HERRMANN ULTRASCHALLTECHNIK GMBH & CO. KG

Patent Trials and Appeals BoardDec 1, 2021

2021003500 (P.T.A.B. Dec. 1, 2021)

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. 13/850,358 03/26/2013 Ulrich Vogler 2017-116 8663 27569 7590 12/01/2021 PAUL AND PAUL TWO LOGAN SQUARE 100 N. 18th Street SUITE 830 PHILADELPHIA, PA 19103 EXAMINER MACFARLANE, EVAN H ART UNIT PAPER NUMBER 3724 NOTIFICATION DATE DELIVERY MODE 12/01/2021 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): INFO@PAULANDPAUL.COM asluzas@paulandpaul.com csteiner@paulandpaul.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ULRICH VOGLER Appeal 2021-003500 Application 13/850,358 Technology Center 3700 Before DANIEL S. SONG, BENJAMIN D. M. WOOD, and BARRY L. GROSSMAN, Administrative Patent Judges. SONG, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1, 3–6, 8–10, 13, 14, and 16–22. We have jurisdiction under 35 U.S.C. § 6(b). An Oral Hearing was conducted on November 15, 2021, a transcript of which will be entered into the electronic record in due course. We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as Hermann Ultraschalltechnik GmbH & Co. KG. Appeal Br. 1. Appeal 2021-003500 Application 13/850,358 2 CLAIMED SUBJECT MATTER The claims are directed to a device for processing workpieces using ultrasound and method for operating the device. Claim 1, reproduced below, is the sole independent claim on appeal, and is illustrative of the claimed subject matter: 1. A device for processing a workpiece using ultrasound with a processing force having a magnitude, the device comprising: a first tool part; a second tool part; a carriage cooperating with said first tool part to move said first tool part in a working direction via the workpiece against said second tool part such that the second tool part is moved into an operating position using said first tool part; a fixed stop cooperating with said carriage; a force storage element cooperating with said second tool part to urge said second tool part, with a feed force, towards said first tool part; and an adjusting device cooperating with said second tool part via the force storage element to adjust the feed force, thereby exerting said feed force on the workpiece, one of said first tool part and said second tool part comprising an ultrasound oscillating structure with an ultrasound sonotrode and the other one of said first tool part and said second tool part comprising an anvil with a counter tool, said carriage having a force of travel which exceeds said feed force of said force storage element, wherein said carriage abuts against and remains in contact with said fixed stop with said force of travel, so that the magnitude of the processing force is equal to the feed force of said force storage element urging said counter tool towards said first tool part, wherein said ultrasound oscillating structure has a resonance frequency (fs) between 20 kHz and 60 kHz and said anvil has a resonance frequency (fA) between 2 Hz and 600 Hz Appeal 2021-003500 Application 13/850,358 3 such that the second tool part remains substantially on an apex of a working surface of said first tool part when said first tool part oscillates and when a working surface of the second tool part and the working surface of the first tool part are in contact. Appeal Br. 29–30 (Claims App.). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Calemard US 4,097,327 June 27, 1978 Clarke US 4,158,584 June 19, 1979 Lipari US 4,410,383 Oct. 18, 1983 Sager US 4,585,152 Apr. 29, 1986 Payet US 4,693,771 Sept. 15, 1987 Frantz US 5,435,863 July 25, 1995 Engle US 5,944,924 Aug. 31, 1999 Takemasu US 2008/0069003 A1 Mar. 29, 2007 Schneider (citations to the English translation) DE3146585 May 23, 2019 REJECTIONS 1. Claims 1, 3–6, 8–10, 13, 14, and 16–22 are rejected under pre- AIA 35 U.S.C. § 112, second paragraph,2 as being indefinite. Non-Final Act. 5. The Examiner also rejects various claims under pre-AIA 35 U.S.C. § 103(a) as follows: 2 Because the application on appeal claims priority to an application filed before the effective dates of the amendments to 35 U.S.C. §§ 103 and 112 enacted by the Leahy-Smith America Invents Act (AIA), we apply the pre- AIA versions of these sections. See AIA, Pub. L. No. 112–29, §§ 3(n)(1), 4(e), 125 Stat. 284, 293, 297 (2011). Appeal 2021-003500 Application 13/850,358 4 2. Claims 1, 4, 6, 9, 10, 13, 14, and 16–22 as being unpatentable over Lipari in view of Engle and Schneider. Non-Final Act. 8. 3. Claim 3 as being unpatentable over Lipari in view of Engle, Schneider, and Payet. Non-Final Act. 15. 4. Claim 5 as being unpatentable over Lipari in view of Engle, Schneider, and Takemasu. Non-Final Act. 16. 5. Claims 16 and 17 as being unpatentable over Lipari in view of Engle, Schneider, and Frantz. Non-Final Act. 17. 6. Claims 1, 4, 6, 8–10, 13, 14, and 16–22 as being unpatentable over Calemard in view of Engle and Schneider. Non-Final Act. 17. 