`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`Appl. No.
`Applicant
`Filed
`TC/A.U.
`
`: 11/185,619
`: Wangen Lin et a1.
`:
`July 19, 2005
`:
`1725
`
`Examiner
`
`: Rachel E. Beveridge
`
`Confirmation No. 5656'
`
`Docket No.
`Customer No.
`
`:
`:
`
`085.lO452—US-AA(OO—749—3)
`52237
`
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313
`
`Sir:
`
`REPLY BRIEF
`
`This is in reply to the Examiner’s Answer mailed on
`
`November 13, 2006 setting a period for response which
`
`expires on January 13, 2007.
`
`Remarks/Arguments begin on page 2 of this paper.
`
`
`
`REMARKS /ARGUMENTS
`
`At the outset, Appellants note the citation of the
`
`Dean et al. patent and the Schwartz articles on page 4 of
`
`the Examiner's Answer.
`
`The Examiner offers no explanation
`
`as to why these documents were not cited prior to the
`
`filing of Appellant’s Brief. Certainly,
`
`they were
`
`available to the Examiner. Absent such an explanation, and
`
`as a matter of fairness to Appellants,
`
`these documents
`
`should not be considered by the Board.
`
`The Examiner’s use
`
`of them should give rise to a new ground of rejection;
`
`however,
`
`the Examiner has not
`
`taken such action. Quite
`
`frankly, should the Examiner believe the citation of these
`
`articles and the Dean et al. patent are necessary to
`
`support
`
`the rejections of record in this case,
`
`the Examiner
`
`should have re-opened prosecution. As a matter of fairness
`
`to Appellants,
`
`the Board is requested to discourage this
`
`midnight hour citation of documents.
`
`With regard to the obviousness rejection of claims 7,
`
`8, and 10 - 13 over Haskell, none of the newly cited
`
`documents are relevant because none of them have been
`
`applied against any of these claims.
`
`In response to the
`
`Examiner’s argument beginning on page 8 of the Examiner’s
`
`Answer, Appellants first note that an obviousness rejection
`
`may not be based upon conjecture and surmise.
`
`See In re
`
`
`
`Warner, 379 F.2d 1011, 1017, 159 USPQ 173, 178 (CCPA 1967);
`
`also see In re Sporck, 301 F.2d 686, 690, 133 USPQ 360, 364
`
`(CCPA 1962). Further,
`
`the mere fact that the prior art
`
`could be modified as proposed by the Examiner is not
`
`sufficient to establish a prima facie case of obviousness.
`
`See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
`
`(Fed. Cir. 1992). As will be seen from the following
`
`discussion,
`
`the Examiner has failed to make out a prima
`
`facie case of obviousness because the entire rejection is
`
`nothing more than speculation and conjecture.
`
`While Haskell may disclose brazing, which may be
`
`carried out at an elevated temperature, Haskell is silent
`
`as to what is the brazing process and what is the
`
`temperature used during the brazing process. There is
`
`absolutely nothing in Haskell which teaches or suggests the
`
`method step of heating the article and the brazing material
`
`and performing the heating step at a temperature within the
`
`claimed method step. Nothing in the rejection or in the
`
`arguments in the Examiner’s Answer point speceifically to
`
`where in Haskell the claimed method steps are taught or
`
`suggested.
`
`As stated before,
`
`the Schwartz article referred to by
`
`the Examiner on page 8 of the Answer is not applied and
`
`should be ignored. Further, assuming arguendo that
`
`
`
`Schwartz should be considered,
`
`the article is not directed
`
`to a brazing method using the claimed brazing alloy. Thus,
`
`it is irrelevant to the claimed method steps. As for the
`
`Examiner's “implied” argument at the bottom of page 8 of
`
`the Answer, it should not go unnoted that Schwartz says
`
`that brazing could be carried out at a temperature of 450
`
`degrees Centigrade which is well below the claimed
`
`temperature range (see page 110, left hand column,
`
`the
`
`first bullet).
`
`“Implied” is another way of saying
`
`“inherent”.
`
`It is well settled though that inherency may
`
`not be established by probabilities or possibilities.
`
`The
`
`mere fact that a certain thing may result from a given set
`
`of circumstances is not sufficient.
`
`In re Oelrich, 666
`
`F.2d 578, 571, 212 USPQ 323, 326 (CCPA 1981).
`
`The
`
`discussion of brazing being carried out at an elevated
`
`temperature on pages 8 and 9 of the Answer still begs the
`
`question what is the temperature range used by Haskell.
`
`The answer is none is identified.
`
`On pages 9 and 10,
`
`the Examiner’s argues that the
`
`rejection of record is not hindsight.
`
`The argument is not
`
`convincing however because the Examiner can not point to
`
`anything in the cited and applied art which teaches the
`
`claimed method steps.
`
`The Examiner contends that the
`
`rejection is based solely on knowledge within the level of
`
`
`
`ordinary skill in the art based on Haskell. Yet,
`
`the
`
`Examiner has not identified any prior art which teaches the
`
`claimed method steps.
