Ex Parte KWANG et al

Patent Trial and Appeal Board

Jul 27, 2018

14682411 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/682,411 04/09/2015
52237 7590
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
07/27/2018
FIRST NAMED INVENTOR
LIM YUAN KW ANG
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
80758US01 (15-141) 6898
EXAMINER
YUEN,JACKY
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
07/27/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte LIM YUAN KWANG,
TAN YONG SHENG ANDREW,
MUHAMMAD AZZLI BIN MAHMOOD, and
LOH YAN SENG
Appeal2017-010485
Application 14/682,411 1
Technology Center 1700
Before BRADLEY R. GARRIS, WESLEY B. DERRICK, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-13 and 16-22. We have jurisdiction. 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellant is the Applicant, United Technologies Corporation, which
according to the Appeal Brief, is also the real party in interest. Appeal Br. 2.
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Application 14/682,411
STATEMENT OF THE CASE2
Appellant describes the invention as relating to "a die-casting mold
with an undersized cavity pattern having a refractory metal alloy layer."
Appeal Br. 6. Claim 1, reproduced below with emphases added to certain
key recitations, is illustrative of the claimed subject matter:
1. A die-casting mold, comprising:
a die insert including a near net shape mold surface
with a refractory metal alloy layer, wherein the refractory
metal alloy layer is manufactured from a compositionally
homogeneous powder mixture that is utilized in a laser
cladding operation to produce the refractory metal alloy layer.
Appeal Br. 17 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Wickliffe et al.
("Wickliffe")
Larsen
T oyserkani et al.
("Toyserkani")
Mazumder et al.
("Mazumder")
US 3,615,880 Oct. 26, 1971
US 3,656,731 Apr. 18, 1972
US 2004/0133298 Al July 8, 2004
US 2005/0038551 Al Feb. 17, 2005
2 In this Decision, we refer to the Final Office Action dated June 30, 2016
("Final Act."), the Appeal Brief filed January 30, 2017 ("Appeal Br."), the
Examiner's Answer dated June 2, 2017 ("Ans."), and the Reply Brief filed
August 1, 2017 ("Reply Br.").
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Application 14/682,411
Fukubayashi et al.
("Fukubayashi")
Bochiechio et al.
("Bochiechio ")
US 2008/0226843 Al Sep. 18,2008
US 2012/0111526 Al May 10, 2012
Jyotsna Dutta Majmndar & Indranil Manna, Laser-Assisted Fabrication of
Materials 231 (2002) ("Majmndar").
C. Y. Kong et al., The effect of average powder particle size on deposition
efficiency, deposit height and surface roughness in the direct metal laser
deposition process, 14th International Conference on Joining of Materials,
TWI Technology Centre (2007) ("Kong")
REJECTIONS
The Examiner has withdrawn all of the obviousness rejections
presented in the Final Office Action and has replaced them with new
obviousness rejections presented in the Answer. Ans. 2-17. The new
grounds are, in many respects, similar to the grounds in the Final Office
Action except that they additionally rely on the Majumdar reference.
On appeal, the Examiner maintains the Section 112 rejections
presented in the Final Office Action as well as the new grounds of rejection
presented in the Answer. In particular, the Examiner maintains the
following rejections:
Rejection 1. Claim 4 under 35 U.S.C. § 112 as indefinite. Final
Act. 3.
Rejection 2. Claim 7 under 35 U.S.C. § 112 as failing to further limit
the subject matter of the claim from which it depends. Id. at 4.
New Rejection 1. Claims 1-9 and 11 under 35 U.S.C. § 103 as
unpatentable over Larsen in view ofMazumder and Majumdar. Ans. 2.
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New Rejection 2. Claims 4 and 6 under 35 U.S.C. § 103 as
unpatentable over Larsen in view of Mazumder and Majumdar and further in
view ofBochiechio. Id. at 7.
New Rejection 3. Claim 10 under 35 U.S.C. § 103 as unpatentable
over Larsen in view of Mazumder and Majumdar and further in view of
Wickliffe. Id. at 8. 3
New Rejection 4. Claim 21 under 35 U.S.C. § 103 as unpatentable
over Larsen in view of Mazumder and Majumdar and further in view of
Toyserkani. Id. at 9.
New Rejection 5. Claims 12, 13, and 16 under 35 U.S.C. § 103 as
unpatentable over Larsen in view of Mazumder and Majumdar and further in
view ofFukubayashi. Id. at 10.
