Ex Parte Frasier et al

Patent Trial and Appeal Board

Mar 18, 2013

11999705 (P.T.A.B. Mar. 18, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/999,705 12/06/2007 INV001Donald J. Frasier RORO-560 9620
54621 7590 03/19/2013
Krieg DeVault LLP
One Indiana Square
Suite 2800
Indianapolis, IN 46204
EXAMINER
KERNS, KEVIN P
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
03/19/2013 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 DONALD J. FRASIER,
M. Eric Schlienger, Guy Allen Brady, Matthew T. Kush, and
Patrick A. Vessely
________________

Appeal 2011-012645
Application 11/999,705
Technology Center 1700
________________

Before MARK NAGUMO, MICHAEL P. COLAIANNI, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
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A. Introduction1
Donald J. Frasier, M. Eric Schlienger, Guy Allen Brady, Matthew T.
Kush, and Patrick A. Vessely (“Frasier”) timely appeal under
35 U.S.C. § 134(a) from the final rejection2 of claims 114, 116-126,
128-135, 170, and 171, which are all of the pending claims. We have
jurisdiction. 35 U.S.C. § 6. We AFFIRM-IN-PART.
The subject matter on appeal relates to methods of casting. Much of
the disclosure of the 705 Specification is concerned with the casting of
components for gas turbine engines made from superalloys. (Spec. 1.) Such
components are said to require precision casting of structures that include an
internal network of apertures and passageways. (Id.) Single cast single
crystal structures formed by directional solidification of superalloys initiated
by a starter seed are said to be of special interest. (Id.)

1 Application 11/999,705, Method and apparatus for production of a cast
component, filed 6 December 2007 as a division of 10/633,439, filed 1
August 2003 (now U.S. Patent 7,418,993) and claiming the benefit via
continuations to 20 November 1999, and via a continuation-in-part of an
application filed 28 May 1999 and a provisional application
filed 20 November 1998. The specification is referred to as the
“705 Specification,” and is cited as “Spec.” The real party in interest is
listed as Rolls-Royce Corp., a subsidiary of Rolls-Royce, plc. (Appeal
Brief, filed 11 April 2011 (“Br.”), 2.)
2 Office action mailed 9 March 2010 (“Final Rejection”; cited as “FR”).
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The claims before us, however, are significantly broader, as illustrated
by representative claim 114, which reads:
A method, comprising:
providing a casting mold having a plurality of layers of a
material bonded together to define
a cavity for receiving a molten metal material therein and
an exit in communication with the cavity;
orienting the casting mold at an inclination;
rotating the casting mold
to free any material located within the cavity and not
bonded to one of the plurality of layers of material;
passing the material located within the cavity out of the
cavity and through the exit; and
moving the casting mold along a pathway.
(Claims App., Br. 13; indentation, paragraphing, and emphasis added.)
Claim 170 depends from claim 114 and requires that at least two
casting molds be provided, and that a spacer be conveyed between the at
least two of the casting molds. (Id. at 16.)
The other independent claim, method claim 126, is similar in the
disputed limitations to claim 114, in that claim 126 also requires “rotating
the ceramic shell [mold] about a first axis” and “moving the ceramic shell
[mold] along a predetermined pathway.” (Id. at 14-15.)
Claim 171 depends from claim 126 and requires further that the
casting mold have a toothed member formed in it that engages a member
that causes the casting mold to rotate.
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The Examiner maintains the following grounds of rejection:3
A. Claims 114, 116, 117, 120, 124, 126, 128, 129, 132, 134,
and 135 stand rejected under 35 U.S.C. § 102(b) in view of
Sachs.4
B. Claims 118, 119, 121-123, 125, 130, 131, 133, 170, and 171
stand rejected under 35 U.S.C. § 103(a) in view of Sachs.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we find that Frasier has only presented arguments for the
separate patentability of claims 114 (rejected as anticipated—independent
claim 126 is argued in parallel with claim 114), and for claims 170 and 171
(rejected as obvious). We also find that the Examiner has addressed specific
limitations of the rejected claims individually or in groups (FR 2-5;
Ans. 5-7), and that the Examiner appears to have responded to specific
criticisms of Frasier (FR 5-7; Ans. 8-12).
On the present record, the claims rejected as anticipated by Sachs
stand or fall with claim 114, and the claims rejected as obvious in view of
Sachs, but for separately argued claims 170 and 171, also stand or fall with
claim 114.
During examination, the proposed claims are given “the broadest
reasonable meaning of the words in their ordinary usage as they would be

