Ex Parte Kokkonen et al

Board of Patent Appeals and Interferences

Jan 9, 2012

10519955 (B.P.A.I. Jan. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KASPER KOKKONEN, JARMO KOSKIMAA,
and SATU JYRKONEN
__________

Appeal 2010-005774
Application 10/519,955
Technology Center 1700
___________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an
Examiner’s decision finally rejecting claims 1-13. An amendment after final
canceled dependent claims 7 and 8 and amended claim 1 to include the
limitations of claims 7 and 8 (see, e.g., App. Br. 5).
Thus, the claims on appeal are 1-6 and 9-13 (App. Br. 4). We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. An apparatus for feeding an anode into a metallurgical smelting reactor in
an essentially horizontal position, said apparatus comprising:
a bending element consisting of four rolling rollers configured to essentially
completely bend the anode on both sides thereby providing the anode with a radius
of curvature of about 1,000 - about 3,000 millimeters, wherein each rolling roller
has a diameter ranging from 100 - 500 millimeters;
a feeding funnel located below the bending element made of at least one part
for feeding at least one anode at a time into the smelting reactor;
wherein the apparatus is configured such that the essentially completely bent
anode meets the surface of a melt contained in the smelting reactor in an
essentially horizontal position.

Claims 1-6 and 9-13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ikoma1 in view of Murakami2.

1 US 5,685,892 issued November 11, 1997.
2 US 4,578,977 issued April 1, 1986.
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B. DISCUSSION
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not met the
burden in this case for substantially the reasons set forth by Appellants in
their Briefs. We add the following for emphasis.
It is undisputed that Ikoma does not teach a configuration of four
rolling rollers to “essentially completely bend an anode on both sides” to
result in the claimed radius of curvature (Ans. generally). The Examiner
relies upon Murakami to exemplify that four rolling rolls may be used to
bend shape metal (Ans. 6). Appellants’ correctly point out that the
Examiner has failed to establish that the rollers of Murakami have a
diameter ranging from 100 to 500 millimeters as recited in claim 1 (App. Br.
13). Indeed, the Examiner does not dispute this, rather the Examiner’s
position is that it would have been obvious to choose an appropriate
diameter as well as an appropriate configuration of the rollers so as to result
in the claimed radius of curvature of the material being worked on (that is,
the anode) in the metallurgical furnace of Ikoma.
Appellants further contend that, contrary to the Examiner’s position,
Murakami does not teach that the roller diameter is a result effective variable
(App. Br. 13) and also contend that there is insufficient motivation to replace
the bending press of Ikoma with the four rolling rollers of Murakami since
Murakami “has absolutely no relevance to the problem addressed” of the
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instant claims (Ans. 15; Reply Br. 21). Appellants further argue that the
Examiner has not established that the apparatus of the combined prior art
would have been configured to bend the anode as recited in claim 1 (e.g.,
App. Br. 13; Reply Br. 16). In addition, Appellants contend that the
Examiner has failed to establish that the apparatus of the combined prior art
would be configured to feed the anode in a horizontal position as recited in
claim 1 (e.g., App. Br. 16; Reply Br. 22). For example, Appellants’
Specification teaches that a different inclination of the bottom part versus the
top part of the feeding funnel “causes a change in the anode momentum,
which turns the anode into a horizontal position.” (Spec. 6:15-25).
We agree that the Examiner has not directed us to any evidence or
persuasive technical reasoning that suggest that the rolling rollers of
Murakami would have a diameter as claimed, nor that the apparatus of
Ikoma as modified by Murakami would have been capable of bending the
anode in the claimed configuration or capable of feeding the anode such that
it meets the surface of the melt contained in the reactor in an essentially
horizontal position. We therefore agree with Appellants that the Examiner
has not adequately shown that the combined teachings of the prior art would
have resulted in the claimed invention (see, e.g., App. Br. 14; Reply Br. 2).
The Examiner’s rejection and response to argument presented in the
Answer do not adequately address the concerns raised by the Appellants
outlined above. “[R]ejections on obviousness grounds cannot be sustained
by mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
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For the foregoing reasons, and those presented by Appellants in the
Briefs, the Examiner has not satisfied the initial burden of presenting a prima
facie case of obviousness, and we conclude that the Examiner’s rejection is
also improperly based upon improper hindsight reasoning. KSR, 550 U.S. at
420 (The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning;”
citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a
“temptation to read into the prior art the teachings of the invention in
issue”)).
In light of these circumstances, a preponderance of the evidence
supports the Appellants’ position, and the § 103(a) rejection is reversed.
C. DECISION
The decision of the Examiner is reversed.
REVERSED

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