7. Claim 3 as being unpatentable over Calemard in view of Engle, Schneider, and Payet. Non-Final Act. 25. 8. Claim 5 as being unpatentable over Calemard in view of Engle, Schneider, and Takemasu. Non-Final Act. 26. 9. Claims 16 and 17 as being unpatentable over Calemard in view of Engle, Schneider, and Frantz. Non-Final Act. 26. OPINION Rejection 1: Indefiniteness The Examiner rejects claims 1, 3–6, 8–10, 13, 14, and 16–22 as being indefinite. Non-Final Act. 5. In particular, the Examiner raises issue with various limitations in independent claim 1 as well as dependent claims 16 and 17. Claim 1: First Tool Part/Counter Tool The Examiner determines that claim 1 is indefinite due to the recitations “the other one of said first tool part and said second tool part comprising an anvil with a counter tool . . . the magnitude of the processing Appeal 2021-003500 Application 13/850,358 5 force is equal to the feed force of said force storage element urging said counter tool towards said first tool part,” which the Examiner considers “do not appear to be compatible with one another.” Non-Final Act. 6–7. Specifically, the Examiner points out that the claim 1 “permit[s] the first tool part to include the counter tool,” but also “require[s] that the counter tool is urged toward the first tool part,” such that “it is unclear whether the second tool part must include the counter tool.” Non-Final Act. 6. The Examiner also determines that “it is unclear how to interpret the claim if the first tool part includes the counter tool,” because it is not apparent how the force storage element can urge the counter tool toward the first tool. Non-Final Act. 6–7. The Appellant argues that “[t]here is no contradiction,” and the claim is “intended to include both the geometry in which the oscillating structure is above the anvil as well as the geometry in which the anvil is above the oscillating structure as the two are functionally equivalent.” Appeal Br. 13– 14. However, regardless of what the Appellant intends by such language, we agree with the Examiner for the reasons set forth in the rejection. It is not clear how the counter tool can be urged toward the first tool part if it is part of the first tool part as claim 1 clearly allows in its recitation that “the other one of said first tool part and said second tool part comprising an anvil with a counter tool.” Appeal Br. 29–30 (Claims App.). Moreover, in contrast to such language, claim 1 also appears to require the counter tool to be part of the second tool part in order for such urging toward the first tool part to occur. Thus, the Examiner is justified in questioning “[i]f the counter tool includes the first tool part, what is required to urge the counter tool Appeal 2021-003500 Application 13/850,358 6 toward the first tool part? This limitation becomes nonsensical if the first tool part is permitted to include the counter tool.” Ans. 7. The Appellant also submits arguments based on the adjusting device. Appeal Br. 13. However, such arguments are immaterial to the present issue of indefiniteness based on the above-discussed limitations of claim 1. During the Oral Hearing, we noted to the Appellant’s legal representative that we did not find any arguments in its briefing that directly address this indefiniteness issue, and further inquired as to where such arguments may be found. The Appellant’s representative conceded that no arguments directed to this issue was submitted. Therefore, in view of the above considerations, we affirm the Examiner’s indefiniteness rejection of independent claim 1 based on the above-discussed first tool part/counter tool limitation, as well as claims 3–6, 8–10, 13, 14, and 16–22, which ultimately depend from independent claim 1. Claim 1: Adjusting Device The Examiner also determines that the limitation “an adjusting device” of claim 1 is a functional recitation, which is interpreted as a means plus function recitation under 35 U.S.C. § 112, sixth paragraph. Non-Final Act. 4–5. The Examiner, however, determines that “the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.” Non-Final Act. 5. The Examiner points out that the actual structure of the disclosed “adjusting device 36” is not disclosed in the Specification or the drawings, and “the term ‘adjusting device’ alone is insufficient to disclose any particular structure that is capable of performing Appeal 2021-003500 Application 13/850,358 7 the recited functions of the moving element.” Non-Final Act. 5. Accordingly, the Examiner also rejects claim 1 as being indefinite for this additional reason. The Appellant argues that Section 112, sixth paragraph does not apply because “persons of ordinary skill in the art reading the specification understand the term ‘adjusting device’ to have a sufficiently definite meaning as