Ex Parte Park et alDownload PDFPatent Trial and Appeal BoardMay 25, 201613293198 (P.T.A.B. May. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/293, 198 11/10/2011 80944 7590 05/27/2016 Hoffman Warnick LLC 540 Broadway 4th Floor Albany, NY 12207 FIRST NAMED INVENTOR Junyoung Park 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. 252003-1 1000 EXAMINER YOON, KEVIN E ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 05/27/2016 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): ptocommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JUNYOUNG PARK, JASON ROBERT PAROLINI, and JON CONRAD SCHAEFFER Appeal2014-008709 Application 13/293,198 Technology Center 1700 Before: PETER F. KRATZ, KAREN M. HASTINGS, and AVEL YN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-8, 10-15, and 21-23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In our decision below, we refer to the Final Office Action appealed from, dated October 16, 2013 (Final Act.), the Appeal Brief filed March 14, 2014 (Appeal Br.), the Examiner's Answer filed May 8, 2014 (Ans.), and the Reply Brief Filed June 8, 2014 (Reply Br.). 2 Appellants identify the real party in interest as General Electric Company. Appeal2014-008709 Application 13/293,198 STATEMENT OF CASE The claims are directed to a mold for electromagnetically stirred sand casting systems. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A mold comprising a mold body having a cavity therein, the mold body further comprising: a passageway fluidly connecting the cavity with an exterior of the mold body, wherein the passageway allows for introduction of a molten metal into the cavity, wherein the cavity has an irregular three-dimensional shape in the form of a turbine component; at least one induction coil embedded in a cope of the mold body; and at least one induction coil embedded in a drag of the mold body, wherein the at least one induction coil embedded in the cope of the mold body, and the at least one induction coil embedded in the drag of the mold body further include a round or a rectangular cross sectional shape, and a thickness of about 30mm. Claims Appendix at Appeal Br. 17. REJECTIONS The Examiner made the following rejections: A. Claims 1--4, 6-8, 10-13, 15, 21 and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over 2 Appeal2014-008709 Application 13/293,198 Sumida3 in view of Hua,4 Ferguson5 and Induction Heating Fundamentals. 6 Final Act. 2-3. B. Claims 5, 14, and 23 stand rejected under 35 U.S.C § 103(a) as being unpatentable over Sumida in view of Hua (or Hua in view of Sumida), and in further view of Ferguson and Induction Heating Fundamentals, and in further view of Christensen.7 Id. at 8. Appellants' arguments are directed to independent claims 1, 10 and 23. Appellants do not present separate argument regarding the dependent claims, and as a consequence, dependent claims 2-8, 11-15, and 21-22 stand or fall with the claims from which they depend. 8 To resolve the issues on appeal, we focus our discussion on claims 1, 10 and 23. OPINION Upon consideration of the evidence on this record and each of Appellants' contentions, we find that the preponderance of the evidence 3 Sumida, US 4,605,054, issued August 12, 1986 (hereinafter "Sumida"). 4 Hua et al., US 2010/0025005 Al, published February 4, 2010 (hereinafter "Hua"). 5 Ferguson et al., US 2010/0159197 Al, published June 24, 2010 (hereinafter "Ferguson"). 6 Induction Heating Fundamentals, Ameritherm Inc., http://ameritherm.com/ aboutinduction. php [http://web.archive.org/web/200902 l 6045633/http://ameritherm.com/abouti nduction. php] (hereinafter "Induction Heating Fundamentals"). 7 Christensen, US 5,062,386, issued November 5, 1991 (hereinafter "Christensen"). 8 We note that Appellants do argue that the frequency limitation of claim 23 similarly distinguishes claims 7 and 15 from the prior art. Therefore, our discussion of claim 23 below applies to claims 7 and 15 as well. 3 Appeal2014-008709 Application 13/293,198 supports the Examiner's conclusion that the subject matter of Appellants' claims are unpatentable over the applied prior art. We sustain the Examiner's § 103 rejections for the reasons set out by the Examiner and add the following for emphasis. Rejection A - Obviousness The Examiner rejects claims 1 and 10 as obvious in light of Sumida, Hua, Ferguson and Induction Heating Fundamentals. Appeal Br. 3--4 and 7. The Examiner finds that each of Sumida and Hua teach a mold having a mold body with a cavity with a passageway fluidly connecting the cavity