Ex parte Linsenbardt et al.

Board of Patent Appeals and Interferences

Jun 15, 1998

08322218 (B.P.A.I. Jun. 15, 1998)

Application for patent filed October 13, 1994. According1
to appellants, the application is a continuation-in-part of
Application 07/791,103, filed November 12, 1991, now U.S. Patent
No. 5,359,874, issued November 1, 1994.
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte THOMAS L. LINSENBARDT, RICHARD D. BUCKLEY,
HAROLD YOUNGER, DARRELL D. HARRIS and
DENNIS J. STRUEMPH
________________
Appeal No. 97-0612
Application 08/322,2181
________________
ON BRIEF
________________
Before STONER, Chief Administrative Patent Judge, FRANKFORT and
McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1 through
3, all of the claims pending in the application.
Appeal No. 97-0612
Application 08/322,218
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The invention relates to “the production of metal strips
suitable for use in the coils of power transformers”
(specification, page 1). Copies of claims 1 through 3 appear in
the appendix to the appellants’ main brief (Paper No. 10).
The references relied upon by the examiner as evidence of
obviousness are:
Skinner 1,847,365 Mar. 1, 1932
Sparks 2,133,874 Oct. 18, 1938
Vaughan 4,564,347 Jan. 14, 1986
Claims 1 through 3 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Vaughan in view of Sparks and Skinner.
Reference is made to the appellants’ main and reply briefs
(Paper Nos. 10 and 12) and to the examiner’s first Office action
and answer (Paper Nos. 6 and 11) for the respective positions of
the appellants and the examiner with regard to the merits of this
rejection.
Appealed claims 1 and 2 recite a method of forming a
continuous flat metal strip comprising, inter alia, the steps of
feeding first and second rod-like billets to circumferential
grooves formed in a rotating wheel, and advancing the billets
such that metal therefrom flows through a die opening having a
discontinuous, annular cross section to form a continuous tube of
circular cross section having a slit formed therein. Appealed
Appeal No. 97-0612
Application 08/322,218
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claim 3 recites an apparatus for forming a continuous flat metal
strip comprising, inter alia, a rotatable wheel having first and
second circumferential grooves, means for feeding rod-like
billets to the grooves, and a die having an opening with a
discontinuous annular cross section such that metal from the
billets flowing through the die is formed into a continuous tube
of circular cross section having a slit formed therein.
The record indicates that appealed claims 1, 2 and 3 are
similar to claims 1, 5 and 7, respectively, in parent Application
07/791,103 (see, for example, page 4 in the appellants’ main
brief). In an earlier appeal involving the parent application
(Appeal No. 93-4301), this Board sustained the examiner’s 35
U.S.C. § 103 rejection of claims 1, 5 and 7 as being unpatentable
over the combined teachings of Vaughan and Sparks. Method claims
1 and 2 in the present appeal differ from corresponding claims 1
and 5 in the earlier appeal by requiring the slit formed in the
continuous tube of circular cross section to have “curved edges.”
Apparatus claim 3 in the present appeal differs from
corresponding claim 7 in the earlier appeal by requiring the
opening in the die to have “curved ends” so that the edges of the
slit in the continuous tube of circular cross section are
“similarly curved.” The appellants’ specification indicates that
Appeal No. 97-0612
Application 08/322,218
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these features are advantageous in that “[b]ecause of the
contoured or curved edges 97, more reliable transformers 32 are
possible. This is because any sharp edges on the strip 39 would
concentrate the electrical field stress and create a point from
which electrical corona can initiate insulation failure” (pages
16 and 17).
In the present appeal, the appellants do not dispute the
examiner’s proposed combination of Vaughan and Sparks which was
supported by this Board in the earlier appeal. The appellants,
however, do challenge the examiner’s reliance on Skinner to cure
the tacitly acknowledged failure of Vaughan and Sparks to teach
or suggest a method and apparatus meeting the curved edge and
curved end limitations in claims 1 through 3. In this regard,
Vaughan relates to the production of a whole tube having no
slits, and while Sparks relates to the production of a flat strip
from a slit tube, the slit would appear to have sharply cornered
edges formed by a rectangular key 200.
Skinner discloses a whole metal tube extrusion method and
