ROSEN SWISS AG

Patent Trials and Appeals Board

Dec 17, 2021

2020006101 (P.T.A.B. Dec. 17, 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.
15/023,104 03/18/2016 Daniel Molenda 474060.23 4656
27128 7590 12/17/2021
HUSCH BLACKWELL LLP
190 Carondelet Plaza
Suite 600
St. Louis, MO 63105
EXAMINER
LE, SON T
ART UNIT PAPER NUMBER
2863
NOTIFICATION DATE DELIVERY MODE
12/17/2021 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):
pto-sl@huschblackwell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte DANIEL MOLENDA, WERNER THALE,
BERNHARD REINING, and MICHAEL RAPP

Appeal 2020-006101
Application 15/023,104
Technology Center 2800

Before JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

KOHUT, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3 and 5–12.2, 3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as ROSEN
SWISS AG. Appeal Br. 1.
2 Claims 4 and 13–18 have been cancelled. See Final Act. 1.
3 Throughout this Decision we refer to the Final Rejection mailed October
11, 2019 (“Final Act.”), the Appeal Brief filed April 9, 2020 (“Appeal Br.”),
the Examiner’s Answer mailed June 25, 2020 (Ans.), and the Reply Brief
filed August 25, 2020 (“Reply Br.”).
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INVENTION
The present invention relates to “a method for determining
mechanical-technological characteristic variables of ferromagnetic metals”
by generating an “eddy current . . . in a magnetically at least substantially
saturated metal, and the eddy current [being] measured by an eddy current
sensor,” and “wherein the electrical conductivity or the specific electrical
resistance of the metal is ascertained from the data from the eddy current
sensor . . . and also the characteristic variable of the metal is derived from
the conductivity or the resistance.” Spec. ¶¶ 2, 5.4 Claim 1 is representative
of the invention and is reproduced below.
1. A method for determining a mechanical-technological
characteristic variable of ferromagnetic metal walls comprising
the steps of:
magnetizing a metal wall that is to be determined,
thereby creating a first magnetic field in the metal wall and at
least substantially magnetically saturating a region of the metal
wall, with a magnetization apparatus which has at least one
permanent magnet or solenoid;
generating a second magnetic field via a sensor apparatus
comprising a transmission coil operating at frequencies of about
100 kHz to 500 kHz, said second magnetic field interacting
with the first magnetic field which is generated in the metal
wall by the magnetization apparatus, wherein said interaction
generates an eddy current in the at least substantially
magnetically saturated region of the metal wall, wherein a
penetration depth of the eddy current in the metal wall is about
1 millimeter or less thereby avoiding influences from a
thickness of the metal wall;
measuring the eddy current by an eddy current sensor of
the sensor apparatus;

4 We cite to paragraphs in the clean version of the Specification filed on
March 18, 2016.
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measuring a strength of the magnetic fields with a
magnetic field strength sensor;
ascertaining an electrical conductivity or a specific
electrical resistance of the metal wall from the data from the
eddy current sensor on the basis of reference data via an
evaluation apparatus; and
deriving, via the evaluation apparatus, the characteristic
variable of the metal wall from the conductivity or the
resistance;
wherein the characteristic variable is at least one of
hardness, yield strength and tensile strength.
Appeal Br. 12 (Claims App.).5
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Hedengren
et al.
US 5,006,800 Apr. 9, 1991
Hrubes US 2004/0075452 A1 Apr. 22, 2004
Veach et al. US 6,847,207 B1 Jan. 25, 2005
Redko et al. US 2006/0109003 A1 May 25, 2006
J. García-
Martín et al.
Non-Destructive Techniques Based
on Eddy Current Testing, Sensors
(Basel, Switzerland) 2011, 11(3),
2525–2565
Feb. 28, 2011
M. P. Perkins
et al.
Analysis of Conductor Impedances
Accounting for Skin Effect and
Nonlinear Permeability, 18th IEEE
International Pulsed Power
Conference 420–425
July 22, 2011
Boenisch US 2013/0234701 A2 Sept. 12, 2013

