Werner Kehl et al.

Patent Trials and Appeals Board

Jan 25, 2021

2020001213 (P.T.A.B. Jan. 25, 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.
14/205,645 03/12/2014 Werner Kehl 510036 7796
53609 7590 01/25/2021
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
LUK, VANESSA TIBAY
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
01/25/2021 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):
RockMail@reinhartlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WERNER KEHL, DIETMAR SCHRÖDER, HENK-JAN
BRINKMAN, NATALIE HÖRSTER, KAI-FRIEDRICH KARHAUSEN,
EIKE BRÜNGER, and THOMAS WIRTZ
Appeal 2020-001213
Application 14/205,645
Technology Center 1700
Before FRANCISCO C. PRATS, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
REN, 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 and 5–16. See Final Act. 2, 3. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 “Hydro Aluminum
Rolled Products GmbH.” Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for manufacturing a strip from an AlMgSi
alloy, comprising casting a rolling ingot from an AlMgSi alloy
of the alloy type AA6xxx, wherein the rolling ingot undergoes
homogenization, the rolling ingot which has been brought to a
rolling temperature is hot rolled in a reversing manner by means
of a hot rolling mill, subsequently the hot strip is quenched in
said hot rolling mill using at least one plate cooler and the hot
rolling pass of said hot rolling mill itself, loaded with emulsion
so that prior to the start of a final two rolling passes of the hot
rolling process, the temperature of the hot strip is more than
400 °C, and the temperature of the hot strip after the penultimate
rolling pass is from 290 °C to 310 °C, and, immediately after
being discharged from the last hot rolling pass, the hot strip is at
a temperature of more than 130°C to 250°C and the hot strip is
coiled at this temperature, optionally the coiled hot rolled strip is
cold rolled to final thickness, and the finished rolled strip is
solution annealed and quenched.
Claims Appendix.
REFERENCES
The prior art references relied upon by the Examiner are:
Name Reference Date
Komatsubara US 4,808,247 Feb. 28, 1989
Oleksiak US 6,060,438 May 9, 2000
Wycliffe US 6,086,690 July 11, 2000
Taguchi US 6,660,111 B2 Dec. 9, 2003
Lorentzen US 2004/0011438 A1 Jan. 22, 2004
Kamat US 2010/0279143 A1 Nov. 4, 2010

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REJECTIONS

Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 5, 6, 8–16 103 Komatsubara, Taguchi,
Lorentzen, Wycliffe,
Olesiak
7 103 Komatsubara, Taguchi,
Lorentzen, Wycliffe,
Olesiak, Kamat

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. 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 examiner’s rejections.”)). After having
considered the evidence presented in this Appeal and each of Appellant’s
contentions, we are not persuaded that reversible error has been identified,
and we affirm the Examiner’s § 103 rejections for the reasons expressed in
the Final Office Action (which incorporates by reference the previous Non-
Final Action), the Advisory Action of April 9, 2019 (“Advisory Action”),
and the Answer. We add the following primarily for emphasis.
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Claim 12
Appellant first argues that the Examiner reversibly erred in finding
that the “temperature of the hot strip after the penultimate rolling pass is
from 290 °C to 310 °C” as recited in claim 1 is taught or suggested by the
prior art. Appellant argues that “the conditions of the final hot rolling
performed after the rough hot rolling, such as the result temperature, are not
disclosed, and the final hot rolling is rather performed by a conventional
method” in Taguchi and that “Taguchi does not disclose, teach, or suggest
anything regarding the temperature of a strip after the penultimate rolling
pass or after the last hot rolling pass of the hot rolling process as opposed to
a rough hot rolling, which is not claimed.” Appeal Br. 9 (emphases
removed).
Appellant’s argument is not persuasive because it does not sufficiently
explain why the prior art is patentably distinguished. Appellant
acknowledges that Taguchi describes that “the aforementioned rough hot
rolling is usually performed at the last rough hot rolling pass or at the rough
hot rolling pass immediately before the last rough hot rolling pass” and
“where the aforementioned rough hot rolling is performed at a rough hot
rolling pass other than the last rough hot rolling pass, it is required to
perform the rough hot rolling subsequent to the pass at the material
temperature of from 250 to 340° C.” Taguchi 3:45–52 (cited in Appeal Br. 9,
11). Neither Appellant’s argument nor the Specification provides that the
recited “rolling pass” excludes the rough rolling pass in Taguchi.