3 Examiner’s Answer mailed 27 May 2011 (“Ans.”).
4 Emmanuel M. Sachs et al., Ceramic Mold Finishing Techniques for
Removing Powder, U.S. Patent 5,814,161 (1998).
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understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.”
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997)
We first conclude that, of the four steps recited in claim 114,
providing the mold logically must occur first, and passing the material out of
the cavity reasonably must follow the rotational motion to free non-bonded
material within the cavity. However, the steps of orienting the casting mold
at an angle, and moving the casting mold along a pathway, can occur at any
time during methods within the scope of the claim, as the claim does not
recite a required order, either expressly or implicitly.
The only limitation of claim 114 argued as not anticipated by Sachs is
the step of “moving the casting mold along a pathway.”
Frasier has not directed our attention to any definition of the term
“pathway” in the 705 disclosure other than the sentence bridging pages 45
and 46. (Br. 4, ll. 2-3.) The Specification states in that sentence, referring to
Figure 31 [not reproduced here], “[t]he containers 80 pass along a container
support 103 in the direction of arrow P as they are rotated about axis Z.”5
(Spec., sentence bridging 45-46.) We shall not, however, read limitations
from a preferred embodiment disclosed in the Specification into the claims.
In re Am. Acad. Sci. Tech Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Nor
shall we scour the record seeking other evidence that might support Frasier’s

5 For clarity, throughout this Opinion, labels to elements shown in figures
are reproduced in bold font, regardless of their presentation in the original
document.
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argument. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991)
(“It is not the function of this court to examine the claims in greater detail
than argued by an appellant, looking for nonobvious distinctions over the
prior art.”)
The Examiner has interpreted the term “pathway” as encompassing
any motion of the mold, whether “translational” or “linear” or motion
around a rotational axis, such as the motions undergone by the mold during
the movements of the mold to tumble metal particles added to the mold
cavity to displace lightly adhered ceramic powder shown in Sachs Figure 4.
(FR 3-4; Ans. 9-10.) Given the broad meaning of the phrase “moving along
a pathway,”6 we are not persuaded of harmful error in the Examiner’s
anticipation rejection.
We therefore affirm the rejections for anticipation and all rejections
for obviousness except for the rejections of claims 170 and 171, to which we
now turn.
The Examiner appears to find that a casting mold tube is an additional
mold, “since it [a mold tube] is operable to conform to surfaces of the
casting mold, thus providing two molds.” (FR 5, 2d para.; Ans. 7, 2d full
para.) The Examiner concludes that “[i]t would have been obvious to cast as
many other components to the casting mold [sic].” (Id.) Frasier denies that
Sachs “discloses having two casting molds, let alone . . . a spacer between
casting molds.” (Br. 11, 1st full para.)

6 We reject Frasier’s cross-country analogy (Br. 9) as unduly narrow:
travelling off the beaten path or making one’s own way is making one’s own
path and following it.
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The Examiner has not cited any credible evidence in support of the
determination that it would have been obvious to use a “casting mold tube”
in the process described by Sachs. Nor has the Examiner cited any credible
evidence supporting the conclusion that it would have been obvious to use a
casting mold tube as a second mold. Moreover, the Examiner has not
directed our attention to evidence of record that it would have been obvious
to use a “spacer” between the casting mold tube used as a mold and the
casting mold. Obviousness is a legal conclusion based on underlying
findings of fact. In the absence of underlying evidence, we reverse the
rejection of claim 170.
Regarding the rotating of the mold7 by engaging a toothed member
formed in the casting mold required by claim 171, again, the Examiner does
not draw our attention to any evidence in the record supporting the
conclusion of obviousness. To the extent the Examiner is relying, silently,
on Official Notice, Frasier’s response that no rational underpinning has been
established for the conclusion stands as a challenge to the silent Official
Notice. Although the Examiner appears to view the claim as extremely
broad and mechanically simple, even an extremely broad and mechanically
simple claim cannot be rejected over any disclosure without an explanation,
supported by evidence, especially when “Official Notice” is challenged.
The Examiner has not come forward with an explanation, supported by

7 We assume, without deciding, that the “ceramic shell” recited in claim 126
provides adequate antecedent basis for the recitation of a “casting mold” in
claim 171. We urge examiners and appellants, in general, to deal with such
incongruities prior to appeal.
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evidence, that substantiates the (silent) Official Notice. We therefore
reverse the rejection of claim 171 as obvious.
C. Order
We AFFIRM the rejection of claims 114, 116, 117, 120, 124, 126,
128, 129, 132, 134, and 135 under 35 U.S.C. § 102(b) in view of Sachs.
We AFFIRM the rejection of claims 118, 119, 121-123, 125, 130,
131, and 133 under 35 U.S.C. § 103(a) in view of Sachs.
We REVERSE the rejection of claims 170 and 171 under
35 U.S.C. § 103(a) in view of Sachs.
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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