SCHUNK SONOSYSTEMS GMBH

Patent Trials and Appeals Board

Aug 20, 2021

2020004707 (P.T.A.B. Aug. 20, 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.
15/035,374 05/09/2016 Stefan Trube 129569.00266 2844
26710 7590 08/20/2021
QUARLES & BRADY LLP
ATTN: IP DOCKET
411 E. WISCONSIN AVENUE
SUITE 2400
MILWAUKEE, WI 53202-4428
EXAMINER
GAMINO, CARLOS J
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
08/20/2021 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):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________
Ex parte STEFAN TRUBE, REINER SCHMIDT,
SINAN KOC, PETER WAGNER,
and DIETER STROH
____________
Appeal 2020-004707
Application 15/035,374
Technology Center 1700
____________
Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
SHELDON M. MCGEE, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1 and 3–11 of Application 15/035,374,

1 In our Decision, we refer to the Specification (“Spec.”) of Application No.
15/035,374 filed May 9, 2016 (“the ’374 Application”); the Final Office
Action dated May 31, 2020 (“Final Act.”); the Appeal Brief filed Jan. 27,
2020 (“Appeal Br.”); the Examiner’s Answer dated Apr. 8, 2020 (“Ans.”);
and the Reply Brief filed June 5, 2020 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Schunk Sonosystems GmbH as the real party in interest. Appeal
Br. 1.
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which constitute all the claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
BACKGROUND
The subject matter of the invention relates to a device for welding rod-
shaped electrical conductors. Spec. 1:15–16. According to the
Specification, the device facilitates the production of defined weld nodes
between electrical conductors to increase the reliability of cable installations
and prevent short circuits. Id. at 3:1–6.
Claims 1 and 7 are representative of the ’374 Application’s claims and
are reproduced below from the Claims Appendix of the Appeal Brief with
key limitations italicized:
1. A device for welding rod-shaped electrical conductors,
the device comprising;
a compression space for receiving two connecting
regions of conductors to be connected to each other, the
compression space being limited in a first axial direction (z-
axis) at two opposing sides by a working surface of a sonotrode
transmitting ultrasonic vibrations in the first axial direction and
by an opposing surface of an opposing electrode and in a
second axial direction (y-axis) at two opposing sides by a
limiting surface of a slider element displaceable in the second
axial direction and by a limiting surface of a limiting element;
a marking device for axial positioning of the connecting
regions, the marking device including a radiation-emitting
device interacting in a contactless manner with end cross-
sections of the connecting regions in such a manner that an
axial position of the end cross-sections within the compression
space is defined in a third axial direction (x-axis) parallel to the
working surface of the sonotrode by a position mark, the
position mark being a point of reflection or point of absorption
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of the radiation on the working surface of the sonotrode or on
the limiting surface of the limiting element; and
a radiation-guiding device including at least one beam
guide arranged between the radiation-emitting device and the
working surface of the sonotrode or the limiting surface of the
limiting element in such a manner that a beam path defined by
the beam guide and impinging upon the working surface of the
sonotrode or upon the limiting surface of the limiting element,
said beam path forming the position mark arranged at a
defined distance from a side edge of the working surface of the
sonotrode.
7. The device according to claim 1, in which the radiation-
emitting device is arranged above the limiting element and
opposite the slider element at a distance from the working
surface of the sonotrode, such that a beam path exiting the
radiation-emitting device extends toward the beam deflection
device arranged above the working surface of the sonotrode and
the beam path exiting the beam deflection device impinges upon
the working surface of the sonotrode so as to form the position
mark.
Appeal Br. (Claims App.).
REFERENCES
The Examiner relies on the following prior art in rejecting claims 1
and 3–11 as obvious under 35 U.S.C. § 103:
Name Reference Date
Nuss US 4,869,419 Sept. 26, 1989
Van Der Horst US 5,488,781 Feb. 6, 1996
Akers US 6,256,895 B1 July 10, 2001
Villacis US 6,644,156 B2 Nov. 11, 2003
Hu et al. (“Hu”) US 2007/0111119 A1 May 17, 2007
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REJECTION
The Examiner maintains the rejection of claims 1 and 3–11 under 35
U.S.C. § 1033 as obvious over Nuss in view of Akers, Van Der Horst, and
Villacis (“the Akers collective”), and further in view of Hu. Final Act. 2–6.
DISCUSSION
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011))
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the [E]xaminer’s rejections.”). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejection for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant argues claims 1, 3–6, and 8–10 as a group, making separate
arguments for the patentability of claims 7 and 11. We select independent
claim 1 as representative of the group. 37 C.F.R. § 41.37(c)(1)(iv). Claims
3–6 and 8–10 stand or fall with claim 1. Appellant also argues separately
that the Examiner’s rejection impermissibly relies on non-analogous art. We
address claims 7 and 11 and the non-analogous art arguments separately
below.

3 Because this application claims priority to a foreign application filed after
the March 16, 2013, effective date of the America Invents Act, we refer to
the AIA version of the statute.
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A. Claim 1
The Examiner finds that Nuss teaches a device for welding rod-shaped
electrical conductors. Final Act. 2–3. The Examiner finds that Nuss’ device
includes a compression space, which receives and compresses two
connecting regions of conductors on a sonotrode’s working surface. Id. The
Examiner finds that Nuss fails to disclose that the device comprises: (i) a
marking device, which includes a radiation-emitting device for marking an
axial position on the conductors’ connecting regions, and (ii) a radiation-
guiding device, which guides a beam of emitted radiation along a path to
form the position mark. Id. at 3.
With respect to missing element (i), the Examiner finds Akers teaches
that a laser line may be used to establish the height at which kitchen cabinets
and bookshelves are installed. Final Act. 3. The Examiner finds that Van
Der Horst teaches the use of laser light sources to create position markings,
which are used to align a printing plate and a coil’s length. Id. at 4. The
Examiner finds Villacis teaches that a laser beam may be used to mark the
position for a fabric’s edge. Id. The Examiner finds that these collective
teachings support “that it is known to use a laser to create a line/mark for the
purpose of positioning the material being worked upon across various arts.”
Id. The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to incorporate the Akers
collective’s laser line marking concept into Nuss’ device “to mark the
position/limit in any direction on any surface of the welding apparatus
where” the connecting regions of conductors are inserted. Id.
With regard to missing element (ii), the Examiner finds Hu teaches
that a laser assembly may comprise a laser source, a fiber optic beam guide,
a mirror, a laser arm, and a focus lens. Final Act. 4. The Examiner
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concludes that it would have been obvious to one of ordinary skill in the art
at the time of the invention to incorporate Hu’s way or any “of the numerous
ways to arrange a laser” into Nuss’ device. Id. According to the Examiner,
the laser beam in the proposed combination would have been arranged at a
defined distance from the side edge of the sonotrode’s working surface. Id.
Appellant argues that the arrangement of Hu’s radiation-guiding
device into Nuss’ device would have blocked and interfered with
“unrestricted access to the open compaction chamber from above.” Appeal
Br. 6. Appellant argues that the Examiner’s proposed modification of Nuss’
device would have required “significant reconfiguration” to allow entry of
Hu’s laser assembly into Nuss’ compression chamber. Id. at 7.
Appellant’s arguments are unpersuasive of reversible error in the
rejection.
It is well established that the obviousness inquiry does not ask
“whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985) (en banc); see also
In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference”); In re Nievelt, 482
F.2d 965, 968 (CCPA 1973) (“Combining the teachings of references does
not involve an ability to combine their specific structures.”).
Here, we agree with the Examiner that the proposed combination does
not require combining the entire specific structure of Hu’s laser into Nuss’
device as argued by Appellant. Ans. 3.
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Furthermore, “[n]on-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
whole. See id. Here, the Examiner explains how all of the limitations of
claim 1 are taught by Nuss, the Akers collective, and Hu. Appellant’s
argument ignores the teachings of the Akers collective that a pointing laser
is suitable to create a mark for the purpose of positioning the material being
worked upon. The Examiner’s explanation that a person of ordinary skill in
the art would have scaled down Hu’s method of laser focusing to fit into
Nuss’ device sufficiently takes into account “the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). In other words, we agree with the
Examiner that one of ordinary skill in the art of engineering would have
known how to fit a pointing laser into Nuss’ device, without rendering the
device unusable. Ans. 4.
We sustain the rejection of claim 1 as obvious over Nuss in view of
Akers, Van Der Horst, Villacis, and further in view of Hu.
B. Claims 7 and 11
The Examiner finds that the combined teachings of Nuss, the Akers
collective, and Hu fail to disclose the arrangement of the radiation-emitting
device with respect to specific components in the compression space such
that a beam path, which exits a beam deflection device, impinges upon the
sonotrode’s working surface to form a position mark. Final Act. 5–6.
