’14
`5
`
`JUN152W7
`
`-\IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`
`0443—5
`
`
`
`
`M’” Appl. No.
`Appellents
`Filed
`TC/A.U.
`
`: 11/185,619
`': Wangen Lin et a1.
`:
`July 19, 2005
`:
`1725
`
`Confirmation No. 5656
`
`Examiner
`
`: R.E. Beveridge
`
`Docket NO.
`Customer No.
`
`:
`:
`
`085.lO452-US-AA(00—749—3)
`52237
`
`Commissioner for Patents
`P.O. Box 1450
`
`Alexandria, VA 22313
`
`Sir:
`
`SUPPLEMENTAL REPLY BRIEF
`
`This is in response to the Supplemental Examiner’s
`
`Answer mailed March 9, 2007, setting a two month period for
`
`response which expired on May 9, 2007, and which has been
`
`extended one (1) month to June 9,,2007.
`
`Remarks/Arguments begin on page 2 of this paper.
`
`Page 1 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`REMARKS/ARGUMENTS
`
`Appellants thank the Examiner for the withdrawal of
`
`the rejection of claim 9. Thus,
`
`this claim is now
`
`allowable.
`
`Claims 7, 8, 10, and 14 on appeal all include a method
`
`step which calls for heating the article and brazing
`
`material at a temperature in a particular range which is
`
`admittedly not disclosed in the Haskell patent.
`
`See
`
`Supplemental Examiner’s Answer, page 11,
`
`lines 8 — 9.
`
`In the paragraph beginning at the bottom of page 8 of
`
`the Supplemental Examiner’s Answer,
`
`the Examiner presents
`
`an argument which incorrectly identifies the issue at hand.
`
`The Examiner argues'that the issue is whether Haskell
`
`teaches heating during a brazing operation. That is not
`
`the issue.
`
`The issue is does Haskell teach heating the
`
`article and the brazing material at a temperature within
`
`the claimed temperature range.
`
`On this point, it is clear
`
`that Haskell does not enable the claimed invention set
`
`forth in any of claims 7, 8, 10, and 14. There is simply
`
`nothing in Haskell which teaches heating the article and
`
`the brazing material to the claimed temperature range.
`
`On page 9 of the Examiner’s Answer,
`
`the Examiner
`
`argues that she is only taking into account knowledge which
`
`Page 2 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`was within the level of ordinary skill at the time the
`
`claimed invention was made and does not
`
`include knowledge
`
`gleaned only from Appellants' disclosure. There is
`
`absolutely no evidence of record to support this statement.
`
`In fact, the evidence of record, namely the Leach patent of
`
`record,
`
`shows that brazing of materials similar to that
`
`disclosed in Haskell was performed at temperatures outside
`
`the claimed range. The only place the claimed heating
`
`range can be found anywhere in the record is in Appellants'
`
`disclosure. Appellants submit that the Examiner is relying
`
`upon a hindsight reconstruction of the claimed method to
`
`reject the claims and has failed to make out a prima facie
`
`case of obviousness.
`
`With respect to the Examiner’s argument on page 10 of
`
`the Examiner’s Answer that Haskell meets the claim
`
`limitation for “heating the article” by stating “cooling
`
`following the brazing operation” (Haskell, column 1,
`lines
`38 — 41), it should be noted that Haskell never says what
`
`is being cooled and what stresses are being discussed.
`
`Thus,
`
`the Examiner’s analysis is nothing more than the
`
`Examiner’s interpretation of vague statements in Haskell.
`
`It is well settled that an obviousness rejection may not be
`
`based on conjecture.
`
`See In re warmer, 379 F.2d 1011,
`
`Page 3 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`1017, 154 USPQ 173, 178 (CCPA 1967); also see In re Sporck,
`
`301 F.2d 686, 690, 133 USPQ 360, 364 (CCPA 1962).
`
`As for the reliance upon Schwartz by the Examiner, as
`
`noted in Appellants’ earlier reply brief, Schwartz is not
`
`directed to a brazing method using the claimed brazing
`
`alloy. Thus, it can not teach the claimed method steps.
`
`Most certainly, Schwartz teaches brazing at a temperature
`
`outside of the claimed temperature range.