5 The pages of Appellant’s Claims Appendix are not numbered. We count
the pages of the Claims Appendix continuing from the last numbered page
(page 11) in the Appeal Brief.
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REJECTIONS
Claims 1, 6–8, 10, and 11 are rejected under 35 U.S.C. § 103 as being
unpatentable over Boenisch in view of García-Martín and Perkins. Final
Act. 6–13.
Claims 2, 3, and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Boenisch, García-Martín, Perkins, and Veach. Final
Act. 13–15.
Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over
Boenisch, García-Martín, Perkins, and Hedengren. Final Act. 15–16.
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over
Boenisch, García-Martín, Perkins, and Hrubes. Final Act. 16–17.
Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over
Boenisch, García-Martín, Perkins, and Redko. Final Act. 17–18.

OPINION
With respect to independent claim 1, Appellant argues Boenisch,
García-Martín, and Perkins, alone or in combination, fail to teach or suggest
limiting “a penetration depth of the eddy current in the metal wall to about 1
millimeter or less to thereby avoid influences from a thickness of the metal
wall,” as claimed. Appeal Br. 6. In particular, Appellant argues “Boenisch
seeks to detect defects on both sides of a material” and “would not limit
the eddy current signal to a depth of about one millimeter or less
because then [Boenisch] would be unable to detect defects on the
opposite side of the test material.” Appeal Br. 4–5 (citing Boenisch
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Fig. 3); see also Reply Br. 1.6 As such, Appellant argues “Boenisch directly
teaches away from limiting eddy current penetration depth to avoid
influences from a thickness of the metal wall.” Appeal Br. 5. With respect
to Perkins, Appellant argues
[Perkins’] theoretical relationship [between potential frequencies
of a lightning pulse in a conductor comprised of steel and the
corresponding skin depth] . . . does not describe or make obvious
operating the transmission coil of an inspection device at
frequencies of about 100 kHz to 500 kHz to result in the
penetration depth of the eddy current being about 1 millimeter or
less to avoid influences from a thickness of the inspected metal
wall, as required by claim 1.

Appeal Br. 6 (citing Perkins Fig. 3, Title, Abstract). Appellant further
argues the Examiner’s combination of Boenisch and García-Martín is
improper because
García-Martín teaches that “[t]he thickness of the inspected
material must be two or three times the standard depth of
penetration to prevent the eddy current flow from appearing on
the other side of the test piece.” . . . [which] is in direct contrast
to the teachings of Boenisch, which requires that the eddy
currents penetrate the entire depth of the material in order to
detect defects on the opposite side from the test component.

Appeal Br. 7 (citing García-Martín 23/58).7 Appellant concludes that
combining García-Martín with Boenisch would change the principle of
operation of Boenisch and render Boenisch unsatisfactory for its intended
purpose. Appeal Br. 7–8; Reply Br. 2. Finally, Appellant argues the

6 The argument pages in Appellant’s Reply Brief are not numbered. We
count the pages starting from the first page of Appellant’s argument.
7 The version of the García-Martín publication of record has 58 pages, with
pages numbered 1/58 to 58/58.
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Examiner’s rejection is improper because it employs Perkins, which is non-
analogous art to the claimed invention. Appeal Br. 8–9; Reply Br. 3.
We do not agree with Appellant’s arguments. Instead, we agree with
the Examiner’s findings. Final Act. 6–11; Ans. 8–15. Particularly, we agree
with the Examiner that the eddy current probe of Boenisch subjects a
material similar to Appellant’s to frequencies including Appellant’s claimed
range—which would produce the claimed penetration depth of an eddy
current because “the penetration depth depends on the operating frequency
of the eddy current device and the inspected material” (as evidenced by
technical disclosures in García-Martín and Perkins). Ans. 8–10 (citing
Boenisch ¶¶ 30, 78; García-Martín, Equation 27; Perkins 5,8 Fig. 3); Final
Act. 3–5, 9–11.
More particularly (as noted by the Examiner), García-Martín provides
that the eddy current’s “penetration depth depends on electrical conductivity,
the magnetic permeability of the test material and on the eddy current
frequency.” See García-Martín 23/58 (describing penetration depth δ via
Equation 27); Ans. 8 (citing García-Martín, Equation 27). Thus, according
to García-Martín, the eddy current’s penetration depth is determined by the
test material (specified by its electrical conductivity), the material’s
magnetic state (characterized by magnetic permeability), and the eddy
current testing (excitation) frequency. See García-Martín 23/58; Ans. 8. As
the Examiner further observes, Boenisch’s eddy current probe subjects a

