Ex Parte Kawa

Patent Trial and Appeal Board

Oct 7, 2016

12670445 (P.T.A.B. Oct. 7, 2016)

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.
12/670,445 06/24/2010 Franz Kawa 155.143 2748
22846 7590 10/11/2016
BRIAN ROFFE, ESQ
9206 Avers Avenue, Unit 2
Evanston, IL 60203-1502
EXAMINER
D'ANIELLO, NICHOLAS P
ART UNIT PAPER NUMBER
1723
MAIL DATE DELIVERY MODE
10/11/2016 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 FRANZ KAWA1
____________

Appeal 2015-002607
Application 12/670,445
Technology Center 1700
____________

Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–3, 8, and 13–24. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a process for producing steel
long products by continuous casting and subsequent rolling. E.g., Spec. 1:1–
2; Claim 1. Claim 1 is reproduced below from page 15 (Claims Appendix)
of the Appeal Brief:

1 According to the Appellant, the real party in interest is SMS Concast AG.
App. Br. 3.
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1. A process for producing steel long products by continuous
casting of steel to form billet and bloom strands and subsequent
rolling of these billet and bloom strands to form the long
products, the method comprising:
providing a continuous casting permanent mould that forms a
mould cavity open on an inlet side and an outlet side,
directing liquid steel into the inlet side of the mould cavity such
that the liquid steel is cast into solid strands by the continuous
casting permanent mould and the solid strands exit from the
outlet side of the mould cavity,
drawing out the solid cast strands from the continuous casting
permanent mould by means of a plurality of rollers defining a
space through which the cast strands are drawn,
feeding the solid cast strands directly to a roll train from a last
one of the rollers such that the rollers are interposed between the
continuous casting permanent mould and the roll train,
rolling the solid cast strands in the roll train by means of at least
one roll stand,
arranging an adjustment device at a discharge of an intermediate
vessel above the permanent mould, and
regulating flow into the permanent mould of the liquid steel
being cast by controlling the adjustment device based upon an
inlet speed of a solid cast strand into a first roll stand of the roll
train to thereby regulate a filling level of molten mass in the
permanent mould dependent upon the inlet speed of the solid cast
strand into the first roll stand of the roll train.
REJECTIONS ON APPEAL
1. Claims 1, 8, 13–15, 17, and 20–23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kasai et al. (JP 01-048609 A, published Feb.
23, 1989) in view of the Appellant’s admitted prior art (“AAPA”) and
Wilson (US 3,349,834, issued Oct. 31, 1967).
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2. Claims 2, 3, 16, 18, 19, and 24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kasai in view of AAPA and Wilson, further in
view of Kawa et al. (US 5,360,053, issued Nov. 1, 1994).
ANALYSIS
The Appellant presents separate arguments only for claims 1 and 24.
We limit our discussion to those claims. The remaining claims on appeal
depend, directly or indirectly, from claim 1 and will stand or fall with
claim 1.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action, and in the Examiner’s Answer. See generally Final Act. 2–10;
Ans. 2–11.
Claim 1.
The issue concerning claim 1 is whether the prior art teaches,
suggests, or otherwise renders obvious a process for producing steel long
products in which “regulating flow into the permanent mould . . . [is] based
upon an inlet speed . . . into a first roll stand.” See App. Br. 9–12. The
Examiner finds, inter alia, that Kasai teaches “regulating flow out of the
permanent mold based on the inlet speed of a solid cast strand into a first roll
stand.” Ans. 3. The Examiner finds that Wilson teaches regulating flow
into a mould by controlling an adjustment device based upon an inlet speed
of a cast strand into a first roll stand. Id. at 4. The Examiner concludes that
it would have been obvious to modify Kasai to regulate flow into the mould
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in view of Wilson to provide for continuous casting conditions. Id. The
Examiner explains:
In the combination, a person of ordinary skill in the art at the time
of the invention would have appreciated that the speed out of the
casting mold and the filling rate into the casting mold must be
proportional in order to achieve continuous casting, therefore
controlling the filling level based on the outlet speed of the
casting mold and speed of the roll train would have been
considered obvious to one of ordinary skill in the art at the time
of the invention given the disclosure of the prior art references as
a whole.
Id.
The Appellant first argues that, in Wilson, input flow into the mould is
regulated “based on a withdrawal rate of a casting from the mould” as
controlled by pinch rollers, which is different from regulating input flow
based on inlet speed into a roll stand. See App. Br. 10–12.