with the exterior of the mold and allowing for the introduction of molten metal into the cavity. Id. at 3. The Examiner also finds Sumida teaches induction coils embedded in both the cope and drag of the mold body and that the induction coils have a round cross sectional shape. Id. Hua additionally teaches, according to the Examiner, that the cavity has an irregular three-dimensional shape in the form of a turbine component. Id. The Examiner acknowledges that neither Sumida nor Hua teach that the induction coils have a thickness of about 30 mm. Id. at 4. But, the Examiner finds that Ferguson discloses induction coils having a 25.4 mm diameter and that, according to the teachings of Induction Heating Fundamentals, the size and thickness of the coil is a result effective variable. Id. at 5. Appellants argue that: (1) no motivation exists to combine Sumida, Hua, Ferguson, and "Induction Heating"9 (Id. at 8); (2) that an induction coil 9 Appellants' reference to "Induction Heating" specifically refers to Da Wei Induction Heating Machine Co. Appeal Br. at 6, n. 85. This is not the same reference relied upon by the Examiner in Rejection A. See Final Act. 2-3. 4 Appeal2014-008709 Application 13/293,198 having a diameter or thickness of 30 mm yields unexpected and significant benefits (Id. at 9; Reply Br. 3--4); and (3) there is no teaching in the art that the induction coils "are configured to generate an electromagnetic field for stirring the molten metal during solidification of the molten metal" as required by claim 10 (Id. 9-10). First Appellants argue that a skilled individual would not combine Sumida and Hua with Ferguson to obtain an induction coil with "a thickness of about 30 mm", as required by claims 1 and 10. We are not persuaded. As correctly found by the Examiner, "Ferguson disclose[s] [a] 25.4 mm diameter (thickness) induction coil element to heat a mold and a cavity (para. 46 & 47)" and Induction Heating Fundamentals "discloses that the size of the coil affects the heat pattern and efficiency of the induction system .... [t]herefore, the size of the coil, and also the thickness of the induction coil is a result effective variable." Final Act. 5. "A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective." In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). It is well settled that, generally speaking, it would have been obvious for an artisan with ordinary skill to develop workable or even optimum ranges for result-effective parameters. In re Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955); In re Woodruff, 919 F.2d 1575, 1577-78 (Fed. Cir. 1990)(where the difference between the claimed invention and the prior art is some 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). Appellants have not adequately explained why one skilled in the art would not have adjusted the thickness of the induction coil of Sumida, through 5 Appeal2014-008709 Application 13/293,198 routine experimentation, to the claimed size of 30mm, particularly in light of Induction Heating Fundamentals' recognition that the size of induction coil affects the heat pattern and efficiency of the system. Second, Appellants argue that "a mold having an induction coil with a cross sectional diameter of about 30 mm results in significant benefits in material properties of the casting." Appeal Br. 9; Reply Br. 3--4. Appellants also disagree with the Examiner's characterization of the simulation results as "clearly linear" when plotting the diameter of the induction coil against certain measured properties. Reply Br. 4. Like the Examiner, we do not find Appellants simulation data convincing. Induction Heating Fundamentals teaches that the size of the induction coil is a result effective variable. Induction Heating Fundamentals, p. 2. Appellants simulation results shows just that, a relationship---whether linear or not-between the certain properties and the thickness of the induction coil. See Declaration of Junyoung Park, February 14, 2013, i-fi-18-10. On this record, Appellants have not adequately shown why the evidence relied upon establishes criticality of 30mm for the thickness of the induction coil nor have Appellants shown the results to be unexpected. Next, Appellants argue that the Examiner's combination does not teach that the induction coils "are configured to generate an electromagnetic field for stirring the molten metal during solidification of the molten metal" as required by claim 10. Appeal Br. 10. Appellants point to one embodiment of Sumida that states "the conductor