2 Appellant argues for the patentability of claims 1, 5, 6, and 8–16 as a group
with claim 1 being the representative claim. See Appeal Br. 6–19. These
claims stand or fall together. See id.; see also 37 C.F.R. § 41.37(c)(1)(iv).
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Appellant’s argument that “the conditions of the final hot rolling performed
after the rough hot rolling, such as the result temperature, are not disclosed”
(Appeal Br. 9; see also id. at 11) is inconsistent with Taguchi’s teaching.
More specifically, Taguchi provides that “the aforementioned rough hot
rolling is usually performed at the last rough hot rolling pass or at the rough
hot rolling pass immediately before the last rough hot rolling pass,” that is,
hot rolling is either the last rolling pass or immediately before the last rolling
pass, i.e., the penultimate rolling pass. Taguchi 3:40–42. Taguchi also
provides that “where the aforementioned rough hot rolling is performed at a
rough hot rolling pass other than the last rough hot rolling pass,” i.e., the
penultimate rolling pass, “it is required to perform the rough hot rolling
subsequent to the pass at the material temperature of from 250 to 340° C”
which overlaps with claim 1’s recited temperature range of the post
penultimate pass. Taguchi 3:48–52. The Examiner’s findings that Taguchi
teaches or suggests the “temperature of the hot strip after the penultimate
rolling pass is from 290 °C to 310 °C” as recited in claim 1 is therefore
supported by evidence in the record and Appellant’s argument does not
identify reversible error therein.
The Examiner’s additional finding that Komatsubara teaches or
suggests the post penultimate temperature is also supported by the record.
As the Examiner finds, Komatsubara states that “the finishing temperature of
the hot-rolling is 350 °C. Komatsubara 4:53–54; see Advisory Action.
Contrary to Appellant’s argument that Komatsubara’s teaching is immaterial
because the claim does not recite “a finish temperature after the final rolling
pass,” (Appeal Br. 10), the record does not show – and Appellant does not
provide evidentiary support showing – that the “finishing temperature” in
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Komatsubara is the temperature after the final rolling step. Rather, the record
supports the Examiner’s finding that Komatsubara’s “finishing temperature”
suggests the temperature of the finishing pass which includes post
penultimate pass temperature.
Appellant next argues that Taguchi teaches away from the recited
“finished rolled strip [that] is solution annealed and quenched.” Appellant
argues that Taguchi describes a process in which “effects equivalent to
effects obtained by solution treatment and quenching can be obtained”
(Taguchi 2:60–61) which renders unnecessary – and therefore teaches away
from – the recited quenching process. Appeal Br. 12.
“Under the proper legal standard, a reference will teach away when it
suggests that the developments flowing from its disclosures are unlikely to
produce the objective of the applicant’s invention.” Syntex (U.S.A.) LLC v.
Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations omitted). In
this case, the objective of the pending application is “for manufacturing a
strip from an AlMgSi alloy” (Spec. ¶ 2) and the record before us does not
show that any portion of Taguchi suggests that the use of Taguchi’s process
is unlikely to meet this objective. As the Examiner points out, Taguchi
teaches a particular method to achieve the effects of annealing and
quenching, i.e., by way of hot rolling without stating to eliminate annealing
and quenching. Final Act. 4. Appellant’s argument is therefore unpersuasive
for lack of evidentiary support.3

