Ex Parte Hovestaedt et al

Patent Trial and Appeal Board

Aug 23, 2017

13698740 (P.T.A.B. Aug. 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.
212,494 7736
EXAMINER
YUEN, JACKY
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
13/698,740 02/25/2013
38137 7590 08/23/2017
ABELMAN, FRAYNE & SCHWAB
666 THIRD AVENUE, 10TH FLOOR
NEW YORK, NY 10017
Erich Hovestaedt
08/23/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERICH HOVESTAEDT, PETER JONEN,
HELGE MIDDELDORF, and INGO OLGEMOELLER
Appeal 2016-006589
Application 13/698,7401
Technology Center 1700
Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
LILAN REN, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s final decision to reject claims 24—28,
32, and 33.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The real party in interest is identified as “SMS group GmbH” (Appeal
Brief filed October 28, 2015, hereinafter “Appeal Br.,” 2).
2 Appeal Br. 6—17; Reply Brief filed June 16, 2016, hereinafter “Reply Br.,”
2—6; Final Office Action entered March 31, 2015, hereinafter “Final Act.,”
2—14; Examiner’s Answer entered April 28, 2016, hereinafter “Ans.,” 2—7.
Appeal 2016-006589
Application 13/698,740
I. BACKGROUND
The subject matter on appeal relates to a roller device, several of
which may be assembled in a strand guiding section of a casting machine
(Specification, hereinafter “Spec.,” 1,11. 2—6; Abstract). Figures 1 and 7,
reproduced below from the Appellants’ Drawings, are illustrative:
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jo
Fig. 7
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Application 13/698,740
Figures 1 and 7 above depict perspective and cross-sectional views,
respectively, of a roller device 1 in accordance with the invention (Spec. 18,
11. 15—17 and 19,1. 9). According to the Appellants (id. at 4,11. 2—15; 20,11.
4—17; 38,11. 1—9), the roller device includes: a cross-beam 30; roller
elements 10 supported on the cross-beam 30; roller bearings 20, 22 for
supporting the roller elements 10; and conduit elements 310, 320, 330, 340,
350 for at least three different media. The Appellants disclose further that
the conduit elements may be provided in the form of re-closable channels in
the cross-beam or in the form of open or silicon-sealed channels on a side of
the cross-beam remote from a slab being processed (id. at 12,1. 12—13,1. 3).
Representative claims 24, 28, and 33 are reproduced from pages 18—
21 of the Appeal Brief (Claims Appendix), with key limitations highlighted
in bolded italics, as follows:
24. Roller device (1) for forming strand-guiding segments
(100) of a caster and mountable in a segment frame of the
caster as a pre-assembled module, the roller device
comprising a cross-beam (30); at least one roller element
(10) supported on the cross-beam; roller bearings (20, 22)
for supporting the at least one roller element; and conduit
elements (310, 320, 330, 340, 350)provided on the cross­
beam (30) for at least three different media, wherein at
least one of the conduit elements is provided in the form
of a channel (52) in the cross- beam (30) and which is
closed by a roof, in the form of a re-closable channel, or
in the form of a channel closed with silicon.
28. Roller device (1) for forming strand-guiding segments
(100) of a caster and mountable in a segment frame of the
caster as a pre-assembled module, the roller device
comprising a cross-beam (30); at least one roller element
(10) supported on the cross-beam; roller bearings (20, 22)
for supporting the at least one roller element; wherein in
the cross-beam (30) there are provided at least two
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Application 13/698,740
conduit elements (310, 320, 330, 340, 350), respectively,
for conducting at least two of the following media:
cooling medium for inner cooling of the roller, cooling
medium for secondary cooling, hydraulic medium for a
hydraulic control circuit (342), compressed air medium
for a pneumatic control circuit, power medium for an
electrical power supply, power medium for electrical
control signals, power medium for electrical
measurement signals, power medium for optical
measurement signals or electrical and/or optical bus
system (352), and wherein medium connectors (40,42,44)
are provided on an end side (32) of the cross-beam (30), a
longitudinal side (36) of the cross-beam (30), and/or a rear
side (38) of the cross-beam (30) for communicating with
respective conduit elements, wherein the medium
connectors (40, 42, 44) are formed as a socket, a
coupling, or a connector element, and wherein a single
socket, a single coupling, or a single connector element
communicates at least two media with the cross-beam.
