Ex Parte McCrink et alDownload PDFPatent Trial and Appeal BoardMay 29, 201511526258 (P.T.A.B. May. 29, 2015) Copy Citation 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. 11/526,258 09/22/2006 Edward J. McCrink 816-P-6-USA 1911 71850 7590 06/01/2015 RUSSO & DUCKWORTH , LLP 9090 IRVINE CENTER DRIVE , SECOND FLOOR IRVINE, CA 92618 EXAMINER YOON, KEVIN E ART UNIT PAPER NUMBER 1735 MAIL DATE DELIVERY MODE 06/01/2015 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 __________ Ex parte EDWARD J. McCRINK and DANNY CODD __________ Appeal 2013-002127 Application 11/526,258 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and ROMULO H. DELMENDO, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1–19 under 35 U.S.C. § 103(a) as unpatentable over McCrink1 in view of Callister2 and Narula.3 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and designate our affirmance a new ground of rejection. 1 WO 96/27456, published September 12, 1996. 2 The Examiner identifies “Callister” as “Materials science and engineering: an introduction, John Wiley & Sons, 1994, p. 333.” Final Office Action dated April 25, 2011 (“Final”), at 3. 3 The Examiner identifies “Narula” as “Materials science, McGraw-Hill, 1989, pp. 174-175.” Final 3. Appeal 2013-002127 Application 11/526,258 2 The subject matter on appeal is directed to a method of manufacturing multi- component structural members for a wide variety of load bearing applications including planes, trains, boats, bridges, building reinforcements, and automobiles. Spec. 1, ll. 11–13. Representative claim 1 is reproduced below from pages 1–2 of the Claims Appendix of the Appeal Brief dated June 29, 2012 (“App. Br.”).4 1. A method of manufacturing a multi-component structural part comprising the steps of: providing a first air hardenable martensitic stainless steel blank in the annealed condition having a thickness of 0.5 millimeters – 5.0 millimeters; forming the first steel blank while in an annealed condition by stamping, pressing, cold drawing, or roll forming into a first structural component; providing a second structural component which is made of a ferrous steel, stainless steel or nickel steel alloy; positioning the first component adjacent to the second component; selecting a copper based brazing compound capable of brazing two structural components together at between 925ºC and 1200ºC[5]; depositing the copper based brazing compound between the first component and the second component; and brazing the first component and the second component together while simultaneously hardening at least the first component to a Rockwell C hardness of 39 or greater by heating the first component and the second component to between 925ºC and 1200ºC and above 4 The Appellants indicate that the claims stand or fall together. App. Br. 9. Thus, for purposes of this appeal, claims 2–19 stand or fall with the patentability of claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011). 5 According to the Appellants, claim 13, the other independent claim on appeal, “is identical [to claim 1] except for the temperature range for the brazing/hardening step [which] has been narrowed to between 950ºC and 1100ºC.” App. Br. 9. Appeal 2013-002127 Application 11/526,258 3 the first component’s upper critical temperature, and subsequently air cooling the structural member at a rate of 25ºC/minute or greater from when the first component is above its upper critical temperature until at least the first component is fully hardened. B. DISCUSSION McCrink discloses a method of manufacturing hollow air hardenable stainless steel shafts, tubing, and pipe.6 McCrink 6, ll. 2–3. McCrink discloses that the term “air-hardenable” means “heat treating to a proper temperature and cooling in a protective, non-oxidative atmosphere as opposed to hardening with a liquid quench.”7 McCrink 6, ll. 18–21. According to the method disclosed in McCrink, air hardened stainless steel components are fitted together, and joints of the components are contacted with a brazing material. McCrink discloses that a preferred brazing material is copper. McCrink 7, ll. 25–30. The assembly is placed in a controlled atmosphere furnace, and the components are brazed and hardened. McCrink 4, ll. 21–26. In a preferred embodiment, the assembly is brazed and hardened in the same brazing temperature cycle. McCrink 8, ll. 3–4; see also App. Br. 10 (McCrink “describes depositing a brazing compound to braze and simultaneously harden the components.”). McCrink discloses that “[t]he temperature range appropriate for brazing and hardening air hardenable stainless [steel] in the same brazing temperature cycle . . . 