8 The version of the Perkins publication of record does not have numbered
pages. We count the pages starting from the first page of the publication of
record (such that Perkins’ Fig. 3 is on page 5, in accord with the Examiner’s
reference to page 5 of Perkins at Ans. 8).
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substantially magnetically saturated region of a test material similar to
Appellant’s (e.g., a ferromagnetic material such as steel, see Boenisch ¶¶ 76,
78, 98, Spec. ¶¶ 2, 7, 13, 28, 56)9 to frequencies overlapping Appellant’s
claimed range of 100 kHz to 500 kHz (see Boenisch ¶¶ 30, 78). Final Act.
3–5, 6–7 (citing Boenisch ¶¶ 30, 68, 79); Ans. 8–10, 12 (citing Boenisch
¶¶ 30, 78, 98; Spec. ¶¶ 2, 7). We agree with the Examiner that a skilled
artisan observing the similarities between Boenisch’s and Appellant’s
treatment of saturated steel, would recognize that Boenisch’s eddy current
probe would produce a penetration depth for eddy current in steel of about 1
millimeter or less (as claimed). Ans. 8–10; Final Act. 3–5, 7–11. That is
because (i) according to García-Martín, the eddy current’s penetration depth
in steel is determined by the steel’s magnetic state (e.g., substantially
magnetically saturated) and the eddy current’s excitation frequency, and (ii)
Perkins confirms a 1 mm or less eddy current penetration depth in saturated
steel subjected to 100 kHz or more. See García-Martín 23/58; Perkins 5,
Fig. 3; Ans. 8–10; Final Act. 4–5, 10–11.
Appellant contends the Examiner’s findings and conclusion of
obviousness overlook the actual disclosures and thrust of the cited

9 Appellant’s Specification explains that a ferromagnetic material such as
steel can be substantially magnetically saturated by magnetic “flux densities
. . . in the region of > 1.2 T, preferably > 1.5 T.” See Spec. ¶¶ 28 (emphasis
added), 56 (“the eddy current signal is preferably recorded at a saturation
magnetization of > 5 kA/m. . . . Magnetic flux densities starting from as low
as around 1.5 T may be sufficient” but “[i]n the case of a few metals, even
flux densities starting from 1.2 T may be sufficient”). Boenisch subjects
ferromagnetic materials such as steel to similar magnetically saturating
fields—e.g., to “magnetic field strengths [that] correspond to magnetisations
levels of up to 1.6 T within the test component itself.” See Boenisch ¶ 78
(emphasis added).
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references. See Reply Br. 1–3; Appeal Br. 6–9. For example, with respect
to Perkins, Appellant argues it “does not disclose anything close to an eddy
current device, and rather informs only about the (eddy-current-generated)
skin effects a conductor experiences during lightning pulses.” Reply Br. 2.
As such, Appellant urges that
the skin effects of Perkins are based on eddy currents imposed
due to the current in the rebar, and not by an external sensor unit
with a transmission coil. . . .
a person skilled in the art would not judge from (small) Fig. 3 [of
Perkins] that for the various ferromagnetic materials that the
present method would identify, the penetration depth is in the
proposed range. A person of ordinary skill in the art would not
rely on this information since it has nothing to do with eddy
current sensors.