33. Roller device assembly, comprising two roller devices (1)
for forming strand-guiding segments (100) of a caster and
mountable in a segment frame of the caster as a pre­
assembled module adjacent to each other, each roller
device comprising a cross-beam (30), at least one roller
element (10) supported on the beam; roller bearings (20,
22) for supporting the at least one roller element, and
conduit elements (310, 320, 330, 340, 350) provided on
the cross-beam (30) of each roller device for at least three
different media, wherein at least one of the cross-beams
(3) has an expansion in a cast direction that forms, with
the cross-beam of another adjacent roller device roof of
a cooling chamber, and contacts the cross-beam of the
another adjacent roller device substantially without any
clearance.
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Application 13/698,740
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains two rejections under pre-AIA
35 U.S.C. § 103(a) as follows:
A. Claims 24—28, 32, and 33 as unpatentable over Mizota3
in view of Ogura et al.4 (hereinafter “Ogura”) and
Eberwein;5 and
B. Claim 28 as unpatentable over OTkhovskij et al.6
(hereinafter “OTkhovskij”) in view of Eberwein.
(Final Act. 2—14; Ans. 2—7.)
III. DISCUSSION
The Appellants’ arguments in their Appeal Brief are primarily
directed to limitations recited in independent claims 24, 28, and 33 (Appeal
Br. 6—16). Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv), we decide
this appeal on the basis of these three claims, with all other claims standing
or falling with either claim 24 or claim 33.
Claim 24. The Examiner finds that Mizota describes a roller device
including some of the limitations recited in claim 24, but acknowledges that
the reference does not teach the disputed limitations, highlighted above,
concerning the “conduit elements” (Final Act. 2-4). To resolve the
3 JP 59-107756 A, published June 22, 1984 (translation of record).
4 JP 8-168859 A, published July 2, 1996 (machine-generated translation of
record).
5 DE 101 04 348 Al, published August 8, 2002 (machine-generated, partial
translation of record).
6 RU 2 129 934 Cl, published May 10, 1999 (translation of record). Both
the Appellants and the Examiner refer to this document as “Filyashin”
(Appeal Br. 14; Final Act. 10).
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Application 13/698,740
differences between the claimed subject matter and Mizota, the Examiner
relies on Ogura and Eberwein (id. at 3—4). Specifically, the Examiner finds
that Ogura teaches an advantageous roll segment cooling system including a
cooling jacket 28 and a “roof’ in the form of a bottom plate 40 (id. at 3).
The Examiner concludes (id.):
It would have been obvious to one of ordinary skill in the art to
include a cooling system to the frame of the roll device of
Mizota, as Ogura . . . recognizes that the use of a cooling
system reduces deposition of scales and that Ogura’s system
using fixed piping reduces the number of cooling hoses used in
the prior art (paragraph [0007, 0020]).
In addition, the Examiner finds that “Eberwein teaches a strand guide
segment for a continuous casting plant. . . having cross[-jbeams with three
water conducting sections (1.1, 1.2, 1.3) and spray pipes and nozzles for
providing coolant to zones of the crossbeam in order to control a secondary
cooling operation for castings of varying widths” (id. at 4). Based on this
finding, the Examiner concludes that “it would have been obvious to one of
ordinary skill in the art to include the use of multiple conduits in order to
provide coolant to different zones of the connected roller assemblies for
cooling operations of castings having varying widths” (id.).
The Appellants do not dispute the Examiner’s findings regarding
Mizota’s scope and content (Appeal Br. 6—8). Rather, the Appellants
contend that Ogura “has no suggestion whatsoever of providing conduit
elements on the cross-beam, at least one of which is in the form of [a]
channel formed in the cross-beam which is closed, e.g., by a roof’ (id. at 8).
