Ex Parte Hoffstaedter et al

Patent Trial and Appeal Board

Oct 1, 2018

13816514 (P.T.A.B. Oct. 1, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/816,514 04/09/2013 Norbert Hoffstaedter
132545 7590 10/03/2018
GROGAN, TUCCILLO & V ANDERLEEDEN, LLP
1350 Main Street, 5th Floor
Springfield, MA 01103
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
5494-0001 wous 1477
EXAMINER
LAROSE, RENEE MARIE
ART UNIT PAPER NUMBER
3667
NOTIFICATION DATE DELIVERY MODE
10/03/2018 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):
docket@gtv-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NORBERT HOFFSTAEDTER and MARKUS SPRING
Appeal2018-000180
Application 13/816,514
Technology Center 3600
Before WILLIAM A. CAPP, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-9, 11-21, and 23 as unpatentable under 35 U.S.C.
§ 103(a) over DE20108963 ("DE '963," pub. Aug. 16, 2001) and Ibe (US
4,934,581, iss. June 19, 1990), and claims 8 and 20 over DE '963, Ibe, and
Hannigan (US 6,147,334, iss. Nov. 14, 2000). 2 We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Alinox AG is the real-party-in-interest. Appeal Br. 2.
2 The Examiner indicates that claims 10 and 22 contain allowable subject
matter if rewritten in independent form. Final Action 7.
Appeal2018-000180
Application 13/816,514
THE INVENTION
Appellants' invention relates to metal plates with an embedded
heating element. Spec. 1. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A method for producing a metal plate comprising at least
one embedded heating element by means of the following steps:
a) arranging at least one heating element between at least
two plate bodies not provided with recesses for
accommodating the or each heating element,
b) embedding at least one heating element in direct contact
in at least two plate bodies by compressing and material
displacement of the plate bodies, and
c) forming at least partly positively bonded interconnection
of the plate bodies,
characterised in that at least two plate bodies respectively
comprising at least one layer of aluminum or an aluminum
alloy on their sides facing each other are thermally pre-treated
at a temperature which is at least equal to the recrystallization
temperature of the aluminum or the aluminum alloy and then
pressed against each other by rolling to effect the embedding of
the or each heating element in the plate bodies and a reduction
of the thickness of the layers in which the layers enter into a
bilateral diffusion bond in the area of their sides contacting each
other and the plate bodies are thereby joined together over their
entire surfaces in a positively bonded manner to form metal
plate to be produced.
Claim 1
OPINION
Unpatentability of Claims 1-9, 11-21, and 23
over DE '963 and !be
The Examiner finds that DE '963 discloses all of the elements of
claim 1 except for the thermal pre-treatment step, for which the Examiner
relies on Ibe. Final Action 2-3. The Examiner concludes that it would have
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Application 13/816,514
been obvious to a person of ordinary skill in the art at the time of the
invention to modify DE '963 with a thermal pre-treatment step as taught by
Ibe to achieve the claimed invention. Id. at 3. According to the Examiner, a
person of ordinary skill in the art would have done this to create a firm and
compact end product. Id.
In traverse, Appellants raise a number of persuasive and technically
sound arguments. Appeal Br. 8-13. Among other things, Appellants argue
that the prior art does not teach diffusion bonding. Id. at 8-11. Appellants
note that the plates of DE '963 are joined by rivets and that the laminate
structure of Ibe is joined by a soldering process that includes A1Si solder.
Id. Appellants note that A1Si is brittle and exhibits poor ductility and, as
such, makes a poor candidate for use in a bending or rolling process. Id.
at 12. Appellants also note that neither DE '963 nor Ibe teach the claimed
thermal pre-treatment step. Id. at 8-12. Appellants note that the heating
step used in the soldering process of Ibe differs from the thermal pre-
treatment step of claim 1. Id. at 11 ("[In] Ibe ... [ o ]nly the solder gets
molten").
In response, the Examiner directs our attention to a new reference that
is not included in the applied art for the rejection. Ans. 8 ( citing Amir
Shirzadi, Diffusion Bonding, University of Cambridge, 2005). The
Examiner relies on Shirzadi to show that the process of Diffusion Bonding is
known in the art. Id. The Examiner then states that: "It seems reasonable
that a person of ordinary skill in the art of diffusion bonding would look to
Ibe for what it teaches about certain materials bonding in a high temperature
environment ... regardless that it may include solder or fibers." Ans. 9.
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Appeal2018-000180
Application 13/816,514
Ibe is directed to a method of preparing a fiber reinforced metal
laminate structure. Ibe, Abstract. The laminate includes metal layers of
aluminum or aluminum alloy. Id. A solder layer is disposed on the inner
surfaces of the metal layers. Id. Fibers of silicone-carbide, boron, or