New Rejection 6. Claims 17-20 under 35 U.S.C. § 103 as
unpatentable over Larsen in view of Mazumder, Majumdar, and
Fukubayashi and further in view of Kong. Id. at 13.
New Rejection 7. Claim 22 under 35 U.S.C. § 103 as unpatentable
over Larsen in view of Mazumder, Majumdar, and Fukubayashi and further
in view of Toyserkani. Id. at 15.
Additionally, Appellant does not dispute what it refers to as a "double
patenting rejection." Appeal Br. 15. The Examiner, however, clarifies that
there is no double patenting rejection. Ans. 25. We therefore do not address
the issue.
3 The first named inventor of this reference is "Ronald L. Barto Wickliffe."
Examiner refers to Wickliffe as "Barto."
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ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t
has long been the Board's practice to require an applicant to identify the
alleged error in the examiner's rejections."). After considering the evidence
presented in this Appeal and each of Appellant's arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Rejections 1 and 2. The Examiner rejects claim 4 as indefinite
because it includes the trade name Anivloy®. Final Act. 3. The Examiner
rejects claim 7 because the claim does not limit claim 1. Id. at 4. Appellant
does not respond to these rejections. Ans. 18. Because Appellant does not
identify error, we sustain the rejections.
New Rejection 1, claims 1, 4--7, and 11. The Examiner rejects claims
1-9 and 11 under 35 U.S.C. § 103 as unpatentable over Larsen in view of
Mazumder and Majumdar. Ans. 2. The Appellant's Reply Brief responds to
the Examiner's new grounds of rejection raised in the Answer, and the
Appellant also refers to Appellant's response to Ground 1 in the Appeal
Brief. Reply Br. 2--4. Below, we consider Appellant's arguments in both
briefs.
In the Reply Brief, Appellant does not argue any claim or ground
separately. Reply Br. 2--4. We therefore, consistent with the provisions of
37 C.F.R. § 4I.37(c)(l)(iv) (2013), consider these arguments in the context
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of claim 1. In the Appeal Brief, Appellant argues claim 1 individually,
argues claims 2 and 3 as a group, and argues claims 8 and 9 as a group.
Appeal Br. 9-11. We therefore consider claims 1, 2, and 8. Claims 4--7 and
11 stand or fall with claim 1, claim 3 stands or falls with claim 2, and 8
stands or falls with claim 7.
As to claim 1, the Examiner finds that Larsen teaches a die-casting
mold "including a near net shape mold surface ... with refractory metal
alloy layer. ... " Ans. 2 ( citing Larsen). The Examiner finds that Larsen is
silent as to the metal layer being made from a compositionally homogeneous
powder mixture utilized in a laser cladding operation. Id.
The Examiner finds that Mazumder teaches forming a work-engaging
surface using direct-metal deposition through use of a laser that receives a
stream of powdered metal. Id. at 3 (citing Mazumder). The Examiner
determines that it would have been obvious to apply the metal layer of
Larsen via the method of Mazumder because Mazumder' s process "includes
feedback monitoring to control the dimensions and overall geometry of the
fabricated section, eliminating intermediate machinery and reducing final
machinery." Id. at 3 (citing Mazumder ,r 4).
The Examiner finds that Majumdar teaches direct laser cladding and
mixing powders for cladding by ball mixing. Id. at 3--4 ( citing Majumdar).
The Examiner determines that it would have been obvious to form the alloy
of Larsen "by mixing in a ball mill prior to laser cladding, as a conventional,
functionally equivalent, alternative." Id. at 4.
Appellant argues that the cited references do not disclose or suggest a
near net shape. Appeal Br. 9-10. The Examiner construes "near net shape"
as meaning a casting that is close to the final shape thus reducing the need
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for surface finishing (Ans. 18), and Appellant does not refute this
construction (see generally Appeal Br.; Reply Br.). The Examiner further
explains that "near net shape" encompasses net shape. Ans. 19. We agree.
Any die casting process will necessarily result in some imperfections, but a
result reasonably close to perfect may nonetheless be considered near net
(i.e., final or close to final).