The Appellants argue that even if Ogura’s jacket is correctly considered as a
channel in the cross-beam, it is not covered by a “roof’ as specified in the
claim because Ogura’s bottom plate 40 forms a bottom of the channel
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defined by the jacket 28 (id. at 9).7 Regarding Eberwein, the Appellants
argue that it does not disclose conduit elements provided on a cross-beam
for at least three different media, as specified in the claim (id. at 10).
Furthermore, the Appellants urge that “casting of strands having varying
widths is neither an object of Mizota nor of the present invention” and that,
therefore, “the Examiner failed to clearly articulate a specific rationale for
modifying [the] Mizota-Ogura et al. structure in view of Eberwein” (id.).
For the reasons given below, the Appellants’ arguments fail to
identify a reversible error in the Examiner’s rejection. In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011).
Ogura discloses a roll segment cooling system in a continuous casting
equipment (Ogura 11). Specifically, Ogura’s Figure 7 is reproduced as
follows:
7 On page 2 of the Reply Brief, the Appellants argue that the combination of
references including Ogura does not include a “re-closable channel (for
maintenance purposes).” This argument, however, was not presented in the
Appeal Brief. Therefore, absent a showing of good cause as required by 37
C.F.R. § 41.41 (b)(2), we do not consider it. See also Ex parte Frye,
https://www.uspto.gOv/sitesMefault/files/ip/boards/bpai./decisions/prec/
06013.pdf, which states:
[l]f an appellant contests an obviousness rejection only on the
basis that a cited reference fails to disclose a particular limitation,
the Board need not review the other, uncontested findings of fact
made by the examiner underlying the rejection, such as the
presence of uncontested limitations in the prior art.
In any event, neither the Appellants’ Drawings nor Specification provide a
reasonably specific disclosure that would serve as a basis for distinguishing
a “re-closable channel” from the structure shown in Ogura.
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Ogura’s Figure 7 above depicts a roll segment of a continuous casting
equipment including, inter alia: rolls 6, 7, 8; bearing housings 9, 10; a
jacket 28 for frame cooling formed on the upper board back side of a
holding frame 2, which the Examiner considers to be a “channel”; and a
jacket bottom plate 40, which the Examiner considers to be a “roof’ that
closes the jacket (Ogura Tflf 11, 16; Final Act. 3). Ogura teaches that the
disclosed cooling system simplifies the cooling water piping and avoids
various problems associated with scale deposition {id. 17).
Eberwein’s Figure 1 is reproduced as follows:
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Application 13/698,740
Eberwein’s Figure 1 above depicts a cooling medium supply system for
secondary cooling of a cast strand and frame cooling with multiple injection
units 7 including connection fittings 3, an adjoining pipe section 4, threaded
sleeves 5, and terminal spray nozzles 6 for distributing coolant to various
zones of cross-members 1.1, 1.2, 1.3 (Eberwein Figure 1 and claims).
These facts support the Examiner’s conclusion that a person having
ordinary skill in the art would have been prompted to modify Mizota’s roller
device by implementing Ogura’s cooling system including jacket 28 and
jacket bottom plate 40, further modified to include multiple coolant injection
systems as shown in Eberwein, in order to provide a cooling system with not
only simplified piping and reduced scale deposition but which also allows
efficient and flexible distribution of coolant depending on the nature of the
material being cast. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007)
(“Under the correct analysis, any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a
reason for combining the elements in the manner claimed”); PerfectWeb
Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (an
analysis of obviousness “may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion”).
We discern no persuasive merit in the Appellants’ argument that
Ogura’s bottom plate 40 cannot be a “roof’ because it forms the bottom of
the “channel” defined by the jacket 28 (Appeal Br. 9). Consistent with the
Examiner’s position (Ans. 4), we find that the claimed roller device may be
oriented on either the top or the bottom frame segment (see, e.g., Fig. 3), and
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Application 13/698,740
therefore, the term “roof’ in claim 24 fails to distinguish the claimed subject
matter over the prior art in a meaningful way.
