Ex Parte Bochiechio

Patent Trial and Appeal Board

Jun 7, 2017

13729077 (P.T.A.B. Jun. 7, 2017)

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.
13/729,077 12/28/2012 Mario P. Bochiechio 62400US01;67097-2199PUS1 1058
54549 7590 06/09/2017
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
YUEN, JACKY
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
06/09/2017 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):
ptodocket @ cgolaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARIO P. BOCHIECHIO
Appeal 2016-006750
Application 13/729,077
Technology Center 1700
Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 6, 7, 9, 11, 18, 21—24, and 27—34.1 We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant’s claimed invention is generally directed to an investment
casting core comprising a mullite-containing core body and a metallic core
1 Appellant cancelled claims 3 and 5 in a Response filed August 20, 2015,
and the Examiner indicated that the amendments would be entered in an
Advisory Action entered September 25, 2015.
Appeal 2016-006750
Application 13/729,077
body joined to the mullite-containing core body, and to a method of
investment casting using an investment casting core. App. Br. 2—3. Claim 1
illustrates the subject matter on appeal and is reproduced below:
1. An investment casting core comprising:
a mullite-containing core body; and
a metallic core body joined to the mullite-containing core
body, the metallic core body being formed from metal or metals
selected from the group consisting of molybdenum, tungsten,
tantalum, rhenium, niobium, and combinations thereof, and the
mullite-containing core body having a composition tailored in
accordance with the metal or metals of the metallic core body
with respect to coefficient of thermal expansion such that the
mullite-containing core body has a coefficient of thermal
expansion that is within 2% of a coefficient of thermal
expansion of the metallic core body, the composition including,
by weight, 80-90% mullite, 15-5% silica, 2.5-10% alumina, 0-
2.5% zircon, 0-5% of one or more of: calcia, magnesia and
yttria.
App. Br. 8 (Claims Appendix).
Appellant requests review of the following rejections set forth in the
Final Office Action entered July 16, 2015 (“Final Act.”), which the
Examiner maintains2 in the Answer entered May 19, 2016 (“Ans.”):
I. Claims 1, 3, 5—7, and 9 under 35 U.S.C. § 103(a) as
unpatentable over Takayanagi (US 5,394,933, issued March 7, 1995) in view
of Shah et al. (US 6,637,500 B2, issued October 28, 2003), Pfeifer et al. (US
2004/0216860 Al, published November 4, 2004), Dodds et al. (US
2 The Examiner withdrew the rejection of claims 3 and 5 under 35 U.S.C.
§ 112,12, and the rejection of claims 3 and 5 under 35 U.S.C. § 112, 4, in
the Answer (Ans. 2) because Appellant cancelled these claims. See Footnote
1, supra.
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Application 13/729,077
2009/0056902 Al, published March 5, 2009), and Ferguson et al. (US
4,767,479, issued August 30, 1988);
II. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over
Takayanagi in view of Shah, Pfeifer, Dodds, Ferguson, and Arakawa et al.
(US 5,612,393, issued March 18, 1997);
III. Claims 21 and 34 under 35 U.S.C. § 103(a) as unpatentable
over Takayanagi in view of Shah, Pfeifer, Dodds, Ferguson, and Frank et al.
(US 4,837,187, issued June 6, 1989);
IV. Claim 22 under 35 U.S.C. § 103(a) as unpatentable over
Takayanagi in view of Shah, Pfeifer, Dodds, Ferguson, and Miller et al. (US
3,576,653, issued April 27, 1971);
V. Claim 27 under 35 U.S.C. § 103(a) as unpatentable over
Takayanagi in view of Shah, Pfeifer, Dodds, Ferguson, and Piggush et al.
(US 2010/0122789 Al, published May 20, 2010);
VI. Claim 28 under 35 U.S.C. § 103(a) as unpatentable over
Takayanagi in view of Shah, Pfeifer, Dodds, Ferguson, Piggush, and
Guerche et al. (US 2007/0025851 Al, published February 1, 2007);
VII. Claims 18, 23, and 29—32 under 35 U.S.C. § 103(a) as
unpatentable over Takayanagi in view of Shah, Pfeifer, Dodds, and Frank;
VIII. Claim 24 under 35 U.S.C. § 103(a) as unpatentable over
Takayanagi in view of Shah, Pfeifer, Dodds, Frank, and Miller; and
IX. Claim 33 under 35 U.S.C. § 103(a) as unpatentable over
Takayanagi in view of Shah, Pfeifer, Dodds, Frank, and Ferguson.