`
`With respect to the Examiner’s argument that Haskell’s
`
`general teaching of a brazing process necessarily includes
`
`the general teaching of brazing which includes heating both
`
`the articles to be joined and the brazing material until
`
`the brazing material melts and joins the articles together,
`
`this is a conclusory statement made by the Examiner without
`
`explanation.
`
`The fact that something in the prior art may
`
`teach something of help to the Examiner’s position does not
`
`mean that it is necessarily present in Haskell. Given the
`
`fact that the 1993 Schwartz article is well after the date
`
`of the Haskell patent, one can only cOnclude that it is not
`
`included in Haskell's teachings.' Haskell, at the time of
`
`his invention, was unaware of the Schwartz article.
`
`On page 11,
`
`lines 8 — 9, of the Supplemental
`
`Examiner’s AnSwer,
`
`the Examiner admits that Haskell does
`
`Page 4 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`not teach the claimed temperature range for heating.
`
`Despite this,
`
`the Examiner argues, beginning on page 11 and
`
`continuing onto claim 12,
`
`that Haskell suggests the method
`
`step with the claimed temperature range range.
`
`The
`
`Examiner’s argument is based upon the similarity of the
`
`compositions and the argument that Haskell’s compositions
`
`could contain the same composition as Appellants’ brazing
`
`material.
`
`The Examiner’s argument fails because brazing of
`
`similar compositions could occur outside the claimed range,
`
`as evidenced by the Leach patent of record. Further,
`
`the
`
`use of the word “could” in this analysis again leads the
`
`inescapable conclusion that the rejection is based upon
`
`impermissible conjecture.
`
`”The untenable nature of the
`
`Examiner’s position is highlighted by the Examiner’s
`
`statement that under the same brazing conditions, a
`
`substantially similar brazing composition would reach the
`
`same melting temperature range.
`
`Since Haskell does not
`
`disclose the brazing conditions that he"uses,
`
`the
`
`Examiner’s position that Haskell’s compositions would be
`
`brazed in the same temperature range is pure speculation
`
`and conjecture on the Examiner’s part.
`
`With regard to the Examiner’s comments at the bottom
`
`of page 12 of the Supplemental Examiner’s Answer, it is
`
`Page 5 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`again pointed out that both Schwartz and Leach teach
`
`performing brazing at temperatures outside the claimed
`
`range. Thus, while the Examiner may disagree with
`
`Appellants’ suggestion that one could perform the brazing
`
`operation using the Haskell alloy at a temperature outside
`
`the claimed range,
`
`the fact remains that the statement is
`
`true as evidenced by Leach.
`
`With respect to the Examiner’s comments on page 13 of
`
`the Supplemental Examiner’s Answer,
`
`the Examiner’s analysis
`
`relies upon the brazing operations being carried out under
`
`the same conditions/environments.
`
`Since Haskell never says
`
`what his brazing conditions/environments are,
`
`the analysis
`
`fails and is nothing more.than COnjecture.
`
`It can not be
`
`said that Haskell suggests the claimed method step when
`
`Haskell has not identified the brazing
`
`conditions/environments. While the Examiner says that
`
`Haskell suggests a specific temperature range, nowhere does
`
`the Examiner identify what that range is-
`
`The fact is that
`
`Haskell does not suggest any temperature range for carrying
`
`out the brazing operation.
`
`With regard to the Examiner's comments in the first
`
`paragraph on page 14 of the Examiner’s Supplemental Answer,
`
`these comments only continue to point out the speculative
`
`Page 6 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`nature of the rejection based on Haskell.
`
`The statement
`
`that “[t]he Examiner would like to note that the
`
`‘possibility’ of Haskell’s alloy to melt at temperatures
`
`outside of the claimed range does not remove any
`
`‘possibility’ that Haskell’s alloy would melt within the
`
`claim range” only goes to show the speculative/conjecture
`
`nature of the rejections based upon Haskell. Once again,
`
`Appellants submit that an obviousness rejection may not be
`
`based on speculation and/or conjecture.
`
`With respect to the Examiner’s arguments in the
`
`paragraph bridging pages 14 and 15 of the Supplemental
`
`Examiner’s Answer, nowhere does the Examiner identify where
`
`one can find the claimed method step of brazing at the
`
`claimed temperature range can be found in Haskell or
`
`anywhere else in the prior art. As for the Examiner’s
`
`statement that the ranges for Haskell's alloys would
`
`necessarily include the melting temperature of the brazing
`
`alloy,
`
`the Examiner fails to acknowledge that brazing
`
`temperature requires the conditions and environment under
`
`which brazing is to be performed, and Haskell is silent on
`
`these subjects.