Reply Br. 2–3; see also Appeal Br. 6. Appellant’s arguments are
unpersuasive for the following reasons. Although Perkins is concerned with
the effects of lightning pulses on conducting materials protected by rebar,
Perkins studies these effects by (i) modeling the lightning pulses as
electromagnetic signals with frequencies ranging from 10 Hz to 1000 kHz,
(ii) modeling rebar as magnetically saturated steel, and then (iii)
determining the induced current density and “skin depths for . . . saturated
steel . . . over the frequencies of interest for lightning pulses.” See Perkins 3,
4 (“rebar is commonly made of materials that have non-linear B-H curves,
such as steel. . . . We will model the rebar as steel 1008”), 5 (“shown [in]
Fig. 3 are the skin depths . . . over the lightning frequencies. . . . The skin
depth for steel 1008 will be bounded by the saturated and unsaturated
cases.”), Fig. 3; see also Final Act. 10–11 (citing Perkins Fig. 3); Ans. 8
(citing Perkins 5, Fig. 3). We agree with the Examiner that Perkins’ study of
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induced currents and skin depth in magnetically saturated steel would have
logically commended itself to the problem examined by Appellant’s
Specification—the problem of determining eddy currents induced in steel.
Ans. 8–9; Final Act. 4–5; Spec. ¶¶ 2–3, 5–7. As such, we are also
unpersuaded by Appellant’s arguments that Perkins is non-analogous art to
the claimed invention. See Appeal Br. 8–9. In addition, we agree with the
Examiner that Perkins’ Fig. 3 discloses a skin depth of about 1 mm or less
for saturated steel exposed to frequencies over 100 kHz, which indicates a
penetration depth of the eddy current in the metal is about 1 mm or less (as
recited in claim 1). Ans. 8–9, 15; Final Act. 4–5, 10–11. That is because the
penetration depth (of an eddy current) is commensurate with the skin depth
(as evidenced by García-Martín’s technical disclosure). See García-Martín
23/58; Ans. 8, 15; Final Act. 4–5.
With respect to Boenisch, Appellant asserts “Boenisch requires that
the eddy currents penetrate the entire depth of the material in order to detect
defects on the opposite side from the test component” such that “Boenisch
would not limit [and teaches away from limiting] the eddy current signal
to a depth of about one millimeter or less because then it would be
unable to detect defects on the opposite side of the test material.”
Appeal Br. 5, 7; see also Reply Br. 1, 3. Appellant’s support for these
contentions relies upon Figure 3 of Boenisch which, Appellant contends,
shows that “Boenisch seeks to detect defects on both sides of a material”
and, more particularly, “to detect a defect on the opposite side of the test
component 2 from the magnetizer unit 3.” Appeal Br. 4–5 (citing Boenisch
Fig. 3); see also Reply Br. 1, 3.
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The Examiner responds by finding that Boenisch teaches a non-
destructive testing technique using eddy currents to detect various surface
and near-surface defects that are not limited to defects on a test material’s
opposite side (with respect to the side of an eddy generator). Ans. 8–9, 12.
We concur with the Examiner. “[M]ere disclosure of alternative designs
does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, Boenisch does not suggest its eddy testing technique would be usable
only for defect detection at an opposite side of a test material, and does not
“require[] that the eddy currents penetrate the entire depth of the material in
order to detect defects on the opposite side from the test component” (as
Appellant argues, see Appeal Br. 7). Rather, Boenisch is broadly concerned
with “performing a Partial Saturation Eddy Current test upon the test
component 2 to evaluate a condition of the test component” and
distinguishing defects such as “wall loss,” from “material changes within the
test component. . . . [including] change in the material properties itself e.g.
electrical conductivity or changes in the grain structure, due to the effects of
fatigue within the material.” See Boenisch ¶¶ 82 (describing Fig. 3), 88; see
also id. ¶¶ 11, 37, 47, 49; Final Act. 6–8 (citing Boenisch ¶¶ 2, 46–47, 85,
88, Abstract). Because Boenisch uses eddy currents to evaluate a variety of
features or defects in ferromagnetic materials, including “changes in the
grain structure,” “wall loss,” “fatigue within the material,” and “defects . . .
produced by spark erosion, machining or drilling” (see Boenisch ¶¶ 44, 88,
95, 98), we do not consider that “Boenisch teaches away from limiting eddy
current penetration depth” in the tested materials (as Appellant argues, see
Appeal Br. 4–5).
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We are also unpersuaded by Appellant’s arguments that “combining
García-Martín with Boenisch would require changing the principle of
operation of Boenisch” and would render Boenisch inoperable or
unsatisfactory for its intended purpose. Appeal Br. 7–8; see also Reply Br.
3. Appellant’s support for these contentions relies upon Appellant’s
previous argument that “Boenisch . . . requires that the eddy currents
penetrate the entire depth of the material in order to detect defects on the
opposite side from the test component.” Id. at 7. As discussed supra, we are
not persuaded by Appellant’s argument that Boenisch requires eddy currents
that penetrate the entire depth of the test material.
Appellant also contends, for the first time in the Reply Brief:
nowhere has the Examiner addressed the step of “ascertaining an
electrical conductivity or a specific electrical resistance of the
metal wall from the data from the eddy current sensor on the
basis of reference data via an evaluation apparatus” in claim 1.
Boenisch uses only a database lookup to see whether or not the
set and measured permeability fits with anything in the database,
so as to classify the test component. There is no “electrical
conductivity or a specific electrical resistance of the metal wall”
derived from the reference data. Appellant respectfully submits
that this is because the Boenisch reference is performing a
completely different task, which would be hindered by making
the combinations proposed by the Examiner.