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Application 13/729,077
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1, 6, 7, 9, 11, 18, 21—24, and 27—34 under 35 U.S.C. § 103(a), for the
reasons set forth in the Final Action, the Answer, and below.
Rejections I, II, and IV—VI
Appellant argues Rejections I, II, IV—VI, VIII, and IX as a group on
the basis of limitations in claim 1. App. Br. 4—15. Therefore, we select
claim 1 as representative, and decide the appeal as to Rejections I, II, and
IV—VI based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner finds that Takayanagi discloses an investment casting
core body formed of mainly mullite in combination with quartz glass
(silica), zirconia, alumina, and/or magnesia. Final Act. 4; Takayanagi col. 1,
11. 17—18, 52—58; col. 2,11. 14—17. The Examiner finds that Takayanagi does
not disclose a metallic core body joined to the mullite-containing core body,
and the Examiner relies on Shah for suggesting this feature. Final Act. 4.
The Examiner finds that Shah discloses an investment casting core
comprising a refractory metal element attached to a ceramic component.
Final Act. 4; Shah col. 3,11. 57—59; col. 4,11. 57—65. The Examiner finds
that Shah discloses that suitable refractory metals for forming the refractory
metal element include molybdenum, tantalum, niobium, tungsten, and alloys
thereof. Final Act. 4; Shah col. 3,11. 33—40.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellant’s invention to attach a
refractory metal element to the mullite-containing core body disclosed in
Takayanagi to form an investment casting core assembly because Shah
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teaches that including a refractory metal element in an investment casting
core improves the core’s mechanical properties and allows formation of
geometries and features in the core that cannot be achieved by using ceramic
alone. Final Act. 4—5.
The Examiner relies on Pfiefer and Dodds for suggesting that the
mullite-containing core body of the investment casting core assembly
suggested by the combined disclosures of Takayanagi and Sha has a
coefficient of thermal expansion that is within 2% of a coefficient of thermal
expansion of the refractory metal element of the assembly. Final Act. 5.
Pfeifer discloses a casting mold that includes a mold shell and mold core and
is particularly suited for casting refractory metal alloys. Pfiefer || 2, 25, 63;
claims 21, 22. The Examiner finds that Pfeifer discloses matching the
coefficient of thermal expansion of the metal cast in the casting mold (cast
metal) as closely as possible to the coefficient of thermal expansion of the
casting mold structures, to substantially reduce incidences of warping or
abnormal shrinkages in the casting, and substantially improve the
dimensional trueness of the casting. Final Act. 5; Pfiefer || 11, 15, 16. The
Examiner finds that Pfiefer’s disclosure of matching the coefficient of
thermal expansion of the cast metal as closely as possible to the coefficient
of thermal expansion of the casting mold structures would have suggested
matching the coefficients of thermal expansion of the casting mold
structures to each other. Final Act. 5; Ans. 3.
The Examiner finds that Dobbs discloses a casting assembly in which
a refractory metal core element is positioned within a ceramic base core.
Final Act. 5; Dobbs Tflf 4, 17, 20. Dobbs discloses that the ceramic base core
is formed of a mixture of materials having different coefficients of thermal
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expansion. Dobbs 136. The Examiner finds that Dobbs discloses
increasing the coefficient of thermal expansion of the ceramic base core so
that it approaches that of the refractory metal core element by increasing the
amount of a material in the ceramic base core that has a high coefficient of
thermal expansion. Final Act. 5; Dobbs 36, 37. The Examiner
determines that Dobbs thus indicates how to predictably adjust the
coefficient of thermal expansion of a mixture of materials by varying the
composition of the mixture. Final Act. 5; Ans. 4.
The Examiner concludes that, in view of Pfiefer’s suggestion of
matching the coefficients of thermal expansion of casting mold structures, it
would have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention to match the coefficients of thermal expansion of the
refractory metal element and mullite-containing core body of the investment
casting core assembly suggested by Takayanagi and Shah as closely as
possible to that of the cast metal and to each other, such as within 2%, to
substantially reduce incidences of warping or abnormal shrinkages in the
casting, and substantially improve the dimensional trueness of the casting, as
taught by Pfiefer. Final Act. 5.