`
`With respect to the Examiner’s argument at the bottom
`
`of page 16 of the Supplemental Examiner’s Answer, it is not
`
`Page 7 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`understood how the claimed subject matter could be outside
`
`the disclosure in the cited reference, but yet the
`
`reference somehow suggests the claimed subject matter.
`
`The
`
`Examiner’s position is untenable because the Examiner has
`
`not provided any evidence to support the conclusion that
`
`the difference between 1.99 wt% nickel and 2.5 wt% nickel
`
`is negligible.
`
`It should be recognized that there is a 25%
`
`difference between 1.99 wt% and 2.5 wt% which Appellants
`
`would not term as negligible.
`
`The Examiner’s position is
`
`nothing more than a conclusory statement made by the
`
`Examiner without the support of any articulated statement
`
`of the reasoning behind this position.
`
`The Examiner does
`
`not even say “why” it would be obvious to modify Haskell
`
`and where such a modification can be found in the prior
`
`art.
`
`The Examiner has not even demonstrated that a
`
`modified Haskell composition, whatever that would be, would
`
`have the same wettability properties obtained as a result
`
`of the claimed composition in the claimed method.
`
`The fact
`
`of the matter is that there is nothing in the prior art
`
`which teaches or suggests the claimed method step of
`
`providing the particular composition and then performing a
`
`brazing step at the claimed temperature range.
`
`Page 8 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`With respect to the Examiner’s argument beginning at
`
`the bottom of page 18 and extending through page 22 of the
`
`Supplemental Examiner’s Answer, for the reasons previously
`
`stated, Haskell does not
`
`teach or suggest brazing at the
`
`claimed temperature range and Leach clearly teaches brazing
`
`at a temperature outside the claimed range.
`
`For this
`
`reason alone, claim 14 is allowable.
`
`As for the substitution of materials,
`
`the substitution
`
`would only be proper if the Examiner can show that
`
`stainless steel could be used for Haskell's product.
`
`The
`
`Examiner has not done this.
`
`The mere fact that a material
`
`is a known material does not mean that one of ordinary
`
`skill in the art would use it for every purpose. Further,
`
`there is no evidence of record that the brazing material of
`
`Haskell would work with stainless steel in Haskell’s
`
`article.
`
`It should be noted that Leach uses a different
`
`brazing-composition to braze the stainless steel material.
`
`This raises a legitimate question as to whether the Haskell-
`
`material can be used to braze stainless steel — a question
`
`which has not been answered by the Examiner.
`
`Appellants’ comments about Dean in its Reply Brief are
`
`incorporated by reference herein.
`
`Page 9 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`With regard to the Examiner’s comments on pages 22 -
`
`25 of the Supplemental Examiner's Answer, Appellants
`
`believe that it is procedurally improper for an Examiner to
`
`introduce new references into an Appeal process.
`
`It is
`
`fundamentally unfair to Appellants and nothing more than a
`
`procedural sneak attack.
`
`For example, if Appellants wanted
`
`to submit a declaration about these newly cited references,
`
`Appellants could not do so because prosecution is closed.
`
`The Examiner and the Board would not consider any such
`
`declaration.
`
`As to the Examiner’s statement that the Schwartz
`
`article or Dean et al. patent are not necessary for
`
`rejection of the claims,
`
`the proper conclusion to such a'
`
`statement is that the Board should completely disregard
`
`them because they serve no purpose with respect to the
`
`rejection.
`
`The Examiner should not have it both ways.
`
`Either they are part of the rejection or not and if not
`
`they have no place in the Appeal process.
`
`If they are part
`
`of the rejection,
`
`then the rejection should be deemed a new
`
`ground of rejection to preserve Appellants’ rights to fully
`
`respond to this new rejection using references which were
`
`not in the record at the time of the final rejection.
`
`Page 10 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`For the record, it should be noted that at no time
`
`have Appellants attacked the Examiner’s judgment.
`
`The only
`
`attack presented by Appellants has been an attack on
`
`whether the Examiner has made a prima facie case of
`
`obviousness.
