Ex Parte Ylimäinen

Patent Trial and Appeal BoardAug 25, 2014

12301262 (P.T.A.B. Aug. 25, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/301,262 11/18/2008 Hannu Ylimäinen OUTO 3822 7161 7812 7590 08/25/2014 CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP 601 SW Second Avenue, Suite 1600 Portland, OR 97204 EXAMINER LEE, REBECCA Y ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 08/25/2014 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 HANNU YLIMӒINEN ____________ Appeal 2012-011385 Application 12/301,262 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 26–28, 30, 34, 38, 43, and 45. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 26, the sole independent claim, is illustrative of the claimed subject matter (emphasis added): Appeal 2012-011385 Application 12/301,262 2 26. A method for carrying out a heat treatment operation on a metal strip, comprising: continuously feeding the metal strip lengthwise through a heat treatment furnace including a cooling zone so that the metal strip extends through the cooling zone, supporting the strip extending through the cooling zone at first and second support locations that are at substantially equal vertical heights and are spaced apart horizontally so that the strip is suspended between the first and second support locations and follows a trajectory between the first and second support locations, the first support location being upstream of the cooling zone relative to feeding movement of the metal strip and the second support location being downstream of the cooling zone relative to feeding movement of the metal strip, dividing the cooling zone into at least an upstream block and a downstream block relative to feeding movement of the metal strip, employing a first device to project at least a first jet of a cooling agent towards the metal strip in the upstream block of the cooling zone, employing a second device to project at least a second jet of a cooling agent towards the metal strip in the downstream block of the cooling zone, measuring a value of a characteristic of the trajectory of the metal strip between the first and second support locations, comparing the measured value of the characteristic of the metal strip with a predetermined desired value of said characteristic, controlling at least one of the cooling agent jets in response to the comparison so that the trajectory of the metal strip avoids mechanical contact between the metal strip and the first and second devices, and substantially preventing cooling agent of the first jet from passing to the downstream block of the cooling zone and substantially preventing cooling agent of the second jet from passing to the upstream block of the cooling zone. Appeal 2012-011385 Application 12/301,262 3 The Examiner maintains, and Appellant appeals, the following rejections under 35 U.S.C. § 103(a): claims 26, 28, 30, 34, and 43 as unpatentable over Kramer (U.S. 6,895,692 B2, issued May 24, 2005); claims 27 and 38 as unpatentable over Kramer in view of Hirokawa (Japanese Patent Application Publication No. 06-002051, issued Nov. 1, 1994); and claim 45 as unpatentable over Kramer in view of Tawara (US 5,616,295, issued Apr. 1, 1997). Appellant’s arguments primarily focus on independent claim 26 (App. Br. 5, 6). Appellant presents a separate argument for dependent claim 45 (id. at 7). ANALYSIS We have thoroughly reviewed each of Appellant’s arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter of representative claim 26, as well as separately argued claim 45, is unpatentable under § 103(a) in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejections. In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements or steps according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged Appeal 2012-011385 Application 12/301,262 4 claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. Appellant’s main argument with respect to claim 26 is that the Examiner improperly interprets the heating zone 4 of Kramer to be a cooling zone (App. Br. 5, 6). These arguments are not persuasive of error in the Examiner’s rejection. The Examiner’s rejection is based on the premise that the use of two cooling zones is prima facie obvious, because Kramer teaches that “at least a first portion of the cooling is performed in the heat treatment portion” (Kramer, claim 1; Ans. 3, 4, and 6). There is no dispute that this suggests that there can be additional cooling portions. Kramer also suggests multiple heating zones and creates additional heating zones by merely duplicating the heating zones (see, e.g., Kramer Fig. 4; col. 3, ll. 58–60). It is well established that in evaluating references it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). See also In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well settled that the mere duplication of parts has no patentable significance unless a new and unexpected result is produced, and we are of the opinion that such is not the case here.”). Appellant has not sufficiently refuted the Examiner’s reasonable position that it would have been obvious to have two duplicate cooling zones 5 in the Kramer apparatus/method (e.g., Ans. 4). Appellant’s Specification merely states that the cooling zone is “advantageously divided into at least Appeal 2012-011385 Application 12/301,262 5 two cooling blocks” (Spec. 3:17–20), but does not explain any specific benefits of multiple cooling zones. Appellant has not provided persuasive reasoning or credible evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably used multiple cooling zones, such as by repeating the cooling zone 5 exemplified in Kramer, as a mere duplication of parts, e.g., in order to have a longer cooling zone (e.g., Ans. 4–6; generally App. Br.; Reply Br.). See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Dependent claim 45 calls for “wherein the first support location [of claim 26] is substantially between the annealing [heating] zone and the cooling zone” (Claims App’x). The Examiner relied upon the roller 2 and 3 of Kramer as exemplifying support locations for the metal strip (Ans. 3). The Examiner further relies upon Tawara as exemplifying a support location substantially between an annealing (heating) zone and a cooling zone (e.g., Ans. 5; Tawara abstract (“floaters float [support] the strip to the appropriate height” through a heating and cooling chamber at, e.g., 2a–2f)). Appellant argues that there is no floater “substantially between” the heating chamber and the cooling chamber, and thus there is no support location “substantially between” the zones (App. Br. 7). Appellant has not pointed to any specific definition in the Specification or otherwise explained why the broadest reasonable interpretation of “substantially between” zones (emphasis added) does not encompass floaters arranged at the end of a heating zone and/or beginning of a cooling zone. A preponderance of the evidence supports the position that supporting the metal strip along its entire path in Kramer’s Fig. 1, including substantially between the heating and cooling Appeal 2012-011385 Application 12/301,262 6 zones, by floaters/air nozzles would have been prima facie obvious in light of the combined prior art of Kramer and Tawara. Therefore, we affirm the Examiner’s § 103 rejections of all the claims on appeal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED cam