Ex Parte Böger et al

Patent Trial and Appeal Board

Aug 29, 2017

12990888 (P.T.A.B. Aug. 29, 2017)

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.
12/990,888 12/29/2010 Thorsten Boger 509748 4094
53609 7590 08/31/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
HANDVILLE, BRIAN
ART UNIT PAPER NUMBER
1783
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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 THORSTEN BOGER, ERIK HILFRICH, and
OLIVER KLEINS CHMIDT
Appeal 2017-001586
Application 12/990,888
Technology Center 1700
Before TERRY J. OWENS, JAMES C. HOUSEL, and JEFFREY R. SNAY,
Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1—8, 14, and 15. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
1 We cite to the Substitute Specification (“Spec.”) filed November 3, 2010;
Final Office Action (“Final Act.”) dated October 21, 2015; Appellants’
Appeal Brief (“App. Br.”) dated March 25, 2016; Examiner’s Answer
(“Ans.”) dated September 9, 2016; and Appellants’ Reply Brief (“Reply
Br.”) dated November 9, 2016.
2 Appellants identify ThyssenKrupp Steel Europe AG as the real party in
interest. App. Br. 2.
Appeal 2017-001586
Application 12/990,888
BACKGROUND
The subject matter on appeal relates to a method for forming a
beading fold in a multi-layer composite material including a plastic core
positioned between metal cover layers. Spec. 12. By heating the core to a
temperature in the range of 180 to 300°C, the material strength of the core is
sufficiently reduced such that forces exerted by a beading tool cause the core
material to be displaced in the region of the bead. Id. Tflf 7—8. Consequently,
the core layer tapers in the region of the bead and stress imposed on the
outer metal cover layer is reduced. Id. 8, 19-20. Claim 1 is illustrative
and reproduced from the Claims Appendix of the Appeal Brief as follows:
1. Method for forming a beading fold in a multilayer
composite material, which has at least one core layer made of a
plastics material and at least two cover layers made of a
metallic material, wherein the complete material of the at least
one core layer of the composite material is heated to a
temperature of 180.degree. C. to 300.degree. C. in a region of
the beading fold to be formed to reduce the strength of the
plastics material so that the plastics material from the region of
the beading fold is partially displaced and the core layer in the
region of the bend of the formed beading fold tapers compared
to regions outside of the bend of the beading fold.
REJECTIONS3
The Examiner maintains the following grounds of rejection:
I. Claims 1—7 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Baartman4 and Foeller.5
3 Final Act. 2—8; Ans. 2—8.
4 US 5,354,522, issued October 11, 1994 (“Baartman”).
5 US 5,987,957, issued November 23, 1999 (“Foeller”).
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Application 12/990,888
II. Claims 8 and 15 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Baartman, Foeller, and Grosch.6
DISCUSSION
The Examiner finds Baartman discloses a method for bending a metal-
covered thermoplastic composite that includes heating the thermoplastic
core layer such that boundary regions of the core are softened. Final Act. 3—
4. The Examiner further finds that Baartman “does not teach heating the
complete or entire material of the core layer in a region of the beading fold.”
Id. at 4 (emphasis added). The Examiner finds that Foeller teaches reduced
spring-back is achieved after shaping a metal-covered thermoplastic
laminate when the entirety of the thermoplastic core is heated during the
shaping process to a temperature that exceeds the melting temperature of the
plastic. Id. at 5. In light of these disclosures, the Examiner determines that
it would have been obvious to one of ordinary skill in the art to “modify the
heating of the boundary layers of Baartman with the heating of the entire
thermoplastic core layer as taught by Foeller.” Id.
Appellants contend Baartman requires that, during heating, a central
region of the plastic core layer remains unsoftened, and that such a
requirement is contrary to Foeller’s teaching of heating the entire core layer
to a temperature beyond its melting temperature. App. Br. 6—7; Reply Br. 6—
8. We agree.
Baartman repeatedly states that the disclosed heating necessarily is
conducted such that boundary regions are softened and a central region of
the plastic core remains unsoftened. See Baartman, Abstract (“To allow
6 GB 2 222 791 A, published March 21, 1990 (“Grosch”).
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Application 12/990,888
bends of small radius to be made, heating causes softening of at least one of
the boundary regions of the core layer adjoining the metal sheets, while a
central region of the core layer remains unsoftened.”), 2:14—19 (“The
method in accordance with the invention is characterized in that at least one
of the boundary regions in the thermo-plastic core layer which adjoin the
two metal sheets is heated so as to be softened, while a central region of the
whole core layer remains unsoftened at the region of the bend.”), 3:57—62
(“The best results were found for the case where there is slippage during
bending between the aluminium and the thermoplastics core at at least one
of the interfaces between them, while at the same time the core is not
completely softened. This is the method according to the invention.”).
Applying Foeller’s complete core-melting technique to Baartman’s
disclosed method would destroy Baartman’s objective of providing a central
region of unsoftened core material, thereby changing Baartman’s principle
of operation. Ordinarily, “[i]f the proposed modification or combination of
the prior art would change the principle of operation of the prior art
invention being modified, then the teachings of the references are not
sufficient to render the claims prima facie obvious.” In re Ratti, 270 F.2d
810, 813 (CCPA 1959). Here, the Examiner’s stated reason for modifying
Baartman—to reduce spring-back—already is achieved by Baartman’s
process. Baartman 4:17—26 (characterizing an alternative process as being
less beneficial than the disclosed process, “particularly in respect of spring
back occurring after bending”).
On this record, we are persuaded that the Examiner does not identify
sufficient evidence of a reason to modify Baartman’s process in a manner
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Application 12/990,888
which would preclude Baartman’s stated objective of maintaining an
unsoftened core.7 Accordingly, we do not sustain Rejection I.
Rejection II, which neither addresses nor corrects the foregoing
deficiency, is not sustained for the same reason.
DECISION
The Examiner’s decision rejecting claims 1—8, 14, and 15 is reversed.
REVERSED
7 We recognize that claim 14 is directed to a product formed by the method
of claim 1. A product-by-process claim may be found unpatentable where
the same product previously was known or rendered obvious, irrespective of
whether the prior art product was formed by a different process. In this case,
the Examiner’s rejection of claim 14 is premised on the same deficient
combination of Baartman and Foeller as is applied to claim 1.
5