Ex Parte Cap et al

Board of Patent Appeals and Interferences

Aug 2, 2012

12234851 (B.P.A.I. Aug. 2, 2012)

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.
12/234,851 09/22/2008 Daniel P. Cap PA-0007760U;
67097-1071
4919
54549 7590 08/02/2012
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
DWIVEDI, VIKANSHA S
ART UNIT PAPER NUMBER
3741
MAIL DATE DELIVERY MODE
08/02/2012 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DANIEL P. CAP, RONALD URQUIDI, and GUIDO CANZONA
____________________

Appeal 2012-009411
Application 12/234,851
Technology Center 3700
____________________

Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
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Application 12/234,851

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Claims 1, 17, 18, 19, and 20 are the independent claims on appeal.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A bellows comprising:
a flexible duct including convolutions extending between a
first end and a second end, and the convolutions are made of a
nano-grained aluminum alloy.

REJECTIONS
Appellants seek review of the following rejections:
(1) Claims 20-28 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement. Ans. 5.
(2) Claims 1, 2, 4-7, 9, and 17-19 under 35 U.S.C. § 103(a) as
unpatentable over Kuo (US 6,260,375 B1, iss. Jul. 17, 2001) and Fritzemeier
(US 6,902,699 B2, iss. Jun. 7, 2005).1 Ans. 6.
(3) Claim 8 under § 103(a) as unpatentable over Kuo, Fritzemeier,
and Udell (US 5,145,215, iss. Sep. 8, 1992). Ans. 7-8.

1 Claims 3 and 8 are withdrawn from this rejection as compared to the Office
Action that is the subject of this appeal. Office Action dated Jul. 29, 2011,
at 4; Ans. 6.
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(4) Claims 3, 10-16, and 20-28 under § 103(a) as unpatentable over
Polushin (US 6,282,887 B1, iss. Sep. 4, 2001), Kuo, and Fritzemeier.2 Ans.
8.
FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. Kuo discloses bellow leading pipes made of aluminum paper
for transporting fluid (i.e., cool air). Kuo, col. 1, ll. 12-18, 57-58.
2. Fritzemeier discloses high strength aluminum alloy powders,
extrusions, and forgings that may be formed into rocket motor components
capable of withstanding high stresses. Fritzemeier, col. 2, l. 65 – col. 3, l. 6.
“The alloy powder is produced by blending aluminum and a secondary metal
selected from magnesium, lithium, silicon, titanium, and zirconium, and
synthesizing nanostructured materials from the powder, preferably by
cryomilling.” Fritzemeier, col. 3, ll. 16-20.
3. Fritzemeier discloses that the alloy is about 89 to about 99
atomic percent aluminum, and about 1 to about 11 atomic percent of the
secondary metal. Fritzemeier, col. 3, ll. 29-31.
4. Fritzemeier discloses that preferably at least 0.3 weight percent
nitrogen is added to the alloy during processing. Fritzemeier, col. 3, ll. 28-
29.

2 Claim 3 is not listed in the heading, but is addressed in the body of the
rejection in the Office Action that is the subject of this appeal, and is added
to the heading in the Examiner’s Answer. Office Action dated Jul. 29, 2011,
at 6-7; Ans. 6. Appellants acknowledge that claim 3 is subject to this ground
of rejection. App. Br. 9.
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5. Fritzemeier discloses that “[o]ptionally, the alloy contains up to
10 atomic % of a metal selected from Be, Ca, Sr, Ba, Ra, Sc, V, Cr, Mn, Fe,
Co, Ni, Cu, Zn, Y, Nb, Mo, Tc, Ru, Rh, Pd, Ag, Cd, W, or combinations
thereof.” Fritzemeier, col. 3, ll. 32-35.
6. Fritzemeier discloses that the average grain size of the alloy is
less than 0.5µm. Fritzemeier, col. 3, ll. 38-40.
7. Fritzemeier discloses that the aluminum and secondary metal
are alloyed together and cryomilled as a solid solution with liquid nitrogen
used as the cooling solution. Fritzemeier, col. 3, ll. 55-58. The alloy
powder is canned, degassed, and compressed and can then be extruded “to
form a wide variety of high strength components, such as those to be used in
a liquid fueled rocket engine.” Fritzemeier, col. 4, ll. 32-33; see generally
id., ll. 9-33. The alloys may be particularly well suited for “turbopump
impellers and propellant ducts for reusable launch vehicles.” Fritzemeier,
col. 4, ll. 59-61. Components “may be forged 35 if extrusion is not capable
of producing a part of the proper shape or size” or that “need additional
ductility in a direction other than the direction of extrusion.” Fritzemeier,
col. 9, ll. 46-50.
8. Polushin discloses “a bellows unit for a combustion chamber of
a liquid-propellant rocket engine with afterburning, which would be
serviceable in a medium of high-temperature, high-pressure gas.” Polushin,
col. 2, ll. 10-14; figs. 1-2. Polushin discloses that a cooling working
medium that includes an oxidizer enters a ring cavity formed by a corrugated
envelope of the bellows. Polushin, col. 6, ll. 14-20. Polushin further
discloses that turbine gas is fed through a gas line and bellows unit to a
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combustion chamber in which it is after-burned and flows out of a nozzle,
generating a thrust force. Polushin, col. 6, ll. 5-9; fig. 1.

ANALYSIS
Claims 20-28 under § 112, first paragraph (enablement)
The Examiner rejected claims 20-28 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. Ans. 5.
The proper test for enablement is whether Appellants’ disclosure is
sufficient for one of ordinary skill in the art to make and use the invention
without undue experimentation. App. Br. 3; In re Wands, 858 F.2d 731,737
(Fed Cir. 1988). The rejection simply states that Appellants’ disclosure does
not identify the fuel and oxidizer tanks, and the rejection fails to discuss the
disclosure in terms of undue experimentation. Ans. 5; Wands, 858 F.2d at
737. Moreover, we agree with Appellants that a determination of which one
of only two storage tanks 16, 18 is a fuel tank and an oxidizer tank cannot
constitute undue experimentation. App. Br. 3-4. We therefore do not
sustain the Examiner’s rejection of claims 20-28 under § 112, first
paragraph.

Claims 1, 2, 4-7, 9, and 17-19 over Kuo and Fritzemeier
Representative Claim 1
Appellants argue the patentability of claims 1 and 17 as a group. App.
Br. 4-6. We select claim 1 as representative. See 37 C.F.R. 41.37(c)(1)(vii).
The Examiner found that Kuo discloses aluminum paper bellows for
fluid pipes, but did not disclose the specific kind of aluminum used. Ans. 6;
FF 1. The Examiner concluded that “it would have been obvious to one of
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ordinary skill in the art . . . to replace Kuo’s aluminum pipes with pipes
made of nano-grained aluminum [as taught by Fritzemeier], whenever nano-
grained aluminum providing extra strength at low temperatures is desired.”
Ans. 6.
Appellants contend that differences in the pipes/air conditioner of Kuo
and the rocket system of Fritzemeier favor a finding of nonobviousness
because “one of ordinary skill in the art would not incur the time, expense
and effort of using Fritzemeier’s alloy in Kuo.” App. Br. 5. Appellants’
argument suggests that the proposed modification involves tradeoffs;
however, such considerations do not necessarily prevent the proposed
combination. See Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) (“a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.”); Winner Int’l Royalty Corp. v. Wang, 202 F.3d
1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the motivating benefit comes
at the expense of another benefit, however, should not nullify its use as a
basis to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.”). Given this, and Appellants’ failure to address the rationale
provided by the Examiner (i.e., to provide extra strength at low
temperatures), we are unpersuaded by this argument.
Appellants also argue that “[t]he Examiner has not established that
one of ordinary skill in the art would have an expectation of success to form
the nano-grained alloy powder of Fritzemeier into a sheet with the proper
pipe shape for Kuo.” App. Br. 6. We find that one of ordinary skill in the
art would have a reasonable expectation of success to shape the nano-
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grained alloy powder of Fritzemeier into bellows such as those disclosed by
Kuo since Fritzemeier discloses that the alloy can be extruded to form
propellant ducts and can be forged to produce parts of proper shape and size
if adequate shaping by extrusion is not achieved. FF 7. For the foregoing
reasons, we find that the Examiner did not err in concluding that the subject
matter of claim 1 would have been obvious from the combination of Kuo
and Fritzemeier; and we sustain the rejection of claims 1 and 17 under §
103(a).

Claims 2, 4, 5, and 9
Claim 2 depends from claim 1, and recites, “wherein the nano-grained
aluminum alloy comprises at least about 0.3 wt% of nitrogen, about 88.7 -
98.7 wt% of aluminum, and about 1 - 11 wt % of a metal selected from a
group consisting of magnesium, lithium, silicon, titanium, and zirconium.”
Claim 9 depends from claim 1 and recites that “the nano-grained aluminum
alloy comprises a grain size less than about 0.5 micrometers (19.7
microinches).”
The Examiner supports this rejection in two ways. First, the
Examiner asserts that Fritzemeier does not disclose the claimed ranges of
claims 2, 4, 5, and 9, but that “[i]t would have been obvious to one having
ordinary skill in the art . . . to optimize the materials used to make the alloy,
since the claimed values are merely an optimum or workable range” which
can be discovered with “only routine skill in the art.” Ans. 7. The Examiner
has not articulated that an ordinary artisan would have recognized weight
percent of materials or grain size as a result-effective variable subject to
routine optimization, nor explained why that would be the case. Appellants
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have persuasively rebutted the Examiner’s rejection based on optimization
by arguing that there is not sufficient articulation and findings to establish
that weight percent of materials or grain size is a result-effective variable.
App. Br. 6; see In re Antonie, 559 F.2d 618, 620 (CCPA 1977). Since a
prima facie case of obviousness has been rebutted, Appellants do not bear
the burden of showing the criticality of the claimed range (see In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.1990)), and the Examiner’s finding
that Appellants failed to provide objective evidence of criticality or
unexpected results (Ans. 7) is not persuasive.
Second, the Examiner states that “[o]fficial [n]otice is hereby taken
that the composition of the nano-grained aluminum as disclosed and as
claimed was known and used in the art at the time of the claimed invention,
see for example Bampton 2009/0186238, [014] for composition, and
Upadhya 6,312,643, col. 3, ll. 42-48, on its aerospace applications.”3 Ans. 7.
The Examiner further states: “With regard to the support for the Official
notice see Bampton 2009/0186238, [014] for composition, and Upadhya
6,312,643, col. 3, ll. 42-48, on its aerospace applications; they teach various
compositions and its aerospace applications.” Ans. 11 (emphasis added).
Appellants contend that “Bampton could only qualify as prior art, if at all,
against the present application under 35 USC 102(e).” App. Br. 7.
Appellants state that “[t]he subject matter of Bampton and the claimed
invention were, at the time the claimed invention was made, commonly
owned. For the Bampton reference, the assignee is Pratt & Whitney
Rocketdyne, Inc., which is a wholly-owned subsidiary of United

3 Bampton (US 2009/0186238 A1; pub. Jul 23, 2009); Upadhya (US
6,312,643 B1; iss. Nov. 6, 2001).
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Technologies Corporation, assignee of the present application.” App. Br. 7.
Accordingly, Appellants contend that Bampton is disqualified as prior art
according to 35 U.S.C. § 103(c)(1). App. Br. 7.
We assume, arguendo, that Bampton does not support the Official
Notice. Upadhya is not challenged by Appellants, and therefore any
challenge is waived since the Board reviews only issues and findings of fact
contested by Appellants. See Ex parte Frye, 94 USPQ2d 1072, 1075-76
(BPAI 2010). Upadhya discloses that “nanoscale aluminum materials have
grain sizes that are typically less than 100 nm” (Upadhya, col. 3, ll. 36-37).
A length of 100 nm converts to 0.1 micrometers. See In re Ahlert, 424 F.2d
1088, 1091 (CCPA 1970) (explaining that “the Patent Office appellate
tribunals, where it is found necessary, may take notice of facts beyond the
record which, while not generally notorious, are capable of such instant and
unquestionable demonstration as to defy dispute.”). Upadhya is sufficient
documentary evidence to support the Examiner taking Official Notice that
the grain size of nano-grained aluminum alloy is less than about 0.1
micrometers (which is less than about 0.5 micrometers as recited in claim 9).
However, we cannot find that Upadhya is sufficient documentary evidence
to corroborate the taking of Official Notice of any well-known weight
percentages of nitrogen, aluminum, or first and second metals in nano-
grained aluminum alloys as recited in claims 2, 4, and 5.
For the foregoing reasons, we find that the Examiner erred in
concluding that the subject matter of claim 2 would have been obvious from
the combination of Kuo, Fritzemeier, and Official Notice of facts as
evidenced by Upadhya and as applied by the Examiner; and we are
constrained to not sustain the rejection of claim 2 (and claims 4 and 5 which
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depend therefrom) under § 103(a). However, we find that the Examiner did
not err in concluding that the subject matter of claim 9 would have been
obvious from the combination of Kuo and Fritzemeier, as well as the
Official Notice of facts as evidenced by Upadhya; and we sustain the
rejection of claim 9 under § 103(a).

Claims 6, 7, 18, and 19
Appellants contend that the Examiner has failed to provide any factual
findings or analysis of the subject matter of claims 6, 7, 18, and 19. App.
Br. 4.
Claims 6 and 7 respectively recite that “the convolutions [of the
flexible duct] include[] alternating crowns and roots” and that the duct
includes “at least one non-convoluted section.” Since we have no factual
findings to review regarding these limitations of claims 6 and 7, we are
persuaded by Appellants that the Examiner has not made a prima facie case
of obviousness. App. Br. 4. See also Frye, 94 USPQ2d at 1075 (citation
omitted) (“The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks – the so
called ‘prima facie case.’”); In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011) (provisions of 35 U.S.C. § 132 violated when rejection is so
uninformative that applicant is prevented from recognizing and seeking to
counter grounds for rejection).
Claim 18 is directed to a positive expulsion device comprising a nano-
grained aluminum bellows and, similarly, claim 19 is directed to a duct
having a nano-grained aluminum bellows. The Examiner found that Kuo
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discloses aluminum bellows and that Fritzemeier discloses nano-grained
aluminum, and concluded that it would have been obvious to form Kuo’s
bellows of nano-grained aluminum. Ans. 6. For that reason, Appellants’
contention that the rejection does not provide findings and analysis is
unconvincing. See App. Br. 4.
Accordingly, we cannot sustain the rejection of claims 6 and 7, and
we sustain the rejection of claims 18 and 19.

Claim 8 over Kuo, Fritzemeier, and Udell4
Appellants argue that the rejection does not provide any factual
findings or analysis of the subject matter of claim 8. App. Br. 4. This
assertion is factually incorrect as the Examiner addresses “a woven wire
sleeve” as set forth in claim 8. Ans. 7-8, 11. Appellants’ remaining
arguments in support of the patentability of claim 8 solely relate to the
perceived deficiencies in the combined teachings of Kuo and Fritzemeier.
App. Br. 7. We have found no such deficiencies in the combination of Kuo
and Fritzemeier. For the foregoing reasons, we find that the Examiner did
not err in concluding that the subject matter of claim 8 would have been
obvious from the combination of Kuo, Fritzemeier, and Udell; and we
sustain the rejection of claim 8 under § 103(a).

4 Although the Final Rejection mailed July 29, 2011 states that claim 8 is
subject to the same ground of rejection as claim 1 (Final Rej. 4), the Answer
clarifies that claim 8 is not subject to the same ground of rejection as claim 1
(Final Rej. 5; Ans. 7-8).
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Claims 3, 10-16, and 20-28 over Polushin, Kuo, and Fritzemeier
Representative Claim 20
Appellants argue the patentability of claims 10-14, 20, and 25 as a
group. App. Br. 8. We select claim 20 as representative. See 37 C.F.R.
41.37(c)(1)(vii).
The Examiner found that Polushin discloses a rocket engine
comprising a fuel tank, an oxidizer tank, and bellows 13. Ans. 11; FF 8.
The Examiner concluded that “[i]t would have been obvious to one of
ordinary skill. . . to replace Polushin bellows with pipes made of nano-
grained aluminum . . . [for] providing extra strength at low temperatures, as
taught by [Kuo/Fritzemeier].” Ans. 11. Appellants contend that Kuo is non-
analogous art. App. Br. 8.
One problem with which Appellants were involved is that of
“conveying a fluid from one location to another” so as to “rout[e] the duct
[carrying the fluid] around other components or to absorb relative movement
between the two locations.” See Spec. para. [0002]. The Examiner found
that one of ordinary skill in the art seeking an element for conveying low
temperature fluids would have had reason to look to the fluid pipe art,
including fluid pipes for air conditioner systems. Ans. 10. Kuo describes
fluid pipes for transporting cool air in many directions. FF 1. The teachings
of Kuo are reasonably pertinent to a particular problem with which the
inventor was involved. See In re Clay, 966 F. 2d 656, 659 (Fed. Cir. 1992)
(“A reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor's endeavor, it is one which, because of the
matter with which it deals, logically would have commended itself to an
inventor's attention in considering his problem.”). Kuo is not non-analogous
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art. For the foregoing reason, we find that the Examiner did not err in
concluding that the subject matter of claim 20 would have been obvious
from the combination of Polushin, Kuo, and Fritzemeier; and we sustain the
rejection of claims 10-14, 20, and 25 under § 103(a).

Claims 15 and 16
Appellants separately argue claims 15 and 16. App. Br. 9. Claims 15
and 16 respectively recite that the nano-grained aluminum bellows is a
“spring” and a “dampener.” Since we have no factual findings to review
regarding these limitations of claims 15 and 16, we are persuaded by
Appellants that the Examiner has not made a prima facie case of
obviousness. See Ans. 8; App. Br. 9; Frye, 94 USPQ2d at 1075; Jung, 637
F.3d at 1362. For the foregoing reasons, we find that the Examiner erred in
concluding that the subject matter of claims 15 and 16 would have been
obvious from the combination of Polushin, Kuo, and Fritzemeier; and we do
not sustain the rejection of claims 15 and 16 under § 103(a).

Claims 21, 23, 24, and 26
Appellants’ arguments in support of the patentability of claims 21, 23,
24, and 26 solely relate to the arguments made with respect to claims 2, 4,
and 5. App. Br. 9. For the reasons described hereinabove with respect to
claims 2, 4, and 5, we find that the Examiner erred in concluding that the
subject matter of claims 21, 23, 24, and 26 would have been obvious from
the combination of Polushin, Kuo, and Fritzemeier; and we do not sustain
the rejection of claims 21, 23, 24, and 26.

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Claims 3, 22, 27, 28
Claims 3 and 22 recite that “the metal is magnesium.” Claims 27 and
28 recite that “the nano-grained aluminum alloy comprises nitride phases
selected from a group consisting of aluminum nitride, magnesium nitride,
[etc.]” and that “the nano-grained aluminum alloy comprises magnesium
nitride,” respectively. The Examiner states that “Kuo in view of Fritzemeier
does not disclose the claimed materials,” but that it would “be within the
general skill of a worker in the art to select a known material (e.g., nitrides)
on the basis of its suitability for the intended use as a matter of obvious
design choice.” Ans. 9.
Appellants contend that “the Examiner has not made any analysis of
the claimed composition versus compositions that are allegedly in the prior
art.” App. Br. 10. The selection of a known material based on its suitability
for its intended use can support a prima facie obviousness determination.
Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335 (1945)
(“Reading a list and selecting a known compound to meet known
requirements is no more ingenious than selecting the last piece to put in the
last opening in a jig-saw puzzle.”). However, the Examiner has not set forth
sufficient factual findings regarding the materials and requirements of the
same and/or their suitability for any intended uses to support their inclusion
in a nano-grained aluminum alloy being a mere matter of design choice.
App. Br. 10. The Examiner’s reliance on MPEP § 2144.07 is misplaced
since it does not establish nor condone the use of per se rules of obviousness
in place of fact-specific analysis. See In re Ochiai, 71 F.3d 1565, 1572 (Fed.
Cir. 1995).
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For the foregoing reasons, we find that the Examiner erred in
concluding that the subject matter of claims 3, 22, 27, and 28 would have
been obvious from the combination of Polushin, Kuo, and Fritzemeier; and
we do not sustain the rejection of claims 3, 22, 27, and 28 under § 103(a).

DECISION
We affirm the Examiner’s decision to reject claims 1, 8-14, 17-20, and
25.
We reverse the Examiner’s decision to reject claims 2-7, 15, 16, 21-
24, and 26-28.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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