Appellant argues that because Pfeifer does not disclose a mullite-
containing core body joined with a metallic core body, one of ordinary skill
in the art would not have interpreted Pfeifer as suggesting matching the
coefficients of thermal expansion of a mullite-containing core body joined to
a metallic core body. App. Br. 3^4. Appellant further contends that Dobbs
discloses that the coefficient of thermal expansion of the base core merely
approaches—rather than matches within 2%—the coefficient of thermal
expansion of the metal core element, and Appellant argues that Dobbs
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therefore does not teach “a means of varying thermal expansion coefficient
for the purpose of matching.” App. Br. 4. Appellant also argues that neither
Pfeifer nor Dobbs teach how to match the coefficients of thermal expansion
of a mullite-containing core body joined to a metallic core body within 2%.
App. Br. 3^4.
However, Appellant’s arguments are improperly based on Pfiefer and
Dobbs individually, and do not take into consideration what the combined
disclosures of the applied prior art would have suggested to one of ordinary
skill in the art at the time of Appellant’s invention. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references.”); In re Keller, 642 F.2d
413, 425 (CCPA 1981) (The test for obviousness “is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.”).
Pfiefer’s disclosure of matching the coefficient of thermal expansion
of casting mold structures as closely as possible to that of a cast metal
reasonably would have suggested matching the coefficients of thermal
expansion of each casting mold structure to those of the other structures, as
the Examiner correctly finds. Final Act. 5; Ans. 3; Pfiefer || 11, 15, 16.
Appellant’s argument that Pfeifer would not have suggested matching the
coefficients of thermal expansion of a mullite-containing core body joined to
a metallic core body does not directly challenge this finding, and thus does
not establish that one of ordinary skill in the art would not have interpreted
Pfiefer’s disclosures in this way.
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In addition, contrary to Appellant’s arguments, Dobbs’ disclosure of
increasing the coefficient of thermal expansion of a ceramic base core so
that it approaches that of a joined refractory metal core element by
increasing the amount of a material in the ceramic base core that has a high
coefficient of thermal expansion (Dobbs 36, 37), would have provided
sufficient guidance to allow one of ordinary skill in the art to successfully
vary the composition of Takayanagi’s mullite-containing core body so that
it’s coefficient of thermal expansion would match as closely as possible (as
suggested by Pfiefer), such as within 2%, the coefficient of thermal
expansion of an attached refractory metal element, as suggested by Shah.
Appellant’s arguments are therefore unpersuasive of reversible error.
Appellant further argues that because the applied prior art would have
suggested “infinite potential possibilities of core compositions and
combinations with metal cores, identification of the claimed composition
and combination with the claimed metals would be beyond routine
optimization.” App. Br. 5.
However, one of ordinary skill in the art would have found it obvious
to utilize one or more of any of the materials that Takayanagi discloses as
suitable for forming a mullite-containing core body, such as quartz glass
(silica), zirconia, alumina, and magnesia as recited in claim 1, in
combination with one or more of any of the refractory metals that Shah
discloses as suitable for forming a refractory metal casting element, such as
molybdenum, tantalum, niobium, and tungsten as recited in claim 1, to
produce the investment casting core assembly suggested by the combined
disclosures of Takayanagi and Shah. As discussed above, one of ordinary
skill in the art would have had sufficient skill to adjust the composition of
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the mullite-containing core body so as to change its coefficient of thermal
expansion to match as closely as possible to that of the refractory metal
element.
Takayanagi’s disclosure of a multitude of effective materials for the
mullite-containing core body does not render any particular material, or any
particular combination of materials, less obvious. Likewise, Shah’s
disclosure of a multitude of effective materials for the refractory metal
element does not render any particular material, or any particular
combination of materials, less obvious. In addition, the references’
disclosures of a multitude of effective materials for each component of the
suggested core assembly does not render obvious particular combinations of
materials used together to form both elements of the assembly, because
Takayanagi and Shah are available for all that they would have suggested to
one of ordinary skill in the art at the time of Appellant’s invention. Merck &
Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That
the ’813 patent 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.”); In re
Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where
the genus of the prior art was “huge, but it undeniably include [d] at least
some of the compounds recited in appellant’s generic claims and [was] of a
class of chemicals to be used for the same purpose as appellant’s additives”).
Appellant’s arguments are therefore unpersuasive of reversible error.
We accordingly sustain Rejections I, II, and IV—VI.
