Ex Parte Sanders et al

Patent Trial and Appeal Board

Sep 14, 2018

12617022 (P.T.A.B. Sep. 14, 2018)

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2 Claim 65 stands withdrawn from examination as being drawn to a non-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.
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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
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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.
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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.
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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
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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
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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.
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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,
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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.
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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).
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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
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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
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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.
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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
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