`
`The fact that the Examiner misinterprets what
`
`was said is unfortunate but still is not a basis for
`
`introducing new references into the record.
`
`As to the Examiner’s contention that Appellants have
`
`presented some new argument,
`
`the fact is that Appellants
`
`presented in their Appeal Brief the same basic argument
`
`that always has been advanced — the failure of the Haskell
`
`and Leach references to teach or suggest the claimed
`
`invention and the failure of the Examiner to make a prima
`
`facie case of obviousness.
`
`As for the provision of factual evidence to support
`
`the rejections, it should not go unnoticed that the
`
`Examiner did not feel any need to provide such factual
`
`evidence prior.to final rejection and that such evidence
`
`was only required after the filing of the Appeal Brief.
`
`This is exactly the reason why what the Examiner is doing
`
`is fundamentally unfair to Appellants. Appellants should
`
`have notice of all the issues which will arise on an Appeal
`
`before the Appeal is filed, not after it.
`
`Page 11 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`As to the citation of the Schwartz article in order to
`
`aid Appellants’ understanding of the Examiner’s position,
`
`Appellants did not need the Schwartz patent to understand
`
`the Examiner’s position.
`
`The Examiner’s position was
`
`clearly set forth in the final rejection. As for Dean et
`
`al., it is not understood why a new reference is being
`
`introduced to respond to the arguments presented all along.
`
`The argument has been the same, Leach teaches using a
`
`different composition to braze stainless steel. Dean is
`
`not needed to affirm or refute this argument.
`
`In fact,
`
`Dean does not address this argument at all. What Dean does
`
`is introduce a new brazing compound which does not fall
`
`within the claimed method step. Either Dean is part of the‘
`
`rejection or not and if it is part of the rejection,
`
`then
`
`Appellants should have had an opportunity to discuss it
`
`without a final rejection being made.
`
`If Dean is not part
`
`of the rejection, as the Examiner contends,
`
`then it should
`
`be ignored by the Board
`
`As for the conjecture, surmise, and speculation
`
`arguments,
`
`they are all based on Haskell and the positions
`
`which have always been taken by the Examiner.
`
`The newly
`
`cited references have nothing to do with these arguments.
`
`Page 12 of 14
`
`

`

`Apln. SN 11/185,619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`Haskell’s teachings and disclosure stand on their own.
`
`The
`
`additional references do not explain Haskell.
`
`As for the Examiner’s contention that the citation of
`
`the new references stems from Appellants’ new arguments,
`
`this contention is not correct.
`
`The newly cited references
`
`have nothing to do with the deficiencies of Haskell and
`
`Leach, which have always been Appellants’ arguments.
`
`CONCLUSION
`
`For the reasons stated herein,
`
`in Appellants’ Appeal
`
`Brief and Appellants’ Reply Brief,
`
`the rejections of record
`
`should be reversed and the application should be remanded
`
`to the Primary Examiner for allowance and issuance.
`
`EXTENSION OF TIME AND FEE
`
`A request for a one—month extension of time is
`
`enclosed herewith.
`
`The Director is hereby authorized to
`
`charge Deposit Account No. 21-0279 in the amount of
`
`$120.00.
`
`Should the Director determine that an additional
`
`Page 13 of 14
`
`

`

`Apln. SN 11/185, 619
`Resp. Dated June 11, 2007
`Reply to Supp. Exam. Ans. of March 9, 2007
`
`fee is due, he is hereby authorized to charge said fee to
`
`Deposit Account No. 21—0279.
`
`Respectfully submitted,
`
`Wangen Lin et a1.
`
`
`
`Ba ry L. Kélmachter
`Attorney for Applicants
`Reg. NO. 29,999
`Tel:
`(203) 777—6628
`
`Fax:
`
`(203) 865—0297
`
`Date:
`
`June 11, 2007
`
`IN TRIPLICATE
`
`I, Rachel Piscitelli, hereby certify that this correspondence is being deposited with the
`United States Postal Service with sufficient postage as first class mail in an envelope
`acuressed to:
`“ ommissioner for Patents,
`P.O. Box 1450, Alexandria, VA 22313" on June
`
`9L mm
`
`" 1
`‘luf-VA‘
`
`
`
`
`Page 14 of 14
`
`

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