Ex Parte Sanders et alDownload PDFPatent Trial and Appeal BoardSep 14, 201812617022 (P.T.A.B. Sep. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/617,022 11/12/2009 63759 7590 09/18/2018 DUKEW. YEE YEE & AS SOCIA TES, P.C. P.O. BOX 802333 DALLAS, TX 75380 FIRST NAMED INVENTOR Daniel G. Sanders 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. 08-1112-US-NP 3794 EXAMINER GAITONDE, MEG HA MEHTA ART UNIT PAPER NUMBER 1781 NOTIFICATION DATE DELIVERY MODE 09/18/2018 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): ptonotifs@yeeiplaw.com mgamez@yeeiplaw.com patentadmin@boeing.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DANIEL G. SANDERS, LUIS R. LEON, PAUL D. EDWARDS, GREGORY L. RAMSEY, and GARY W. COLEMAN1 Appeal2017-005041 Application 12/617 ,022 Technology Center 1700 Before ROMULO H. DELMENDO, BEYERL YA. FRANKLIN, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL Appellants seek review under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 51---64 and 66-70 under 35 U.S.C. § 103(a).2 We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. STATEMENT OF CASE Appellants' invention relates to methods of fabricating metal components that includes friction stir welding of metal sheets "to form a 1 According to Appellants, the Real Party in Interest is The Boeing Company of Chicago, Illinois. App. Br. 2. 2 Claim 65 stands withdrawn from examination as being drawn to a non- elected invention. Final Act. 3. Appeal2017-005041 Application 12/617,022 blank with a number of weld nuggets ... [and] press[ing] the blank into a mold ... such that the plurality of sheets of metal and the component formed have a number of characteristics that are substantially the same." Specification filed November 12, 2009 ("Spec."), Abstract, ,r 1. Claims 51, 55, and 66 are independent. Claim 51 is illustrative: 51. A method of fabricating a component, the method compnsmg: generating a set of final friction-stir-welding parameters by adjusting initial parameters for friction stir welding titanium sheets to form a test piece that comprises a test weld nugget and a test parent material adjacent to the test weld nugget so that elongating the test piece to produce superplastic strain in the test weld nugget and in the test parent material results in the test parent material and the test weld nugget having substantially the same thickness; and forming a blank by friction stir welding a plurality of titanium sheets together using the set of final friction-stir- welding parameters. App. Br. 12. Dependent claims 60 and 69 each recite identifying possible values for each parameter ... friction stir welding different pairs of titanium sheets together using every combination of the possible values for each parameter of the plurality of parameters; and selecting a final value for each parameter ... that enables friction stir welding titanium sheets 2 Appeal2017-005041 Application 12/617,022 together such that a weld nugget having the first superplastic strain characteristics is produced. Id. at 14, 16. Rejections on Appeal3 Claims 60 and 69 stand rejected under 35 U.S.C. § 112, first paragraph for lack of written description. Claims 51-64 and 66-70 stand rejected under 35 U.S.C. § 112, first paragraph for lack of enablement. Claims 51-55, 61-64, and 66-70 stand rejected under 35 U.S.C. § 103 over Sanders4 in view of Nelson. 5 Claim 56 stands rejected under 35 U.S.C. § 103 over Sanders in view ofNelson and Aono. 6 Claims 57 and 58 stand rejected under 35 U.S.C. § 103 over Sanders in view ofNelson and Barnes. 7 Claims 59 and 60 stand rejected under 35 U.S.C. § 103 over Sanders in view of Nelson, Barnes, and Aono. DISCUSSION Upon consideration of the evidence and opposing contentions of Appellants and the Examiner, we are not persuaded that the Examiner erred harmfully in rejecting the claims for lack of enablement or in rejecting the claims for obviousness over the cited prior art. We are persuaded, however, 3 Appellants list claim 65 in the Claims Appendix (App. Br. 16), but this claim stands withdrawn from examination (Final Act. 3; Ans. 2). 4 Sanders et al., US 2006/0086774 Al, published April 27, 2006. 5 Nelson et al., US 2003/0205565 Al, published November 6, 2003. 6 Aono et al., US 2003/0047587 Al, published March 13, 2003. 7 Barnes, US 2004/0197532 Al, published October 7, 2004. 3 Appeal2017-005041 Application 12/617,022 that the Examiner erred in finding a lack of written description for claims 60 and 69. Appellants argue the claims as a group, except for claims 60 and 69 in arguing against the written description rejection. With the exception of the written description rejection, all claims stand or fall, accordingly, with claim 51, which we deem representative. 37 C.F.R. § 4I.37(c)(l)(iv). Written Description A specification complies with the 35 U.S.C. § 112, first paragraph written description requirement if it "reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date." Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (citation omitted). Whether the written description suffices is a question of fact. Id. The Examiner finds that "[ t ]he specification does not include [ written description] support for" "identifying possible values for each parameter of the plurality of parameters; friction stir welding different pairs of titanium sheets together using every combination of the possible values for each parameter of the plurality of parameters." Final Act. 5. Appellants contend that there is sufficient written description support, citing paragraphs 50 and 62 and Figures 14 and 15. App. Br. 5-6. As set forth by Appellants, paragraph 50 reasonably teaches "that properties of the weld regions may be affected by the welding operations" and "[p ]aragraph 62 teaches that a number of parameters may be used to control the friction stir welding process." Id. at 6. Moreover, Figures 14 and 15 reasonably set forth testing in accord with testing different combinations of different parameters. 