The Examiner finds that Larsen teaches or suggests die casting
products in a near net shape. Ans. 18-19. In particular, Larsen states that
"[t]he shape of the [die] cavity as shown in FIG. 1 is by way of illustration
only, the particular shape being cast being dependent upon the shape of the
part desired." Larsen 2:37--40; see also Ans. 18-19 (citing Bochiechio ,r 2
as further supporting that die casting in near net shape was known in the art);
Bochiechio ,r 2 ("Die casting involves injecting molten metal directly into a
reusable die to yield a net-shaped component."). The preponderance of the
evidence thus supports the Examiner's finding that Larsen teaches or
suggests that its die insert will include a near net shape mold surface.
Appellant does not present evidence or persuasive argument as to why this
finding is in error.
Appellant also argues, in the Appeal Brief, that Larsen and Mazumder
do not teach use of a compositionally homogenous mixture. Appeal Br. 10.
This argument is unpersuasive in view of the new rejection which references
the teachings of Majumdar regarding a homogenous powder mixture. Ans.
3--4.
Appellant argues in the Reply Brief that there is no proper motivation
to combine the teachings of Majumdar with Larsen and Mazumder and that
such a combination is hindsight. Reply Br. 2-3. The Examiner, however,
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found that Majmndar, like Mazmnder, discloses a laser cladding process.
Appeal Br. 3--4. The Examiner provides a reason to combine in stating that
mixing in a ball mill prior to laser cladding (as taught by Majumdar) is a
conventional, functionally equivalent alternative that could be used with the
Mazumder process. Ans. 4. Appellant presents no persuasive argument as
to why this determination is in error.
Because Appellant's arguments do not identify reversible error, we
sustain the Examiner's rejection of claims 1, 4--7, and 11.
Rejection 1, claims 2 and 3. Claim 2 recites, "The mold as recited in
claim 1, wherein the mold surface is undersized with respect to a
workpiece." Appeal Br. 17 (Claims App.). Appellant argues that the
Examiner has not explained how this recitation is met. Appeal Br. 11. As
explained above, however, the Examiner found that Larsen's die with the
metal molding surfaces results in a near net shape. The die absent the metal
molding surfaces must therefore be undersized relative to desired shape.
We also agree with the Examiner that the language of claim 5 does
not positively define the mold itself. Ans. 5. Rather, for any size mold, a
work piece may exist that is the larger, smaller, or the same size as the mold.
Accordingly, Appellant's argument does not identify reversible error
and we sustain the rejection of claims 2 and 3.
New Rejection 1, claims 8 and 9. Claim 8 recites "[t]he mold as
recited in claim 7, wherein the compositionally homogeneous powder
mixture includes tungsten (W) powder of less than about 44 microns particle
size and other powders of less than about 7 4 microns particle size." Appeal
Br. 18 (Claims App.).
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The Examiner correctly determines that claim 8 includes a product by
process recitation. Ans. 21. Claim 1 states that the "refractory metal alloy
layer is manufactured from a compositionally homogeneous powder
mixture" and claim 8 further defines the powder that is used for
manufacture.
Because claim 1 includes a product-by-process recitation,
"determination of patentability is based on the product itself," not on "its
method of production." In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
"If the product in a product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable even though the prior
product was made by a different process." Id.
Appellant presents no argument that the product (here, the die-casting
mold having the refractory metal layer) is different than that of the prior art.
Appeal Br. 11. Accordingly, Appellant does not identify reversible error,
and we sustain the rejection of claims 8 and 9.
New Rejections 2 and 3, claims 4, 6, and 10. Appellant does not
separately argue these rejections. Therefore, consistent with 37 C.F.R.
§ 4I.37(c)(l)(iv) (2013), we group these claims with claim 1 and sustain this
rejection for the reasons explained above.
New Rejection 4, claim 21. Claim 21 recites, "The mold as recited in
claim 1, wherein a hardness is controlled by a fine microstructure in the
refractory alloy layer." Appeal Br. 19 (Claims App.).
The Examiner rejects claim 21 under 35 U.S.C. § 103 as unpatentable
over Larsen in view of Mazumder and Majumdar and further in view of
Toyserkani. Ans. 9. The Examiner finds that Toyserkani discloses the
advantages of laser cladding with fine scaled micro structures resulting in
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high hardness. Ans. 9. The Examiner determines that it would have been
obvious to apply the teachings of Toyserkani to Larsen, Mazumder, and
Majumdar, to control microstructure to reach a desired hardness. Id.
Appellant argues that Toyserkani is directed to a "completely different
process than die casting." Appeal Br. 12. Appellant's argument is off-point.