We also agree with the Examiner’s determination (Ans. 4—5) that the
limitation “for at least three different media” is merely a functional
limitation that fails to distinguish the claimed roller device over the prior art.
As the Examiner explains {id. at 5), claim 24 does not specify the media as
part of the claimed roller device. Therefore, the limitation merely requires
that the channels be structurally capable of conveying three different media,
and the prior art channels would reasonably appear to possess that
capability. The Appellants do not direct us to persuasive evidence or
technical reasoning to the contrary. In re Schreiber, 128 F.3d 1473, 1477
(Fed. Cir. 1997) (“[T]he absence of a disclosure in the prior art relating to
function does not defeat the Board's finding of anticipation.”).
For these reasons, and those given by the Examiner, we sustain the
rejection of claim 24.
Claim 28. First, the Appellants contend that although Ogura discloses
cooling medium hoses 30, 31, 32 connected to water supply and drain piping
22, 23, respectively, these elements are not provided in the cross-beam
(Appeal Br. 12). Second, the Appellants argue that even if Ogura’s cross­
beam is assumed to include conduit elements, these connectors are not
“formed as a socket, a coupling or a connector element, and wherein a single
socket, a single coupling, or a single connector element communicates at
least two media with the cross-beam” {id. at 13). Third, the Appellants
argue that the connector element (1.11, 1.12, or 1.13) shown in Eberwein
communicates with several cross-beams, and “not two media with a [single]
cross-beam, as recited in claim 28” {id. at 14).
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These arguments are unpersuasive. First, as the Examiner correctly
points out (Ans. 5), the rejection did not rely on Ogura’s elements 22, 23,
and 30—32 as a description of medium connectors in the cross-beam but,
rather, Eberwein’s connectors as implemented in Ogura’s jacket 28 and
bottom plate 40. Second, we discern no reversible error in the Examiner’s
position that vertical sections 1.13, 1.12, and 1.11 can be considered as
connecting to sections 1.3, 1.2, 1.1 as a single connector {id. at 6). “Whether
said media are different or whether said media is specifically one of the
listed media, does not affect the structure of the conduit elements as the
limitation is directed to the use of said conduit elements for said media
(functional limitation, see MPEP 2114)” {id.). Third, Eberwein’s injection
unit 7 on cross-member 1.1 may reasonably be considered as “a single
connector element [that] communicates at least two media with the cross­
beam” as required by claim 28. Indeed, claim 28 recites the transitional term
“comprising” to define the roller device, and, therefore, does not exclude the
presence of more than one cross-member.
For these reasons, we uphold the rejection of claim 28.
Claim 33. The Appellants rely on the same arguments offered in
support of claim 24 (Appeal Br. 15—16). These arguments are unpersuasive
for the same reasons above in our discussion of claim 24.
The Appellants also argue {id. at 16):
Neither Mizota nor Ogura et al., discloses a roller device
assembly in which two adjacent roller devices contacting each
other substantially without any clearance, and one of the cross­
beams has an expansion in the casting direction that forms with
another cross-beam of the adjacent roller device a roof of a
cooling chamber.
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The Examiner finds that connection elements 21 in Mizota’s Figure 8
meet the “expansion” limitation recited in claim 33 and that the gaps
between adjacent frames as shown in Mizota’s Figure 8 are not substantial
(Ans. 7). Again, we detect no error in these findings. Although the
Appellants argue that “the Mizota drawings cannot be relied upon to make a
conclusion of the size of the gap between the adjacent frames” (Appeal Br.
5), claim 33 does not specify any particular maximum “clearance” but,
instead, expresses the limitation in relatively broad terms (“substantially
without any clearance”). Therefore, we find no difficulty in finding that
Mizota’s Figure 8 discloses the disputed limitation. In re Mraz, 455 F.2d
1069, 1072 (CCPA 1972).
Accordingly, we also sustain the rejection of claim 33.
IV. SUMMARY
Rejections A and B are sustained. Therefore, the Examiner’s final
decision to reject claims 24—28, 32, and 33 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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