RICHARD BERGNER VERBINDUNGSTECHNIK GMBH & CO. KG

Patent Trials and Appeals Board

Jul 20, 2020

2020000871 (P.T.A.B. Jul. 20, 2020)

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.
15/190,405 06/23/2016 ROLAND BINGESER FDST-P150255 8118
24131 7590 07/20/2020
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
TOLAN, EDWARD THOMAS
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
07/20/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
boxoa@patentusa.com
docket@patentusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ROLAND BINGESER and
HELENE PRAMSCHUEFER
____________________

Appeal 2020-000871
Application 15/190,405
Technology Center 3700
____________________

Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HOFFMANN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection of claims 15, 16, 18–20 and 32–35. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies “Richard Bergner
Verbindungstechnik GmbH & Co. KG,” as the real party in interest. Appeal
Br. 1.
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Application 15/190,405

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According to Appellant, the “invention relates to a method for
producing a connecting element, in particular a bolt, made of a metallic base
material, to which a coating made of a metallic material is applied.” Spec. 1,
ll. 3–5. Claim 15 is the sole independent claim on appeal. Below, we
reproduce claim 15 as representative of the appealed claims.
15. A method for producing a bolt, the method
comprising:
providing a blank of a metallic base material, the blank
having a shank region and a head region;
after providing the blank that has the shank region and
the head region, applying a coating of zinc or zinc alloy on the
blank as an anti-friction coating to form a coated blank; and
after applying the anti-friction coating on the blank,
forming a thread into the shank region.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 15 and 18 under 35 U.S.C. § 102(a)(1) as anticipated by
Kreidler (US 2,962,813, issued Dec. 6, 1960);
II. Claims 16 and 35 under 35 U.S.C. § 103 as unpatentable over
Kreidler and May et al. (US 2013/0129444 A1, published
May 23, 2013) (“May”);
III. Claim 19 under 35 U.S.C. § 103 as unpatentable over Kreidler
and Klos (US 2006/0228575 A1, published Oct. 12, 2006);
IV. Claim 20 under 35 U.S.C. § 103 as unpatentable over Kreidler
and Kazama et al. (US 2017/0089384 A1, published Mar. 30,
2017) (“Kazama”);
V. Claim 32 under 35 U.S.C. § 103 as unpatentable over Kreidler,
Loyd (US 3,301,120, issued Jan. 31, 1967), and Kazama;
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VI. Claims 33 and 34 under 35 U.S.C. § 103 as unpatentable over
Kreidler, Loyd, Kazama, and May.

