Ex Parte Forbes Jones et al

Patent Trial and Appeal Board

Jul 31, 2018

14524052 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/524,052 10/27/2014 Robin M. Forbes Jones
66376 7590 08/02/2018
ALLEGHENY TECHNOLOGIES INCORPORATED
1000 SIX PPG PLACE
PITTSBURGH, PA 15222-5479
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
TAV-1890CIPCON 3069
EXAMINER
NGUYEN, HUNG D
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
maria.dunn@atimetals.com
A TIDocketing@atimetals.com
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBIN M. FORBES JONES and STERRY A. SHAFFER
Appeal2017-005235
Application 14/524,052
Technology Center 3700
Before MICHAEL L. HOELTER, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-005235
Application 14/524,052
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals 1 from the
Examiner's decision, as set forth in the Final Office Action dated
December 3, 2015 ("Final Act."), rejecting claims 1-26, which constitute all
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
THE CLAIMED SUBJECT MATTER
The claims are directed to a refining and casting apparatus and
method. Claims 1, 8, 12, and 19 are the independent claims on appeal.
Claim 1, reproduced below with disputed limitations italicized for emphasis,
is illustrative of the claimed subject matter:
1. An apparatus for producing a preform by nucleated casting,
the apparatus comprising:
an atomizing nozzle is structured to produce a droplet
spray of molten metallic material for producing the preform;
a mold in which the preform is formed, wherein said mold
comprises:
a base,
a side wall, and
an axis of rotation, wherein said base rotates about
said axis of rotation, and wherein said side wall includes a
top surface and is adapted to selectively rotate completely
about said axis of rotation, wherein said base is movable
relative to said side wall along said axis of rotation to
control a distance between said atomizing nozzle and said
base; and
ATI Properties, Inc. ("Appellant") is the applicant pursuant to 37
C.F .R. § 1.46, and is identified as the real party in interest. Appeal Brief,
dated August 9, 2016 ("Appeal Br."), at 4.
2
Appeal2017-005235
Application 14/524,052
wherein said atomizing nozzle is configured to produce
said droplet spray in a direction that is neither parallel to nor
collinear with said axis of rotation, and wherein at least a portion
of said droplet spray is directed into the mold and passes over
said top surface to remelt at least a portion of metallic material
accumulated on said top surface.
REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Hunt
Bungeroth
Ashok
Carter
us 4,690,875
us 4,697,631
us 5,381,847
us 5,649,992
REJECTIONS
Sept. 1, 1987
Oct. 6, 1987
Jan. 17, 1995
July 22, 1997
The Examiner made the following rejections:
1. Claims 1, 3, 5-7, 1 7, and 18 stand rejected under pre-AIA 3 5
U.S.C. § 103(a) as being unpatentable over Bungeroth and Hunt.
2. Claim 2 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bungeroth, Hunt, and Ashok.
3. Claims 4, 8, and 11 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bungeroth, Hunt, and Carter.
4. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bungeroth, Hunt, Carter, and Ashok.
5. Claims 12-16, 19, and 22-26 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bungeroth and Carter.
6. Claims 20 and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bungeroth, Carter, and Ashok.
3
Appeal2017-005235
Application 14/524,052
Appellant seeks our review of these rejections.
DISCUSSION
The Examiner rejected the claims as unpatentable over the prior art.
For the reasons explained below, the Examiner's rejections are erroneous
and, therefore, are REVERSED.
Independent Claim 1
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bungeroth and Hunt. The preamble of claim 1 recites an
"apparatus for producing a preform by nucleated casting." Appellant asserts
that the Examiner ignored this claim limitation. Appeal Br. 21; Reply Brief,
dated February 8, 2017 ("Reply Br."), at 4. Appellant asserts that
"terminology in the preamble that limits the structure of the claimed
invention must be treated as a claim limitation" whereas "preamble language
merely extolling benefits or features of the claimed invention does not limit
the claim scope without clear reliance on those benefits or features as
patentably significant." Appeal Br. 21-22 (citations omitted).