apparatus involving “a die construction utilizing male and female
elements so combined and constructed as to facilitate easy flow
of the metal under pressure” (page 1, lines 4 through 7). The
die construction includes a female die member 20 and a mandrel
Appeal No. 97-0612
Application 08/322,218
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piece 24 having a core forming male die 29 and a final mandrel
terminal 30. As described by Skinner,
[s]aid terminal 30 as shown extends inwardly
within the opening of die 20, exactly concentric
therewith and with the intervening surrounding space
through which the extruded metal a emerges. Terminal
30 extends beyond the main die 29, which is connected
laterally with the main filler mandrel piece 24 by the
wall or web 31.
Said web, as shown in Fig. 6, is as thin as it can
consistently be made, the sides rounding into the main
opening 27 for rigid connection with the outer metallic
wall, and facilitating free flow of the metal under
pressure.
As indicated in Fig. 4 there is an opening 32
backwardly from the face of die 20 sufficiently long to
allow for flow of the metal thereinto from both
opposite sides, providing a continuously annular body
of metal for some distance back of the annular
extrustion [sic, extrusion] space between terminal 30
and die 20.
The exposed surfaces of the various elements are
preferably rounded and curved, as indicated, avoiding
where possible abrupt shoulders to facilitate the flow
toward the annular outlet space.
The outer shoulder 33 of member 29 is rounded as
shown, also facilitating flow and merging of the metal
under pressure [page 2, lines 55 through 82].
The examiner has concluded that
[i]t would have been obvious to one having
ordinary skill in the art at the time the invention was
made, as specified by 35 U.S.C. 103, to provide the
slit-shaping key 200 of Sparks with rounded or curved
edges, with corresponding curved edges being produced
in the product, following the teaching of Skinner that
Appeal No. 97-0612
Application 08/322,218
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curved surfaces facilitate the flow of material and
that abrupt shoulders should be avoided [first Office
action, page 3].
In a similar vein, the examiner states that
it would be merely an obvious exercise of the
mechanical skill expected to be possessed by a tool
design engineer to provide radiused fillets in the
exposed surfaces subjected to material flow in the
arrangement of Sparks, such as the surfaces of key 200,
following the advice of Skinner that exposed surfaces
should be rounded in order to facilitate the flow of
material [answer, page 4].
While Skinner does teach that extrusion die surfaces exposed
to the flow of metal should be rounded and curved to facilitate
such flow, the particular surfaces involved are all upstream of
the outlet face of the die. Since the outlet face of a die
defines the shape of the extruded product, the configuration of
its surfaces is dictated by the desired shape of the product. In
the present case, none of the applied references relates to a
tube having a slit with curved edges, or to the appellants’
reasons for making such a tube, i.e., to produce improved
transformers. As indicated above, the Vaughan and Skinner
products are whole tubes having no slits, and the Sparks product
is a flat strip formed from a tube having a slit with sharply
cornered edges. The key 200 disclosed by Skinner, which forms
the sharply cornered slit, effectively constitutes part of the
Appeal No. 97-0612
Application 08/322,218
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Skinner die outlet face. Since the applied references are not
concerned with the formation of a tube having a slit with curved
edges, it is not apparent why the artisan would have found it
obvious to modify Sparks’ slit-forming key 200 in the manner
proposed by the examiner. We are therefore constrained to
conclude that the examiner has engaged in an impermissible
hindsight reconstruction of the appellants’ invention by using
the appealed claims as an instruction manual to selectively piece
together isolated disclosures in the prior art to meet the curved
edge and curved end limitations in these claims. This being the
case, we shall not sustain the standing 35 U.S.C. § 103 rejection
of claims 1 through 3 as being unpatentable over Vaughan in view
of Sparks and Skinner.
The decision of the examiner is reversed.
REVERSED
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-0612
Application 08/322,218
-8-
Anthony J. Ross
Woodcock, Washburn, Kurtz,
Mackiewicz & Norris
One Liberty Place - 46th Floor
Philadelphia, PA 19103