4 Appeal2017-005041 Application 12/617,022 Contrary to the Examiner's determination, the Specification reasonably does "provide support for choosing possible values and testing the combinations of parameters as required by the claims" ( Ans. 2 ( emphasis omitted)) in explaining that the properties of weld regions are affected by the welding conditions, necessarily defined by parameters, and in setting forth testing for the effect of varying different parameters in combination (App. Br. 6; see also Reply Br. 2-3). On this record, accordingly, we are unable to sustain the Examiner's rejection of claims 60 and 69 for lack of written description. Enablement A specification complies with the 35 U.S.C. § 112, first paragraph enablement requirement if it allows a person of ordinary skill in the art to make and use the claimed invention without undue experimentation. See In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Illustrative factors to be considered in determining whether a disclosure would require undue experimentation include (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, ( 4) the nature of the invention, ( 5) the state of the prior art, ( 6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Enablement is a question of law based on underlying factual determinations. In re Swartz, 232 F.3d 862, 863 (Fed. Cir. 2000). The Examiner finds that "the specification does not lend guidance to one skilled in the art to determine which parameters, and the values of those 5 Appeal2017-005041 Application 12/617,022 parameters, that are necessary to arrive at the improved weld nugget that has" the recited characteristics as to thickness after superplastic forming ( claim 51 ), as to superplastic strain related to superplastic forming ( claim 55), and as to superplastic strain characteristics related to deformation after superplastic forming ( claim 66). Final Act. 6. The Examiner addresses each of the Wands factors, albeit not in the same order as in Wands, and determines "that undue experimentation is required to determine the processing parameters needed to arrive at the weld nugget with substantially the same thickness as, and desired strain characteristics relative to the parent material." Id. at 6-11. As to the "breadth of the claims," the Examiner highlights that the claims are not particularly limited as to the parameters to be chosen, tested, and adjusted in determining what is required to achieve the desired product. Id. at 8. As to the "nature of the invention" and the "state of the prior art," the Examiner highlights that it is known that various parameters affect the properties of the final product and that there is a desired strain rate that allows a material to deform under superplastic conditions, but that "[ t ]he prior art does not teach which parameters are most critical ... because this would vary for each different material and for each desired property based on the application of the product." Id. As to the "level of skill," the Examiner highlights that it is not known how different combinations of varied processing parameters would affect particular properties. Id. at 9. As to the "level of predictability in the art," the Examiner finds "[f]riction stir welding and superplastic forming of metals is predictable only to the point of general success" and not to the ability to predict exact properties because these vary as to different parameters used. Id. As to the "amount of direction provided," the 6 Appeal2017-005041 Application 12/617,022 Examiner highlights that "[t]he inventor [has] not provid[ed] values for the parameters ... [or] even include[ d] a complete list of the factors that would affect the properties of the product." Id. at 9-10. As to "working example," the Examiner finds "[ t ]he specification contains no working examples with either general terms or specific parameters." Id. at 10. As to the "quantity of experimentation," the Examiner determines that "[t]he invention would require a great deal of experimentation ... [including] identify[ing] every parameter involved in a friction stir welding process, including those not listed in the specification, vary[ing] each parameter over the entire range of reasonable values, and combin[ing] each different value variation for one parameter with each different variation of all parameters." Id. Appellants contend that there is sufficient guidance because: Figure 14 and Figure 15 clearly and unambiguously provide precisely the guidance the Examiner asserts is not described in the specification. Figure 14 provides the ratio of parent to metal elongation (P/W) versus distance from weld initiation, with notes regarding revolutions per minute (RPM), and heat. Figure 15 provides the P /W ratio versus pseudo heat index, along with RPM values, with the pseudo heat index described in the specification. All of this disclosure provides information regarding parameters and the values of those parameters that are necessary to arrive at the improved weld nugget as claimed. App. Br. 7. Appellants further rely on paragraphs 50, 106, and 107 of the Specification in the Reply Brief, arguing that the skilled artisan would have known "that small changes in friction stir welding parameters can have a significant effect on the nature and quality of the weld" and that the Specification supports "possession of 'choosing possible values and testing."' Reply Br. 4. 