3 We note that Taguchi also provides that “examples Nos. 2, 4 and 11 and
the comparative examples Nos. 7 and 9 were further subjected to the final
annealing under the conditions shown in Table 1.” Taguchi 5:57–59.
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Moreover, Appellant’s argument that “it is more likely that the hot
rolling temperature ranges according to Komatsubara would be replaced in
order to spare the quenching step” is likewise not supported by evidence
(Appeal Br. 12) and unpersuasive of reversible error. Appellant’s argument
that the Examiner engaged in impermissible hindsight (Appeal Br. 13) is
unpersuasive because the argument does not show that the Examiner “is
imbued with knowledge taught only by the inventor of the challenged
patent.” See W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553
(Fed. Cir. 1983). Appellant does not dispute the Examiner’s finding that
Komatsubara teaches solution annealing and quenching. Compare Appeal
Br. 13, with Final Act. 4 (citing various portions of Komatsubara in support
of the recited annealing and quenching). No reversible error has been
identified in this aspect of the obviousness analysis. See In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971) (“Any judgment on obviousness is in a
sense necessarily a reconstruction based upon hindsight reasoning, but so
long as it takes into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made and does not
include knowledge gleaned only from applicant’s disclosure, such a
reconstruction is proper.”).
Appellant acknowledges that the Examiner cites Lorentzen for the
teaching of the recited “plate cooler . . . with emulsion” (Appeal Br. 7; see
also Non-Final Act. 6) but argues that “a rolling ingot is cast and
homogenized specifically precludes the type of continuously cast” taught in
Lorentzen. Appeal Br. 14. Appellant argues that a skilled artisan would not
have combined Lorentzen with Komatsubara because “Lorentzen relates to a
completely different manufacturing process based on continuous casting
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with hot rolling speeds depending on the amount of casting of the aluminum
alloy.” Id. at 16. Appellant proffers various differences between the prior art
processes. Id. at 14–16.
We are not persuaded first and foremost because all of the process
steps of Lorentzen need not be bodily incorporated into Komatsubara and
the skilled artisan is not compelled to blindly follow the teaching of one
prior art reference over the other without the exercise of independent
judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984). The Examiner’s obviousness analysis does not incorporate all
features of the references and such purported differences between the
processes in Lorentzen and Komatsubara do not identify error in the
Examiner’s fact findings with regard to the prior art teachings.
Moreover, Appellant’s arguments are not persuasive for failure to
address the Examiner’s rationale to combine the prior art. More specifically,
the Examiner explains that “Lorentzen discloses a structure of hot mills
stands and coolers (plate cooler) loaded with liquids that are sprayed onto
the alloy strip as it is cooled during hot rolling” (Non-Final Act. 6) and it is
within the ordinary skill to combine these known techniques. Final Act. 5
(“It is known to combine two or more cooling techniques or use any
quenching technique needed to reduce temperature and prevent precipitation.
. . . It has also been held that it is prima facie obvious to combine equivalents
for achieving the same purpose.” (citing Lorentzen ¶ 13); see also KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“For the same reason, if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
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beyond his or her skill.”). Appellant does not identify error in the
Examiner’s rationale which is supported by the record.
Appellant’s argument with regard to Wycliffe is likewise
unpersuasive for failure to address the Examiner’s finding that Wycliffe
teaches the recited reversing process and the Examiner’s rationale to
combine. Compare Appeal Br. 17 (arguing that “modifying Komatsubara
according to the teachings of Wycliffe lacks rational underpinning for the
same reasons as discussed above with respect to Lorentzen”), with Non-
Final Act. 6 (finding that Wycliffe teaches hot rolling in a reverse manner)
and Final Act. 5 (providing that “one would be motivated to combine
quenching methods, such as simultaneously using a reversing mill and
applying quenching liquid, in order to attain a cooling rate appropriate for
avoiding the coarsening of grains or to prevent precipitation”). Appellant’s
argument with regard to Wycliffe is unpersuasive also because all features of
Wycliffe need not be bodily incorporated into Komatsubara. See Lear
Siegler, 733 F.2d at 889.
Appellant’s argument that Wycliffe teaches away from the recited
quenching (Appeal Br. 17–19) is unpersuasive because it does not
sufficiently explain why Wycliffe “suggests that the developments flowing
from its disclosures are unlikely to produce the objective of the applicant’s
invention.” Syntex (U.S.A.) LLC, 407 F.3d at 1380. Appellant argues that
“Wycliffe teaches that cooling normally has to be forced unless the process
is carried out in a reversing mill” (Appeal Br. 17) but does not sufficiently
explain why this passage – which does not state to avoid quenching –
“criticize[s], discredit[]s, or otherwise discourage[s] the solution claimed.”
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Moreover, we note that
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when read in context, Wycliffe in fact teaches that cooling is necessary and
reversing mill and forced cooling are possible ways to achieve cooling:
The cooling of the intermediate sheet prior to the final warm
and cold rolling at a temperature within the indicated range
increases the yield strength of the final sheet article. This
cooling normally has to be forced (i.e. accelerated) since there
is insufficient time between the rolling passes for natural
cooling, unless the process is carried out in a reversing mill.
The forced cooling step affects the temperature of the final
rolling step and this in tum reduces the grain size.