the name for the structure that performs the function, even though the term covers a broad class of structures and identifies the structures by their function.” Appeal Br. 12. According to Appellant, the Specification “makes clear that what is being adjusted is the position of the force storage device 40 mounted on the adjusting device 36, and in turn the counter tool 42 mounted on the force storage device 40.” Appeal Br. 12. The Appellant argues that “[i]n this case, when [read] in light of the specification, the term ‘adjusting device’ has a definite, structural, meaning in the relevant art.” Appeal Br. 12–13. Section 112, sixth paragraph applies even if the term “means” has not been used when “the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’” Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015). We agree with the Examiner that such is the case here. Claim 1 simply recites “an adjusting device cooperating with said second tool part via the force storage element to adjust the feed force, thereby exerting said feed force on the workpiece,” with no additional recitation of known structure that would perform the recited function of adjusting. Appeal Br. 29–30 (Claims App.). Our reviewing court has found “generic terms ‘mechanism,’ ‘means,’ ‘element,’ and ‘device,’ typically do not Appeal 2021-003500 Application 13/850,358 8 connote sufficiently definite structure [to avoid means-plus-function treatment].” Welker Bearing Company v. PHD, Inc., 550 F.3d 1090, 1096 (Fed. Cir. 2008) (citing Massachusetts Institute of Technology v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006)). In that regard, the Specification is likewise silent as to what the adjustment device is or constitutes. The inventor, Mr. Vogler, simply asserts, with no supporting evidence, that for a person of ordinary skill in the art reading the specification, the term “adjusting device” has a sufficiently definite meaning as the name of the structure that performs the function, even if the term were to cover a broad class of structures. The patent specification provides enough context such that the term “adjusting device” would be understood by a person of ordinary skill in the art to have a well-defined structure in the claimed device. Decl. of Vogler ¶ 7; see also id. ¶¶ 10–11 (asserting that an adjusting device would be a valve or a screw for a force storage element made of a hydraulic or mechanical spring). However, “consideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification.” Aristocrat Techs. Australia PTY Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1336–37 (Fed. Cir. 2008) (internal quotation marks omitted). That is, “[i]t is not enough for the patentee simply to state or later argue that persons of ordinary skill in the art would know what structures to use to accomplish the claimed function” to satisfy the obligation to disclose sufficient structure to support a means-plus-function claim limitation. Id. Therefore, in view of the above considerations, we also affirm the Examiner’s indefiniteness rejection of independent claim 1 based on the Appeal 2021-003500 Application 13/850,358 9 above-discussed “adjusting device” limitation, as well as claims 3–6, 8–10, 13, 14, and 16–22, which ultimately depend from independent claim 1. Claim 16 Claim 13 recites “[a] method for using the device of claim 1,” while claim 16 depends from claim 13, and recites “wherein an amplitude and/or cutting forces vary with time during cutting.” Appeal Br. 30–31 (Claims App.). The Examiner determines that “cutting forces” renders the claim indefinite because it is unclear whether this recitation is introducing new forces, or whether this recitation is referring to forces already introduced (such as the ‘processing force’, ‘feed force’, and/or ‘force of travel’),” and “whether the cutting forces can include forces already introduced” considering the Specification “suggests the cutting force includes at least the feed force.” Non-Final Act. 7. The Appellant “notes that claim 16 is an original claim, and the Examiner apparently has only found this term to be indefinite in the sixth office action in the prosecution of this application.” Non-Final Act. 14. However, regardless of the timing of this rejection, it is nonetheless before us to decide on appeal. It is not apparent where in its briefs the Appellant substantively addresses the merits of this rejection. Accordingly, this indefiniteness rejection is affirmed. Claim 17 Claim 17 depends from claim 16 and recites “said cutting force,” which the Examiner determines to be indefinite because claim 16 recites “said cutting forces.” Non-Final Act. 8; Appeal Br. 31 (Claims App.). The Examiner explains that “[i]t is unclear what cutting force is being described,” and questions “[i]s claim 17 describing some particular member Appeal 2021-003500 Application 13/850,358 10 of