Ex Parte Noe et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10793472 (B.P.A.I. Sep. 27, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANDREAS NOÉ, ROLF NOÉ, and DIETER BAUKLOH
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Appeal 2009-007640
Application 10/793,472
Technology Center 3700
____________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and FRED A.
SILVERBERG, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-007640
Application 10/793,472

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STATEMENT OF THE CASE
Andreas Noé, et al. (Appellants) appeal under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting under § 102(b) claims 1-7 as
anticipated by Noé (US 5,381,342, iss. Jan. 10, 1995)2. We have jurisdiction
over this appeal under 35 U.S.C. § 6 (2002).
Claim 1 is representative of the claimed invention:
1. A method of trimming longitudinal edges from metal strip which
comprises the steps of:
(a) advancing metal strip to be trimmed along longitudinal edges of
the strip along a trimming path in a longitudinal direction and engaging said
strip at each longitudinal side thereof with a respective trimming shear head,
thereby cutting a respective trim from the respective side along the
respective longitudinal edge;
(b) measuring positions of the longitudinal edges and a width of the
strip at a location immediately upstream in said direction of the respective
heads; and
(c) adjusting a position of a centerline of said strip based upon results
of the measurement in step (b), before, after or during engagement of blades
of said shear heads with said strip whereby said strip centerline is positioned
relative to the shear heads and blades thereof, the centerline position being
adjusted by passing said strip onto rolls shiftable by an actuator and located
upstream of said shear heads.

SUMMARY OF DECISION
We REVERSE.

2 Appellant also appeals the 35 U.S.C. § 112 rejection of claims 1-7. Appeal
Br. 4. The Examiner has since withdrawn this rejection upon further
consideration. Ans. 2-3.
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OPINION
Claim 1 recites a trimming method including a step of adjusting a
position of a center line of a strip "based upon results of the measurement in
step (b)," which is "measuring … edges and a width of the strip at a location
immediately upstream … of the [trimming] heads." The Examiner found,
in relevant part, that Noé describes sensors 6, 7, 13, and 14 located
immediately upstream of the trimming heads with sensors 13 and 14 causing
the adjustment of the centerline of the strip. Ans. 4-5. Appellants argue that
it does not matter that Noé "does position a centerline if NO[É] does not
shift the strip for trimming based upon measurements carried out
immediately upstream of the trimming heads." Appeal Br. 8. Stated
differently, Appellants argue that Noé does not describe the centerline
adjustment based upon sensors "immediately upstream" of the trimming
heads, because "immediately upstream" "means that there are no elements
which act upon the strip located between the means for measuring the
positions of the edges and the width [of] the shear heads."3 Id. at 7.
Accordingly, the issue in this appeal is whether Noé describes a
method of trimming metal strip wherein a centerline is adjusted based upon
the results from measurements taken "immediately upstream" of the
trimming shear heads, as required by claim 1.
The Examiner correctly found that Noé describes that the centerline of
the strip is adjusted based upon the measurements of sensors. Ans. 3, 5. In
particular, the Examiner found that the measurements of sensors 13 and 14

3 A dictionary definition of "immediately" is "[w]ithout an intermediary;
directly." American Heritage Dictionary of the English Language (2007)
(http://www.credoreference.com/entry/hmdictenglang/immediately) (last
visited Aug. 30, 2010).
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adjust the centerline via positioning rollers 5. Ans. 5; Noé, col. 4, ll. 33-47,
fig. 1. The Examiner considers sensors 13 and 14 to be "immediately
upstream" of the trimmer shear heads because they are between the hot
rolled mill 21 and the trimming heads 4. Ans. 4.
We are not persuaded by the Examiner's explanation that
"immediately upstream" of the trimming heads means any location between
the trimming heads and the hot rolled mill. See Ans. 4. The only logical
place to put a sensor for adjusting the centerline of a strip is after the hot
rolled mill that rolls the metal into a strip. Thus, for the term "immediately
upstream" to mean that the sensor is merely between the mill and the
trimming head, one would have to essentially ignore the term because a
sensor upstream of the hot rolled mill will not be able to measure the edges
and width of the not-yet-formed strip. See Bicon Inc. v. Straumann Co., 441
F.3d 945, 950 (Fed. Cir. 2006) ("claims are interpreted with an eye toward
giving effect to all terms in the claim"); Stumbo v. Eastman Outdoors, Inc.,
508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that
render phrases in claims superfluous).
Instead, we consider Appellants' suggested interpretation to be the
better interpretation. See Appeal Br. 8 ("[i]mmediately upstream … means
that there are no elements which act upon the strip located between the
means for measuring … and the shear heads"). Appellants' interpretation is
consistent with a dictionary definition of "immediately" (see note 3, supra)
and is consistent with the disclosure in the Specification. The Specification
focuses on the proximity of the sensors and trimming heads. See, e.g., Spec.
6 ("edge detection is effected immediately upstream of the cutting heads …
so that various detrimental influences like strip canting or camber … are of
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Application 10/793,472

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negligible effect"); Spec. 7 ("the measuring position is directly upstream of
the cutting blades"); cf. Spec. 1-3 (describing the prior art having "sensors
for detecting well upstream of the trimming heads," and that the present
invention avoids the "aforementioned drawbacks"). In effect, the
Specification considers that one advantage of the current invention is that the
sensors are in close proximity to the trimming heads to minimize the effect
of bent areas of the strip on the accuracy of the trimming.
We agree with the Examiner's finding that the measurements of
sensors 13 and 14 are used to adjust the centerline via positioning rollers 5.
Ans. 5; Noé, col. 4, ll. 33-47, fig. 1. However, we find that Noé describes
several intermediary elements between trim heads 4 and the sensors 13 and
14, such as sensors 6, 7, and 8, roller set 11, and centering rollers 5, which
act to center the strip. Noé, col. 4, ll. 21-46, fig. 1. We do not find that
sensors 6 and 7 perform a measurement upon which the adjustment of the
centerline of the strip is based. See Noé, col. 4, ll. 21-47 and fig. 1 (noting
the signals from sensors 6 and 7 do not communicate with centering rollers
5, as indicated by the arrows depicting information flow). Thus, the sensors
that measure the edges and width for strip centerline adjustment (sensors 13
and 14) are not "immediately upstream" of the trimming heads 4. Therefore,
we are persuaded that the Examiner erred in finding that Noé describes a
method of trimming metal strip wherein a centerline is adjusted based upon
the results from measurements taken "immediately upstream" of the
trimming shear heads, as required by claim 1. The Examiner relies on this
unsubstantiated finding for the rejection of claims 2-7.
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DECISION
We reverse the Examiner's decision regarding claims 1-7.

REVERSED

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