silicon-carbide coated boron are located between the solder layers. Id. The
layers of aluminum, fibers, and solder are heated under pressure to a
temperature above the melting point of the solder and below the melting
point of the metal layer. Id. There is no teaching directed to embedding
heating elements in Ibe, neither is there any teaching of roll forming to
facilitate such (undisclosed) embedding. See generally Ibe.
We agree with Appellants that DE '963 and Ibe, considered either
alone or in combination, do not teach or suggest the elements of claim 1. At
this stage of the proceeding, the Examiner is permitted to rely on Shirzadi,
not as applied art, but as evidence of the background knowledge of a person
of ordinary skill in the art. See Randall v. Rea, 733 F.3d 1355, 1361-1363
(Fed. Cir. 2013). 3 However, background knowledge taken from Shirzadi
does not cure the deficiencies in the applied art.
Claim 1 requires thermal pre-treating at a temperature that is at least
equal to the recrystallization temperature of aluminum, then pressing the
plates together by roll forming while embedding heating elements in the
plate bodies, thereby reducing the thickness of the layers and forming a
bilateral diffusion bond in the area where the plates contact each other.
3 Apart from Randall's applicability to background knowledge of the person
of ordinary skill in the art, we would have expected the Examiner to enter a
new ground of rejection in relying on a new reference to support a rejection.
See In re Biedermann, 733 F.3d 329, 337 (Fed. Cir. 2013) (explaining that
applicant entitled to fair opportunity to react to the thrust of a rejection).
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Appeal2018-000180
Application 13/816,514
Claims App. claim 1. The Examiner does not adequately explain how
DE '963, which rivets plates together, can be combined or modified by Ibe,
which solders plates together, in a way that will result in heating elements
being embedded into aluminum plates through roll forming and diffusion
bonding. See In re Bond, 910 F.2d 831, 834 (Fed. Cir. 1990) (obviousness
rejection in error where there were critical differences between the prior art
and the claimed invention).
The foregoing is all the more true where Ibe interposes fibers, in
addition to solder, between the aluminum plates. The Examiner,
furthermore, does not adequately explain how any generic background
knowledge of diffusion bonding, gleaned from Shirzadi, will assist a person
of ordinary skill in the art in applying the soldering techniques of Ibe to
embed heating elements into thermally pre-treated aluminum plates through
a roll forming process that will also achieve the claimed diffusion bond. We
are not persuaded that a person of ordinary skill in the art would generate
motivation to form a diffusion bond from a soldering reference, such as Ibe.
See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
( explaining that "obviousness concerns whether a skilled artisan not only
could have made but would have been motivated to make the combinations
or modifications of prior art to arrive at the claimed invention").
The Examiner's findings of fact are not supported by a preponderance
of the evidence, neither is the Examiner's legal conclusion of obvious
supported by sound articulated reasoning with a rational underpinning.
Consequently, we do not sustain the Examiner's unpatentability rejection of
claim 1 over DE '963 and Ibe.
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Appeal2018-000180
Application 13/816,514
Claims 2-7, 9, and 11
These claims depend, directly or indirectly, from claim 1. Claims
App. The Examiner's rejection of these claims suffers from the same
infirmity that was identified above with respect to claim 1. Thus, for
essentially the same reason expressed above in connection with claim 1, we
do not sustain the rejection of claims 2-7, 9, and 11.
Claims 12-19, 21, and 23
Claim 12 is an independent apparatus claim that is produced
according to the method of claim 1. Claims App. As with claim 1, claim 12
contains a limitation directed to plates being joined by a diffusion bond. Id.
Claims 13-19, 21, and 23 depend, directly or indirectly, from claim 12. Id.
The Examiner's rejection of these claims suffers from the same infirmity
that was identified above with respect to claim 1. Thus, for essentially the
same reasons expressed above in connection with claim 1, we do not sustain
the rejection of claims 13-19, 21, and 23.
Unpatentability of Claims 8 and 20
over DE '963, !be, and Hannigan
Claim 8 depends from claim 1 and claim 20 depends from claim 12.
Claims App. The Examiner's rejection of claims 8 and 20 relies on the same
faulty findings of fact and conclusions of obvious that we determine
constitutes reversible error with respect to claims 1 and 12, and which error
is not cured by any findings based on the Hannigan reference. See Final
Action 7. Consequently, we do not sustain the rejection of claims 1 and 20.
DECISION
The decision of the Examiner to reject claims 1-9, 10-21, and 23 is
reversed.
REVERSED
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