the cutting forces of claim 16, or is claim 17 describing each and every cutting force introduced in claim 16?” Non-Final Act. 8. Like claim 16, it is not apparent where in its briefs the Appellant substantively addresses the merits of this rejection. Accordingly, this indefiniteness rejection is affirmed as well. Rejection 2: Lipari, Engle, and Schneider The Examiner rejects claims 1, 4, 6, 9, 10, 13, 14, and 16–22 as being unpatentable over Lipari in view of Engle and Schneider, further relying on Clarke and Sager as additional evidence in support of the rejection. Non- Final Act. 8. As to independent claim 1, the Examiner finds Lipari discloses a device for processing a workpiece substantially as claimed, but fails to disclose the recited carriage that moves the first tool part, a fixed stop, and the resonance frequency of the anvil being between 2 Hz and 600 Hz. Non- Final Act. 8–11. As to the recited carriage, the Examiner finds that “Engle teaches an ultrasound device where a carriage 67 cooperates with a first tool part 26 to move the first tool part 26 in a working direction ‘C’ via a workpiece against a second tool part 16 such that the second tool part is moved into an operating position using the first tool part 26.” Non-Final Act. 11 (citing Engle col. 4, ll. 39–45; Figs. 6A–6C). As to the recited fixed stop, the Examiner finds “Engle teaches a fixed stop 70 cooperating with said carriage 67.” Non-Final Act. 11 (citing Engle col. 5, ll. 56–58; Fig. 6C). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to provide the device of Lipari with a carriage and stop as taught by Engle in order to move the first tool part toward and away Appeal 2021-003500 Application 13/850,358 11 from the workpiece before and after a welding/cutting operation, with the stop accurately positioning the first tool part for the welding/cutting operation. This modification offers the advantage of providing additional space for insertion and removal of the workpiece. Additionally, the stop offers the advantage of accurately positioning the tool part. Non-Final Act. 12. The Examiner also concludes that the combination of Engle’s carriage and stop with the device of Lipari would have been obvious under KSR because in such a combination, “each element merely would have performed the same function as it did separately,” and the result of the combination would have been predictable. Non-Final Act. 12. The Appellant argues that “[a]ccording to Lipari, the first tool part is fixed (Fig. 1). It does not introduce any force onto the second tool part but only the second tool part introduces a force against the first tool part.” Appeal Br. 20. However, this argument is unpersuasive because it argues “against the Lipari reference individually, rather than against Lipari as modified. . . . the Engle reference is relied upon for its teaching of a carriage that cooperates with a first tool part to move the first tool part.” Ans. 8; see also Non-Final Act. 11. The Appellant asserts that “neither Lipari nor Engle disclose any motivation for a person skilled in the art to move both tool parts,” but then concedes that Engle moves the sonotrode and the anvil to cut three dimensional objects. Appeal Br. 21. The Appellant’s arguments are not persuasive considering, as conceded by the Appellant, Engle clearly discloses the movement of both tool parts to any extent that Lipari does not, and because the Appeallant’s arguments “do[] not address the motivation clearly articulated.” Ans. 9; see also Non-Final Act. 12; Engle Fig. 2 (arrows “A” and “B” indicating movement of both tool parts). Appeal 2021-003500 Application 13/850,358 12 The Appellant also argues that “if both tool parts are moved actively, at least an additional control device would be necessary which coordinates the different active movements of the tool parts in order to prevent uncontrolled contact between the tool parts,” and that the rejection “does not provide a reasoned explanation or identify specifically,” evidence establishing that provision of an additional control device is within the skill of one of ordinary skill in the art. Appeal Br. 21. However, we agree with the Examiner that this argument is unpersuasive because “Engle already discloses that each of its tool parts ‘16’ and ‘26’ is moveable with separate control means ‘28’ for the first tool part ‘26’ and positioning means ‘24’ for the second tool part ‘16’,” which clearly establishes that such provision is within the skill of those of ordinary skill. Ans. 8; see also Engle Fig. 2. As to the recited resonant frequency of the anvil being between 2 Hz and 600 Hz, the Examiner correctly finds that “Schneider teaches that it is advantageous in an ultrasonic welding device to provide an anvil that is of a relatively large mass and that is supported by a relatively soft spring,” and wherein the natural frequency