Ex Parte Bushby

Patent Trial and Appeal Board

Feb 27, 2014

10599765 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT AND TRIAL APPEAL BOARD
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Ex parte ROGER STANLEY BUSHBY

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Appeal 2012-003140
Application 10/599,765
Technology Center 1700
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Before PETER F. KRATZ, JEFFREY T. SMITH, and
DONNA M. PRAISS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003140
Application 10/599,765

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 19, 21-24, and 31. We have jurisdiction under 35 U.S.C. § 6.
According to the Specification, page 3, the present invention relates to
a method of casting a component from a metal. Claim 19 is representative
of the appealed subject matter and is reproduced below, (emphasis added):
19. A method of casting a component from a metal having a
liquidus temperature, comprising the steps of:

a) providing a die comprising: a first part defining at least part of a die
cavity with an external opening; and a second part defining a chamber
for housing the first part, the chamber having an opening which is
registrable with the external opening of the first part when housed in
the second part;

b) heating the first part of the die to a temperature above the liquidus
temperature of the metal whilst maintaining the second part of the die
at a temperature below the liquidus temperature of the metal;

c) placing the first part of the die in the chamber of the second part
with the chamber opening registered with the external opening of the
first part;

d) introducing molten metal into the die cavity through the chamber
opening;

e) solidifying molten metal in the die cavity;

f) removing the first part of the die from the second part after
solidification, and cooling the first part independently of the second
part before removing the solidified component from the first part; and

g) providing a third part corresponding to the first part and repeating
the steps (b) to (e) with the third part in place of the first part, wherein
Appeal 2012-003140
Application 10/599,765

3
molten metal is introduced into the third part whilst cooling the first
part independently of the second part.

Appellant, App. Br. 6, requests review of the following rejection from
the Examiner’s Final Office action:
Claims 19, 21-24, and 31 are rejected under 35 U.S.C. § 103(a) as
anticipated over Donomoto (US 4,573,519, issued Mar. 4, 1986).
OPINION
After review of the positions of the Appellant and the Examiner, we
reverse the rejection of claims 19, 21-24, and 31. We add the following.
The dispositive issue is: Did the Examiner err in determining that
Donomoto would have suggested to one of ordinary skill in the art to remove
the first part of the die from the second part after solidification, and cooling
the first part independently of the second part before removing the solidified
component from the first part as required by the subject matter of
independent claim 1? 1
The Examiner’s findings appear on pages 4-7 of the Answer, Final
Office action2 2-3. To arrive at the claimed invention the Examiner finds
[I]t would have been obvious to provide a plurality of retainers
for a close loop die casting operation by continuously recycling
the salt and then use the recycled salt to make new retainers for
sequentially casting of the composite articles. Donomoto et al.
in col. 4, lines 22-24 further states that after solidification of the
aluminum alloy, the product is removed from the casting mold
5. It would have been obvious to remove the retainer 3 from the
casting mold as soon as the molten aluminum solidified such
that a new retainer may be placed into the casting mold for

1 We limit our discussion to independent claim 19.
2 Final Office action, mailed October 20, 2010.
Appeal 2012-003140
Application 10/599,765

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casting another composite article and thereby speeds up the
casting process.
(Ans. 6).
Appellant correctly argues
Donomoto fails to disclose that the retainer is cooled
independently of the casting mold before removing the
solidified component from the retainer. Rather, it appears the
Donomoto suggests letting both parts cool while the salt
“retainer” remains within the mould. Indeed, Donomoto recites
that “The molten metal is solidified in the mold to produce a
formed product in which the reinforcing material and the metal
are integrated.” Col. 3, lines 28-31. Hence, claim 19 is
distinguishable over Donomoto which fails to describe the
feature of “cooling the first part independently of the second
part before removing the solidified component from the first
part.”
(App. Br. 5).
We also agree with Appellant that the mere fact that salt can be
recycled to make new retainers in no way suggests the limitation of claim 19
of “providing a third part corresponding to the first part and repeating the
steps (b) to (e) with the third part in place of the first part, wherein molten
metal is introduced into the third part whilst cooling the first part
independently of the second part.” (App. Br. 5).
The Examiner has not identified a portion of Donomoto that would
have suggested cooling the retainer independently of the casting mold before
removing the solidified component from the retainer. Donomoto discloses
after the alloy is solidified, the metal composite including the retainer is
removed from the mold with a knock-out plunger. (Donomoto, col. 4, ll. 21-
28).
Appeal 2012-003140
Application 10/599,765

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For the foregoing reasons and those stated in the Brief, we determine
that the Examiner’s conclusion of obviousness is not supported by facts.
“Where the legal conclusion [of obviousness] is not supported by facts it
cannot stand.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, the Examiner's rejection of claims 19, 21-24, and 31 over the
combination of Donomoto is reversed.

ORDER
The decision of the Examiner to reject claims 19, 21-24, and 31 is
reversed.

REVERSED

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