HOMAG GMBH

Patent Trials and Appeals Board

Mar 23, 2021

2020005332 (P.T.A.B. Mar. 23, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
15/325,487 01/11/2017 Domingo ROHDE 888200-0215 6611
12919 7590 03/23/2021
Paul D. Strain
Strain & Strain PLLC
Strain & Strain, PLLC
1455 Pennsylvania Ave NW, Suite 400
Washington, DC 20004
EXAMINER
SIMS, ELIZABETH M
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
03/23/2021 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 DOMINGO ROHDE and
JOSÉ MANUEL CATALÁ-CIVERA

Appeal 2020-005332
Application 15/325,487
Technology Center 3700
____________

Before STEFAN STAICOVICI, EDWARD A. BROWN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–13, 16, 17, and 19–37, which
constitute all the claims pending in this application. See Appeal Br. 1.
Appellant’s counsel presented oral argument on March 15, 2021. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM the Examiner’s rejections of these claims.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “HOMAG
GmbH.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to an apparatus for heating a
functional layer of a coating material, such as a surface coating or an edge
band, in particular for applying the coating material onto an area of a
workpiece.” Spec. 1.2 Apparatus claims 1 and 37 are independent. Claim 1
is illustrative of the claims on appeal and is reproduced below.
1. An apparatus for heating a functional layer of a coating
material for adhering the coating material onto an area of a
workpiece, the apparatus comprising:
a microwave source;
an applicator; and
a microwave channel for supplying the microwave
radiation generated in the microwave source to the applicator,
wherein a microwave field is generable in the applicator
on account of the supplied microwave radiation, wherein the
applicator has at least one material channel which passes
through the applicator and through which the coating material
may be passed such that the functional layer of the coating
material is heated in the microwave field within the applicator
for adhering onto an area of a workpiece,
wherein the at least one material channel extends through
the applicator, wherein the at least one material channel has an
inlet opening to admit the coating material into the at least one
material channel and an outlet opening to let it out for adhering
onto an area of a workpiece, wherein the at least one material
channel has a circumferential wall which separates the at least
one material channel from the interior of the applicator.

2 Appellant’s Specification lacks line or paragraph numbering. We thus
reference Appellant’s Specification via page number only.
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EVIDENCE
Name Reference Date
Behnke et al. (“Behnke
’249”)
US 2004/0096249 A1 May 20, 2004
Tang et al. (“Tang”) US 2005/0127068 A1 June 16, 2005
Behnke et al. (“Behnke
’751”)
US 2007/0280751 A1 Dec. 6, 2007
Catala-Civera et al. (“Catala-
Civera”)
US 2008/0292813 A1 Nov. 27, 2008
Yoshikado et al.
(“Yoshikado”)
US 2013/0134155 A1 May 30, 2013
Schulte-Goebel US 2014/0014266 A1 Jan. 16, 2014
Ahmad et al. (“Ahmad”) US 9,750,091 B2 Aug. 29, 2017
Behnke (“Behnke ’692”) JP 2003-295692 Oct. 15, 2003
REJECTIONS
Claims 1–4, 8–10, 16, 23, 26, 27, 29, 30, and 33 are rejected under 35
U.S.C. § 103 as unpatentable over Yoshikado and Ahmad.
Claim 2 is rejected under 35 U.S.C. § 103 as unpatentable over
Yoshikado, Ahmad, and Behnke ’249.
Claims 5, 17, and 19–22 are rejected under 35 U.S.C. § 103 as
unpatentable over Yoshikado, Ahmad, and Catala-Civera.
Claims 6, 7, 24, 25, and 32 are rejected under 35 U.S.C. § 103 as
unpatentable over Yoshikado, Ahmad, and Behnke ’692.
Claims 11–13, 28, and 36 are rejected under 35 U.S.C. § 103 as
unpatentable over Yoshikado, Ahmad, and Tang.
Claim 31 is rejected under 35 U.S.C. § 103 as unpatentable over
Yoshikado, Ahmad, and Behnke ’751.
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Claims 34 and 35 are rejected under 35 U.S.C. § 103 as unpatentable
over Yoshikado, Ahmad, and Schulte-Goebel.
Claim 37 is rejected under 35 U.S.C. § 103 as unpatentable over
Yoshikado, Tang, Ahmad, Catala-Civera, and Behnke ’692.
Claim 1 is rejected under 35 U.S.C. § 102(a)(2) as anticipated by
Ahmad.3
ANALYSIS
The rejection of claims 1–4, 8–10, 16, 23, 26, 27, 29, 30, and 33
as unpatentable over Yoshikado and Ahmad
Appellant argues these claims together. See Appeal Br. 13–16. We
select claim 1 for review, with the remaining claims standing or falling with
claim 1. See 37 C.F.R. § 41.37(c)(1)(iv)(2019).
Claim 1 recites a “circumferential wall which separates the at least
one material channel from the interior of the applicator.” Appellant’s
Specification states that the material channel embodying the circumferential
wall may be made of “quartz.” Spec. 24.
The Examiner primarily relies on Yoshikado for the teachings of
claim 1, including a material channel 6 that “extends through the applicator”
5 as recited. Final Act. 4 (referencing Yoshikado Fig. 3); see also
Yoshikado Figs. 1, 2, 4. However, the Examiner acknowledges that
Yoshikado does not expressly disclose that the “material channel has a
circumferential wall” as recited. Final Act. 4. For this, the Examiner relies
upon Ahmad for teaching “the at least one material channel has a
circumferential wall which separates” as recited above. Final Act. 4. The

