Ex Parte Kleier et al

Patent Trial and Appeal Board

Oct 5, 2017

13919631 (P.T.A.B. Oct. 5, 2017)

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.
13/919,631 06/17/2013 Axel Joachim Kleier 509751 9311
53609 7590 10/10/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
HOANG, MICHAEL G
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
10/10/2017 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AXEL JOACHIM KLEIER, STEFAN WISCHMANN,
and JENS PLHA
Appeal 2016-007519
Application 13/919,631
Technology Center 3700
Before ANNETTE R. REIMERS, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
SMEGAL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Axel Joachim Kleier et al. (“Appellants”)1 seek our review under
35 U.S.C. § 134 from the Examiner’s rejections2 under 35 U.S.C. § 103(a)
of claims 1—6, 8, and 13 as unpatentable over the German-to-English
translation of Kinzel (DE 4221251 Al; Jan. 5, 1994, hereinafter “Kinzel”),
and the Japanese-to-English translation of Kawauchi (JP 58-154469 A; Sept.
1 According to Appellants, the real party in interest is ThyssenKrupp
Steel Europe AG. Appeal Br. 2.
2 Appeal is taken from the adverse decision of the Examiner as set forth in
the Final Office Action, dated April 24, 2015 (“Final Act.”).
Appeal 2016-007519
Application 13/919,631
13, 1983, hereinafter, “Kawauchi”); and of claim 7 as unpatentable over
Kinzel, Kawauchi, and Heimann (EP 1238736 Al; Sept. 11, 2002).3 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CFAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below and
illustrates the claimed subject matter, with disputed limitations emphasized.
1. Method for welding a composite structure, comprising
welding a first composite sheet metal part comprising at least
two metal sheets and a plastic sheet arranged between both
metal sheets, to a second sheet metal part comprising a solid
metallic material or a further composite sheet metal part with at
least two metal sheets and a plastic sheet arranged between the
metal sheets using a high-frequency welding method.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments in the Appeal Brief and the Reply Brief. We disagree with
Appellants’ conclusions, and agree with, and adopt as our own, the
Examiner’s findings and conclusions of law set forth at pages 2—12 of the
Answer. Specific arguments are highlighted and addressed below for
emphasis.
Obviousness of Claims 1—6, 8, and 13 over Kinzel and Kawauchi
Appellants argue claims 1—6, 8, and 13 together in contesting the
rejection of these claims as obvious over Kinzel and Kawauchi. See Appeal
3 Claims 9—12 have been withdrawn. Appeal Br. 2.
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Application 13/919,631
Br. 5—15; Reply Br. 5—12. We select claim 1 as the representative claim for
this group, and the remaining claims stand or fall with claim 1. See
37 C.F.R. §41.37(c)(l)(iv).
Regarding claim 1, the Examiner finds that Kinzel discloses a method
for welding the recited composite structures “using a laser—thermal
conduction welding method.” Final Act. 2—3 (citing Kinzel, Abstract). The
Examiner acknowledges “Kinzel does not disclose that the method of
welding is a high-frequency welding method,” but finds “Kawauchi
discloses that it is well-known to weld metal materials (e.g. pipes) using a
high frequency welding method, such as ‘high-frequency induction welded
pipes,’ or ‘high frequency resistance welded pipes.’” Id. at 3 (citing
Kawauchi 3, under “Scope of the Patent Claims.”). From the foregoing, the
Examiner reasons that it would be obvious
to modify Kinzel by applying the teachings of Kawauchi to
Kinzel, i.e. utilizing either the high-frequency induction or
high-frequency resistance welding method taught by
[Kawauchi], in place of the laser-thermal conduction welding
method of [Kinzel], in order to weld the composite structure
using a welding method that allows for high speed processing
and efficiency.
Id.
In taking issue with the analysis and conclusions presented in the
Final Action, Appellants first contend that “[t]he Examiner has erred in
concluding that claims 1-6, 8, and 13 are obvious over Kinzel in view of
Kawauchi because such a conclusion is without a rational underpinning.”
