Schaeffler Technologies AG & Co. KG

Patent Trials and Appeals Board

Jul 28, 2020

15028287 - (D) (P.T.A.B. Jul. 28, 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.
15/028,287 04/08/2016 Monir ASGAR POUR KHEZER ABAD 619.1191 2415
23280 7590 07/28/2020
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
LIU, HENRY Y
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
07/28/2020 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MONIR ASGAR POUR KHEZER ABAD

Appeal 2020-000301
Application 15/028,287
Technology Center 3600
____________

Before: JENNIFER D. BAHR, EDWARD A. BROWN, and
JILL D. HILL, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 11–19, 21, 22, 29 and 30.1, 2 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 Schaeffler Technologies AG & Co. KG
as the real party in interest. Appeal Br. 2.
2 Claims 1–10 and 20 are canceled, and claims 23–28 are withdrawn from
consideration. Appeal Br. 2.
Appeal 2019-000301
Application 15/028,287

2
CLAIMED SUBJECT MATTER
Claim 11, reproduced below, illustrates the claimed subject matter on
appeal:
11. A chain element made of a carbon-containing
material, the chain element comprising:
a core layer having a structure made of a ferritic matrix
with at least one hard phase distributed therein; and
a hardened peripheral layer having a martensitic
structure.
Appeal Br. (Claims App. 1).

REJECTIONS ON APPEAL
Claims 11, 12, 14–19, 21, 22, 29, and 30 are rejected under 35 U.S.C.
§ 103 as unpatentable over Baumann (US 2002/0068654 Al; pub. June 6,
2002) and Moulin (US 2011/0168300 Al; pub. July 14, 2011).
Claim 13 is rejected under 35 U.S.C. § 103 as unpatentable over
Baumann, Moulin, and Obayashi (US 2012/0247619 A1; pub. Oct. 4, 2012).

ANALYSIS
Claims 11, 12, 14–19, 21, 22, 29, and 30 over Baumann and Moulin
As to claim 11, the Examiner finds that Baumann discloses a chain
element made of a carbon-containing material and comprising a core layer
and a hardened peripheral layer having a martensitic structure. Final Act. 3
(citing Baumann ¶¶ 61, 63). The Examiner finds that Baumann does not
disclose that the core layer has a structure made of a ferritic matrix with at
least one hard phase distributed therein, as claimed. Id. The Examiner finds
that Moulin teaches a core layer, as claimed. Id. (citing Moulin ¶¶ 2, 5).
The Examiner determines that it would have been obvious to one of ordinary
Appeal 2019-000301
Application 15/028,287

3
skill in the art “to change the chain in [Baumann] such that the chain
element material is the steel in [Moulin] to create a durable, lightweight, and
relatively easily formed chain element.” Id.
Appellant contends that it would not have been obvious to replace
Baumann’s core layer with a core layer having the composition of Moulin’s
sheet. Appeal Br. 4. In response, however, the Examiner states that the
rejection modifies Baumann “by replacing the chain element material in
[Baumann] with the material in [Moulin].” Ans. 3. Accordingly, the
Examiner’s rejection does not replace Baumann’s core layer with a core
layer having the composition of Moulin’s sheet.
Baumann discloses using case hardened steels for making a chain.
Baumann ¶ 61. Baumann discloses a series of process steps, which include:
(1) “[a]nnealing treatment for the purpose of outer layer carburization or
outer layer carburization and nitrification”; and (2) “[f]urnace cooling to
hardening temperature with subsequent martensite hardening by quenching
to T