Appellant contends that, here, "the nucleated casting language gives
structure to the claimed apparatus." Id. at 22. According to Appellant, the
Specification differentiates between nucleated casting and spray forming:
spray forming is differentiated from nucleated casting in
Paragraphs [0038] through [0041] of the [Specification]. In
particular, in a nucleated casting operation, up to about 30
volume percent of each droplet is solidified. Id. at [0029]. In
contrast, in a typical spray forming operation, 40 to 70 volume
percent of each droplet is solidified. Id. Because the droplets in
a spray forming operation are more solidified, spray forming can
be a "moldless" operation, whereas a nucleating casting
4
Appeal2017-005235
Application 14/524,052
operation utilizes a mold to collect the less solidified droplets.
Id. at Paragraph [0005].
Appeal Br. 22.
In response to Appellant's argument, the Examiner explains that "the
recitation [] has not been given patentable weight because it has been held
that a preamble is denied the effect of a limitation where the claim is drawn
to a structure and the portion of the claim following the preamble is a self-
contained description of the structure not depending for completeness upon
the introductory clause." Answer dated December 22, 2016 ("Ans."), at 5
(citingKropa v. Robie, 88 USPQ 478 (CCPA 1951)). The Examiner's
explanation is not persuasive because it is conclusory and does not address
the explicit definitions of nucleated casting and spray forming in the
Specification.
We agree with Appellant that the Specification defines "nucleated
casting" as "up to about 30 volume percent of each droplet is solidified" and
"spray forming" as "about 40 to 70 volume percent of each droplet is
solidified." See, e.g., Spec. ,r 29; Appeal Br. 22. In light of the
Specification's definition, the term "nucleated casting" in the preamble of
claim 1 limits the structure of the "droplet spray" recited in the body of
claim 1. We understand that the Examiner does not find that nucleated
casting is disclosed in Bungeroth or Hunt. Thus, the rejection of claim 1 is
not sustained.
Independent Claims 1 and 8
Claim 1 recites a "side wall ... is adapted to selectively rotate
completely about said axis of rotation." Similarly, claim 8 recites "the side
wall is adapted to rotate completely about the axis of rotation." While
5
Appeal2017-005235
Application 14/524,052
claim 8 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Bungeroth, Hunt, and Carter, the Examiner relies on the combination of
Bungeroth and Hunt for disclosing these "rotate completely" limitations in
claims 1 and 8.
For these limitations, the Examiner finds that Bungeroth discloses side
wall 23 that "selectively rotate[ s] with an angle of rotation about the axis of
rotation," but "does not disclose the side wall is adapted to selectively rotate
completely about the axis of rotation." Final Act. 3; Ans. 2. The Examiner
further finds that "Hunt discloses the mold (22) having the side wall (via 24)
is adapted to selectively rotate completely about the axis of rotation." Final
Act. 3 (citing Hunt, 4:33-5: 10). The Examiner determines that it would
have been obvious to one of ordinary skill in the art to modify Bungeroth's
side wall "to selectively rotate completely about the axis of rotation, as
taught by Hunt, for the purpose of avoiding uneven buildup of metal on the
ingot which is significant in preventing limitations on production rate due to
excessive buildup at the periphery of the ingot." Id. at 3--4.
Appellant contends that the Examiner's reasoning is erroneous
because Bungeroth "expressly teaches away from a modification in which
the boundary surfaces rotate completely about the axis of rotation." Appeal
Br. 18. Appellant explains that Bungeroth "discloses a spray forming
apparatus having a catching surface that can rotate about an axis of rotation
and retract relative to the spray source along the axis of rotation." Id. (citing
Bungeroth 2: 19-25). Appellant cites a portion of Bungeroth that teaches it
is "essential ... to keep the boundary surface basically stationary":
The boundary surfaces can completely or partially surround the
outside contour of the catching surface. To produce cylindrical
ingots, a cylindrical section inside the ingot may be used. It is
6
Appeal2017-005235
Application 14/524,052
essential in each case to keep the boundary surface basically
stationary. As already mentioned, this does not mean absolutely
fixed; rather, the boundary surface is not moved longitudinally
with the resulting ingot, and to that extent is stationary.
However, it can be advantageous to permit the boundary surface
to oscillate with a slight stroke (e.g., 3 mm) around a midposition
to prevent caking of the agglomerate on the boundary surface.
This oscillating movement takes place in the direction of the axis
of rotation of the catching surface (i.e., removing direction) in
the production of a cylindrical ingot, there can also be carried
out a rotation of the boundary surface {e.g., by a 5°-10° angle)
around the axis of rotation of the catching surface.
Appeal Br. 19 (quoting Bungeroth 3:39--56 (emphases added)). Appellant
concludes that Bungeroth's "boundary surface 23 is basically stationary" and
Bungeroth "teaches limited (i.e., partial) rotation of the boundary surfaces
23" because "it is essential to avoid complete rotation of the boundary
surfaces 23 about the axis of rotation." Id. at 19--20.
In response to Appellant's argument, the Examiner merely states that
Bungeroth's boundary surface can rotate about by a 5-10° angle about the
axis of rotation and repeats the disputed claim limitation. The Examiner,
however, does not persuasively address Bungeroth's teaching that it is
"essential" to keep the boundary surface "basically stationary" which
teaches away from the Examiner's proposal to rotate the boundary surface
completely about the axis of rotation. For this reason, the rejection of claims
1 and 8 are not sustained.
Independent Claims 12 and 19
Claim 12 recites "impinging at least a portion of the droplet spray on
the top surface of the mold as the droplet spray is deposited into the mold to
remove metallic material that has accumulated on the top surface." Claim
7
Appeal2017-005235
Application 14/524,052
19 recites "impinging at least a portion of the droplet spray on metallic
material accumulated on the top surface of the side wall to remove at least a
portion of metallic material accumulated on the top surface."
The Examiner's annotated Figure 2 of Bungeroth is presented below:
t-19.2
The Examiner's annotated Figure 2 illustrates where the Examiner's asserts
that Bungeroth discloses
a method of casting a metallic material comprising impinging at
least a portion of the droplet spray ( 6) on the top surface of the
8
Appeal2017-005235
Application 14/524,052
mold as the droplet spray is deposited into the mold to remove
metallic material that has accumulated on the top surface since
the droplet spray is at an angle with respect to the mold,
therefore, at least a portion of the droplet deposited on the top
surface of the mold.
Final Act. 13.
Appellant asserts that the rejection is erroneous because neither
Bungeroth nor Carter disclose the "impinging" action recited in claims 12
and 19. Appeal Br. 28. Appellant asserts that "impinge" means "to strike,
dash, or collide" and "involves contact." Appeal Br. 28 ( citing
Dictinary.com). Referring to Figure 2 of Bungeroth, Appellant asserts that
"no part of the spray jet 6 contacts - strikes, dashes, or collides with - the
top surface of the boundary surface 23." Id. Appellant also asserts that
Bungeroth "never states that part of the spray jet 6 contacts the top surface
of the boundary surface 23." Id. We agree.
The Examiner's assertion that "at least a portion of droplet spray (6) is
passed over and on top surface of the mold as the droplet spray is deposited
into the mold to remove metallic material accumulated on the top surface
during the process" is unsupported by any citation in Bungeroth. Ans. 13.
The Examiner's annotated Figure 2, for example, only shows that the spray
contacts the boundary surface; no portion of the spray contacts the top
surface of the boundary surface 23.
For this reason, the rejection of independent claims 12 and 19 is not
sustained.
9
Appeal2017-005235
Application 14/524,052
Dependent Claims 2-7, 9-11, 13-18, and 20-26
Claims 2-7, 9-11, 13-18, and 20-26 depend from one of independent
claims 1, 8, 12, and 19. The rejections of these dependent claims are not
sustained.
DECISION
For the above reasons, the Examiner's rejections of claims 1-26 are
REVERSED.
REVERSED
10