7 Appeal2017-005041 Application 12/617,022 Appellants fail to identify any reversible error in the Examiner's findings, or in the Examiner's analysis of the Wands factors. Appellants set forth an assertion that Figures 14 and 15 suffice (App. Br. 7), but there is no sufficient explanation provided as to other parameters (Ans. 2-3). As to Appellants' newly raised arguments raised in the Reply Brief, they address positions taken by the Examiner not only in the Answer, but also in the Final Office Action, specifically the position taken as to the "level of skill" and as to the "amount of direction provided." Final Act. 9-10. We deem the arguments waived for purposes of the present appeal. 37 C.F.R. § 41.41 (b )(2 ). "[ A ]n issue not raised by an [ A Jppellant in its opening brief ... is waived." Cf Optivus Tech., Inc. v. Ion Beam Appl'ns S.A., 469 F.3d 978, 989 (Fed. Cir. 2006) (citations and internal quotations omitted); Cf McBride v. Merrell Dow and Pharms., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986) (internal citations omitted) ("Considering an argument advanced for the first time in a reply brief ... is not only unfair to an appellee, but also entails the risk of an improvident or ill-advised opinion on the legal issues tendered."). On this record, accordingly, we are not persuaded that the Examiner erred reversibly in rejecting the claims as lacking enablement. Moreover, even if the belated arguments were properly before us, it is not manifest how the knowledge "that small changes ... can have a significant effect on the nature and quality of the weld" (Reply Br. 4) is contrary to an undue level of experimentation being required. Similarly, the fact that the Specification would put one of ordinary skill in "possession of 'choosing possible values and testing"' (id.) would be of limited, if any, 8 Appeal2017-005041 Application 12/617,022 import as to the level of experimentation being undue, as this goes more to the sufficiency of the written description than to enablement. Obviousness over Sanders and Nelson Sanders relates to fabricating components by forming a blank by friction stir welding a plurality of titanium sheets together, and super- plastically forming the blank into a shaped component. The Examiner relies on Sanders for disclosing a method of fabricating a component by forming a blank by friction stir welding a plurality of titanium sheets together. Final Act. 11 ( citing Sanders ,r,r 2, 8). Nelson relates to methods of friction welding materials. The Examiner relies on Nelson for "teach[ing] a method of friction stir welding materials, where friction stir welding metals is known in the prior art." Id. ( citing Nelson ,r 52). The Examiner further relies on Nelson for teaching "generating a set of final friction-stir-welding parameters by adjusting initial parameters ... form[ing] a test piece that comprises a test weld nugget and a test parent material adjacent to the test weld nugget ... and using the set of final friction stir welding parameters." Id. ( citing Nelson ,r,r 133-212, 213, 134, 137,215). The Examiner also relies on Nelson for teaching that "[c]hoosing the best parameters allows one to arrive at the best product." Id. at 12 (citing Nelson ,r,r 150-151). The Examiner concludes that "[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to include the parameter- generating process of Nelson in the method of Sanders because determining the optimal parameters ... [impacting material's microstructure] will produce the most desirable product." Id. at 11-12. 9 Appeal2017-005041 Application 12/617,022 With the caveat that "[ n ]either Sanders nor Nelson teaches elongating," the Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to elongate the test piece because these are the steps used in Sander's method ... [reasoning that] [i]t would only make sense to perform the test in the same way as the manufacturing process such that the results obtained are those that would be obtained in the manufacturing process. Id. at 12. The Examiner further concludes that "it would have been obvious ... to obtain a weld nugget with substantially the same thickness as the parent material because this produces a uniform product that would be more aesthetically pleasing compared to a non-uniform product." Id. The uniformity in appearance, as set forth in claim 51, refers to the thickness following elongating the test piece. Appellants contend that the Examiner's statement setting forth that it would have been obvious to elongate the test piece includes a contradiction and is conclusory, making it "apparent that the Office Action is relying on impermissible hindsight." App. Br. 8-9. The "contradiction" is that the Final Office Action states both that "[ n ]either Sanders nor Nelson teaches elongating the test piece" and that "it would have been obvious ... to elongate the test piece because these are the steps used in Sander's method." Id. at 8 (quoting Final Act. 12). Appellants argue an improper, conclusory reliance on "common sense" in the Examiner stating that "[i]t would only make sense to perform the test in the same way as [in] the manufacturing process" because the only thing more than an assertion of common sense is "[t]he same manufacturing process the Examiner admits Sanders does not show." Id. at 8-9 (quoting Final Act. 12-13). 