3 This rejection of claim 1 was designated a New Ground of Rejection by the
Examiner. Ans. 3.
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Examiner reasons that it would have been obvious to a person of ordinary
skill in the art to modify “Yoshikado to incorporate the teachings of Ahmad”
to include a material channel that has a circumferential wall which separates
the channel from the interior of the application. Final Act. 4. The
Examiner’s basis is that “[d]oing so ‘keep[s] the environment clean for
processing [the workpiece].’” Final Act. 4 (quoting Ahmad 5:50).
Indeed, on this point, Ahmad teaches:
To keep the environment clean for processing flat panels,
the compartment preferably contains a ceramic (such as quartz)
enclosure all around, shown as 30 on the top and 31 on the side.
Ahmad 5:50–53; see also Ahmad 7:33–35 (“within the quartz enclosure 30,
31 is the substrate 40 with a deposited coating to be heat treated”). The
Examiner specifically references this “enclosure all around” teaching from
Ahmad in the Final Office Action as support for the finding of “a
circumferential wall” and a conclusion of obviousness. See Final Act. 4.
Appellant contends, “[t]his latter feature—the circumferential wall—
is not disclosed or suggested by the combination of Yoshikado and Ahmad.”
Appeal Br. 13; see also Reply Br. 7. More specifically, as per Appellant,
“Ahmad does not include a ‘circumferential wall’ as claimed.” Appeal Br.
14. As background, Appellant discusses Figures 2 and 3 of Ahmad stating
that Ahmad’s “[material channel]4 itself includes the material to be heated”
and that “insulation (35) is arranged between the cooler microwave cavity
and the [material channel].” Appeal Br. 15; see also Ahmad Fig. 3.

4 Appellant uses the term “hot chamber” which is Ahmad’s term for the
material channel, i.e., that portion of Ahmad’s device through which a
workpiece passes. See Ahmad Fig. 3. For clarity, we substitute these terms
when discussing Appellant’s contentions.
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Appellant further recognizes that Ahmad’s material channel “is encased in
an enclosure (30) made of quartz.” Appeal Br. 15 (referencing Ahmad
7:33–35).
Regardless, Appellant contends, “[t]he quartz enclosure (30),
however, is not a ‘circumferential wall’ around a material channel within the
applicator as claimed.”5 Appeal Br. 15; see also Reply Br. 7. This is
because “there is no division between the [material channel] and the IR
heater” and that “Ahmad itself acknowledges the IR heater is ‘out of the
microwave chamber,’ i.e., not in an ‘applicator.’” Appeal Br. 15 (citations
omitted); see also Reply Br. 6. Thus, because claim 1 requires the material
channel to “extend[] through the applicator,” Ahmad’s quartz chamber 30
“does not meet these limitations, because the workpiece and the IR heater
. . . are in the same compartment.” Appeal Br. 15–16. Hence, “one of
ordinary skill would not seek to alter Ahmad’s configuration to divide the
workpiece from the IR heater.” Appeal Br. 16; see also Reply Br. 6.
Appellant’s contentions above are premised on the location of the IR
heater and the workpiece being “in the same compartment” and as such,
there is no “circumferential wall” separating the two. Appeal Br. 16.
However, claim 1 is silent as to any IR heater, or whether an IR heater is in
the applicator or not. Instead, claim 1 recites “a microwave source”6 and