`
`Appellants note the Examiner disagreement starting on
`
`page 10 of the Examiner’s Answer over the issue of
`
`Haskell’s silence as to how any brazing process is to be
`
`carried out and at what
`
`temperature. One of the
`
`infirmities of the Examiner’s position is that the Examiner
`
`has not established the melting point of the brazing
`
`.material used in Haskell.
`
`In other words,
`
`there is no
`
`evidence of record which would support the conclusion that
`
`Haskell would necessarily heat the article and the brazing
`
`material to the claimed temperature range. As noted by the
`
`Examiner,
`
`the composition in Haskell is similar, not
`
`identical to the claimed brazing alloy. There is no
`
`evidence provided by the Examiner as to what would be a
`
`temperature used by Haskell at which a firm bond would be
`
`created.
`
`The Examiner can not make such a showing because
`
`Haskell is silent on the issue. Absent such a showing, and
`
`given the realistic possibility that Haskell could use a
`
`temperature outside the claimed range,
`
`the rejection must
`
`fail because it is nothing more than conjecture.
`
`For all
`
`any one knows, Haskell would use a temperature outside the
`
`claimed range. Again,
`
`there is absolutely nothing in the
`
`
`
`reference,
`
`the only cited and applied prior art reference,
`
`which would teach or suggest
`
`the claimed method steps.
`
`The
`
`Examiner’s position is simply conjecture and surmise as
`
`well as a hindsight rejection.
`
`It should be noted that neither Schwartz document
`
`mentioned at the bottom of page 11 is particularly
`
`probative on the issues at hand since they do not have
`
`anything to do with the claimed brazing process.
`
`The
`
`Examiner has not shown where in either Schwartz document,
`
`the same brazing material is being used.
`
`On page 12,
`
`the Examiner argues that identical
`
`compositions of material with the same.brazing material,
`
`placed on the same material articles,
`
`in the same
`
`environment will melt at the same temperature. Assuming
`
`this were true and that Haskell was using the same brazing
`
`material on the same material article as Appellants,
`
`this
`
`still does not establish that Haskell is teaching a heating
`
`step using the claimed temperature range. As can be seen
`
`from the Leach patent of record, similar brazing materials
`
`may have a lower melting point than the claimed temperature
`
`range.
`
`The issue is what is that Haskell teaches.
`
`The
`
`answer is that Haskell does not teach anything about the
`
`heating step.
`
`
`
`On page 14 of the Examiner’s Answer,
`
`the Examiner
`
`admits on lines 7 — 9 that it is only a possibility that
`
`Haskell’s alloy would melt within the claimed temperature
`
`range. This statement alone should be sufficient evidence
`
`that the Examiner has failed to establish a prima facie
`
`case of obviousness.
`
`Appellants' note the Examiner’s comments on page 13 of
`
`the Examiner’s Answer about how one could select possible
`
`combination of elements from Haskell and that under the
`
`same conditions/environments, both the Appellants’
`
`combination and Haskell's combination of elements would
`
`have the same melting temperature. These statements point
`
`to the hindsight nature of the rejection of record and the
`
`fact that the Examiner has not established a prima facie
`
`case of obviousness. There is absolutely nothing in
`
`Haskell which would teach or suggest that Haskell would
`
`perform a brazing operation under the same conditions and
`
`environments as Appellants. There is also nothing in
`
`Haskell which would lead one to select the same combination
`
`of elements as Appellants.
`
`With regard to the Examiner’s contention at the bottom
`
`of page 13 that Haskell clearly suggests a specific
`
`temperature range for brazing,
`
`the Examiner has failed to
`
`
`
`point out
`
`the column and line in which this specific
`
`temperature range can be found.
`
`On page 14 of the Examiner’s Answer,
`
`the Examiner
`
`rebuts an argument made by Appellants that Leach clearly
`
`shows that Haskell’s alloy could be melted outside the
`
`claimed temperature range.
`
`The Examiner responds by saying
`
`that Haskell’s alloy could have a melt
`
`temperature within
`
`the claimed range. This argument again highlights the
`
`weakness of the Examiner’s position.
`
`Since there is the
`
`possibility that Haskell’s alloy has a melt
`
`temperature
`
`outside the claimed range, Haskell could not possibly teach
`
`or suggest the claimed temperature range.
`
`The Examiner's
`
`position is nothing more than surmise and speculation.
`
`With respect to the Examiner’s arguments on pages 14
`
`and 15 of the Examiner’s Answer, Appellants submit that the
`
`nature of the materials is a consideration when performing
`
`a heating step.
`
`No matter what the Examiner argues,
`
`there
`
`has been no definitive showing by the Examiner of what
`
`temperature Haskell would use when he joins the disclosed
`
`materials together.
`
`With respect to claim 10 and the Examiner’s arguments
`
`on pages 16 — 18 of the Examiner’s Answer, once again the
`
`Examiner talks about what Haskell's alloy could be. Of
`
`course,
`
`the Examiner does this after seeing the subject
`
`
`
`matter of claim 10. There is nothing in Haskell which
`
`teaches the brazing material with the claimed range of
`
`manganese and the remainder having the claimed proportions.