Larsen teaches a die-casting mold with a metal refractory layer. Mazumder
and Majumdar teach laser cladding processes that could be used to make the
metal refractory layer. Toyserkani teaches a refinement of such a cladding
process. The Examiner presents many reasons why a person of skill would
follow Toyserkani to improve the laser cladding process used to form the
die-casting mold (Ans. 22), and Appellant does not persuasively dispute
these findings. Because Appellant does not identify error, we sustain this
rejection.
New Rejection 5, claims 12, 13, and 16. Claim 12 is an independent
claim and is reproduced below:
12. A method of manufacturing a die-casting mold, comprising:
machining a mold surface of a die insert such that the mold
surface is undersized with respect to a desired near net shape with
respect to a workpiece;
applying a refractory metal alloy layer onto the die insert to
form a near net shape wherein the refractory metal alloy layer is
manufactured from a compositionally homogeneous powder mixture
that is utilized in a laser cladding operation to produce the refractory
metal alloy layer; and
performing a post-clad machining operation to finalize the near
net shape mold surface with respect to the workpiece.
Appeal Br. 18 (Claims App.).
The Examiner rejects claims 12, 13, and 16 under 35 U.S.C. § 103 as
unpatentable over Larsen in view of Mazumder and Majumdar and further in
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view of Fukubayashi. Id. at 10. Appellants argue claims 12 and 13 as a
group. See Appeal Br. 13. Claim 16 depends from claim 12, and Appellants
do not separately argue claim 16. Therefore, consistent with the provisions
of 37 C.F.R. § 4I.37(c)(l)(iv) (2013), we limit our discussion to claim 12,
and claims 13 and 16 stand or fall together with claim 12.
In addition to providing findings similar to those of claim 1, the
Examiner finds that Fukubayashi teaches laser cladding and, after laser
cladding, machining to reach a desired dimension. Ans. 10-12. The
Examiner determines that it would have been obvious to machine as taught
by Fukubayashi in order to achieve desired dimensions. Id. at 12.
Appellant argues that Examiner's position is inconsistent with claim
12 's "near net shape" recitation. Appeal Br. 13. Appellant's argument is
not persuasive as we agree with the Examiner that it would have been
obvious to further machine the product to reach something that provides a
die casting even closer to net shape (as taught by Fukubayashi). Ans. 23.
Appellant's argument does not identify reversible error in this reasoning, and
we sustain this rejection.
New Rejection 6, claims 17-20. Appellant does not present
substantively distinct arguments for any of these claims. Appeal Br. 14--15
(arguing these claims under headings "Ground 4" and "Ground 5"). We
therefore limit our discussion to claim 17.
Claim 17 recites, "The method as recited in claim 12, further
comprising ball milling a powder mixture including tungsten (W) powder of
less than about 44 microns particle size, and other powders of less than
about 74 microns particle size to form the compositionally homogeneous
powder mixture." Appeal Br. 19 (Claims App.).
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The Examiner finds that Kong teaches that for laser cladding ( as in
Mazumder and Majumdar) average particle size effects deposition
efficiency, height, and surface roughness. Ans. 13 (citing Kong). The
Examiner thus determines that powder particle size is a result-effective
variable and that it would have been obvious to optimize particle size. Id.
at 14.
Appellant argues in essence that a person of skill in the art would not
look to the Kong reference. Appeal Br. 14. The Examiner finds, however,
that Kong relates to a metal laser deposition process and teaches powder
particle size affects process efficiency and the resulting product's
characteristics. Ans. 14. A person employing Mazumder and Majumdar
would therefore naturally look to Kong to optimize such a process.
Appellant also argues that the Examiner's "result-effective variable"
rationale is in error because "almost anything is a 'result-effective
variable."' Appeal Br. 14. The Examiner's result-effective variable
rationale, however, is consistent with legal precedent. See, e.g, In re Aller,
220 F.2d 454,456 (CCPA 1955) ("where the general conditions of a claim
are disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation."); see also In re Boesch, 617
F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the
art.").
Appellant's argument does not establish reversible error, and we
sustain this rejection.
New Rejection 7, claim 22. Claim 22 is similar to claim 21 except
that it depends from independent claim 12. Appellant reiterates arguments
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made with respect to claim 21. Appeal Br. 15. Those arguments do not
identify error for the reasons explained above. We sustain this rejection.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1-13 and 16-22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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