RICHARD BERGNER VERBINDUNGSTECHNIK GMBH & CO. KG

Patent Trials and Appeals BoardJul 20, 2020

15190405 - (D) (P.T.A.B. Jul. 20, 2020)

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. 15/190,405 06/23/2016 ROLAND BINGESER FDST-P150255 8118 24131 7590 07/20/2020 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, FL 33022-2480 EXAMINER TOLAN, EDWARD THOMAS ART UNIT PAPER NUMBER 3725 NOTIFICATION DATE DELIVERY MODE 07/20/2020 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): boxoa@patentusa.com docket@patentusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROLAND BINGESER and HELENE PRAMSCHUEFER ____________________ Appeal 2020-000871 Application 15/190,405 Technology Center 3700 ____________________ Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and TARA L. HUTCHINGS, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s rejection of claims 15, 16, 18–20 and 32–35. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies “Richard Bergner Verbindungstechnik GmbH & Co. KG,” as the real party in interest. Appeal Br. 1. Appeal 2020-000871 Application 15/190,405 2 According to Appellant, the “invention relates to a method for producing a connecting element, in particular a bolt, made of a metallic base material, to which a coating made of a metallic material is applied.” Spec. 1, ll. 3–5. Claim 15 is the sole independent claim on appeal. Below, we reproduce claim 15 as representative of the appealed claims. 15. A method for producing a bolt, the method comprising: providing a blank of a metallic base material, the blank having a shank region and a head region; after providing the blank that has the shank region and the head region, applying a coating of zinc or zinc alloy on the blank as an anti-friction coating to form a coated blank; and after applying the anti-friction coating on the blank, forming a thread into the shank region. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. Claims 15 and 18 under 35 U.S.C. § 102(a)(1) as anticipated by Kreidler (US 2,962,813, issued Dec. 6, 1960); II. Claims 16 and 35 under 35 U.S.C. § 103 as unpatentable over Kreidler and May et al. (US 2013/0129444 A1, published May 23, 2013) (“May”); III. Claim 19 under 35 U.S.C. § 103 as unpatentable over Kreidler and Klos (US 2006/0228575 A1, published Oct. 12, 2006); IV. Claim 20 under 35 U.S.C. § 103 as unpatentable over Kreidler and Kazama et al. (US 2017/0089384 A1, published Mar. 30, 2017) (“Kazama”); V. Claim 32 under 35 U.S.C. § 103 as unpatentable over Kreidler, Loyd (US 3,301,120, issued Jan. 31, 1967), and Kazama; Appeal 2020-000871 Application 15/190,405 3 VI. Claims 33 and 34 under 35 U.S.C. § 103 as unpatentable over Kreidler, Loyd, Kazama, and May. ANALYSIS Rejection I—§ 102 rejection of claims 15 and 18 As set forth above, independent claim 15 recites: 15. A method for producing a bolt, the method comprising: providing a blank of a metallic base material, the blank having a shank region and a head region; after providing the blank that has the shank region and the head region, applying a coating of zinc or zinc alloy on the blank as an anti-friction coating to form a coated blank; and after applying the anti-friction coating on the blank, forming a thread into the shank region. Appeal Br., Claims App. (emphasis added). Inasmuch as the Examiner rejects claim 15 as anticipated by Kreidler, the Examiner relies on Kreidler to disclose all of the claim’s recitations, including the claimed step of “after providing the blank that has the shank region and the head region, applying a coating of zinc or zinc alloy on the blank as an anti-friction coating to form a coated blank.” Answer 3; Appeal Br., Claims App. Kreidler discloses that “iron cores 1 shaped with head and shank to the form of the bolt to be produced are embedded at intervals in an encasing material 2.” Kreidler, col. 2, ll. 30–33 (emphases omitted). Appellant and the Examiner disagree as to whether Kreidler’s encasing material discloses the claimed coating—essentially, Appellant argues that Kreidler’s encasing material is too thick for one of ordinary skill to consider the encasing material to be a coating. Answer 3, 6–7; Appeal Br. 4–6. For the following Appeal 2020-000871 Application 15/190,405 4 reasons, based on our review of the record, the Examiner does not support adequately that Kreidler’s encasing material discloses the