Ex Parte Dispenza et al

Board of Patent Appeals and Interferences

May 9, 2012

10029461 (B.P.A.I. May. 9, 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.
10/029,461 12/21/2001 John A. Dispenza 129250-001049/US 5477
32498 7590 05/10/2012
CAPITOL PATENT & TRADEMARK LAW FIRM, PLLC
P.O. BOX 1995
VIENNA, VA 22183
EXAMINER
LIN, KUANG Y
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
05/10/2012 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 JOHN A. DISPENZA and RICHARD A. WARNCKE
____________

Appeal 2010-009404
Application 10/029,461
Technology Center 1700
___________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-4, 6-12, 14-16, 19, and 20. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claims 1 is illustrative of the subject matter on appeal:
1. A method of forming heat exchange surfaces on a core object,
comprising:
placing at least a part of a thermally conductive core object within a
mold cavity that includes a formation that defines one or more fins as heat
exchange surfaces about the core object;
injecting a heated metal slurry into the formation that defines the fins
under a predetermined pressure to substantially simultaneously form the
fins; and
cooling the heated metal slurry to form a contact area that provides a
substantially continuous void free interface between the core object and the
fins when hardened for effective heat transfer across the contact area.

The Appellants appeal, the following rejections under 35 U.S.C.
§ 103(a):
a) claims 1-4, 6-8, and 19 as unpatentable over Miki (US 4,344,477,
issued Aug. 17, 1982) in view of Bradley(5,040,589, issued Aug.
20, 1991), as evidenced by Wei(5,433,511, issued Jul. 18, 1995)
and Prater(6,151,198, issued Nov. 21, 2000) ; and
b) claims 9-12, 14-16, and 20 as unpatentable over the combined
prior art of Miki, Bradley, Wei, Prater, and JP 944(JP 6-292,944,
published Oct. 21, 1994, as translated).
MAIN ISSUE ON APPEAL
Appellants do not separately argue the claims in each ground of
rejection (App. Br. 5-10). Accordingly, we select claim 1 for deciding the
issues on appeal in the first ground of rejection. Appellants’ arguments
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drawn to the second ground of rejection are “similar to the rationales set
forth above [with respect to claim 1]” (App. Br. 11).
Accordingly, the main issue on appeal is:
Did the Examiner reversibly err in determining that the method of
forming heat exchange surfaces of claim 1 would have been obvious over
the applied prior art, because, as alleged by Appellants, the combination of
Miki and Bradley “is impermissible because such a combination would
render one or both of the references unsatisfactory for its intended purpose”?
(App. Br. 7; also App. Br. 6, 8-10)
We answer this question in the negative, and affirm both of the § 103
rejections.
PRINCIPLES OF LAW
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements according to their established functions. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). (“[T]he 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”.). Id. at 418.
“For obviousness under § 103, all that is required is a reasonable
expectation of success.” In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988).
ANALYSIS
We have thoroughly reviewed each of Appellants arguments for
patentability. However, we are in agreement with the Examiner that the
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claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
In reviewing the relevant facts of this case, we agree with the
Examiner that use of the known alternative thixotropic slurry of semi-solid
Mg (required in the instant dependent claims 2, 4) as exemplified in Bradley
for the molten metal of Miki’s molding/casting process would have been
obvious to one of ordinary skill in the art. Notably, the Examiner reasonably
found that it is “common practice” as evidenced by Wei “that either molten
metal or semi-solid [metal] may be injected into the mold cavity to unite a
preform and form a composite cast article” (Ans. 5; Wei, col. 6, ll. 23-30).
The Examiner also reasonably found that the potential benefits of using
semi-solid metal instead of molten metal in a casting process included lower
operating temperatures, reduced metal heat content, reduced gas
entrainment, and reduced solidification shrinkage, as evidenced by Prater
(Ans. 5). In light of the above, a preponderance of the evidence supports the
Examiner’s reasonable determination that the property recited in claim 1 of
“a substantially continuous void free interface” would naturally follow when
using a semi-solid metal slurry as exemplified in Bradley in the molding
process of Miki.
There is no persuasive evidence that using a semi-solid metal in the
method of Miki would have been beyond the skill of one of ordinary skill in
the art. KSR, 550 U.S. at 417. Contrary to Appellants’ assertions (App. Br.
8), the results of using a semi-solid Mg slurry as a known alternative to
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molten metal when molding/casting (e.g., such that gas entrainment and
solidification shrinkage can be reduced) would have been expected results
(e.g., see Ans. 7). In this regard, the claimed invention merely applies the
known technique of using a semi-solid metal as an alternative to molten
metal to yield predictable results. See KSR, 550 U.S. at 416 (“The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.”).
It is now well established that ordinary creativity is presumed on the
part of one of ordinary skill in the art. See KSR, 550 U.S. at 421(“[a] person
of ordinary skill is also a person of ordinary creativity, not an automaton.”).
Contrary to Appellants’ assertions, a preponderance of the evidence supports
the Examiner’s determination that an artisan of ordinary skill would have
known to use temperatures and other process parameters appropriate for a
semi-solid metal slurry being used in the casting process (App. Br. 6; Ans.
8-9). Thus, the Examiner’s determination that the property recited in the
claim of “a substantially continuous void free interface” would follow when
using a semi-solid metal slurry is also reasonable.
Stated differently, the fact that Appellants may have recognized another
property which would flow naturally from following the teachings or
suggestion of the known alternative semi-solid metal slurry for casting
cannot be the basis for patentability when the differences, if any, would
otherwise have been obvious. See, e.g., In re Huai-Hung Kao, 639 F.3d
1057, 1070 (Fed. Cir. 2011) (“Maloney’s express teachings render the
claimed controlled release oxymorphone formulation obvious, and the
claimed ‘food effect’ adds nothing of patentable consequence.”); In re
Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record
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explicitly discusses the [limitation], [applicants’] application itself instruct
that [the limitation] is not an additional requirement imposed by the claims
on the [claimed invention], but rather a property necessarily present in [the
claimed invention]”); see also, e.g., In re Wiseman, 596 F.2d 1019, 1023
(CCPA 1979) (rejecting the notion that “a structure [or method] suggested
by the prior art, and, hence, potentially in the possession of the public, is
patentable … because it also possesses an inherent, but hitherto unknown,
function which [patentees] claim to have discovered. This is not the law. A
patent on such a structure [or method] would remove from the public that
which is in the public domain by virtue of its inclusion in, or obviousness
from, the prior art.”).
Thus, the Examiner’s determination that the claimed method would
have been obvious to one of ordinary skill in the art is reasonable.
Notably, Appellants have not directed us to any persuasive technical
reasoning nor evidence that the artisan could not have predictably modified
Miki’s casting process to use the semi-solid metal slurry of Bradley so as to
result in the forming method as claimed (App. Br.; Reply Br. generally).
With respect to the second ground of rejection including independent
claim 9, Appellants have also not directed us to any persuasive technical
reasoning nor evidence to rebut the Examiner’s reasonable determination
that an artisan of ordinary skill would have predictably modified the
combined prior art of Miki/Bradley/Wei/Prater to use a conventional known
alternative technique of a caterpillar type continuous casting machine with
its resultant continuous metal casting as exemplified in JP 944 versus the
conventional batch casting process exemplified in Miki (Ans. 9; App. Br.
11; Reply Br. 3).
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In light of these circumstances, the preponderance of the evidence
supports all of the Examiner’s rejections, and Appellants have not shown
reversible error in the Examiner’s determination that the subject matter of
independent claims 1 and 9 (as well as all the remaining not separately
argued claims in each ground of rejection) would have been obvious, within
the meaning of 35 U.S.C. § 103, over the applied prior art.
Accordingly, we sustain each of the § 103 rejections of the claims on
appeal.
DECISION
The decision of the Examiner is 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)(1).

AFFIRMED

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