of the anvil “is less than the frequency of the sonotrode’s ultrasonic vibrations.” Non-Final Act. 12–13 (citing Schneider pg. 3); see also Clarke, col. 2, ll. 48–55, 61–68; col. 7, ll. 46–53. Such advantages include efficiency in heat generation, avoiding overloading, and reducing repeated contact so as to reduce wear. Non-Final Act. 13 (citing Schneider pg. 2–4). Based on the teachings of Schneider, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to provide the anvil of Lipari with a relatively large mass and the spring with a relatively soft stiffness such that the resonant Appeal 2021-003500 Application 13/850,358 13 frequency of the second tool part is less than the frequency of vibrations of the first tool part. Non-Final Act. 13. The Examiner also concludes that it would have been obvious to one of ordinary skill in the art to select an anvil mass and a spring constant that lead to an anvil resonance frequency in the range of 2 Hz to 600 Hz in order to ensure that the anvil’s resonance frequency is less than the frequency of the sonotrode, to thereby attain the advantages disclosed by Schneider, and where upon such modification, “the second tool part [] remain[s] substantially on an apex of a working surface of the first tool part.” Non-Final Act. 14–15. In addition, according to the Examiner, “it would have been an obvious matter of design choice to a person of ordinary skill in the art to select an anvil mass and a spring constant,” and merely involves discovering an optimum resonance frequency for the anvil, which is a result effective variable. Non- Final Act. 14. In support thereof, the Examiner notes that “Sager is evidence that an anvil resonance frequency in the range of 2 Hz to 600 Hz is known in the art as a suitable resonance frequency for an anvil.” Non-Final Act. 14 (citing Sager at col. 3, ll. 52–55 (disclosing an anvil having resonance frequency in the range of 20 Hz and 15 kHz)). The Appellant argues that “[w]hile the resonance frequency of the sonotrode is disclosed to be 20 kHz in an embodiment . . . Schneider does not directly disclose a value for the resonance frequency of the counter tool.” Appeal Br. 21. The Appellant contends that because Schneider only discloses that the resonance frequency of the second tool part has to be smaller than the resonance frequency of the first tool, even if Lipari’s device is modified in accordance with Schneider such that the resonance frequency of the second tool part is lower than that of the first tool part, such Appeal 2021-003500 Application 13/850,358 14 combination “does not render the claimed frequency range of the second tool part obvious to a person skilled in the art.” Appeal Br. 21. In our assessment, the Examiner has the better position in view of the totality of the evidence. In particular, although Schneider does not specifically disclose the recited range of resonance frequency of the anvil, the art of record establishes that it was known in the art to provide an anvil having a relatively large mass, and supporting the same with a soft spring, so as to provide the anvil with a low resonance frequency to attained various advantages as noted above. Ans. 9–10; see also Schneider pg. 2–4; Clarke, col. 2, ll. 48–55, 61–68; col. 7, ll. 46–53. Sager also establishes that it was known in the art that providing an anvil top plate having a resonant frequency less than that of the ultrasonic tool, and further, to provide an anvil top plate having a resonance frequency in the range of 20 Hz to 15 kHz. Sager, col. 3, ll. 52–64. Such evidence of record indicates that a person of ordinary skill not only knows of the benefits of providing an anvil having a lower resonance frequency than that of the ultrasonic tool, but also indicates that such a person possesses the skill and creativity to determine, and select, a desired resonance frequency for the anvil so as to attain such beneficial results. Accordingly, the Examiner appears to be correct in his assessment that selection of the frequency range for the anvil merely involves discovering an optimum resonance frequency for the anvil, which is a result effective variable. Thus, we agree with the Examiner that “[t]he particular selected resonance frequency is merely the result of routine experimentation resulting altering the magnitude of the mass and spring constant, and Schneider provides motivations for performing this routine experimentation.” Ans. 10. Appeal 2021-003500 Application 13/850,358 15 In addition, nothing in the record establishes, nor does the Appellant persuasively argue, with supporting evidence, that the claimed resonance frequency attains an unexpected result. See Ans. 10 (“the claimed resonance frequency of the anvil does not lead to any unexpected result,” and “the claimed resonance frequency . . . cannot be said to be critical to achieving some unexpected