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Rejection III
Appellant argues claims 21 and 34 as a group on the basis of claim 34,
which depends from claim 1 and recites that the “mullite-containing core
body is crushable under solidification forces from solidification of a
superalloy around the mullite-containing core body.” App. Br. 5—6. We
accordingly decide the appeal as to Rejection III based on claim 34 alone.
The Examiner finds that Takayanagi does not disclose that the
mullite-containing core body described in the reference is crushable. Final
Act. 8. To address this feature missing from Takayanagi’s disclosures, the
Examiner relies on Frank’s disclosure of a porous ceramic core for an
investment casting that is crushable and has sufficient dimensional stability
to maintain its shape when surrounded by molten superalloy during
solidification. Final Act. 8—9; Frank col. 1,11. 20-34; col. 5,11. 34—39. The
Examiner finds that Frank discloses that the porous ceramic core’s
crushability reduces the potential for hot tearing, inhibits recrystallization of
the casting alloy, and allows the core to be easily leached from the casting.
Final Act. 8—9; Frank col. 1,11. 32—37; col. 5,11. 34—39. Frank discloses that
the porous ceramic core “remains dimensionally stable at casting
temperatures in excess of 1480-C.” Frank col. 2,11. 17—20.
The Examiner concludes that would have been obvious to one of
ordinary skill in the art at the time of Appellant’s invention to make the
ceramic core body of the investment casting core assembly suggested by
Takayanagi and Shah crushable to reduce the potential for hot tearing,
inhibit recrystallization of the casting alloy, and allow the core to be easily
leached from the casting, as taught by Frank. Final Act. 9.
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Appellant argues that Takayanagi’s core is used to cast titanium
alloys, not superalloys, and contends that Takayanagi discloses that its core
must have high strength and be immune to deformation at high temperature.
Appellant argues that one of ordinary skill in the art would not have had a
reason to modify Takayanagi’s core to make it crushable.
However, as the Examiner correctly finds, Frank discloses that
ceramic cores used in investment casting must possess sufficient
dimensional stability to maintain their shape when surrounded by molten
superalloy during solidification of the casting, but must not have a strength
so high that hot tearing or recrystallization of the casting occurs during
solidification and cooling of the casting. Final Act. 8—9; Frank col. 1,11. 20—
37; col. 5,11. 34—39. Fike Takayanagi’s core that is immune to deformation
at high temperature, Frank discloses that the crushable core “remains
dimensionally stable at casting temperatures in excess of 1480-C.” Frank
col. 2,11. 17—20. Accordingly, contrary to Appellant’s arguments, one of
ordinary skill would have been led to modify the ceramic core body of the
investment casting core assembly suggested by Takayanagi and Shah to
make it crushable while maintaining its dimensional stability at high
temperatures, to reduce the potential for hot tearing, inhibit recrystallization
of the casting alloy, and allow the core to be easily leached from the casting,
as taught by Frank.
Appellant’s arguments are therefore unpersuasive of reversible error,
and we accordingly sustain Rejection 111.
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Rejections VII—IX
Appellant relies on the arguments presented for claim 1 in asserting
the patentability of independent claim 18 and the claims depending from
claim 18, but also provides an additional argument for the separate
patentability of claim 18 based on its recitation of an investment casting core
having a crushable mullite-containing core body. App. Br. 6—7. Because
Appellant presents the same argument for claim 18 as they present for claim
34 (discussed above), Appellant’s argument is unpersuasive of reversible
error for the reasons discussed above for claim 34. We accordingly sustain
Rejections VII—IX.
Reply Brief
Appellant appears to present new arguments in the Reply Brief, which
are not responsive to statements made by the Examiner for the first time in
the Answer. Rep. Br. 2—3; 5. Accordingly, because these arguments could
have been raised in the Appeal Brief, and because Appellant does not show
good cause for presenting them for the first time in the Reply Brief, we do
not consider them. See, e.g., 37 C.F.R. § 41.41(b)(2); 37 C.F.R. §
41.37(c)(l)(vii); Optivus Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d
978, 989 (Fed. Cir. 2006) (argument raised for the first time in the Reply
Brief that could have been raised in the opening brief is waived); Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1320—21 n. 3
(Fed. Cir. 2005); In re Watts, 354 F.3d 1362, 1366-68 (Fed. Cir. 2004).
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DECISION
In view of the reasons set forth above and in the Final Office Action
and the Answer, we affirm the Examiner’s rejections of claims 1, 6, 7, 9, 11,
18, 21-24, and 27-34 under 35 U.S.C. § 103(a).
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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