or electromagnetic coil 4 not only heats the molten metal [in a] direct manner but also heats the molten metal [in a] indirect manner by heating the mold 8." Id. 6 Appeal2014-008709 Application 13/293,198 Again, we are not persuaded of reversible error by the Examiner. The Examiner aptly finds that the mold of Sumida, as modified by Hua, Ferguson and Induction Heating Fundamentals, and the mold claimed by the instant application are structurally the same. Final Act. 7. Therefore, the mold body would similarly be capable of generating and electromagnetic field for stirring molten metal during the solidification process. Id. It is well established when there is a reason to conclude that the structure of the prior art is capable of performing the claimed function, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, e.g., In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Appellants' mere allegations that Sumida fails to disclose an induction coil configured to generate an electromagnetic field for stirring molten metal during solidification and that Sumida' s techniques "would preclude enjoyment of improved mechanical properties as a result of increased cooling rates afforded by the casting system of claim 1 O" (Appeal Br. 10) are not sufficient to refute the Examiner's reasonable findings that the Sumida structure is comparable to Appellants' structure as claimed and therefore, is capable of functioning in a comparable manner- i.e., is capable of "generat[ing] an electromagnetic field for stirring the molten metal during solidification of the molten metal." Rejection B - Obviousness The Examiner rejects claim 23 as obvious in light of the teachings of Sumida, Hua, Ferguson, Induction Heating Fundamentals, and Christensen. Final Act. 8. Claim 23 requires-in addition to the requirements of claims 1 and 10--that the induction coils of the mold body "operate at a frequency 7 Appeal2014-008709 Application 13/293,198 of between 20 Hz to about 10 kHz", among others. Claims Appendix at Appeal Br. 19. Appellants, similar to positions taken above with respect to Rejection A, argue that "[i]t is not clear why one of ordinary skill in the art would be motivated to combine Sumida or Hua with Ferguson or Induction Heating, or any of the foregoing references with Christensen." Appeal Br. 15. For the reasons discussed above, we find no reversible error in the Examiner's reasons to combine Sumida, Hua, Ferguson and Induction Heating Fundamentals. Christensen, as applied by the Examiner, teaches that the induction coil is cooled by deionized water. Christensen col. 7, 11. 54---col. 8, 11. 13. Induction Heating Fundamentals also teaches cooling the induction coils with water. See Induction Heating Fundamentals, p. 2. As a result, according to the Examiner, "it would have been obvious to one of ordinary skill in the art ... to employ deionized water as the coolant for the induction coils; since it is within the purview of one skill[ ed] in the art to use known coolant (deionized water) in place of water. Final Act. 8. Appellants do not challenge these findings; we therefore accept these findings as fact. Lastly, Appellants argue that the prior art combination of Rejection B does not teach an induction coil that can "operate at a frequency of between about 20 Hz and about 10 kHz." Appeal Br. 13. "Appellants assert that it is not clear from Sumida or any other cited reference that Sumida would be capable of performing in both alleged fashions simultaneously, i.e., at a frequency of between about 20 Hz and about 10 kHz and to generate an electromagnetic field for stirring the molten metal during solidification of the molten metal." Id. 8 Appeal2014-008709 Application 13/293,198 We have considered Appellants' arguments, but are not persuaded. The Examiner correctly finds that the cited references teach all of the claimed structural components. Final Act. 7; Ans. 12. "Therefore, the induction coils of Sumida would also be able to operate at a frequency of between 20 Hz and about 10 kHz." Ans. 12. We find the Examiner's findings to be reasonable. Appellants' arguments fail to patentably distinguish their claimed structure from the prior art structure. In re Schreiber, 128 F.3d at 1478. In summary, Appellants have not shown error in the Examiner's rejections of the claims on appeal. DECISION For the above reasons, the Examiner's rejections of claims 1-8, 10- 15, and 21-23 are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv) (2009). AFFIRMED 9 Copy with citationCopy as parenthetical citation