Appeal Br. 5; see also id. at 6—8. In particular, Appellants contend that
“laser welding and resistance welding are very different and non-equivalent
processes, and further, laser welding is recognized as being faster than
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Application 13/919,631
resistance welding,” so that “there is no motivation to modify Kinzel to
utilize resistance welding.” Appeal Br. 6 (emphasis added); see also id. at 7
(“[T]he Examiner has not identified any evidence that would suggest that
one of ordinary skill in the art would select high frequency resistance
welding over laser welding.”).
Furthermore, Appellants contend that “the evidence relied on by the
Examiner does not compare high frequency resistance welding to laser
welding when indicating that such high frequency resistance welding is
faster and more efficient,” observing “the evidence of record actually
suggests that laser welding is faster and thus more efficient than resistance
welding, [so that] the proposed rationale for modifying Kinzel to utilize high
frequency welding is without a rational underpinning.” Appeal Br. 8
(emphasis added); see also id. at 7 (“[T]here is no teaching or suggestion of
record showing that Kawauchi's high-frequency welding methods provide
for higher speeds or more efficient welding than laser welding.”).
Appellants’ first contention is unavailing as it is not commensurate
with the scope of claim 1, which is not limited to “high frequency resistance
welding,” but merely recites “a high-frequency welding method.”4 See
Appeal Br. 17, Claims App. As we are instructed by our reviewing court,
“limitations are not to be read into the claims from the [Specification.” In
re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citing In reZletz, 893
F.2d 319, 321 (Fed. Cir. 1989)).
4 Furthermore, we are unable to find any disclosure in Appellants’
Specification confirming that “laser welding” is not a “high-frequency
welding method,” as recited by claim 1.
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Application 13/919,631
Further, Appellants’ argument is foreclosed by KSR Int 7 Co. v.
Teleflex Inc., 550 U.S. 398, 402 (2007), in which the Court rejected the rigid
requirement of a teaching, suggestion, or motivation to combine known
elements in order to show obviousness. Id. at 415. Thus, “if a technique has
been used to improve one device, and a person of ordinary skill in the art
would recognize that it would improve similar devices in the same way,
using the technique is obvious unless its actual application is beyond his or
her skill.” Id. at 417.
In this case, the Examiner reasons that “based on the known problems
associated with laser welding composite sheet metal parts together, and the
known advantages of high-frequency welding and the ‘skin effect’,”5 it
would be obvious to modify Kinzel in view of Kawauchi “[sjince high-
frequency welding techniques can produce welds at relatively high speeds,
[while] in the case of welding together composite sheet metal parts,”as
recited by claim 1, “destruction of the plastic sheets can even be avoided,
then composite structures can be made relatively quickly and in a cost-
effective manner, i.e. ‘high speed processing and efficiency.’” Ans. 5—6; see
also Final Act. 3, 6—7 (“[I]t is known in the art that high frequency
resistance welding methods offer [advantages,]” “i.e. high-frequency
induction and resistance welding, have the advantages of ‘high speed or
highly efficient weldingf.]”’ The Examiner’s findings are sound and
supported by a preponderance of the evidence, and the Examiner’s
conclusions therefrom are based on rational underpinnings. Appellants do
5 The Examiner refers to non-patent literature for disclosing that in high
frequency welding, the high current flows at a shallow depth, and known as
the ‘skin effect.’ See Ans. 5.
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not provide persuasive evidence or argument apprising us of Examiner
error.6
Appellants contend that “[t]he Examiner has erred in modifying
Kinzel in view of Kawauchi because the proposed modification would
change the principle of operation of Kinzel.” Appeal Br. 5; see also id. at 8—
10; Reply Br. 9-10. Although not disputing that “Kinzel’s purpose is to
weld two composite sheets together,” Appellants contend that “Kinzel
achieves this purpose, however, via a very specific principle of operation, to
wit, laser welding,” and contend that “[modifying Kinzel to replace its laser
welding with the welding techniques taught by Kawauchi would
impermissibly change the principle of operation in Kinzel.” Appeal Br. 10;
see also Reply Br. 9—10.