5 Claim 1 recites “the applicator has at least one material channel which
passes through the applicator” and also “the at least one material channel
extends through the applicator.”
6 Here, the Examiner relies on Yoshikado’s microwave source 3 (Final Act.
3; Yoshikado Fig. 1), but see also Ahmad’s microwave source 11 which is
separate from Ahmad’s IR heater. Ahmad Fig. 3.
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“an applicator”7 “wherein a microwave field is generable in the applicator
on account of the supplied microwave radiation.” The inclusion or not of
Ahmad’s IR heater, or its location, is immaterial to the scope of (or the
rejection of) claim 1.8 Hence, Appellant’s contentions above, seeking to
distinguish Ahmad premised on the location of Ahmad’s IR heater, are not
persuasive the Examiner erred when relying on Ahmad for teaching a quartz
“enclosure all around” separating Ahmad’s material channel from the
interior of the applicator. Final Act. 4.
Additionally, Appellant contends that “the quartz chamber (30) would
still not satisfy the claim limitations above” because Ahmad’s “quartz
chamber is still not inside the microwave cavity [i.e., the applicator], but
instead is at best only adjacent to it.” Appeal Br. 16; see also Reply Br. 7.
Here, Appellant is addressing the location of Ahmad’s material channel as
not being within the applicator. However, in this rejection of obviousness,
the Examiner did not rely on Ahmad for teaching the location of the material
channel but, instead, relied on Yoshikado for such teachings. See Final Act.
4 (referencing Yoshikado’s item 6 depicted in Figures 1–3). These figures
clearly illustrate Yoshikado’s material channel 6 located within and
surrounded by applicator 5. Appellant does not explain how modifying
Yoshikado by incorporating Ahmad’s quartz enclosure all around

7 The Examiner relies on Yoshikado’s applicator 5 (Final Act. 3; Yoshikado
Figs. 1, 2), but see also Ahmad’s “Cooler Microwave Cavity.” Ahmad Fig.
3.
8 To be clear, Ahmad teaches that in addition to “microwave power source
11,” Ahmad also employs “IR heater 20” as a source of heat when desired.
Ahmad 5:35–44.
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Yoshikado’s material channel 6 would change the location of this material
channel within Yoshikado’s applicator 5.
Accordingly, and based on the record presented, we sustain the
Examiner’s rejection of claims 1–4, 8–10, 16, 23, 26, 27, 29, 30, and 33 as
unpatentable over Yoshikado and Ahmad.
The rejections of (a) claim 2 as unpatentable over Yoshikado, Ahmad, and
Behnke ’249; (b) claims 5, 17, and 19–22 as unpatentable over Yoshikado,
Ahmad, and Catala-Civera; (c) claims 6, 7, 24, 25, and 32 as unpatentable
over Yoshikado, Ahmad, and Behnke ’692; (d) claims 11–13, 28, and 36 as
unpatentable over Yoshikado, Ahmad, and Tang; (e) claim 31 as
unpatentable over Yoshikado, Ahmad, and Behnke ’751; and, (f) claims 34
and 35 as unpatentable over Yoshikado, Ahmad, and Schulte-Goebel
Appellant presents no argument with respect to the above claims, or
their rejections, other than that presented above with respect to parent claim
1. See Appeal Br. 13–16. Accordingly, because we are not persuaded of
Examiner error with respect to the rejection of claim 1, we likewise sustain
the rejections of these claims as well.
The rejection of claim 37 as unpatentable over Yoshikado, Tang, Ahmad,
Catala-Civera, and Behnke ’692
Appellant contends “the rejection of claim 37 was an exercise in
picking and choosing claim elements from numerous references” and
provides a chart listing the limitations of claim 37 across from the reference
relied upon for such teaching. Appeal Br. 17–18. Appellant quotes from
Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1352 (Fed. Cir.
2010) which states “a patent composed of several elements is not proved
obvious merely by demonstrating that each of its elements is, independently,
known in the prior art.” Appeal Br. 18. We do not disagree with this
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statement, as far as it goes. However, the Supreme Court has addressed this
matter stating that, in addition to the identification of known components,
it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention
does. This is so because inventions in most, if not all, instances
rely upon building blocks long since uncovered, and claimed
discoveries almost of necessity will be combinations of what, in
some sense, is already known.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007). Hence, this
Court has stated that the Examiner’s analysis “should be made explicit” and
that “there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” KSR, 550
U.S. at 418.
In the present situation, the Examiner has provided adequate reasons
with rational underpinnings for combining Yoshikado with Tang (see Final
Act. 20) and thereafter with Ahmad (see Final Act. 21), with Catala-Civera
(see Final Act. 21), and with Behnke ’692 (see Final Act. 22). Appellant
does not challenge these reasons, stating only that “[t]he piecemeal approach
is legally incorrect.”9 Appeal Br. 19 (citations omitted); see also Reply Br.
9. Accordingly, we do not find fault with the Examiner’s expressed reasons
for combining the cited references.
Appellant further contends that, as regarding Yoshikado and Tang,
they relate to different art, and as such, the Examiner does not consider
whether a skilled person “would have adapted Tang’s pasteurization

