Ex Parte Flehmig et al

Patent Trial and Appeal BoardOct 23, 2017

12921726 (P.T.A.B. Oct. 23, 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. 12/921,726 11/10/2010 Thomas Flehmig 509786 5490 53609 7590 10/25/2017 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 EXAMINER TRAN, THIEN S ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 10/25/2017 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, LOTHAR PATBERG, and MARKUS ZORNACK Appeal 2016-003226 Application 12/921,726 Technology Center 3700 Before JOHN C. KERINS, EDWARD A. BROWN, and LYNNE H. BROWNE, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Thomas Flehmig et al. (Appellants) appeal under 35 U.S.C. § 134 from the rejection of claims 1—16 and 18—20. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal 2016-003226 Application 12/921,726 CLAIMED SUBJECT MATTER Claims 1, 10 and 19 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Method for manufacturing a hollow profile, the method comprising: applying two axially oriented joint edges of a first flangeless half-shell sheet to a first side of a web plate; applying two axially oriented joint edges of a second flangeless half-shell sheet to an opposite side of the web plate; and joining the joint edges of the first half-shell sheet to the web plate and joining the joint edges of the second half-shell sheet to the web plate, wherein an edge section of the web plate projects beyond a contact area of two of the joint edges forming two flanges adapted for connection with other components, and wherein the web plate extends over a whole length of the hollow profile. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hurten US 4,682,812 July 28, 1987 Kresse, Jr. US 5,221,585 June 22, 1993 Maki US 5,810,428 Sept. 22, 1998 McClure US 2006/0108831 A1 May 25, 2006 Griineklee US 2006/0249969 A1 Nov. 9, 2006 Henze US 2007/0246286 A1 Oct. 25, 2007 Lakic US 2008/0106123 A1 May 8, 2008 2 Appeal 2016-003226 Application 12/921,726 REJECTIONS I. Claims 1—3, 5, 6, 8—11, 13, 14, 16, and 18—201 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Henze and Maki. II. Claim 4 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Henze, Maki, and McClure. III. Claims 7 and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Henze, Maki, and Griineklee or Kresse, Jr. IV. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Henze, Maki, and Hurten. V. Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Henze, Maki, and Lakic. DISCUSSION Rejection I Regarding claim 1, the Examiner finds that Henze2 3discloses all of the claimed limitations, including a web plate 41, 42, which extends partially 1 Although the Examiner sets forth a separate statement of the ground of rejection for claim 20 (Final Act. 8—9), this claim is subject to the same ground of rejection as claims 1—3, 5, 6, 8—11, 13, 14, 16, 18, and 19. See Final Act. 3—5. 2 At the top of paragraph 6 in the body of this rejection, the Examiner refers to Kanodia. However, the rejection relies on the combined teachings of Henze and Maki, and the following paragraph refers to “Henze.” 3 Appeal 2016-003226 Application 12/921,726 over the length of a hollow profile formed by half-shell sheets 21, 22. Henze, Figs. 1—3. The Examiner determines that Henze does not disclose the web plate extending over a whole length of the hollow profile. See Final Act. 3^4. The Examiner further finds that Maki discloses a web plate 5 that extends over a whole length of a hollow profile formed by an outer panel 1 and an inner panel 2. Id. at 5 (citing Maki, Figs. 6—7). The Examiner concludes it would have been obvious to modify the hollow profile of Henze to have a web plate extending over the whole length, as taught by Maki, for “forming a known structural configuration that provides for increased flexural and torsional rigidity” and “forming a structural member configuration for a motor vehicle bodyshell.” Id. The Examiner further explains that the increased rigidity resulting from the modification would provide the advantage of forming a more rugged axle that could be used in off-roading. See Advisory Act. dated May 22, 2015; see also Ans. 7. Appellants contend that the proposed modification would “render Henze unsatisfactory for its intended purpose.” Appeal Br. 5 (emphasis omitted). In support of this contention, Appellants note that “Henze discloses at paragraph [0002] that prior axle constructions utilize pipe sections with connecting elements welded along their length. Henze then discloses that this type of welded configuration has the disadvantage that, if the weld fractures, the axle can become unattached from the vehicle body in an uncontrolled manner.” Id. Appellants further note that “Henze then Accordingly, we understand the reference to Kanodia to be a typographical error. See Final Act. 3. 4 Appeal 2016-003226 Application 12/921,726 discloses at paragraph [0003] that it is an object thereof to present an axle construction with connecting elements which operate under the principle of limited failure.” Id. at 5—6. Appellants explain that “[t]o ensure such limited failure, Henze uses a connecting element 41 that extends by way of a form fit through recesses 23, 24 formed in an adapter pipe section 20 of an axel construction.” Id. at 6 (citing Henze Figs. 1—3). Appellants direct our attention to paragraph 8 which states in relevant part: Should, in the event of an overloaded rigid axle, a connection, such as, for example, a weld, tears in the connecting element region of the adapter pipe section which, among other things, is loaded to the maximum by bending, although the axle-guiding and axle-supporting components may become loose, this does not lead to loss of the axle because of the form fit. According to the principle of limited failure, an extremely hazardous failure of the connection, such as, for example, of a weld, is therefore permitted during the vehicle use time without severe consequences being able to occur as a result. Henze 1 8. Thus, it is our understanding that in Henze the two piece axle is isolated from the connection to the rest of the vehicle so that failure of, for example, an axle weld, would not result in catastrophic failure (i.e. disconnection of the axle from the vehicle body). The Examiner contends that, as modified, Henze would still exhibit limited failure, because “[a] form fit recess would still exist between the half sheets because they would be separated by the web plate that extends along the entire length of the half sheets.” Ans. 5. However, even if the form fit recesses would somehow still exist, the proposed modification would eliminate the isolation between the axle and the connecting element. Accordingly, we agree with Appellants 5 Appeal 2016-003226 Application 12/921,726 that the proposed modification would render Henze unsatisfactory for its intended purpose. For this reason, we do not sustain the Examiner’s decision rejecting claim 1, and claims 2, 3, 5, 8, 9, and 20 which depend therefrom, as obvious over Henze and Maki. Claims 10 and 19 also require a web plate that “extends over a whole length of the hollow profile.” Appeal Br. 16, 18. Accordingly, we do not sustain the Examiner’s decision rejecting claims 10 and 19, and claims 11, 13, 14, 16, and 18, which depend from 10, for the same reasons. Rejections II V Rejections II—V rely upon the same erroneous reasoning as the rejection of claims 1 and 10 discussed supra. Accordingly, we do not sustain the Examiner’s decision rejecting claims 3, 4, 7, 12, and 15 for the same reason. DECISION The Examiner’s rejections of claims 1—16 and 18—20 are REVERSED. REVERSED 6