However, Appellants provide no persuasive evidence that substituting
the high frequency resistance welding of Kawauchi for the laser welding of
Kinzel would change the principal of operation of Kinzel. In particular,
Appellants do not apprise us how “modifying Kinzel to forego laser welding
in favor of high frequency welding impermissibly changes the principle of
6 Appellants acknowledge that the article cited by Appellants to the
Examiner that discusses “laser welding [having] faster welding rates than
resistance welding” “considers resistance welding generally and “draws no
distinction between what frequency the resistance welding is conducted at.”
Appeal Br. 8 (emphasis added). Appellants contend that because the article
“considers resistance welding generally,” it “suggests all forms of resistance
welding, be the[y] high frequency or otherwise.” Id. However, Appellants
contention amounts to unsupported attorney argument, and thus is entitled to
little, if any, weight. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir.
1997).
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Application 13/919,631
operation of Kinzel” of “weld[ing] two composite metal sheet parts
together.” Reply Br. 9-10; see also Appeal Br. 8—10.
Furthermore, in response to Appellants’ argument, the Examiner
points out that “Kinzel’s principle of operation is still to weld two composite
metal sheet parts together.” As such, the Examiner reasons that “Kinzel also
has a purpose, which is to carry out the principle of operation in a successful
manner. Kinzel uses a laser welding technique that allows for the principle
of operation to be carried out, but said technique has its advantages and
disadvantages.” Ans. 8. The Examiner concludes that
the disadvantages associated with the laser welding technique
in the application of welding together two composite sheet
metal parts could be solved by using a high-frequency welding
technique so that the two composite metal sheet parts still can
be successfully welded together, but without damage or
vaporization to the plastic sheets.
Id.1
Appellants do not provide persuasive evidence or argument apprising
us of Examiner error. Moreover, to the extent that replacing the laser
welding technique of Kinzel with the high frequency welding technique of
Kawauchi would result in the loss of some of the benefits of laser welding
“does not necessarily obviate any or all reasons to combine teachings.”
Medichem v. Rolabo, 437 F.3d 1157, 1165 (Fed. Cir. 2006); see also Winner
Inti Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The
fact that the motivating benefit comes at the expense of another benefit,
however, should not nullity its use as a basis to modify the disclosure of one
7 Appellants acknowledge that laser welding “destroys the plastic sheet in
the region of the weld seam.” Spec. 13.
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reference with the teachings of another.”); Appeal Br. 8—10; Reply Br. 9—10;
Ans. 7—8.
Appellants contend that “[t]he Examiner has erred in modifying
Kinzel in view of Kawauchi because the proposed modification is without a
reasonable expectation of success.” Appeal Br. 5; see also id. at 11—13;
Reply Br. 10-11. According to Appellants, “Kawauchi specifically
addresses problems associated with its welding techniques as resulting in
defects that make it difficult to continuously obtain air tight pipes if the end
surfaces to be welded do not conform to a very specific configuration.”
Appeal Br. 11 (citing Kawauchi 5,6). For that reason, Appellants conclude
“there [is] a reasonable expectation that the proposed use of Kawauchi’s
welding techniques in Kinzel will result in the very welding defects it
describes as occurring in places at the welding portion because the specific
structure discussed above as required by Kawauchi's welding technique is
not present in Kinzel.” Id. at 12.
However, we are not persuaded by Appellants’ contention as “it is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983) (citation omitted). “Claims may be obvious in view of
a combination of references, even if the features of one reference cannot be
substituted physically into the structure of the other reference.” Orthopedic
Equipment Co., Inc. v. U.S., 702 F.2d 1005, 1013 (Fed. Cir. 1983) (citation
omitted). In this case, the Examiner explains, “Kinzel is not concerned with
welding pipes together, so these potential defects that may be caused by the
welding techniques taught by Kawauchi wouldn’t necessarily arise in the
welded structure of Kinzel.” Ans. 9.