`
`The fact that Haskell's alloy could have these proportions
`
`is not a sufficient basis on which to establish
`
`obviousness. There needs to be a teaching. The Examiner
`
`does not point to anything in Haskell which would provide
`
`such a teaching nor does the Examiner point to any common
`
`knowledge to artisans of the advantage of such a
`
`composition. Further,
`
`taking the position that a 0.51 wt%
`
`nickel difference is a small difference seems to be, at
`
`best, rather arbitrary. After all, it is a 20% difference
`
`in nickel content which seems to Appellants to be rather
`
`significant.
`
`It shows that the Examiner’s attempt to find
`
`an obviousness rejection has no basis in Haskell or
`
`anywhere in the prior art. Haskell never talks about such
`
`a difference in the nickel content.
`
`The Examiner’s beliefs
`
`are irrelevant to the issue of obviousness. What is
`
`relevant is what the prior art teaches.
`
`The rejection of
`
`claim 10 is nothing more than a hindsight rejection.
`
`As for the Examiner's arguments concerning claim 8 on
`
`page 18 of the specification,
`
`the above comments about the
`
`patentability of claim 7 are equally applicable here.
`
`Nothing in the cited and applied prior art teaches or
`
`
`
`suggests performing the claimed heating step at the claimed
`
`temperature range. As noted before,
`
`the Examiner’s
`
`position is nothing more than speculation and conjecture.
`
`For this reason,
`
`the obviousness rejection fails.
`
`With respect to claim 14,
`
`the Examiner’s comments on
`
`page 18 and 19 are duly noted; however, claim 14 is
`
`allowable because neither Haskell nor Leach teach or
`
`suggest the claimed heating step. Appellants’ previous
`
`comments are incorporated herein.
`
`As for the Examiner’s comments on pages 19 and 20, it
`
`is up to the Examiner to make a statement as to what would
`
`motivate one of ordinary skill in the art to substitute
`
`stainless steel for steel in the context of metal cutting
`
`and metal forming tools.
`
`The Examiner has not done this.
`
`The mere fact that a material exists does not mean that one
`
`-of ordinary skill in the art would want to use it for every
`
`purpose. There is no evidence that the brazing material of
`
`Haskell would work with stainless steel or that Haskell
`
`would want to use stainless steel in his article.
`
`It
`
`should be noted that Leach teaches a different brazing
`
`material.
`
`With regard to the Dean patent mentioned on page 20 of
`
`the Examiner’s Answer, it is duly noted but is irrelevant
`
`to the issue of obviousness before the Board since the
`
`10
`
`
`
`Examiner has not applied it. Certainly, it did not form
`
`any part of the final rejection. Therefore,
`
`the only
`
`teachings which should be considered relevant are those of
`
`Haskell and Leach.
`
`If the Examiner wants to rely upon Dean
`
`for anything,
`
`then the Examiner should have made a new
`
`ground of rejection. Consideration of the Dean patent at
`
`this late stage is grossly unfair to Appellants.
`
`Even if the Board were to consider Dean, it does not
`
`cure the aforenoted deficiencies of Haskell and Leach.
`
`In
`
`particular, it does not provide any teaching of the claimed
`
`heating step.
`
`The Examiner’s arguments about
`
`temperature on page 21
`
`and 22 are duly noted; however,
`
`the fact remains that
`
`neither reference teaches or suggests the claimed heating
`
`step with the claimed temperature range.
`
`No matter how
`
`many times the Examiner pleads her position, it is wrong
`
`for the reasons stated above.
`
`Leach clearly shows a
`
`similar brazing composition which has a melting point
`
`outside the claimed range. Haskell does not
`
`imply any
`
`temperature range.
`
`It is totally silent on this subject.
`
`The Examiner’s position has no basis in the cited and
`
`applied references and is nothing more than surmise and
`
`conjecture.
`
`The rejection fails because it is nothing more
`
`than a hindsight rejection.
`
`11
`
`
`
`CONCLUSION
`
`For the reasons set forth in this Reply Brief and in
`
`Appellants’ Brief,
`
`the rejections of record should be
`
`reversed and the instant application should be remanded to
`
`the Primary Examiner for allowance and issue.
`
`FEES
`
`No fee is believed to be due as a result of this reply
`
`brief.
`
`Should the Director determine a fee is due, he is
`
`hereby authorized to charge said fee to Deposit Account No.
`
`21-0279.
`
`Respectfully submitted,
`
`W
`
`9 n Lin et al
`
`B; g/M
`
` Ba ry L. Kelmachter
`BA HMAN & LaPOINTE, P.C.
`
`Reg. No. 29,999
`
`Attorney for Applicants
`Telephone:
`(203)777—6628 ext. 112
`Telefax:
`(203)865—0297
`
`IN TRIPLICATE
`
`Email: docket@bachlap.com
`
`Date: January 12, 2007
`
`l, Karen M. Gill, hereby certify that this correspondence is being deposited with the United States Postal Service with sufficient
`postage a
`rst class mail in an enVelope addressed to: “Commissioner for Patents, P.C. Box 1450, Alexandria, VA 22313" on
`
`
`
`12
`
`
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