That argument is not persuasive of reversible error because it
addresses Wilson alone rather than the combination rationale set forth by the
Examiner. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.”). Kasai teaches
synchronizing the speed of the casting equipment (i.e., extraction rolls) and
the rolling equipment. E.g., Kasai at 3–4. The Appellant interprets Kasai in
the same way. See Reply Br. 3 (“Kasai . . . requires the rollers 21g, 21h, 21i
[i.e., extraction rolls] to be controlled based on the speed at the roll train.”).
Thus, the extraction rate from Kasai’s casting mould is directly tied to the
inlet speed of the roll train.
Wilson teaches a system of continuous casting in which flow into a
mould is regulated based on casting output. E.g., Wilson at 1:58–62. As the
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Examiner explains, that teaching is consistent with the common-sense
concept that, in order to achieve continuous casting, “the speed out of the
casting mold and the filling rate into the casting mold must be proportional.”
See Ans. 10. A person of ordinary skill would have understood that, if input
exceeds output, the mould would overflow, and that, if output exceeds input,
the mould would eventually run out of molten material and casting would be
interrupted.
When Wilson is combined with Kasai, as proposed by the Examiner,
the result is a continuous casting method in which input into the mould is
based on the casting output in order to achieve continuous casting. Under
the broadest reasonable interpretation of claim 1 consistent with the
Specification, the Examiner’s rationale results in a process in which the flow
into the mould is based on an inlet speed of the roll train. The fact that
Wilson’s pinch rollers may not be located before a roll train, and thus that
Wilson’s input flow may not be regulated based upon an inlet speed into a
roll train, see App. Br. 11, does not indicate reversible error in the
Examiner’s determination that Kasai as modified by Wilson meets the
disputed limitation. See Ans. 10–11; see also Keller, 642 F.2d at 426.
More broadly, we note that, because a person of ordinary skill in the
art would have understood that input and output must be proportional to
achieve continuous casting, a person of ordinary skill in the art would have
known that the output could be measured at different points in the process,
and by different methods, to determine the equivalent amount of input
necessary to maintain the continuous casting process. Thus, whether the
output is measured immediately after the cast product exits the mould,
immediately before it enters a roll train, or at some intermediate point, the
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concept remains the same: Input must equal output to maintain continuous
casting and prevent overflow. A person of ordinary skill in the art, through
the use of only ordinary creativity, would have understood that output could
be measured at different points and by different methods, including on the
basis of inlet speed into a roll stand, so long as input was maintained
proportional to output to avoid casting interruptions/overflow. See KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398, 418–19 (2007) (“[T]he [obviousness]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”);
see also Wilson at 1:10–12 (addressing the issue of “controlling the level of
the molten metal in a continuous casting mold”); Spec. at 5:19–20
(explaining that purpose of regulating flow based on inlet speed into rolling
train is to achieve constant filling height in the permanent mould.).
In the Reply Brief, the Appellant contests the Examiner’s finding that
Kasai “regulat[es] flow out of the permanent mold based on the inlet speed
of a solid cast strand into a first roll stand.” Ans. 3; Reply Br. 1–2. In
particular, the Appellant acknowledges that the extraction rolls 21g, 21h, and
21i are “controlled based on the speed at the roll train,” see Reply Br. 2–3,
Kasai Fig. 2, but appears to argue that the speed of the extraction rolls 21 has
no impact on the flow out of the mould, see Reply Br. 1–2 (referring to
“uncontrolled flow from the mold”). That argument is not persuasive
because it is not supported by evidence or persuasive technical reasoning.
See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s
argument in a brief cannot take the place of evidence.”). A person of
ordinary skill in the art would have understood that increasing the rate at
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which the casting is extracted from the mould by increasing the speed, for
example, of Kasai’s extraction rolls 21, would likewise increase the flow out
of the mould. See, e.g., Kasai at 5 (discussing extraction rolls 21 and
extraction speeds). Wilson is consistent with that understanding of Kasai’s
extraction rollers 21. See Wilson cols. 1 & 2 (equating the rate at which the
metal casting is withdrawn from the mold, as determined by the speed of the