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The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention “that the laser assembly
could be placed/positioned anywhere as long as the placement allowed the
laser assembly to correctly illuminate” a position mark. Final Act. 6.
According to the Examiner, one of ordinary skill in the art “would have been
motivated to place [Hu’s laser assembly] above the limiting element in order
to make the device compact.” Id.
Appellant argues that the arrangement of Hu’s radiation-guiding
device into Nuss’ device would not have led to a compact construction
because the lower end of Hu’s laser arm 108 includes focus lens assembly
106. Appeal Br. 7. Appellant argues that Hu’s assembly 106 “is detrimental
to inclusion in a compression space.” Id.
However, we agree with the Examiner’s position that Appellant
attempts to show nonobviousness of claims 7 and 11 by attacking references
individually and requiring bodily incorporation of Nuss and Hu. Ans. 4–5.
Appellant’s arguments do not address the Examiner’s reasons for combining
Nuss, Hu, and the Akers collective, and thus fail to overcome the
obviousness rejection.
Appellant argues that the combined teachings of Nuss and Hu are
deficient for failing to disclose the limitations of “a ‘beam pa[th] exiting the
beam deflection device’ that ‘impinges upon the working surface of the
sonotrode,’ as recited in claims 7 and 11.” Appeal Br. 8. Appellant
contends that Hu’s deflected beam path impinges upon the focus lens
assembly 106. Id.
However, as the Examiner accurately states, claims 7 and 11 do not
exclude the presence of an object between the beam deflection device and
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the sonotrode’s working surface. Ans. 5. Hu explicitly discloses that “[t]he
laser beam exits the focus lens assembly 106 and impinges on” the material
being worked on. Hu ¶ 15.
The Examiner notes that Hu’s purpose “is to form a laser line,” which
“can travel very long distances.” Final Act. 7. The Examiner reasons that,
“at most[,] one would simply need to position the laser remote enough to
provide adequate access” for Hu’s laser line to enter Nuss’ compression
space. Id.
Appellant argues that “one of ordinary skill in the art would not meet
the objectives of claims 7 and 11 by simply positioning ‘the laser remote
enough to provide adequate access,’ as suggested by the Examiner.” Appeal
Br. 8. Appellant argues that claims 7 and 11 “require arranging the laser[-
]emitting device close to the compression space.” Id. at 7 (emphasis added).
Appellant argues that “one of ordinary skill would be motivated to arrange
the laser[-]emitting device remote . . . from the compression space, in order
to guarantee free access to the compression space.” Id. at 3; see also id. at
3–4 (contending that, based on the Akers collective and Hu, one of ordinary
skill in the art would have used “a laser-emitting device as a marking device
and . . . arrange[d] the laser[-]emitting device remote from the side that is to
be marked.”).
Appellant’s argument lacks persuasive merit at least because the
claims do not include language that requires arranging the laser-emitting
device close to the compression space. Limitations not appearing in the
claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982) (“[A]ppellant’s arguments fail from the outset because
. . . they are not based on limitations appearing in the claims.”).
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Appellant offers two alternative arrangements of Hu’s laser arm 108
and focus lens assembly 106 into Nuss’ device that would not have
prevented access to the compression space. Reply Br. 2. However,
Appellant argues that in these arrangements, “introducing the conductors
into the compression space cannot be done as comfortably as when the laser
emitting device is arranged above the limiting element and opposite the
slider element” as claimed. Id.
Arguments of counsel cannot take the place of factually supported
objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139–40 (Fed. Cir.
1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellant fails
to provide any such evidence that establishes that the ordinarily skilled
artisan would have been unable to identify other arrangements that allow
access for both the laser and the conductors into the compression space.
As the Examiner explains, “combining the references . . . requires
nothing more than adapting what is taught while adhering to solid
engineering/design principles.” Ans. 5. We discern no reversible error in
the Examiner’s conclusion that one of ordinary skill in the art of engineering
would have known how to incorporate Hu’s method of delivering a laser
beam, while using the Akers collective’s pointing laser beam, without
rendering Nuss’ device inoperable. See KSR, 550 U.S. at 418.
We sustain the rejection of claims 7 and 11 as obvious over Nuss in
view of Akers, Van Der Horst, Villacis, and further in view of Hu.
C. Whether Hu is Non-Analogous Art
Appellant’s final argument for patentability is that the Examiner
impermissibly relies upon the non-analogous art of Hu. Appeal Br. 8–11.