Reply Br. 3–4. The Reply Brief is not an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the
Examiner’s rejections, but were not. See 37 C.F.R. § 41.41(b)(2) (2012);
accord Ex parte Borden, 93 USPQ2d 1473, 1473–74 (BPAI 2010)
(informative opinion) (absent a showing of good cause, the Board is not
required to address an argument newly presented in the reply brief that could
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have been presented in the principal brief on appeal); see also Optivus
Technology, Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) (argument raised for the first time in the reply brief that could have
been raised in the opening brief is waived). The Examiner has not had an
opportunity to consider and respond to these Reply Brief arguments.
Nonetheless, we are not persuaded by Appellant’s argument in the Reply
Brief that the Examiner erred. The Final Action has addressed claim 1’s
“ascertaining” and subsequent “deriving” by a combination of García-
Martín and Boenisch. See Final Act. 7–9. Appellant’s Reply Brief
argument does not address the combination of García-Martín and Boenisch.
In addition, the Examiner has made reasonable findings with respect to the
claimed “ascertaining” and “deriving,” and has provided a reasoned
rationale to combine the teachings of García-Martín and Boenisch. See id.
Accordingly, Appellant’s arguments have not persuaded us of error in
the Examiner’s rejection of claim 1, and we sustain the Examiner’s
obviousness rejection of independent claim 1, and dependent claims 6–8, 10,
and 11 argued for their dependency. Appeal Br. 6.
With respect to the additional rejections of dependent claims 2, 3, 5, 9,
11, and 12, Appellant provides the same arguments as for claim 1, and also
argues that Veach, Hedengren, Hrubes, and Redko “are insufficient to
overcome the short comings of Boenisch, Garcia-Martin, and Perkins.”
Appeal Br. 10. Because we find Boenisch, García-Martín, and Perkins are
not deficient, Veach, Hedengren, Hrubes, and Redko are not needed to cover
any shortcomings thereof, and therefore we sustain the obviousness
rejections of dependent claims 2, 3, 5, 9, 11, and 12 for the reasons stated
with respect to the independent claim.
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CONCLUSION
The Examiner’s decision rejecting claims 1–3 and 5–12 under
35 U.S.C. § 103 is AFFIRMED.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 6–8, 10,
11
103 Boenisch, García-
Martín, Perkins
1, 6–8, 10,
11

2, 3, 12 103 Boenisch, García-
Martín, Perkins,
Veach
2, 3, 12
5 103 Boenisch, García-
Martín, Perkins,
Hedengren
5
9 103 Boenisch, García-
Martín, Perkins,
Hrubes
9
11 103 Boenisch, García-
Martín, Perkins,
Redko
11
Overall
Outcome
1–3, 5–12

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