Ex Parte Flehmig et al

Patent Trial and Appeal Board

Mar 20, 2017

12673277 (P.T.A.B. Mar. 20, 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.
12/673,277 04/13/2010 Thomas FLEHMIG 509682 7198
53609 7590 03/22/2017
REINHART BOERNER VAN DEUREN P.C.
2215 PERRYGREEN WAY
ROCKFORD, IL 61107
EXAMINER
KATCOFF, MATTHEW GORDON
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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 THOMAS FLEHMIG, JORG GORSCHLUTER,
and LOTHAR HOMIG
Appeal 2015-0072001
Application 12/673,2772
Technology Center 3700
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 from the rejection of claims
1—10. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Br.,” filed Jan. 20, 2015), and
the Examiner’s Answer (“Ans.,” mailed May 21, 2015) and Final Office
Action (“Final Act.,” mailed Aug. 21, 2014).
2 According to Appellants, the real party in interest is ThyssenKrupp Steel
Europe AG. Br. 2.
Appeal 2015-007200
Application 12/673,277
BACKGROUND
According to Appellants, “[t]he invention relates to a method for
producing partly reinforced hollow profiles from a metal, in particular from
steel or a steel alloy.” Spec. 12.
CLAIMS
Claims 1—10 are on appeal. Claim 1 is the only independent claim on
appeal and recites:
1. Method for producing partly reinforced hollow profiles
from a metal, the method comprising forming a blank, together
with a plurality of metal reinforcing members arranged on the
blank, into a hollow profile by using the rolling—in technique or
by U-to-0 forming, the reinforcing members arranged on the
blank being, after the forming, in a state where they are
connected to the formed blank by positive interengagement such
that the metal reinforcing members are situated in impressions
formed in the formed blank, wherein said impressions prevent
movement of said reinforcing members axially relative to the
formed blank.
Br. 13.
REJECTION
The Examiner rejects claims 1—10 under 35 U.S.C. § 103(a) as
unpatentable over Lotspaih3 in view of Rozmus.4
DISCUSSION
With respect to claim 1, the Examiner finds that Lotspaih teaches a
method for producing reinforced hollow profiles of metal as claimed except
that Lotspaih does not teach that the reinforcing members are situated in
3 Lotspaih et al., US 2002/0063145 Al, pub. May 30, 2002.
4 Rozmus, US 4,125,936, iss. Nov. 21, 1978.
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Application 12/673,277
impressions formed in the blank. Final Act. 3 (citing Lotspaih ]f]f 29, 39).
With respect to this claim requirement, the Examiner relies on Rozmus and
concludes that it would have been obvious to add impressions as taught by
Rozmus to the blank of Lotspaih to “allow[] for ease of placement and
optimal engagement of the members with the strip.” Final Act. 3 (citing
Rozmus col. 2,11. 3—19).
As discussed below, Appellants raise several arguments regarding the
rejection of claim 1, which we find unpersuasive to show reversible error in
the rejection.
First, Appellants argue that Rozmus is not analogous art. Br. 5—7.
Appellants assert that Rozmus is in the field of fabricating electrical spring
contacts and is thus, not in the same field of endeavor as the instant
invention. Id. at 5. Appellants also assert that Rozmus is not reasonably
pertinent to the problems faced by the inventors here. Id. Specifically,
Appellants assert that the present inventors were concerned with the problem
that existing reinforced hollow profiles are relatively expensive and that the
Specification seeks to propose a simple and inexpensive method for their
production. Id. at 5—6 (citing Spec. 1 6). Appellants assert that Rozmus is
not concerned with reinforcing members and that “the Rozmus precious
metal strips likely make the Rozmus configuration heavier, and thus do not
‘enable a certain strength to be achieved at the same time as minimal
weight.’ (Specification paragraph [0003]).” Id. at 6. However, we find that
Rozmus is at least pertinent to the problems identified in the Specification
including the need to simplify and reduce the cost of making reinforced
blanks. In particular, Rozmus discloses that there is a need to simplify the
process for fabricating spring contacts; Rozmus’s invention includes
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Application 12/673,277
simplifying the process for fabricating blanks including providing a base
strip with impressions formed therein for receiving precious metal strips;
and Rozmus further indicates that this process will substantially reduce
