Ex Parte Stahl

Patent Trial and Appeal Board

Dec 23, 2014

13002734 (P.T.A.B. Dec. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KARL-HERMANN STAHL
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Appeal 2013-003027
Application 13/002,734
Technology Center 1700
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge

DECISION ON APPEAL
The named inventor (hereinafter “Appellant”) appeals under 35 U.S.C.
§ 134(a) from the Examiner’s rejection of claims 1 and 3 through 30 in the
above-identified application.1 We have jurisdiction pursuant to 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
The subject matter on appeal is directed to a method of making steel
fibers for use as a concrete additive. Spec.2 1:2–3. Details of the appealed
subject matter are recited in illustrative and sole independent claim 1

1 See Appeal Brief filed August 21, 2012 (“Br.”) at 8.
2 Specification filed January 13, 2011.
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reproduced below from the “CLAIMS APPENDIX” in the Appeal Brief:
1. A method of making steel fibers for use as a concrete
additive for making steel-fiber concrete, the method
comprising the steps of:
first notching a sheet-metal strip on one or both
faces with parallel rows of notches so as to form steel-
fiber wires connected together by webs at the notches
while leaving anchor formations between adjacent
notches in each row, and
thereafter flexing the steel-fiber strip for converting
the webs into thin easily mutually separable separation
webs forming separation surfaces that are fracture-
rough and low in burring upon separation by subjecting
each web to multiple bending deformations about its
longitudinal axis in such a way that incipient cracks
are produced at the webs due to fatigue fracture and
thus the separation webs are produced.
See Br. 13 (Claims App’x, emphasis added).
Appellant seeks review of the Examiner’s rejection of claims 1 and 3
through 30 under 35 U.S.C. § 103(a) as unpatentable over Ruskin3 in
combination with Kohama4 or in combination with Stehle,5 and Curzon6 as
set forth in the Final Action mailed February 24, 2012 (“Final”) and the
Examiner’s Answer mailed October 4, 2012 (“Ans.”).7 See Final 4–14; Ans.

3 US 4,066,165, issued Jan. 3, 1978.
4 JP 361125719 A, published June 13, 1986.
5 US 3,628,710, issued Dec. 21, 1971.
6 GB 664,170, published Jan. 2, 1952.
7 The rejection of claims 1 and 3 through 30 based on obviousness-type
double patenting stands withdrawn in view of the filing of a terminal
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3–12; Br. 8–11.
DISCUSSION
As a preliminary matter, we note that Appellant argues the subject
matter common to claims 1 and 3 through 30. Br. 8–11. Accordingly,
dependent claims 3 through 30 will stand or fall together with claim 1. See
37 C.F.R. § 41.37(c)(1)(vii).
Appellant contends that none of the references cited by the Examiner
disclose “multiple bending deformations” as required by claim 1. Br. 8–9,
10–11. Specifically, Appellant argues “[t]he only ‘bends’ in Ruskin are those
that form the legs of the staples. The examiner is wrong that Ruskin teaches
anything resembling the multiple bends that form ‘incipient cracks’ by
‘fatigue fracture.’” Id. at 9. Appellant further argues that a “fatigue
fracture,” as required by claim 1, “is in no way produced by a single bending
operation as in Stehle or Kohama.” Id. at 11.
The Examiner responds that:
Ruskin explicitly discloses that bending and rebending of the
webs [sic] connections (28) results in cold mechanical working
and also results in stretching that weakens and reduces the
strength of the metal of connections (column 7, lines 44-58).
The examiner notes that one of ordinary skill in the
metallurgical art would understand this to be a description of
metal fatigue. . . . Both appellant and Ruskin are using a bending
and rebending process to weaken the connections between

disclaimer to U.S. Serial No. 12/598,000. Ans. 12. The rejection of claim 18
under 35 U.S.C. § 112, second paragraph, is not contested by Appellant and
therefore is summarily affirmed on appeal. Br. 8; Ans. 12.
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adjacent fibers so that they can be separated with burr free
edges. Both appellant and Ruskin are using the same materials.
Barring evidence to the contrary, this weakening during metal
bending and rebending operations would create incipient cracks
in Ruskin’s connections in the same manner that the weakening
bending and rebending creates incipient cracks in appellant’s
connections.
Ans. 12–13.
The preponderance of the evidence on this record supports the
Examiner’s finding that Ruskin discloses deformation of a sheet metal strip
by more than a single bend. Ruskin teaches a process of forming grooves in
sheet metal and parting the metal between the grooves “by being torn or
fractured by shearing stress; and as the parting operation continues, the parted
surfaces tend to wipe past one another. . . . No burr is present . . . .” Ruskin,
6:13–19; see Final 4–6. Ruskin further teaches a “twist and reverse twist
constitute a kind of mechanical working that further reduces the strength of
the metal of connections 28.” Ruskin 7:50–52; see Final 5. Absent evidence
in the record supporting Appellant’s contention that such bends in Ruskin do
not result in the required “incipient cracks” and “fatigue fracture,” we find no
error in the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a).
SUMMARY
In view of the foregoing, and for the reasons provided in the Final
Action and Answer, including the Response to Arguments section, the
decision of the Examiner rejecting the claims on appeal under 35 U.S.C.
§ 112, second paragraph, and 35 U.S.C. § 103(a) is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

cdc