pinch rollers, with the flow rate of the molten metal). On the record before
us, the fact that Kasai equates the speeds of the extraction rolls 21 and the
roll train does not persuade us that a person of ordinary skill would not have
understood the speed of Kasai’s roll train (which, the Appellant concedes,
controls the speed of Kasai’s extraction rolls) to affect flow out of the
mould.
In the Reply Brief, the Appellant also argues that the Examiner’s
proposed modification would frustrate a purpose of Kasai because it would
allegedly render the control of rollers 21g, 21h, and 21i unnecessary. See
Reply Br. 3. We are not persuaded by that argument. In the proposed
combination, the rollers (and every other element) of Kasai would continue
to function as described by Kasai. The regulation of flow into the mould
based upon an inlet speed into the roll train would simply ensure that Kasai’s
mould does not run out of molten metal so that continuous casting can be
maintained. In other words, the elements of Kasai would maintain their
described functions in order to provide synchronized speed of the casting
and rolling equipment, see Kasai at 3–4, and the inflow adjustment device
would provide the appropriate flow of molten metal to the mould. The
Appellant’s argument does not persuade us that the proposed modification
would frustrate a purpose of Kasai. See Reply Br. 3.
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To the extent that the Appellant argues that it was improper of the
Examiner “to apply multiple references in the rejections of the claims” and
that “no single applied reference discloses a link between the speed of the
roll train and control of the mold filling level,” see id. 4, those arguments fail
to identify reversible error in the rejection. As set forth above, it is the
combination of the references, in combination with the knowledge and
creativity of a person having ordinary skill in the art, that renders claim 1
obvious. The Examiner’s rejection provides “articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also Keller, 642 F.2d at
426.
Accordingly, we affirm the Examiner’s rejection of claim 1.
Claim 24.
Claim 24 depends from claim 1 and further recites, inter alia,
“controlling the flow of liquid steel into the inlet side of the continuous
casting permanent mould such that a casting speed is at least 4.2 m/min.”
The Examiner finds that Kasai does not disclose a particular casting
speed, but that Kasai teaches that casting speed is an important variable that
affects the quality of the product produced. Ans. 8. The Examiner
determines that casting speed is a result-effective variable, and that it would
have been obvious to a person of ordinary skill in the art “to optimize the
casting speed of the operation in order to efficiently produce the cast
product.” Id.
The Appellant explains that the recited speed of 4.2 m/min “is not an
arbitrary speed” but is desirable to “optimize operability of the process,”
particularly “contact time between the strand and the rolls at the inlet of the
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roll train.” See App. Br. 13. The Appellant states that “[t]his minimum
speed imposes an additional limitation on regulation of the flow into the
permanent mould” which “is not taught by the applied prior art.” See id.
That argument is not persuasive of reversible error. The Appellant
does not dispute that casting speed is a result-effective variable. Nor does
the Appellant argue that a person of ordinary skill in the art would not have
been motivated to optimize casting speed, including to a speed of 4.2 m/min.
The fact that the speed of 4.2 m/min “is not an arbitrary speed,” see App. Br.
13, does not establish criticality or unexpected results. Although the recited
casting speed may “impose[] an additional limitation on regulation of flow
into the permanent mould,” see id., that statement fails to explain why, or
even suggest that, the process of Kasai as modified by Wilson, optimized to
achieve a speed of at least 4.2 m/min, does not meet that additional
limitation.
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection of claim 24. Cf. In re Woodruff, 919 F.2d 1575, 1578
(Fed. Cir. 1990) (“The law is replete with cases in which the difference
between the claimed invention and the prior art is some range or other
variable within the claims . . . . [and] in such a situation, the applicant must
show that the particular range is critical, generally by showing that the
claimed range achieves unexpected results relative to the prior art range.”
(citations omitted)); see also In re Jung, 637 F.3d 1356, 1365 (Fed. Cir.
2011) (even if the examiner failed to make a prima facie case, the Board
would not have erred in framing the issue as one of reversible error because
“it has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections”).
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CONCLUSION
We AFFIRM the Examiner’s rejection of claims 1–3, 8, and 13–24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED