Ex Parte Cahn

Patent Trial and Appeal Board

Apr 7, 2017

13219239 (P.T.A.B. Apr. 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.
13/219,239 08/26/2011 Jack Cahn 50683-00002 9442
25231 7590 04/11/2017
MARSH, FISCHMANN & BREYFOGLE LLP
8055 East Tufts Avenue
Suite 450
Denver, CO 80237
EXAMINER
KASTLER, SCOTT R
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
04/11/2017 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):
PTOMail @ mfblaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACK CAHN1
Appeal 2016-000490
Application 13/219,239
Technology Center 1700
Before JAMES C. HOUSEL, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1, 3—6, 8, 9, 11—16, 18, 19, 21, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
BACKGROUND
The subject matter on appeal relates to methods for validation of
cryogenically treated articles. E.g., Spec. 12; Claim 1. Claim 1 is
reproduced below from page 12 (Claims Appendix) of the Appeal Brief:
1 According to the Appellant, the real party in interest is AMS Corporation.
Br. 1.
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Application 13/219,239
1. A method for validation of cryogenically treated articles, the
method comprising:
identifying a metallurgic characteristic of a treatment article
manufactured from a metal-matrix material, the metallurgic
characteristic being predetermined to undergo an associated
enhancement during cryogenic treatment according to a
predetermined treatment protocol, the enhancement being
measurable only by destructive testing;
producing a witness article manufactured from the metal-matrix
material and having the metallurgic characteristic of the
treatment article;
cryogenically treating the treatment article and the witness article
according to the predetermined treatment protocol;
testing the witness article using destructive testing according to
a predetermined test protocol to generate witness results that
indicate whether the associated enhancement in the metallurgic
characteristic is present in the witness article subsequent to the
cryogenically treating; and
validating that the treatment article underwent the cryogenic
treatment according to the predetermined treatment protocol
when the witness results indicate that the associated
enhancement in the at least one metallurgic characteristic is
present in the witness article.
REJECTIONS ON APPEAL
1. Claims 1, 3—6, 8, 9, 11—16, 18, 19, 21, and 22 stand rejected under
35 U.S.C. § 112,11, for failure to comply with the written description
requirement.
2. Claims 1, 3—6, 8, 9, 11—16, 18, 19, 21, and 22 stand rejected under
35 U.S.C. § 112,12, for indefmiteness.
3. Claims 11 and 19 stand rejected under 35 U.S.C. § 112,14, for
failure to further limit the subject matter of the claims from which they
depend.
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4. Claims 1, 3—6, 8, 9, 11—16, 18, 19, 21, and 22 stand rejected under
35 U.S.C. § 103(a) as unpatentable over applicant admitted prior art
(“AAPA”) in view of Hamatani (US 3,878,726, issued Apr. 22, 1975).
ANALYSIS
I. Rejection 1
The Examiner determines that claims 1, 3—6, 8, 9, 11—16, 18, 19, 21,
and 22 lack written description support because “[t]he specification and
claims all recite ‘validation’ of articles without specifying what specific
procedure(s) exactly constitutes the ‘validation’ recited.” Non-Final Action
dated Sept. 5, 2014 (“Non-Final Act.”), at 3.
The Examiner determines that claims 1, 3—6, 8, 9, 11—16, 18, 19, and
21 lack written description support for the additional reason that those
claims “recite enhancing a characteristic which can only be measured by
destructive testing, however the specification as originally filed does not
disclose this feature or list any characteristics which can only be measured
by destructive testing.” Id. at 3^4 (emphasis in original).
We are not persuaded by the Examiner’s rationale. The Examiner’s
stated concerns appear to be more relevant to definiteness than to written
description. See id. “[T]he test for [compliance with the written description
requirement] is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
Here, the Specification includes literal support for the limitations identified
by the Examiner. See Spec. ]ff[ 2, 24—27, 47, 56—57 (discussing validation);
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Spec. 125 (“Still another reason that independent and reliable validation
may be difficult is that many effects of the cryogenic treatment can only be
reliably tested using destructive testing.”). Further, the Specification
discloses a number of metallurgical characteristics including hardness,
corrosion resistance, and tensile strength. Id. 195. The Examiner has not
persuasively explained why the written description, especially considering
these disclosures, does not demonstrate possession of the claimed invention.
Thus, we agree with the Appellant that the Examiner’s § 112,11 rejection
lacks merit. See Br. 5—6. We reverse the rejection.
II. Rejection 2
The Examiner determines that claims 1, 3—6, 8, 9, 11—16, 18, 19, 21,
and 22 are indefinite because, “[a]s stated [in the § 112,11 rejection], the[]
terms ‘validation’ and ‘validating’ are not defined in the claims or
specification, rendering the scope of the claims unascertainable.” Non-Final
Act. 4.
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994). “[DJefmiteness of the language
employed must be analyzed—not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). A claim is
not indefinite simply because it is broad. See In re Miller, 441 F.2d 689, 693
(CCPA 1971) (“[BJreadth is not to be equated with indefmiteness . . . .”).
The Specification explains that a problem in the art of producing
cryogenically treated articles is that “the treatment process is questionable in
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Application 13/219,239
effect and unreliable.” Spec. 1 8. Prospective consumers of cryogenically
treated items lack assurances that the cryogenically treated item actually
possesses any benefit over a comparable non-cryogenically treated item. See
id. The Specification goes on to describe a method by which the benefit
(i.e., “enhancement”) of the treatment process to one article (i.e., the
“treatment article”) can be confirmed and/or documented by “testing” a
comparable sample article (i.e., the “witness article”) after both articles have
been subjected to the same cryogenic process. E.g., id. ]Hf 10, 24—27, 56 (“In
some cases, the validation includes documentation, which may or may not
include specific portions of the witness results . . . and/or other useful
information . . . .”). The Specification explains that results from the testing
of the witness article “can then be used as a substitute ... to direct testing of
the validation articles themselves, for example, to validate that the validation
article has undergone a particular cryogenic treatment protocol and/or that
the treatment of the validation article has resulted in particular enhancements
in wear characteristics, resistance to corrosion, increases in electrochemical
bonding of surface treatments, increases in theoretical useable lifespan, etc.”
Id. at 27.
The Examiner states that the term “validation” “could have multiple
meanings, such as meaning that the article is suitable of reuse, that the article
is exactly identical to a sample article or that the article is within an
acceptable range of values compared to a sample article. Further, no
specific steps are disclosed in either the specification or claims that
constitute the specific type of validation claimed.” Non-Final Act. 3.
The Appellant argues that “the term means assuming or concluding
that the treatment article underwent the cryogenic treatment according to the
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predetermined treatment protocol (e.g., as opposed to some other treatment
protocol).” Br. 5 (emphasis omitted). The Appellant further argues:
While the “validating” step of independent claims 1 and 16 is not
precluded from further encompassing an approval of a particular
level of acceptability of the cryogenic treatment of the treatment
article or an assumption that the cryogenic treatment resulted in
particular enhancements in metallurgical characteristics of the
treatment article, it necessarily at least requires
validating/assuming/concluding that the treatment article
underwent the cryogenic treatment according to the
predetermined treatment protocol when the enhancement is
present in the witness article.
Id. (emphases in original).
On this record, we are not persuaded that a person of ordinary skill in
the art would have considered the term “validation” or “validating” to be
indefinite. On the contrary, the terms simply appear to be broad and to
encompass any method of “validating that the treatment article underwent
the cryogenic treatment according to the predetermined treatment protocol,”
as recited by claim 1. That validation could be in the form, for example, of
documentation, e.g., Spec. 1 56, or any other means for confirming and/or
providing a basis to conclude that the treatment article underwent the
predetermined treatment protocol. The plain meaning of the term “validate”
is “to make valid; substantiate; confirm.” See
http://www.dictionary.com/browse/validate (last accessed April 7, 2017).
The Examiner provides no persuasive basis to conclude that a person of
ordinary skill in the art would not have understood the scope of the disputed
terms. We reverse the § 112,12 rejection.
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III. Rejection 3
The Examiner determines that claim 11, which depends from claim 1,
recites “characteristics . . . already recited as being identified, or measured in
instant claim 1.” Non-Final Act. 5. The Examiner determines that claim 19,
which depends from claim 16, “contains only mental steps with no
corresponding physical method steps and is therefore not further limiting.”
Id.
We are not persuaded by the Examiner’s rationale. With respect to
claim 11, the recited claim element limits claim 1 to a particular method of
“identifying a metallurgic characteristic of a treatment article,” i.e.,
“measuring the witness article prior to the cryogenically treating to obtain a
pretreatment value for the metallurgic characteristic of the treatment article.”
As the Appellant explains, “there are various possible implementations of
independent claim 1 that do not require any measurement of a ‘pre-treatment
value.’” Br. 6. We agree, and we note that the Examiner does not
meaningfully address that contention, or otherwise show it to be erroneous,
in the Answer. See Ans. 3. We reverse the § 112,14 rejection of claim 11.2
Concerning claim 19, the recited claim elements further limit claim
16. Claim 16 permits any predetermined test protocol for the destructive
2 In the event of further examination of the application on appeal, the
Appellant and the Examiner may wish to clarify whether claim 11 requires
two witness articles. Claim 1 states that the post-treatment “enhancement”
is “measurable only by destructive testing.” Because the pre-treatment
measurement appears to be of the same characteristic, it would appear that
the pre-treatment measurement may lead to the destruction of the witness
article being tested, thus leading to the need for a second witness article to
undergo the predetermined treatment protocol along with the treatment
article.
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testing to be used. The plain language of claim 16 does not require the test
protocol be defined by the treatment protocol. Claim 19 further limits claim
16 at least by requiring that the treatment protocol define the test protocol.
We reverse the § 112,14 rejection of claim 19.
IV. Rejection 4
The Appellant presents arguments for claims 1 and 22. We limit our
discussion to those claims. Claims 3—6, 8, 9, 11—16, 18, 19, and 21 will
stand or fall with claim 1.
A. Claim 1
The Examiner finds that the AAPA discloses that cryogenic treatment
of metallic articles was known to alter and/or improve certain properties of
metal articles. Non-Final Act. 7 (citing Spec. 3—8). The Examiner
determines that the “identifying” step of claim 1 “is fairly met by any
observation of any property of the articles, including simple visual
observation of the article.” Id. The Examiner acknowledges that the “prior
art fails to teach” the use and testing of a witness article followed by
validation of the treatment article. Id. at 7—8.
The Examiner finds, however, that “sample testing of workpieces in
order to ensure the suitability of any process, including cryogenic
processing, is shown by Hamatani to be very old and well known in the
manufacturing industry in order to ensure proper process control.” Id. at 8.
The Examiner concludes that “motivation to test a sample workpiece as
shown by Hamatani. . . and then test the sample workpiece to ensure proper
processing . . . would have been a modification obvious to one of ordinary
skill in the art at the time the invention was made.” Id.
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The Appellant argues that “the Examiner clearly errs by not
specifically addressing or even mentioning the step of ‘validating that the
treatment article underwent the cryogenic treatment according to the
predetermined treatment protocol. . . Br. 7 (emphases omitted). The
Appellant further argues that “Hamatani does not disclose or even suggest”
the “validating” step of claim 1. Id. at 9.
For reasons consistent with those expressed by the Examiner, see Ans.
3—4, we are not persuaded by those arguments. Hamatani discloses the well-
known concept that, to verily the properties or qualities of a group of
objects, “a sample which represents respective groups of products it belongs
to” can be “inspected]... to judge its quality.” Hamatani at Abstract. It
appears that the Appellant has applied that known concept to known
cryogenic processes.
In opposing the § 112 rejections, discussed above, the Appellant
attempts to define the term “validating” as “assuming or concluding that the
treatment article underwent the cryogenic treatment according to the
predetermined treatment protocol.” E.g., Br. 5. Although Hamatani may not
use the word “validate” or “validating,” Hamatani’s disclosed process of
sampling products pulled from the assembly line of a manufacturing process
to verily that they are of sufficient quality necessarily is encompassed by or
otherwise renders obvious the concept of validation, as defined by the
Appellant, because a person of ordinary skill in the art would have
understood that the purpose of sampling is to “assume” or “conclude” that
the other products on the assembly line, subject to the same manufacturing
process as the sample, possess the same properties as the sample. The
Appellant’s arguments do not persuasively rebut the Examiner’s
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determination that, when combined with known cryogenic manufacturing
processes, Hamatani would have motivated a person of ordinary skill in the
art, through the use of only ordinary creativity, to validate that articles
subject to the same process as the sample article underwent the same process
and would have been expected to be of similar quality and character. See
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418-19 (2007) (“[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.”).
As the Supreme Court has explained, “in many cases a person of
ordinary skill will be able to fit the teachings of multiple [prior art
references] together like pieces of a puzzle.” Id. at 420. “When a work is
available in one field of endeavor, design incentives and other market forces
can prompt variations of it, either in the same field or a different one. If a
person of ordinary skill can implement a predictable variation, § 103 likely
bars its patentability.” Id. at 417. On this record, the Appellant’s arguments
concerning the “validating” step of claim 1 do not persuade us that a person
of ordinary skill in the art would not have been motivated to, and capable of,
adapting the known sampling/validation technique of Hamatani to other
known processes, such as cryogenic processes, so as to render the method of
claim 1 obvious. We affirm the rejection of claim 1.
B. Claim 22
Claim 22 recites:
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22. A method for validation of cryogenically treated articles, the
method comprising:
performing destructive testing on a witness article according to a
predetermined test protocol to generate witness results
subsequent to cryogenic treatment concurrently of the witness
article and a treatment article according to a treatment protocol,
the witness results comprising a measure of a first metallurgic
characteristic of the witness article that is predetermined to
undergo, during cryogenic treatment according to the treatment
protocol, a first associated enhancement that can be measured
only by destructive testing, the witness article produced from a
same metal-matrix material as that of the treatment article such
that both comprise the metallurgic characteristic, such that the
witness results indicate whether the first associated enhancement
in the metallurgic characteristic is present in the witness article
subsequent to the cryogenic treatment;
performing non-destructive testing on the treatment article
according to the predetermined test protocol subsequent to the
cryogenic treatment, the witness results further comprising a
measure of a second metallurgic characteristic of the treatment
article that is predetermined to undergo a second associated
enhancement during the cryogenic treatment, such that the
witness results indicate whether the second associated
enhancement in the metallurgic characteristic is present in the
treatment article subsequent to the cryogenic treatment; and
validating the cryogenic treatment of the treatment article only
when the witness results indicate that the first associated
enhancement is present in the witness article and the second
associated enhancement is present in the treatment article.
Claim 22, unlike claim 1, requires testing of both the witness article (i.e.,
sample) and the treatment article (i.e., actual product).
In the Non-Final Action, the Examiner groups claim 22 with claim 1
and does not appear to provide any analysis concerning the differences
between claims 1 and 22. See Non-Final Act. 7—8.
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In the Appeal Brief, the Appellant notes that apparent deficiency. See
Br. 9—10. The Appellant also points out that Hamatani does not teach or
suggest “performing destructive testing on a witness article and non­
destructive testing on a treatment article.” Id. at 10.
In the Answer, the Examiner fails to provide any meaningful analysis
relevant to the differences between claims 1 and 22. It appears that the final
paragraph of page 4 of the Answer, directed to destructive testing, may have
been intended to address the Appellant’s arguments concerning claim 22.
See Ans. 4. However, that paragraph does not meaningfully respond to the
Appellant’s arguments.
The Examiner bears the burden of establishing a prima facie case of
obviousness based on the prior art. In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992). On this record, given the Examiner’s failure to meaningfully
address the limitations of claim 22, or to explain how or why those
limitations are of no patentable significance relative to the limitations of
claim 1, we are constrained to reverse the Examiner’s rejection of claim 22.
CONCLUSION
We REVERSE the Examiner’s rejection of claims 1, 3—6, 8, 9, 11—16,
18, 19, 21, and 22 under 35 U.S.C. § 112,11.
We REVERSE the Examiner’s rejection of claims 1, 3—6, 8, 9, 11—16,
18, 19, 21, and 22 under 35 U.S.C. § 112,12.
We REVERSE the Examiner’s rejection of claims 11 and 19 under 35
U.S.C. § 112,14.
We AFFIRM the Examiner’s rejection of claims 1, 3—6, 8, 9, 11—16,
18, 19, and 21 under 35 U.S.C. § 103(a).
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We REVERSE the Examiner’s rejection of claim 22 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-IN-PART
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