parallel to the page regardless
of the position of the roller holder in relation to the pinion 22. Furthermore,
the dimensions of the arced pinion 22, in combination with the dimensions
of the rest of roller holder 19, indicate that the holder pivot axes of the roller
holders 19 extend through the rollers 18 at least generally, if not exactly, at
the respective roller axes. Claim 1’s language of “generally at the respective
roller axes” is broader than alternatively reciting “exactly at the respective
roller axes” or “at the respective roller axes.”
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Kuramoto’s Fig. 7 (left) shows a schematic view of Kuramoto’s
device when bending a metal strip 10. Kuramoto’s Fig. 9
(right) shows a schematic view of an included roller 18, roller
holder 19, and components that adjustably tilt them 18, 19.
Interpreted in this manner, Kuramoto’s device may be said to include
all of the limitations of claim 1:
 “a support juxtaposable with a face of the passing strip” (the components
13-16, 22-25, 27, 28 supporting the roller holders 19);
 “at least two roller holders pivotal on the support about respective offset
holder pivot axes generally parallel to the strip-travel direction” (the
roller holders 19 and their rotational axes centered on the pinions 22);
and
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 “respective rollers carried in the holders and rotatable about respective
roller axes generally perpendicular to the respective holder axes, the
holder pivot axes extending through the rollers generally at the respective
roller axes” (the rollers 18 and their axles, generally through which the
rotational axes of the roller holders 19 orthogonally extend).
Claim 1 includes no further limitations for consideration.
Although we did not reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP
§ 1213.02.

DECISION
The Examiner’s rejections of claims 1-13 are reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim
1 under 35 U.S.C. § 102(b) as anticipated by Kuramoto.
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Furthermore, 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .
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)(1)(iv).

REVERSED
37 C.F.R. § 41.50(b)

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