10 Appeal2017-005041 Application 12/617,022 The Examiner clarifies that there is no contradiction in the stated rejection as contended by Appellants. Ans. 3. The Examiner explains that While Sanders does not explicitly teach the elongation step, it would have been obvious to one of ordinary skill in the art ... Id. to perform an elongation step on the test material because there is an elongation step in the fabrication process ... [and] [i]f one seeks to obtain particular properties for the final product, one must perform the same operation on the test piece ... to determine if the final product will have the desired properties. On this record, we are not persuaded of harmful error. As clarified by the Examiner, the rejection does not include the contended contradiction and there is no persuasive argument why one of ordinary skill in the art would not have found it obvious to submit test pieces to the same elongation conditions they would experience during fabrication. In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010) (quoting Shinseki v. Sanders, 556 U.S. 396, 409 (2009) ("[T]he burden of showing that the error is harmful normally falls upon the party attacking the agency's determination."). Moreover, it follows that we are not persuaded that the Examiner relied on improper hindsight. See In re Kahn, 441 F.3d 977,988 (Fed. Cir. 2006) (requiring "some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") ( cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007)). Appellants further contend reversible error on the basis that the Examiner "provides no basis for why aesthetics would be important or desirable in a weld where strength and other mechanical properties are what are sought." App. Br. 9. Appellants further contend that "a weld may be aesthetically pleasing (smoother, more uniform), yet unsound ... [and] it is 11 Appeal2017-005041 Application 12/617,022 widely known ... that welds that deceptively appear to be aesthetically pleasing, yet do not possess the required mechanical properties, present one of the biggest dangers in the field of structural welding." Id. at 9-10. The Examiner further explains that uniformity in appearance suggests uniformity in other properties as well and that there is a likelihood of similar properties to the parent material. Ans. 4. Appellants maintain their argument that the Examiner has erred in assuming aesthetics indicate desired properties. Reply Br. 8. Appellants cite the recognition in the Specification "that welding of superplastic materials used to form a blank may lead to undesired effects, namely, strain which leads to premature necking, when the blank is used in a superplastic forming process" and that "a weld nugget may have a decreased strength as compared to the parent material in the blank ... [or] may have undesired fatigue characteristics as compared to the parent material." Id. (citing Spec. ,r,r 51-52). On this record, we are unpersuaded of harmful error. The Examiner has set forth a reasonable basis for uniformity of appearance indicating desired properties, notably a likelihood of similar properties to the parent material. As the similarity in thickness of the test weld nugget and the test parent material at issue is that following "elongating the test piece to produce superplastic strain," we are not apprised of error. See, e.g., KSR, 550 U.S. at 418 ("[T]he [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ."). Appellants' argument as to aesthetically pleasing welds being unsound does not squarely address 12 Appeal2017-005041 Application 12/617,022 whether such welds remain aesthetically pleasing after elongation during testing. App. Br. 9--10; Reply Br. 8. On this record, we are directed to no persuasive evidence to that effect. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument ... cannot take the place of evidence."). Moreover, absent further explanation, portions of the Specification cited by Appellants as support are consistent with the Examiner's position, particularly that indicating deformation of a stir welded blank "when the blank is used in a superplastic forming process" (i-f 51) and that indicating that "characteristics of the parent metal in the blank and the weld nugget in the blank may not be substantially the same after the welding and/or after a superplastic forming process" (i-f 52). On this record, accordingly, we are not persuaded that the Examiner erred harmfully in rejecting claims 51-55, 61---64, and 66-70 as obvious over Sanders and Nelson. Obviousness over Sanders and Nelson in further view of Aono and/or Barnes The Examiner further relies on Aono in rejecting claim 56, on Barnes in rejecting claims 57 and 58, and on Aono and Barnes in rejecting claims 59 and 60. Final Act. 17-19. Appellants rely on the contended error as to the rejection over Sanders and Nelson and that the addition of the further references does not cure the contended error. App. Br. 10-11. Not being convinced of harmful error in the rejection of claims over Sanders and Nelson, we are not apprised of harmful error in the rejection of claims in further view of Aono and/or Barnes. 13 Appeal2017-005041 Application 12/617,022 DECISION The Examiner's rejection of claims 60 and 69 under 35 U.S.C. § 112, first paragraph for lack of written description is REVERSED. The Examiner's rejection of claims 51---64 and 66-70 under 35 U.S.C. § 112, first paragraph for lack of enablement is AFFIRMED. The Examiner's rejections of claims 51---64 and 66-70 under 35 U.S.C. § 103 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). AFFIRMED 14 Copy with citationCopy as parenthetical citation