6 McCrink discloses that the invention may be produced from both strip stock and sheet, annealed or not, depending upon the desired shape and size of the components. McCrink 6, ll. 35–38. 7 McCrink discloses that “[o]f the stainless steels, only martensitic is air hardenable.” McCrink 2, ll. 25–26. Appeal 2013-002127 Application 11/526,258 4 is 1850-2000 ºF.”8 McCrink 8, ll. 5–7. The assembly “is then allowed to cool, at which time the martensitic stainless steel will harden.”9 McCrink 8, ll. 16–18. The cooling step is described in McCrink as follows: In a preferred embodiment of the present invention, the workpiece is introduced into an ambient temperature chamber with a non-oxidative atmosphere for cooling. In some embodiments, the ambient temperature chamber will be water-jacketed. With respect to the non-oxidative atmosphere, inert gas, hydrogen gas and vacuum environments are contemplated. McCrink 6, ll. 26–31. The Examiner finds McCrink does not expressly disclose the cooling rate recited in claim 1. Nonetheless, the Examiner relies on Callister and Narula to show that the claimed cooling rate is a result-effective variable. Ans. 7–8.10 The Appellants argue that McCrink does not suggest employing blanks having a thickness of 0.5 mm to 5.0 mm as recited in claim 1. App. Br. 15. We disagree. McCrink discloses that “[t]he thickness of the segments may be as thin as 0.005 inches” (i.e., 0.127 mm). McCrink 8, ll. 22–23 (emphasis added). Thus, we find McCrink teaches a range of thicknesses (i.e., greater than or equal to 0.127 mm) that overlaps the claimed range. Where, as here, the difference between the claimed invention and the prior art is a range, “the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); see 8 The Examiner finds the first component is heated to above its upper critical temperature as recited in claim 1. Ans. 6. 9 The Examiner finds the assembly is cooled from when the first component is above its upper critical temperature until at least the first component is fully hardened as recited in claim 1. Ans. 6. 10 Examiner’s Answer dated September 17, 2012. Appeal 2013-002127 Application 11/526,258 5 also In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (even a slight overlap in range establishes a prima facie case of obviousness). Significantly, the Appellants do not direct us to any evidence demonstrating that a thickness of 0.5 mm to 5.0 mm is critical. The Appellants also argue that McCrink does not suggest air cooling the components. Instead, the Appellants argue that the water-jacketed environment described in McCrink contains a “‘non-oxidizing atmosphere.’” App. Br. 11, 12 (citing McCrink 8, ll. 18–19). The Appellants’ argument is not persuasive of reversible error. According to the Appellants’ Specification: [T]he terms “air cooling” and “air quenching” are intended to be interpreted broadly so as to include the implementation of protective atmospheres including nitrogen, argon, disassociated ammonia, or even a lack of an oxidizing atmosphere such as in a vacuum furnace, but to not include liquid quenching. Spec. 18, ll. 14–17 (emphasis added). Based on this disclosure, we interpret the term “air cooling” as recited in claim 1 to include the non-oxidative atmosphere described in McCrink which expressly includes a vacuum environment. McCrink 6, ll. 26–31; see also In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (during examination, “claims [must be given] their broadest reasonable construction consistent with the specification”). Next, claim 1 recites the step of “selecting a copper based brazing compound capable of brazing two structural components together at between 925ºC and 1200ºC.” McCrink discloses that copper is a preferred brazing material and discloses a brazing temperature within the claimed range. See McCrink 7, l. 29 (“[p]referably copper is used”); McCrink 8, ll. 5–7 (disclosing a brazing Appeal 2013-002127 Application 11/526,258 6 temperature range of 1850–2000ºF).11 The Appellants do not dispute this disclosure in McCrink. See, e.g., Codd Declaration ¶ 15 (recognizing McCrink discloses that a copper based brazing compound is a suitable brazing compound);12 Codd Declaration ¶ 18 (stating that “McCrink suggests . . . a brazing compound, such as copper based, suitable for use between 925ºC and 1200ºC”). Rather, the Appellants argue that McCrink discloses that other brazing materials such as brass and silver alloy combinations are also contemplated. App. Br. 15; see also McCrink 7, ll. 29–30. Moreover, the Appellants rely on paragraphs 15–18 of the Codd Declaration to show that brazing compounds other than copper were known to be suitable for brazing air hardenable martensitic stainless steel at temperatures outside the claimed range. App. Br. 15. Based on this evidence, the Appellants argue that the selection of a copper brazing compound for brazing stainless steel at a temperature within the claimed temperature range is not “automatic.” App. Br. 15; see also Codd Declaration ¶ 17 (stating that selection of a brazing compound capable of being utilized within the claimed temperature range is not “inevitable” based on the teachings of McCrink). Significantly, obviousness does not require that a particular selection be automatic or inevitable. Cf. In re Wilding, 535 F.2d 631, 636 (CCPA 1976) (for the doctrine of inherency to apply, a particular condition must be inevitable). In this case, there is no dispute that McCrink discloses that copper is suitable for brazing air hardenable martensitic stainless steel at temperatures within the claimed range. Thus, it is of no moment in the § 103(a) rejection on appeal that other brazing materials as outlined in the Codd Declaration were also known to be 11 The Examiner finds, and the Appellants do not dispute, that “1850-2000ºF = 1010–1093ºC.” Ans. 6. 12 Third Declaration of Danny Codd under 37 C.F.R. §1.132 dated March 7, 2011. Appeal 2013-002127 Application 11/526,258 7 suitable for brazing air hardenable martensitic stainless steel. See Merck & Co., Inc. v. Biocraft Labs. Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (that the prior art “discloses a multitude of effective combinations does not render any particular formulation less obvious. This is especially true because the claimed composition is used for the identical purpose taught by the prior art.”). Although McCrink does not disclose the entire temperature range recited in claim 1 (i.e., “between 925ºC and 1200ºC”), the temperature range disclosed in McCrink (i.e., 1850–2000ºF) falls within the claimed range.13 As pointed out above, where the difference between the claimed invention and the prior art is a range, “the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.” Woodruff, 919 F.2d at 1578; see also Peterson, 315 F.3d at 1329 (even a slight overlap in range establishes a prima facie case of obviousness). Significantly, the Appellants do not direct us to any evidence demonstrating that the claimed temperature range is critical. Finally, we turn our attention to the cooling rate recited in claim 1. The Appellants argue that McCrink teaches away from the claimed cooling rate of “25ºC/min. or greater” because McCrink discloses that cooling “may be accomplished using an ambient temperature environment.” App. Br. 15–16 (citing McCrink 6, ll. 26–27). A reference teaches away from a claimed invention when a proposed modification renders the invention disclosed in the reference inoperable for its intended purpose. In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984). In this case, McCrink discloses that “the workpiece is introduced into an ambient temperature 13 Similarly, the temperature range disclosed in McCrink falls within the temperature range recited in claim 13 (i.e., “between 950ºC and 1100ºC”). Appeal 2013-002127 Application 11/526,258 8 chamber with a non-oxidative atmosphere for cooling.” McCrink 6, ll. 26–28 (emphasis added). Moreover, during cooling, McCrink discloses that “martensitic stainless steel will harden.”14 McCrink 8, ll. 16–18. The Appellants do not direct us to any evidence demonstrating that cooling at the rate recited in claim 1 would have rendered the method of McCrink inoperable for its intended purpose. Thus, McCrink cannot be said to teach away from the claimed cooling rate. The Examiner relies on Callister and Narula as evidence that the claimed cooling rate is a result-effective variable. Ans. 7–8. Specifically, the Examiner finds Callister and Narula show that the “quenching medium affects the cooling rate and the cooling rate of steel affects the occurrence of deformation and phase transformation.” Ans. 7. The Examiner concludes