10180878 (P.T.A.B. Jul. 23, 2013)

Ex Parte Di Serio

Patent Trial and Appeal BoardJul 23, 2013

10180878 (P.T.A.B. Jul. 23, 2013)

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. 10/180,878 06/26/2002 Emile Di Serio 1759.088 1394 23405 7590 07/24/2013 HESLIN ROTHENBERG FARLEY & MESITI PC 5 COLUMBIA CIRCLE ALBANY, NY 12203 EXAMINER OMGBA, ESSAMA ART UNIT PAPER NUMBER 3726 MAIL DATE DELIVERY MODE 07/24/2013 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 PATENT TRIAL AND APPEAL BOARD ________________ Ex parte EMILE DI SERIO ________________ Appeal 2011-002018 Application 10/180,878 Technology Center 3700 ________________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and JAMES A. TARTAL, Administrative Patent Judges. TARTAL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002018 Application 10/180,878 2 STATEMENT OF THE CASE1 Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 7-10. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellant’s claimed invention relates to the production of light alloy components, particularly aluminum, obtained from casting, forging and similar methods. Spec. 1, ll. 4-7. Claim 7, reproduced below, is illustrative of the subject matter on appeal: 7. A method for making an aluminum alloy component consisting essentially of the steps of: (A) casting an aluminum alloy in a mold at a temperature ranging from about 250°C to 500°C to obtain a heated aluminum alloy preform; (B) transferring and totally submerging the heated aluminum alloy preform in a graphite coating tank to enable a graphite and water solution to be deposited on the heated preform; (C) removing the heated aluminum alloy preform from the graphite coating tank to a drying zone, where the temperature of the heated preform enables the water to evaporate naturally such that the heated preform is coated uniformly with graphite, thereby producing an aluminum alloy preform uniformly coated with graphite; (D) transferring the aluminum alloy preform uniformly coated with graphite from the drying zone to a tunnel furnace to undergo a solution heat treatment at a temperature ranging from about 250°C to 500°C; 1 Our decision will make reference to Appellant’s Appeal Brief (“App. Br.,” filed Feb. 24, 2010) and Reply Brief (“Reply Br.,” filed Sep. 7, 2010), and the Examiner’s Answer (“Ans.,” mailed Jul. 6, 2010). Appeal 2011-002018 Application 10/180,878 3 (E) removing the aluminum alloy preform uniformly coated with graphite that has been subjected to the solution heat treatment from the tunnel furnace; (F) transferring the aluminum alloy preform uniformly coated with graphite from the tunnel furnace to a forging die that defines an impression the measurements of which are slightly smaller than those of the mold, wherein the forging die has two sections; (G) pressing the two sections of the forging die together to exert a forging and die-stamping effect on the aluminum alloy preform uniformly coated with graphite to obtain a finished rough component; and (H) cooling the finished rough component at ambient temperature or by accelerated cooling or by hardening to obtain the aluminum alloy component. The Examiner relies upon the following evidence: Sueda JP 60-124433 A Jul. 3, 1985 Appellant’s Admitted Prior Art (hereinafter “AAPA”), Specification, pages 1-3. Claims 7-10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over AAPA and Sueda. FINDINGS OF FACT We find that the findings of fact which appear in the Analysis below are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). Appeal 2011-002018 Application 10/180,878 4 ANALYSIS Obviousness based on AAPA and Sueda Claims 7-10 Appellant argues claims 7-10 as a group (App. Br. 5-8, Reply Br. 2- 8). We select claim 7 as the representative claim for this group, and the remaining claims 8-10 each stand or fall with claim 7. 37 C.F.R. § 41.37(c)(1)(vii). Claim 7 recites steps to a method for making an aluminum alloy component, each of which is disclosed by the AAPA except for submerging the heated aluminum alloy preform in a graphite coating tank and removing the heated aluminum alloy preform from the graphite coating tank to a drying zone “thereby producing an aluminum alloy preform uniformly coated with graphite.” See Ans. 3-4. Sueda discloses submerging the preform in a graphite coating tank and removing the preform from the graphite coating tank to a drying zone. Appellant contends that Sueda fails to teach that graphite is uniformly adhered to the preform to produce a uniform coating of graphite on the preform. See App. Br. 6. Appellant’s argument is premised on Sueda’s allusion to the eventual formation of cracks in the lubricant layer when the preform is worked by a tool. We find Appellant’s argument not persuasive because it is not commensurate with the scope of the claim where there is no dispute that Sueda discloses the steps Appellant claims to produce a uniform coating of graphite on the preform. Appellant cannot distinguish claim 7 over Sueda by merely stating in the claim the result of following steps disclosed by Sueda. Further, we agree with the Examiner that submerging and removing the preform from a graphite coating tank, as disclosed by Appeal 2011-002018 Application 10/180,878 5 Sueda, results in the graphite being uniformly coated on the preform regardless of whether cracks may ultimately form in the lubricant layer. See Ans. 7. Appellant further asserts that because Sueda discloses the additional step of treating stock with an overheated vapor to form an oxide film prior to dipping in a graphite coating tank, the claimed method is not obvious merely because it fails to include the oxide film step. Appellant’s argument is misplaced. Sueda (pp. 2-3) expressly states that “[i]n the current warm forging process, a powdered solid lubricant such as … graphite is dispersed in oil, water or a solvent and lubrication is adhered on the surface of the stock by dipping or spraying.” Thus, Appellant’s claimed method of submerging and removing (i.e., dipping) a preform into a graphite coating tank was well known. It is irrelevant that Sueda identifies drawbacks to dipping alone or suggests further improvements to the method by adding an oxide film step. The elements of Appellant’s claim are indisputably disclosed by AAPA and Sueda. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 415-16 (2007). We also agree with the Examiner that although the claim specifies “consisting essentially of” a series of steps, inclusion of the additional oxide film step disclosed by Sueda would not materially affect the basic and novel characteristics of the claimed invention. Appellant only suggests that adding an oxide film step “would run counter to the desired reduction in cost and production time that the claimed invention unexpectedly achieved over the prior art.” Reply Br. 5. In this case, cost and time are not characteristics of Appeal 2011-002018 Application 10/180,878 6 Appellant’s invention, and even if they were, Appellant has offered insufficient evidence to suggest any material change in either. See In re De Lajarte, 337 F.2d 870, 874 (CCPA 1964). Sueda’s disclosure of additional steps does not amount to “teaching away” as it is merely an alternative, not a disclosure that criticizes, discredits, or otherwise discourages the solution claimed. Similarly, we find the suggestion that “unexpected results” were obtained by following the dipping steps known in the art not persuasive. Accordingly, we conclude Appellant has not overcome the Examiner’s rejection of claims 7-10 under 35 U.S.C. § 103(a) as being unpatentable over AAPA and Sueda. DECISION We AFFIRM the decision of the Examiner to reject claims 7-10. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED hh