9 It is noted that but for Power-One above, the other cases relied upon by
Appellant to support this contention pre-date the approach laid out in KSR.
See Appeal Br. 18–19.
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technology and Yoshikado’s toner curing technology to address a problem
relating to activating the functional layer of a coating material for a
workpiece as claimed.” Appeal Br. 19; see also Reply Br. 8, 9. However,
the primary reference to Yoshikado is entitled “Microwave Heating Device
and Image Fixing Apparatus Using the Same.” Yoshikado Title. Yoshikado
is directed to employing microwaves to fuse particles (toner) in place. See
Yoshikado Abstract. Appellant does not explain how using microwaves for
fusing purposes is not reasonably related to Appellant’s claim 37 which is
directed to “heating a functional layer of a coating material for adhering the
coating material onto an area of a workpiece.”
Regarding Tang, this reference is entitled “Apparatus and Method for
Heating Objects with Microwaves.” Tang, Title; see also Ans. 6 (“Tang is
related to an apparatus and method for heating objects with microwaves”).
The Examiner relies on Tang for teaching a microwave source connected to
a plurality of waveguides or coaxial cables, and also wherein each applicator
segment is connected to one of the waveguides or coaxial cables. See Final
Act. 20. Appellant does not explain persuasively why a skilled person
would not have combined the reference teachings for the reason expressed
(i.e., to allow the workpiece “to be heated by microwave radiation with
different parameters . . . to achieve the desired heating of the item”). Final
Act. 20.
Appellant also contends that the Examiner’s analysis “ignores features
the references each discuss as critical.” Appeal Br. 19; see also Reply Br. 9.
For example, Appellant addresses Ahmad’s redundant/additional IR heating
(see Appeal Br. 20), but, as discussed above, Ahmad’s IR heating is
immaterial as to whether or not Ahmad teaches the recited “circumferential
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wall.” Appellant also addresses Catala-Civera, which discusses
“configurations of irradiation arrangement.” Appeal Br. 20; see also Reply
Br. 9. However, Appellant does not explain how the Examiner erred by
relying on this reference, not for its method of irradiating a workpiece, but
instead for teaching an applicator segment having the structure of a stop
comprising an aperture as well as a metal element projecting into the
aperture. See Final Act. 21. Appellant does not explain how the Examiner’s
reasoning for combining Catala-Civera with the modified Yoshikado is in
error. Accordingly, Appellant’s contentions above are not persuasive that
the Examiner erred by relying on the cited references for the reasons
provided. We sustain the Examiner’s rejection of claim 37 as being obvious
in view of Yoshikado, Tang, Ahmad, Catala-Civera, and Behnke ’692 as
expressed.10
The rejection of claim 1 as anticipated by Ahmad
The Examiner identifies this rejection as a New Ground in the
Examiner’s Answer. See Ans. 3. The Examiner identifies “claim 1,” “Fig.
3,” and a certain portion of column 5 of Ahmad for support. See Ans. 3, 4.
Appellant only challenges the Examiner’s reliance on claim 1 of Ahmad
contending that “claim 1 of Ahmad was not published until after the priority
date of the present application.” Reply Br. 3. As such, according to

