10441459 (B.P.A.I. Jan. 30, 2012)

Ex Parte Kayser et al

Board of Patent Appeals and InterferencesJan 30, 2012

10441459 (B.P.A.I. Jan. 30, 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. 10/441,459 05/19/2003 Gregory F. Kayser 7886U; 67397-088PUS1 2800 54549 7590 01/30/2012 CARLSON, GASKEY & OLDS/PRATT & WHITNEY c/o CPA Global P.O. Box 52050 Minneapolis, MN 55402 EXAMINER OMGBA, ESSAMA ART UNIT PAPER NUMBER 3726 MAIL DATE DELIVERY MODE 01/30/2012 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 GREGORY F. KAYSER, DANIEL L. WISNER, and JOHN G. SOMERVILLE ____________________ Appeal 2010-006191 Application 10/441,459 Technology Center 3700 ____________________ Before EDWARD A. BROWN, WILLIAM V. SAINDON, and MICHAEL C. ASTORINO, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appeal 2010-006191 Application 10/441,459 2 STATEMENT OF THE CASE Gregory F. Kayser et al. (Appellants) filed a Request for Rehearing ("Request") under 35 U.S.C. Â§ 41.52, requesting that we reconsider our Decision on Appeal of November 1, 2011 ("Decision"), in which we reversed the Examiner's rejections under 35 U.S.C. Â§ 103(a) of: (i) claims 13 and 18-21; (ii) claims 14 and 15; (iii) claims 16 and 17; (iv) claim 22; and (v) claim 23. In addition, we entered a new ground of rejection of claim 13 under 35 U.S.C. Â§ 103(a), and a new ground of rejection of claim 23 under 35 U.S.C. Â§ 103(a). In the Request, Appellants argue that the Board incorrectly entered a new ground of rejection of claim 13 under 35 U.S.C. Â§ 103(a), and a new ground of rejection of claim 23 under 35 U.S.C. Â§ 103(a). SUMMARY OF DECISION We grant Appellants' Request. In light of Appellants' arguments presented in the Request, we will modify our Decision and withdraw the new grounds of rejection of claims 13 and 23 under 35 U.S.C. Â§ 103(a). ANALYSIS New Ground of Rejection of claim 13 as unpatentable over Owczarski, Freshcorn, and Stueber Claim 13 recites "etching surfaces of the composite structure to be bonded together to remove oxide" and "electrodepositing a layer of nickel on said etched surfaces of the composite structure to be bonded together before oxidation of said etched surfaces." In the Decision, we determined that Owczarski discloses a method for diffusion bonding nickel-base super alloys that includes electroplating mating surfaces with nickel, and diffusion Appeal 2010-006191 Application 10/441,459 3 welding alloy surfaces. (Decision 7). We acknowledged that Owczarski does not disclose etching surfaces of the composite structure that are to be bonded to remove oxide. We determined that Freshcorn discloses etching surfaces that will be bonded together to remove oxide, and electrodepositing the etched surfaces with nickel while the part is free of metallic oxides. (Id. at 8). We concluded that it would have been obvious to one skilled in the art, in view of Freshcorn, to etch surfaces of the Owczarski composite structure to be bonded together to remove oxide, and electrodeposit a nickel layer on the etched surfaces before they oxidize. (Id.). Owczarski describes "[p]rior to diffusion welding, the surfaces to be joined were ground flat and parallel and polished with a 600 grit metallographic paper. Immediately prior to bonding, the mating surfaces were degreased with acetone, rinsed with methanol and blown dry with Freon." (Owczarski, col. 3, ll. 21-25). In the Request, Appellants contend there is no reason to use etching in Owczarski. (Request 2). Appellants specifically contend that, in Owczarski, just prior to diffusion welding, the surfaces that are to be joined are ground flat and then degreased with acetone, and that "the grinding action in Owczarski would provide fresh, flat surfaces that would be free of any oxides." (Id.). Appellants further contend that "the grease that is presumably from the grinding process would protect the surfaces from oxidizing during the grinding." (Id.). Appellants contend that one of ordinary skill in the art would therefore not be prompted to use etching in Owczarski. (Id.). Appellants' contentions are persuasive. Owczarski does not describe, nor do we find other evidence suggesting, that oxide was present on the surfaces to be joined after the surfaces were ground flat and parallel and Appeal 2010-006191 Application 10/441,459 4 degreased with acetone. We agree with Appellants that without an oxide being present on the surfaces of Owczarski's parts to be joined, one of ordinary skill in the art would not have had sufficient reason to apply Freshcorn's etching method for removing oxides from surfaces. Appellants also contend that one of ordinary skill in the art would not use Freshcorn's etching instead of the grinding in Owczarski because the grinding also provides flat surfaces for bonding in Owczarski. (Request 2- 3). This contention is also persuasive. As noted above, Owczarski also teaches polishing the surfaces. Freshcorn does not describe that its etching method produces surfaces that are flat and parallel for joining together, and are polished, as described in Owczarski. We also agree with Appellants' contentions that Stueber does not cure the deficiencies of Owczarski and Freshcorn with respect to claim 13. (Request 3). Accordingly, we withdraw our new ground of rejection of claim 13. New Ground of Rejection of claim 23 as unpatentable over Owczarski, Freshcorn, Stueber, and Bird Claim 23 recites similar features as claim 13. Our findings and conclusions and Appellants' contentions for claim 23 are similar to those discussed above for claim 13. (Decision 9-10; Request 4). We also agree with Appellants' contentions that Bird does not cure the deficiencies of Owczarski, Freshcorn, and Stueber with respect to claim 23. (Request 4). Accordingly, we also withdraw our new ground of rejection of claim 23. Appeal 2010-006191 Application 10/441,459 5 DECISION We have granted Appellants' Request for Rehearing to the extent that we have reconsidered our Decision and withdrawn the new grounds of rejection. Accordingly, in light of our Decision and the Request, each of the Examiner's rejections (i)-(v) is REVERSED, the new ground of rejection of claim 13 under 35 U.S.C. Â§ 103(a) is WITHDRAWN, and the new ground of rejection of claim 23 under 35 U.S.C. Â§ 103(a) is WITHDRAWN. GRANTED mls