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“Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor, regardless of the
problem addressed and, (2) if the reference is not within the field of the
inventor’s endeavor, whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Bigio, 381
F.3d 1320, 1325 (Fed. Cir. 2004) (citing In re Deminski, 796 F.2d 436, 442
(Fed. Cir. 1986) and In re Wood, 599 F.2d 1032, 1036 (CCPA 1979)).
Appellant first argues that Hu is not in the same field of endeavor as
the ’374 Application. Appeal Br. 9, 10. On this point, we agree with
Appellant.
The field of endeavor test for analogous art “requires the PTO to
determine the appropriate field of endeavor by reference to explanations of
the invention’s subject matter in the patent application, including the
embodiments, function, and structure of the claimed invention.” Bigio, 381
F.3d at 1325–26 (citing Wood, 599 F.2d at 1036 (confining field of endeavor
to the scope explicitly specified in the background of the invention); and
Deminski, 796 F.2d at 442 (determining the cited references were within the
same field of endeavor where they “have essentially the same function and
structure”)). The Examiner does not make a finding as to the ’374
Application’s field of endeavor. See generally Final Act.; Ans. Hu’s field
of endeavor is “methods for repairing turbine engine components made from
high-strength iron-based alloys” (see Hu ¶ 1), which we determine is not the
same as that of the ’374 Application. See Spec. 1:15–16 (disclosing the field
of endeavor as “a device for welding rod-shaped electrical conductors.”).
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Appellant next argues that Hu fails the second test for analogous art,
i.e., it is not reasonably pertinent to the particular problem faced by the
applicant. Appeal Br. 9–11. On this point, we disagree with Appellant.
The scope of analogous art is to be construed broadly. Wyers v.
Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010) (“The Supreme
Court’s decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398
(2007), directs us to construe the scope of analogous art broadly, stating that
‘familiar items may have obvious uses beyond their primary purposes, and a
person of ordinary skill often will be able to fit the teachings of multiple
patents together like pieces of a puzzle.’ Id. at 402 (emphasis added).”). A
reference is reasonably pertinent if . . . it is one, which because of the matter
with which it deals, logically would have commended itself to an inventor’s
attention in considering his problem. If a reference disclosure has the same
purpose as the claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness rejection.
Innovention Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)); see also In
re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (same standard).
A reference need not be reasonably pertinent to every problem facing
a field to be analogous prior art, but rather need only be “reasonably
pertinent to one or more of the particular problems to which the claimed
invention relates.” Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d
1353, 1361 (Fed. Cir. 2020). “Thus, when addressing whether a reference is
analogous art with respect to a claimed invention under a reasonable-
pertinence theory, the problems to which both relate must be identified and
compared.” Id. at 1359. This analysis must be accomplished from the point
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of view of one of ordinary skill in the art who is considering turning to the
teachings of references outside her field of endeavor, and who “would thus
not identify the problems so narrowly so as to rule out all such art.” Id. at
1360 (citing Clay, 966 F.2d at 660).
The ’374 Application states that the device for welding rod-shaped
electrical conductors “allows producing defined weld nodes between
electrical conductors, thus increasing the reliability of cable installations.”
Spec. 3:3–6. The ’374 Application states that, after end cross-sections are
axially aligned “relative to a reference mark or position mark” (id. at 3:23),
“the connecting regions including the end cross-sections are compressed and
welded together.” Id. at 2:25–29. The ’374 Application states that these
marks are “produced by means of a radiation-emitting device.” Id. at 3:22–
24. Thus, Applicant faced the particular problem of delivering and guiding
emitted radiation to impinge upon a material being worked on.
Hu solves the same problem of delivering and guiding an emitted
laser beam so that “[t]he laser beam exits the focus lens assembly 106 and
impinges on” the material being worked on. Hu ¶ 15. One of ordinary skill
in the art having identified a need to deliver and guide emitted radiation to
impinge upon a material being worked on would reasonably have looked to
Hu, as it is reasonably pertinent to solving that particular problem.
A reference can be analogous art with respect to a patent application
even if there are significant differences between the two. Donner Tech., 979
F.3d at 1361 (“[T]here will frequently be significant differences between a
patent and a reference from a different field of endeavor. But it does not
follow that such a reference is, for that reason alone, not reasonably
pertinent to one or more problems to which the claimed invention relates.”).
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Appellant fails to persuade us that Hu is non-analogous art.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–11 103
Nuss, Akers, Van
Der Horst, Villacis,
Hu
1, 3–11
TIME PERIOD FOR RESPONSE
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