Ex parte REISMANN et al.

Board of Patent Appeals and Interferences

Feb 19, 1998

08137868 (B.P.A.I. Feb. 19, 1998)

Application for patent filed October 15, 1993.1
Claims 2, 3 and 7 were amended and claim 9 was added2
subsequent to the final rejection.
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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journal and (2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte HANS-JURGEN REISMANN and KONRAD HAMRATHS
________________
Appeal No. 96-3441
Application 08/137,8681
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HEARD: FEBRUARY 3, 1998
________________
Before ABRAMS, FRANKFORT and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal, filed in response to the final rejection dated
June 19, 1995 (Paper No. 7), involves claims 2 through 4, 7 and
9, all of the claims pending in the application.2
Appeal No. 96-3441
Application 08/137,868
An English language translation of this reference,3
prepared by the Patent and Trademark Office, is appended hereto.
-2-
The invention relates to a rolling mill stand constructed to
facilitate roll replacement. Claim 9 is illustrative and reads
as follows:
9. A universal rolling mill stand, comprising:
a drive side roll mount;
an operator’s side roll mount extending parallel to the
drive side roll mount and adapted to move away therefrom; and
an alternate frame, in which horizontal and vertical rolls
are mounted and which is removably locked to the operator’s side
roll mount for joint movement therewith and for disengagement
therefrom, wherein the alternate frame includes projections which
support an adapter and extend in the region of the vertical rolls
into the roll mounts.
The references relied upon by the examiner as evidence of
obviousness are:
Stubbins 4,974,438 Dec. 4, 1990
Tajima et al. (Tajima) 54-139866 Oct. 30, 19793
(Japanese Patent Document)
Field 2 034 222 Jun. 4, 1980
(British Patent Document)
The claims on appeal stand rejected under 35 U.S.C. § 103 as
follows:
a) claims 2, 7 and 9 as being unpatentable over Field in
view of Tajima; and
Appeal No. 96-3441
Application 08/137,868
-3-
b) claims 3 and 4 as being unpatentable over Field in view
of Tajima, and further in view of Stubbins.
Field discloses a rolling mill arrangement which includes a
mill stand 10 and a roll assembly platform 18. The platform is
located adjacent the stand and is adapted to carry two roll
assemblies for interchangeable mounting on the stand. The roll
assemblies contain different roll configurations which can be
pre-adjusted for spacing and attitude to produce products having
different shapes. One of the roll assemblies is a universal roll
assembly 44U and the other is a “two-hi” assembly 44T. The stand
includes drive and operator side roll mounts, each in the form of
a pair of standards 20 connected at their tops by junction 22 and
at their bottoms by base member 24. These side roll mounts are
joined to one another at their tops by member 56 and at their
bottoms by base 58 so as to form a unitary rigid structure. This
unitary rigid structure is transversely movable between its
operative position and a position adjoining the platform to allow
the roll assemblies to be transferred between the two. In this
regard, both the mill stand and the platform contain transversely
extending rails along which the roll assemblies ride. The
platform is longitudinally movable relative to the stand to
suitably align the rails.
Appeal No. 96-3441
Application 08/137,868
-4-
The examiner concedes that the Field roll mill arrangement
does not meet the limitation in independent claim 9 requiring the
operator’s side roll mount to be adapted to move away from the
drive side roll mount (see page 3 in the answer, Paper No. 13).
As indicated above, Field’s side roll mounts are joined to one
another in a unitary rigid structure and there is no suggestion
that one can be moved relative to the other.
Tajima discloses a rolling mill arrangement having a drive
side roll mount in the form of driving side housing 4 and an
operator side roll mount in the form of operating side housing 5.
The operator side housing is adapted to be moved toward and away
from the drive side housing to accommodate different roll
assemblies for producing differently shaped products.
According to the examiner,
[i]t would have been obvious to one having ordinary
skill in the art at the time the invention was made to
adapt the operator’s side roll mount in [Field] to move
away from the drive side roll mount. One skilled in
the art is considered to be motivated to use an
operator’s side roll mount which is adapted to move
away from the drive side roll mount to enable the
production of diverse product shapes, as shown to be
desirable by [Tajima] [answer, page 4].
The appellants, on the other hand, argue that
[b]oth references are directed to solving of the same
problem, namely, to provide for rolling of differently
shaped products . . . . This problem is solved in
[Tajima] by making the operator’s side roll mount
Appeal No. 96-3441
Application 08/137,868
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movable away from the drive side roll mount, and in
[Field] by providing a mill roll assembly, such as
shown in Fig. 3, movable relative to a stationary
operator’s side roll mount. As both references are
directed to solving one and the same problem, it is
unclear what advantages making the operator’s side roll
mount in [Field] movable would provide [reply brief,
Paper No. 15, pages 3 and 4].
Given the fair teachings of Field and Tajima, the
appellants’ position is well founded. The Field and Tajima
rolling mill arrangements are each adapted, in very different
ways, to produce products having diverse shapes. Since the Field
arrangement already has this capability, the modification in view
of Tajima proposed by the examiner would seem to be completely
unnecessary. In this light, it would appear that the only
suggestion for combining Field and Tajima in the manner advanced
by the examiner stems from hindsight knowledge derived from the
appellants’ own disclosure. The use of such hindsight knowledge
to support a conclusion of obviousness is, of course,
impermissible. See W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983),
cert. denied, 469 U.S. 851 (1984).
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claim 9, or of claims 2 and 7 which depend
therefrom, as being unpatentable over Field in view of Tajima.
Appeal No. 96-3441
Application 08/137,868
-6-
Nor shall we sustain the standing 35 U.S.C. § 103 rejection
of dependent claims 3 and 4 as being unpatentable over Field in
view of Tajima, and further in view of Stubbins. In short,
Stubbins does not cure the foregoing deficiency of the basic
Field-Tajima combination with respect to the subject matter
recited in parent claim 9.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-3441
Application 08/137,868
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