claimed coating. Appellant’s claim 15 does not specify a thickness of the coating. Appellant’s Specification does state, however, that “the anti-friction coating is applied with a layer thickness in the range of 5 μm to 30 μm”—i.e., from 0.005 mm to 0.03 mm. Spec. 5, ll. 27–28. Appellant’s figures show that the fastener threads are formed not only in the coating, but also in the shank region of the blank that the coating covers. Figure 1. In contrast, Kreidler discloses that “encasing material 2 . . . has a thickness of at least 0.5 mm.” Kreidler, col. 2, ll. 32–33 (bold omitted). Thus, Kreidler’s encasing material has a thickness at least about 15 times that of Appellant’s coating. Kreidler’s encasing material appears to be thick enough so that threads are formed solely in the encasing material, and not in the iron core. See Kreidler, Fig. 2. Further, Kreidler acknowledges that it is known to use coatings on metal, yet Kreidler never describes the encasing material as a coating, but instead uses this different term (i.e., “encasing material”) to describe what covers iron core 1. See, e.g., id. col. 1, ll. 34–55, n.b. ll. 34–37 (“Therefore [it is known that] sheet metal or metal hoops or bands have been covered on one or both surfaces with a coating material, whilst rods and tubes have been covered externally with such coatings.”), ll. 47–49 (“It is another object of the present invention to embed one or a plurality of core bodies into encasing material of a thickness of at least 0.5 mm[] or more.”). Kreidler appears to state that coatings are not thick enough, and, hence, there is a need for its encasing material in place of coatings. See id. at col. 1, ll. 37–41 (“The ends and edges [of materials covered with a coating], however, remained uncovered, and during Appeal 2020-000871 Application 15/190,405 5 subsequent manufacturing processes the underlying material became visible at various points, which detracted from the surface properties aimed at in the coating process.”). Accordingly, based on our review of the record, although we do not delineate at what thickness a covering ceases to become a coating and becomes an encasing material, we determine that the Examiner does not support adequately that Kreidler’s encasing material discloses the claimed coating. Thus, we do not sustain the Examiner’s anticipation rejection of independent claim 15, or of claim 18 that depends from, and the Examiner rejects with, claim 15. Rejection II—§ 103 rejections of claims 16 and 35 We assume, arguendo, that May discloses a coating. We do not sustain the Examiner’s obviousness rejection of claims 16 and 35 that depend from claim 15, based on a combination of Kreidler and May, because May does not remedy the above-discussed deficiency in independent claim 15’s rejection. As discussed above, Kreidler discusses the use of a “coating.” See, e.g., Kreidler, col. 1, ll. 21–41. However, Kreidler disparages the use of such coatings. See id. at col. 1, ll. 37–41 (“The ends and edges [of materials covered with a coating], however, remained uncovered, and during subsequent manufacturing processes the underlying material became visible at various points, which detracted from the surface properties aimed at in the coating process.”). Essentially, Kreidler appears to state that coatings are not thick enough, and hence there is a need for its thicker encasing material. Accordingly, the Examiner does not support adequately, anywhere in the Appeal 2020-000871 Application 15/190,405 6 record, that it would have been obvious to replace Kreidler’s encasing material with May’s coating. Rejections III–VI—§ 103 rejections of claims 19, 20, and 32–34 The Examiner does not rely on any Klos, Kazama, May, or Loyd to disclose anything that would remedy the deficiency in independent claim 15’s anticipation rejection. Thus, we do not sustain any of the Examiner’s obviousness rejection of claims 19, 20, and 32–34 that depend from claim 15. CONCLUSION We REVERSE the Examiner’s anticipation and obviousness rejections of all of the claims. In summary: REVERSED Claims Rejected 35 U.S.C. § Basis/Reference(s) Affirmed Reversed 15, 18 102(a)(1) Kreidler 15, 18 16, 35 103 Kreidler, May 16, 35 19 103 Kreidler, Klos 19 20 103 Kreidler, Kazama 20 32 103 Kreidler, Loyd, Kazama 32 33, 34 103 Kreidler, Loyd, Kazama, May 33, 34 Overall Outcome: 15, 16, 18– 20, 32–35