fabrication costs. See Rozmus col. 1,11. 39—64. Thus, we find that Rozmus
is analogous art because it is pertinent to the specific problems identified in
the present Specification, i.e. simplifying and reducing the cost of producing
reinforced blanks.
Next, Appellants argue that the Examiner’s conclusion that the
combination would prevent movement of reinforcing members is not based
upon rational underpinning because the conclusion attempts to solve a
problem already solved by Lotspaih and because Rozmus’s impressions do
not prevent movement. Br. 7—10. However, although the Examiner
indicates in response to Appellants’ arguments that Rozmus teaches that the
reinforced members will not move (see Final Act. 2), the rejection states that
the combination would have been obvious to allow for ease of placement
and optimal engagement of the members with the strip. Final Act. 3.
Appellants do not address any portion of the Examiner’s conclusion other
than the indication that the placed members will not move, and in particular,
Appellants do not address the Examiner’s conclusion that the combination
would allow for ease of placement and optimal engagement of the
reinforcing members. We find that those proposed reasons for combining
Lotspaih and Rozmus are supported by adequate rational underpinning as
required to support the conclusion of obviousness. In particular, Rozmus
supports the Examiner’s conclusion by describing a method of producing
blanks for spring contacts and indicating that the method simplifies the
process of manufacture, reduces the cost of manufacture, and provides
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Application 12/673,277
optimum positioning and engagement of the precious metal strips. See
Rozmus col. 1,11. 39—64; col. 2,11. 3—19.
Finally, Appellants argue that the proposed combination does not
teach or suggest all limitations of the claim. Br. 11—12. Specifically,
Appellants indicate that the claim requires that the blank be formed before
reinforcing members are placed in the impressions on the blank. Id. at 11.
Appellants assert,
In Rozmus, the precious metal strips 2 are first seam
welded to strip 1 between projections 20, 21. (See Rozmus
FIGS. 1, 2). In other words, the precious metal strips in Rozmus
are fixed within the Rozmus impressions before forming via this
seam welding operation. Put differently, the impressions in
Rozmus are not formed in a formed blank. Thereafter, a forming
operation takes place wherein projections 20, 21 are rolled over
the top of precious metal strips 2. In short, Rozmus teaches
situating strips 2 in the impression between projections 20, 21.
This impression, however, is milled into the Rozmus surface
prior to the Rozmus forming operation. (See Rozmus Abstract).
Even if this teaching could be combined with Lotspaih, the result
would be a process in which, prior to forming, Rozmus style
impressions are milled into the surface of the Lotspaih blank.
Br. 11—12. Thus, Appellants appear to be arguing that the claim requires
that a blank with impressions is formed before reinforcing members are
placed in the blank. However, we are not persuaded of error by this
argument because we find that this argument does not comport with the
broadest reasonable interpretation of claim 1. In particular, the claimed
method includes only one distinct step, i.e. “forming a blank,” and does not
further expressly or implicitly require any order of operations for forming
the blank, contrary to Appellants’ assertions. The requirements that
reinforcing members are arrange “after the forming” and that the
impressions are “formed in the formed blank” are interpreted to indicate
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Application 12/673,277
aspects of the structure of the blank after the forming step is complete and
not a particular order of operations for performing the method, e.g. “after the
forming” step the reinforcing members are in a particular arrangement with
respect to impressions in the blank.
For these reasons, we are not persuaded of error, and thus, we sustain
the rejection of claim 1. Because Appellants do not present separate
arguments with respect to the remaining claims, we also sustain the rejection
of claims 2—10 for the same reasons.
CONCLUSION
For the reasons set forth above, we AFFIRM the rejection of claims
1—10 under 35 U.S.C. § 103(a) as unpatentable over Lotspaih in view of
Rozmus.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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