that one of ordinary skill in the art would have determined an optimum cooling rate in McCrink based on the teachings of Callister and Narula “which does not cause thermal shock or crack (upper limit of cooling rate) but transform[s] all austenite into martensite (lower limit of cooling rate), and use[s] appropriate quenching medium for optimum cooling rate.” Ans. 7–8; see also Ans. 13–14. The Appellants do not direct us to any error in the Examiner’s findings as to Callister or Narula. Instead, the Appellants argue that one of ordinary skill in the art would not have understood that an optimal cooling rate exists for air hardenable stainless steel. App. Br. 16. The Appellants argue that “the mind set of those skilled in the art [at the time of the Appellants’ invention was] that air hardenable martensitic stainless steels are not suitable for high strength applications where brazing is employed.” App. Br. 16–17 (citing Codd Decl. ¶ 21 and article entitled 14 Similarly, the Appellants disclose that the purpose of air quenching or cooling at the claimed rate is “to obtain a fully hardened condition.” Spec. 11, ll. 18–20. Appeal 2013-002127 Application 11/526,258 9 “Copper brazing response of some advanced high strength steel grades” attached to the Codd Declaration). Significantly, the Appellants have not directed us to any portion of the article attached to the Codd Declaration discussing the type of martensitic stainless steel disclosed in McCrink. See McCrink 6, ll. 15–16, 32–34 (disclosing that the present invention may be produced from 410, 420, 431, or 440 stainless steel).15 McCrink expressly discloses that assemblies formed from air hardenable martensitic stainless steel are brazed and cooled, at which time the martensitic stainless steel will harden. See McCrink 8, ll. 2–3, 16–18. The disclosed method is said to apply to “products and assemblies where a high strength to weight ratio is needed: racing automobile frames, aircraft frames, battery operated automobiles and golf carts, ladders, street lamps and other support structures.” McCrink 13, ll. 7–10; compare Appellants’ Spec. 8, ll. 9–11 (disclosing that the invention is directed to a method of manufacturing “load bearing structural members for use within planes, trains, boats, bridges, building reinforcements, automobiles, and trucks”). Thus, on this record, a preponderance of the evidence supports a finding that one of ordinary skill in the art would have optimized the cooling rate in the method of McCrink to form a hardened assembly suitable for the disclosed uses. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art”). The Examiner does not find that McCrink hardens at least the first component of the assembly to a Rockwell C hardness of 39 or greater as recited in claim 1. Nonetheless, we find that the assemblies formed in McCrink and the 15 Similarly, the Appellants disclose that “[p]referred air-hardenable martensitic stainless steels include types 410, 420 and 440.”). Spec. 8, ll. 17–18. Appeal 2013-002127 Application 11/526,258 10 structural members formed by the Appellants’ method are used for similar purposes. Thus, we find that one of ordinary skill in the art would have expected McCrink’s assemblies and the Appellants’ structural members to have substantially the same hardness. The Appellants have not offered any evidence to the contrary. For the reasons set forth above, the § 103(a) rejection of claims 1–19 is affirmed. We designate the affirmance a new ground of rejection because our reasons for affirming the § 103(a) rejection on appeal differ from the reasons set forth in the Examiner’s Answer. In particular, the Examiner’s Answer does not discuss the Codd Declaration or the article attached thereto. That evidence, however, has been considered in this Decision on Appeal. See In re Stepan Co., 660 F.3d 1341, 1346 (Fed. Cir. 2011) (“Had the Board labeled its rejection as a new ground of rejection, Stepan could have reopened prosecution to address the newly-alleged deficiencies in its Declaration with the examiner.”) C. DECISION The rejection of claims 1–19 under 35 U.S.C. § 103(a) is affirmed and designated a new ground of rejection under 37 CFR § 41.50(b), which provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . Appeal 2013-002127 Application 11/526,258 11 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED; 37 C.F.R. § 41.50(b) cdc Copy with citationCopy as parenthetical citation