10 Appellant’s further contentions regarding the Examiner’s application of In
re Japikse, 181 F.2d 1019 (CCPA 1950) (see Appeal Br. 20–21; Final Act.
22; Reply Br. 10, 11; Ans. 6) are likewise not persuasive of Examiner error.
It is noted that while another Board panel in 1997 may have applied Japikse
in a certain manner suitable for the facts in that case (see Appeal Br. 21), we
are not persuaded, or compelled, to apply Japikse in a like manner with
respect to the facts of this case.
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Appellant. “claim 1 of Ahmad was simply not yet available to the POSA as
of the priority date of the present application. This alone is sufficient to
reject the new ground.” Reply Br. 3.
Even presuming for the sake of argument that claim 1 of Ahmad is not
properly relied on by the Examiner, it is not made clear by Appellant that
such reliance renders the Examiner rejection moot in view of the Examiner’s
additional reliance on Figure 3 and a portion of column 5 of Ahmad. For
example, Appellant seeks to distinguish the Examiner’s reliance on claim 1
by contending that “Ahmad does not disclose using a microwave channel”
because claim 1 merely recites that claim 1 “may cover a device having a
‘microwave channel.’” However, Appellant does not explain how Figure 3
of Ahmad fails to disclose such a channel, especially when the Examiner
specifically references Figure 3 as disclosing “a ‘cooling microwave cavity’”
therein. Ans. 4. Hence, claim 1 is not the only citation to Ahmad the
Examiner relied upon for teaching a microwave channel.
Appellant also contends that this new ground of rejection should be
reversed because, as also argued above, Ahmad does not disclose “the
‘circumferential wall’ feature of the present claims.” Reply Br. 5. We
disagree for the same reasons already expressed, and especially when the
portion of column 5 relied upon by the Examiner (i.e., “Col. 5, lines 52–53”)
is that exact portion of Ahmad that teaches a quartz “enclosure all around.”
Ans. 4. Appellant also seeks to distinguish Ahmad based on Ahmad’s “IR
heater,” i.e., “there is no ceramic component shown dividing the ‘hot
chamber’ from the IR heater.” Reply Br. 5. However, this argument is not
persuasive for the reasons already expressed.
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Further, Appellant challenges Ahmad’s teaching of the proper
location of the material channel.11 See Reply Br. 6. Appellant contends that
Ahmad’s material chamber “is ‘out of the microwave chamber’” and thus is
“not in an ‘applicator’” as recited. Reply Br. 6. It is understood that the
Examiner identifies claim 1 as teaching a “microwave-transparent
compartment within said microwave applicator cavity.” Ans. 4. However,
Appellant does not address a similar disclosure in Figure 3 of Ahmad, which
the Examiner also relied upon. See Ans. 4. In addition to Figure 3, further
support can be found in the “Summary of the Invention” portion of Ahmad’s
Specification which states, “a thermally insulated microwave-transparent
compartment within the cavity” and also “forming a thermally insulated,
microwave transparent compartment within a microwave applicator cavity.”
Ahmad 2:51–52; 2:65–66. Thus, Appellant’s contention regarding the “not
in” (i.e., outside) location of Ahmad’s microwave transparent material
channel vis-a-vis the applicator (see Reply Br. 6) is contradicted by
Ahmad’s express teachings (and illustration) that the channel is, instead,
“within” the applicator. See above; see also Ans. 5.
Accordingly, and based on the record presented, Appellant’s
contentions are not persuasive the Examiner erred in rejecting claim 1 as
being anticipated by Ahmad.

11 As noted above, the Examiner relied on Yoshikado for such disclosure,
however, reliance on Yoshikado is not applicable in the present situation
involving a rejection of claim 1 as being anticipated by Ahmad.
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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–4, 8–10,
16, 23, 26,
27, 29, 30,
33
103 Yoshikado,
Ahmad
1–4, 8–10,
16, 23, 26,
27, 29, 30, 33

2 103 Yoshikado,
Ahmad,
Behnke ’249
2
5, 17, 19–22 103 Yoshikado,
Ahmad,
Catala-Civera
5, 17, 19–22
6, 7, 24, 25,
32
103 Yoshikado,
Ahmad,
Behnke ’692
6, 7, 24, 25,
32

11–13, 28,
36
103 Yoshikado,
Ahmad, Tang
11–13, 28, 36
31 103 Yoshikado,
Ahmad,
Behnke ’751
31
34, 35 103 Yoshikado,
Ahmad,
Schulte-
Goebel
34, 35
37 103 Yoshikado,
Tang,
Ahmad,
Catala-
Civera,
Behnke ’692
37
1 102 Ahmad 1
Overall
Outcome
1–13, 16, 17,
19–37

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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). See 37
C.F.R. § 1.136(a)(1)(iv).
AFFIRMED