advantage.”). Therefore, in view of the above considerations, we affirm the Examiner’s obviousness rejection of independent claim 1. The Appellant does not submit separate arguments directed to claims 4, 6, 9, 10, 13, 14, and 16–22, which ultimately depend from claim 1. Thus, these claims fall with claim 1. Rejections 3–5: Claims 3, 5, 16, and 17 The Examiner rejects claims 3, 5, 16, and 17, as being unpatentable over Lipari in view of Engle and Schneider, in further view of Payet, Takemasu or Frantz. Non-Final Act. 15–17. The Appellant relies on dependency on claim 1 for patentability of these claims. Appeal Br. 24. Accordingly, we affirm these rejections. Rejection 6: Calemard, Engle, and Schneider The Examiner rejects claims 1, 4, 6, 8–10, 13, 14, and 16–22 as being unpatentable over Calemard in view of Engle and Schneider, further relying on Clarke and Sager as additional evidence in support of the rejection. Non- Final Act. 17. This rejection substantially mirrors Rejection 2, but substitutes Calemard for Lipari. Non-Final Act. 18. The Examiner also applies the other references in substantially the same manner as in Rejection Appeal 2021-003500 Application 13/850,358 16 2. Non-Final Act. 20. The Examiner further finds that Calemard discloses resonance frequency of an anvil such that the second tool part remains substantially on an apex of the working surface of the first tool part, or alternatively, finds that such limitation would be satisfied upon modifying the anvil to have a resonance frequency between 2 Hz and 600 Hz “since it is the difference in resonance frequencies between the sonotrode and anvil” that causes the recited result. Non-Final Act. 18–19. The Appellant argues that “Calemard merely discloses that the anvil is to be ‘considered’ as fixed relative to the sonotrode when the workpiece is positioned between the sonotrode and the anvil,” which “says nothing about where the second tool part is relative to the apex of the working surface of the first tool part.” Appeal Br. 26. The Appellant also argues that the Examiner’s rejection based on the selection of the recited frequency for the anvil of Calemard is based on impermissible hindsight. Appeal Br. 27. The Appellant’s argument is unpersuasive for substantially the same reasons discussed above relative to Rejection 2. As the Examiner points out, it is the prior art of record, “not the Appellant’s own disclosure, provide a teaching of selecting a low resonance frequency for the second tool part including the anvil.” Ans. 11. As discussed relative to Rejection 2, the evidence of record indicates that a person of ordinary skill not only knows of the benefits of providing an anvil having a lower resonance frequency than that of the ultrasonic tool, but also indicates that such a person possesses the skill and creativity to determine, and select, a desired resonance frequency for the anvil so as to attain such beneficial results. In that regard, we find reasonable the explanation provided by the Examiner that the limitation “the second tool part remains substantially on an apex of a working surface of Appeal 2021-003500 Application 13/850,358 17 said first tool part,” “is understood as being met whenever the resonance frequency of the anvil is within the range of 2 Hz to 600 Hz, such that this recitation describes a result that necessarily flows from the selected resonance frequency, rather than describing an additional limitation further narrowing the claimed anvil resonance frequency.” Ans. 11. Therefore, in view of the above considerations, we affirm this rejection of independent claim 1, as well dependent claims 4, 6, 9, 10, 13, 14, and 16–22, which are not separately argued. Rejections 7–9: Claims 3, 5, 16, and 17 The Examiner rejects claims 3, 5, 16, and 17, as being unpatentable over Calemard in view of Engle and Schneider, in further view of Payet, Takemasu or Frantz. Non-Final Act. 25–26. The Appellant relies on dependency on claim 1 for patentability of these dependent claims. Appeal Br. 28. Accordingly, we affirm these rejections as well. CONCLUSION The Examiner’s rejections are affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–6, 8– 10, 13, 14, 16–22 112 Indefiniteness 1, 3–6, 8– 10, 13, 14, 16–22 1, 4, 6, 9, 10, 13, 14, 16–22 103(a) Lipari, Engle, Schneider 1, 4, 6, 9, 10, 13, 14, 16–22 Appeal 2021-003500 Application 13/850,358 18 3 103(a) Lipari, Engle, Schneider, Payet 3 5 103(a) Lipari, Engle, Schneider, Takemasu 5 16, 17 103(a) Lipari, Engle, Schneider, Frantz 16, 17 1, 4, 6, 8– 10, 13, 14, 16–22 103(a) Calemard, Engle, Schneider 1, 4, 6, 8– 10, 13, 14, 16–22 3 103(a) Calemard, Engle, Schneider, Payet 3 5 103(a) Calemard, Engle, Schneider, Takemasu 5 16, 17 103(a) Calemard, Engle, Schneider, Frantz 16, 17 Overall Outcome 1, 3–6, 8– 10, 13, 14, 16–22 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED