Ex Parte Liu

Patent Trial and Appeal Board

Nov 25, 2013

12491427 (P.T.A.B. Nov. 25, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/491,427 06/25/2009 Huimin Liu 81181331 5371
28395 7590 11/26/2013
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
ZIMMERMAN, JOHN J
ART UNIT PAPER NUMBER
1784
MAIL DATE DELIVERY MODE
11/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HUIMIN LIU
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Appeal 2012-009777
Application 12/491,427
Technology Center 1700
____________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
JAMES C. HOUSEL, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 27-29. We have
jurisdiction under 35 U.S.C. § 6(b). Claim 27 is illustrative:
27. A cladding method comprising:

contacting at least one metal cladding layer with a metal sheet to form
a metal sandwich having an original thickness;

subjecting the metal sandwich to compression rolling by a first roller
in a first direction to form a first compressed sandwich having a first
compressed thickness;

Appeal 2012-009777
Application 12/491,427

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subjecting the first compressed sandwich to compression rolling by a
second roller positioned in a second direction different than the first
direction to form a second compressed sandwich having a second
compressed thickness; and

repeating the first compression rolling of the metal sandwich for a
distance equal to a length of the second roller.

The Examiner relies upon the following references as evidence of
obviousness:
Hoover 2,814,580 Nov. 26, 1957
Chehi 3,866,303 Feb. 18, 1975
Tonegawa JP 2002-369284 Dec. 12, 2002

Appellant's claimed invention is directed to a method of forming a
metal sandwich with a metal cladding layer and a metal sheet, and subjecting
the metal sandwich to cross compression rolling.
Appealed claims 27-29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Chehi in view of Hoover and Tonegawa.
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner's rejection for the reasons set
forth in the Answer, which we incorporate herein, and we add the following
for emphasis only.
There is no dispute that Chehi, like Appellant, discloses a cladding
method comprising cross compression rolling of a metal sandwich. Also,
Appeal 2012-009777
Application 12/491,427

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Hoover and Tonegawa evidence that it was known in the art to cross roll
metal sheets in a plurality of directions.
Appellant argues that the references do not disclose the step of claim
27 of rolling the metal sandwich by a first roller for a distance equal to a
length of a second roller, and the step of claim 28 of ceasing the first
compression rolling when the metal sandwich reaches an end of the second
roller, and the step of claim 29 of disabling the roller in the first direction
once the metal sandwich has been rolled for the length of the second roller.
At the outset, we note that claim 27 does not recite rolling the metal
sandwich by a first roller for a distance equal to a length of a second roller.
In any event, we fully concur with the Examiner that, although these claimed
steps are not specifically disclosed in the applied references, one of ordinary
skill in the art would have found it obvious to perform them upon
conducting routine experimentation to achieve optimum conditions.
As set forth by the Examiner, it would have been obvious to one of
ordinary skill in the art to keep changing the directions of Chechi's cross
rolling until the final thickness is achieved for the specific article desired.
Also, we agree with the Examiner that "it is a matter of ordinary engineering
optimization decisions to make operations as single operations, sequential
operations, semicontinuous operations or continuous operations depending
on the type of readily available equipment, budget and scale of the
manufacturing operations" (Ans. 12.) As further explained by the
Examiner, "for a particular operation the skilled artisan may determine that it
is more economical to use sequential sets of rollers at different angles to the
workpiece rather than using a single set of rollers which are capable of being
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Application 12/491,427

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constantly repositioned at different angles relative to the workpiece" (Ans.,
sentence bridging pages 12-13).
It is well settled that where patentability is predicated upon a change
in a condition of a prior art process or method, such as a change in operating
parameters, the burden is on the applicant to establish with objective
evidence that the change is critical, i.e., it leads to a new, unexpected result.
See, for example, In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In
re Rainer, 377 F.2d 1006, 1010 (CCPA 1967); In re Bourden, 240 F.2d 358,
361 (CCPA 1957); In re Aller, 220 F.2d 454, 456 (CCPA 1955). In the
present case, Appellant has pointed to no disclosure in the Specification of
any significance attached to the claimed steps argued by Appellant, nor has
Appellant proffered any objective evidence which demonstrates that the
argued claimed steps produce unexpected results. Accordingly, in the
absence of such Specification disclosure and objective evidence, the prima
facie case of obviousness established by the Examiner stands unrebutted.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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