Wycliffe 3:31–38.
Appellant’s argument that the Examiner engaged in impermissible
hindsight is unpersuasive because the argument does not show that the
Examiner “is imbued with knowledge taught only by the inventor of the
challenged patent.” See W.L. Gore & Assocs., Inc., 721 F.2d at 1553.
Appellant does not dispute the Examiner’s finding that Wycliffe teaches
solution reverse milling. Compare Appeal Br. 18, with Final Act. 6 (citing
Wycliffe at 3:18–30 in support of the recited reverse milling). No reversible
error has been identified in this aspect of the obviousness analysis. See In re
McLaughlin, 443 F.2d at 1395 (“Any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level of ordinary
skill at the time the claimed invention was made and does not include
knowledge gleaned only from applicant’s disclosure, such a reconstruction is
proper.”).
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Claim 7
Claim 7 depends from claim 1 and additionally recites “wherein the
aluminium [sic] alloy is of alloy type AA6014, AA6016, AA6060, AA6111
or AA6181.”
In arguing against the rejection of claim 7, Appellant does not dispute
the Examiner’s finding that Kamat teaches these recited alloys. Compare
Appeal Br. 20–21, with Final Act. 7. Appellant, however, argues that a
skilled artisan would not have combined Komatsubara with Kamat because
“Komatsubara is restricted from using aluminium [sic] strips of the alloy
type AA6014, AA6016, AA6060, AA611 l or AA6l81 by the very terms of
Komatsubara’s disclosure” and that “Cu is therefore indispensable” in
Komatsubara. Appeal Br. 21.
We are not persuaded by this argument. Komatsubara states that the
“invention relates to an aluminum-alloy rolled sheet for forming and a
production process therefor.” Komatsubara 1:6–7. Komatsubara provides a
list of “main alloys . . . classified by their alloying component series” but
does not limit its teachings to those specifically listed. See id. at 1:27–29; see
also id. at 2:48–62 (listing a range of alloy including one that contains 0% to
1.5% of Cu) (cited in Appeal Br. 20). We are not persuaded also because the
argument does not identify reversible error in the Examiner’s rationale.
More specifically, the Examiner provides that a skilled artisan would have
used the alloys in Kamat “in the process of Komatsubara because of its
potential to form high strength and high dent resistance panels for the
automobile industry.” Final Act. 8 (citing Kamat Abstract). It is well-
established that “if a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
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similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill.” KSR, 550 U.S. at 417.
Appellant’s argument that the combined prior art teaching may lead to an
“unsatisfactory” enhancement of strength and reduced formability (Appeal
Br. 20–21) does not sufficiently explain why the Examiner reversibly erred
in finding that it is within the ordinary skill to combine known prior art
teachings. See KSR, 550 U.S. at 418 (noting that the skilled artisan is not an
automaton and that the obviousness analysis “can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ”).
CONCLUSION
The Examiner’s rejections are affirmed.

DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 5, 6, 8–16 103 Komatsubara,
Taguchi,
Lorentzen,
Wycliffe, Olesiak
1, 5, 6, 8–16
7 103 Komatsubara,
Taguchi,
Lorentzen,
Wycliffe, Olesiak,
Kamat
7
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Overall
Outcome
1, 5–16

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