ANALYSIS
Rejection I—§ 102 rejection of claims 15 and 18
As set forth above, independent claim 15 recites:
15. A method for producing a bolt, the method
comprising:
providing a blank of a metallic base material, the blank
having a shank region and a head region;
after providing the blank that has the shank region and
the head region, applying a coating of zinc or zinc alloy on the
blank as an anti-friction coating to form a coated blank; and
after applying the anti-friction coating on the blank,
forming a thread into the shank region.
Appeal Br., Claims App. (emphasis added). Inasmuch as the Examiner
rejects claim 15 as anticipated by Kreidler, the Examiner relies on Kreidler
to disclose all of the claim’s recitations, including the claimed step of “after
providing the blank that has the shank region and the head region, applying a
coating of zinc or zinc alloy on the blank as an anti-friction coating to form a
coated blank.” Answer 3; Appeal Br., Claims App.
Kreidler discloses that “iron cores 1 shaped with head and shank to the
form of the bolt to be produced are embedded at intervals in an encasing
material 2.” Kreidler, col. 2, ll. 30–33 (emphases omitted). Appellant and
the Examiner disagree as to whether Kreidler’s encasing material discloses
the claimed coating—essentially, Appellant argues that Kreidler’s encasing
material is too thick for one of ordinary skill to consider the encasing
material to be a coating. Answer 3, 6–7; Appeal Br. 4–6. For the following
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reasons, based on our review of the record, the Examiner does not support
adequately that Kreidler’s encasing material discloses the claimed coating.
Appellant’s claim 15 does not specify a thickness of the coating.
Appellant’s Specification does state, however, that “the anti-friction coating
is applied with a layer thickness in the range of 5 μm to 30 μm”—i.e.,
from 0.005 mm to 0.03 mm. Spec. 5, ll. 27–28. Appellant’s figures show
that the fastener threads are formed not only in the coating, but also in the
shank region of the blank that the coating covers. Figure 1.
In contrast, Kreidler discloses that “encasing material 2 . . . has a
thickness of at least 0.5 mm.” Kreidler, col. 2, ll. 32–33 (bold omitted).
Thus, Kreidler’s encasing material has a thickness at least about 15 times
that of Appellant’s coating. Kreidler’s encasing material appears to be thick
enough so that threads are formed solely in the encasing material, and not in
the iron core. See Kreidler, Fig. 2. Further, Kreidler acknowledges that it is
known to use coatings on metal, yet Kreidler never describes the encasing
material as a coating, but instead uses this different term (i.e., “encasing
material”) to describe what covers iron core 1. See, e.g., id. col. 1, ll. 34–55,
n.b. ll. 34–37 (“Therefore [it is known that] sheet metal or metal hoops or
bands have been covered on one or both surfaces with a coating material,
whilst rods and tubes have been covered externally with such coatings.”),
ll. 47–49 (“It is another object of the present invention to embed one or a
plurality of core bodies into encasing material of a thickness of at least 0.5
mm[] or more.”). Kreidler appears to state that coatings are not thick
enough, and, hence, there is a need for its encasing material in place of
coatings. See id. at col. 1, ll. 37–41 (“The ends and edges [of materials
covered with a coating], however, remained uncovered, and during
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subsequent manufacturing processes the underlying material became visible
at various points, which detracted from the surface properties aimed at in the
coating process.”).
Accordingly, based on our review of the record, although we do not
delineate at what thickness a covering ceases to become a coating and
becomes an encasing material, we determine that the Examiner does not
support adequately that Kreidler’s encasing material discloses the claimed
coating. Thus, we do not sustain the Examiner’s anticipation rejection of
independent claim 15, or of claim 18 that depends from, and the Examiner
rejects with, claim 15.
Rejection II—§ 103 rejections of claims 16 and 35
We assume, arguendo, that May discloses a coating. We do not
sustain the Examiner’s obviousness rejection of claims 16 and 35 that
depend from claim 15, based on a combination of Kreidler and May, because
May does not remedy the above-discussed deficiency in independent
claim 15’s rejection.
As discussed above, Kreidler discusses the use of a “coating.” See,
e.g., Kreidler, col. 1, ll. 21–41. However, Kreidler disparages the use of
such coatings. See id. at col. 1, ll. 37–41 (“The ends and edges [of materials
covered with a coating], however, remained uncovered, and during
subsequent manufacturing processes the underlying material became visible
at various points, which detracted from the surface properties aimed at in the
coating process.”). Essentially, Kreidler appears to state that coatings are
not thick enough, and hence there is a need for its thicker encasing material.
Accordingly, the Examiner does not support adequately, anywhere in the
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record, that it would have been obvious to replace Kreidler’s encasing
material with May’s coating.
Rejections III–VI—§ 103 rejections of claims 19, 20, and 32–34
The Examiner does not rely on any Klos, Kazama, May, or Loyd to
disclose anything that would remedy the deficiency in independent
claim 15’s anticipation rejection. Thus, we do not sustain any of the
Examiner’s obviousness rejection of claims 19, 20, and 32–34 that depend
from claim 15.
CONCLUSION
We REVERSE the Examiner’s anticipation and obviousness
rejections of all of the claims.
In summary:
REVERSED

Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
15, 18 102(a)(1) Kreidler 15, 18
16, 35 103 Kreidler, May 16, 35
19 103 Kreidler, Klos 19
20 103 Kreidler, Kazama 20
32 103 Kreidler, Loyd,
Kazama
32
33, 34 103 Kreidler, Loyd,
Kazama, May
33, 34
Overall
Outcome:
15, 16, 18–
20, 32–35