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Furthermore, the Examiner reasons that one of ordinary skill in the art
“would have possessed the technical skill to weld together the steel
composite sheets of Kinzel in a suitable manner,” so that “Kawauchi's
disclosure of using high-frequency induction and high-frequency resistance
welding techniques could have easily been applied to any other structure to
be welded that is not a copper or copper alloy pipe with the mechanical
configuration disclosed in Kawauchi.” Id.', see In re O’Farrell, 853 F.2d
894, 903 (Fed. Cir. 1988) (Absolute predictability that the substitution will
be successful is not required, all that is required is a reasonable expectation
of success.). Appellants do not provide persuasive evidence or argument
apprising us of Examiner error.
Appellants contend that “[t]he Examiner has erred in modifying
Kinzel in view of Kawauchi because Kinzel teaches away from Kawauchi.”
Appeal Br. 5; see also id. at 13—15; Reply Br. 11—12. Appellants come “full
circle” in contending that “Kawauchi... is directed to high-frequency
induction or high-frequency resistance welding,” which is criticized by
Kinzel for “resulting in warming and therefore softening of the intermediate
plastic layer,” thereby “specifically [teaching] against using such resistance
welding techniques.” Appeal Br. 13. Again, we point out that Appellants’
contention is unavailing as it is not commensurate with the scope of claim 1,
which is not limited to the “resistance welding techniques” of Kawauchi, but
merely recites “a high-frequency welding method. Thus, Appellants are
again addressing non-claimed features which are not persuasive of Examiner
error. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“[A]ppellant[s’]
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims”).
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Appellants contend that the Examiner engages in impermissible
hindsight in combining the references. Reply Br. 5—8. As an initial matter,
we disagree with Appellants that “the Examiner admits that the non-patent
literature link the Examiner relies on does not provide a reason to modify
Kinzel.” Id. at 7. To the contrary, the Examiner clarifies in the Answer that
“[t]he non-patent literature cited by the Examiner [similar to Appellants’
disclosure] also makes reference to high-frequency resistance welding and
the ‘skin effect.’” See Ans. 4—5; see also Final Act. 6—7. In this case, the
Examiner does not “resort[] solely to the instant application” but cites to
specific teachings in the references themselves, in support of the articulated
reasoning for combining the references as proposed in the rejection. See
Final Act. 2—3, 6—7; see also Ans. 3—6.
Also in the Reply Brief, Appellants argue for the first time that “the
Examiner has also erred by not taking into account [Appellants’] discovery
of the source of a problem of welding composite sheets as part of the ‘as a
whole’ inquiry under 35 U.S.C. § 103.” Reply Br. 8; see also id. at 5.
Normally, we do not consider new arguments presented in a Reply Brief that
are not accompanied by a showing of good cause why they could not have
been presented in the Appeal Brief. 37 C.F.R. § 41.41(b)(2); Ex Parte
Borden, 98 USPQ2d 1473, 1476—77 (BPAI 2010) (informative). In any
event, Appellants’ contention is unavailing as it is not commensurate with
the scope of claim 1, which does not require “pore-free welds.” Moreover, it
is well established that the reason to modify the reference may often prompt
a person of ordinary skill in the art to do what the inventor has done, but for
a different purpose or to solve a different problem. It is not necessary that
the prior art suggests the combination to achieve the same advantage or
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result discovered by an applicant. In re Kahn, 441 F.3d 977, 987—88 (Fed.
Cir. 2006).
Accordingly, for the foregoing reasons, we sustain the Examiner’s
rejection of claims 1—6, 8, and 13 under 35 U.S.C. § 103(a) as unpatentable
over Kinzel and Kawauchi.
Obviousness of Claim 7 over Kinzel, Kawauchi, and Heimann
Other than observing that “Heimann is not asserted ... as correcting
any of the deficiencies as discussed above with respect to claim 1,” we
understand Appellants’ appeal of the rejection of dependent claim 7 to rest
on the arguments presented supra regarding the combination of Kinzel and
Kawauchi. Appeal Br. 15, 17. We are not persuaded that Appellants’
arguments are demonstrative of error in the Examiner’s rejection of claim 1,
as set forth supra. As such, for the same reasons, we sustain the rejection of
claim 7 under 35 U.S.C. § 103(a) as unpatentable over Kinzel, Kawauchi,
and Heimann.
DECISION
We AFFIRM the Examiner’s rejections.
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)(l)(iv).
AFFIRMED
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