Ex Parte Kopchick et al

Patent Trial and Appeal Board

Apr 6, 2017

13609821 (P.T.A.B. Apr. 6, 2017)

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.
13/609,821 09/11/2012 Joseph C. Kopchick P013989-PTC-CHE 7779
76438 7590 04/07/2017
VIVACQUA LAW, PLLC
3101 East Eisenhower Parkway
Suite 1
ANN ARBOR, MI 48108
EXAMINER
HA, STEVEN S
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
04/07/2017 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 JOSEPH C. KOPCHICK, MARK A. OSBORNE,
and RICHARD D. RICCHI
Appeal 2016-002875
Application 13/609,8211
Technology Center 1700
Before DONNA M. PRAISS, JULIA HEANEY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL2
1 Appellant identifies GM Global Technology Operations LLC as the real
party in interest. App. Br. 1.
2 In this decision, we refer to the Specification filed Sept. 11, 2012
(“Spec.”), the Final Office Action mailed Feb. 13, 2015 (“Final Act.”), the
Appeal Brief filed June 23, 2015 (“App. Br.”), the Examiner’s Answer
mailed Nov. 19, 2015 (“Ans.”), and the Reply Brief filed Jan. 19, 2016
(“Reply Br.”).
Appeal 2016-002875
Application 13/609,821
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
decision to reject claims 1—18 as obvious under 35 U.S.C. § 103(a) over
Ozawa,3 Grassi,4 Buschkamp,5 Rasmussen,6 and other references. App. Br.
4—5; Final Act. 2—11.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal relates to “methods for casting engine
components, and more particularly to an advanced aluminum-based diesel
piston with complex features and a method casting the same.” Spec. 12.
Claim 1 is illustrative (disputed matter italicized):
1. A method of sand casting an aluminum-based piston for
a light-duty or medium-duty diesel engine, the method
comprising:
providing a pattern for the piston, the pattern including a
dome and a reentrant bowl;
forming a piston mold around the pattern, the mold
comprising an aggregate material and a binder;
removing the pattern from the piston mold;
introducing molten aluminum-based metal into the piston
mold;
contacting the piston mold with a solvent for the binder
and removing the binder and the aggregate; and
cooling the molten aluminum-based metal such that upon
solidification, and without post-cast processing of the piston, the
piston substantially defines the dome and the reentrant bowl that
3 Ozawa, US 5,595,145, iss. Jan. 21, 1997 (“Ozawa”).
4 Grassi et al., US 7,121,318 B2, iss. Oct. 17, 2006 (“Grassi”).
5 Buschkamp, US 2011/0203545 Al, pub. Aug. 25, 2011 (“Buschkamp”).
6 Rasmussen, US 2008/0034961 Al, pub. Feb. 14, 2008 (“Rasmussen”).
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Application 13/609,821
can withstand an operating pressure up to about 200 bar cylinder
pressure and a temperature up to about 400 degrees Celsius.
App. Br. 10 (Claims App’x).
OPINION
The Examiner finds that claims 1—18 would have been obvious to one
of ordinary skill in the art at the time of the invention for the reasons stated
on pages 3—11 of the Final Action.
Appellants do not separately argue the patentability of claims 1—18.
App. Br. 5—8. In accordance with 37 C.F.R. § 41.37(c)(l)(iv), and based
upon the lack of arguments directed to the subsidiary rejections, claims 2—18
will stand or fall together with independent claim 1.
Appellants argue that the Examiner erred in rejecting the independent
claims (1 and 13) because “an improved casting process for aluminum-based
pistons cannot be achieved by the combination of [Ozawa,] Grassi,
Buschkamp, and Rasmussen.” App. Br. 5. Appellants do not dispute the
Examiner’s findings as to Ozawa, Grassi, or Buschkamp, nor do Appellants
dispute the Examiner’s finding that the combination of Ozawa, Grassi, and
Buschkamp is “silent regarding the claimed limitation that the casting is
accomplished without post-cast processing.” Id. at 5—6. Appellants contend
that “one would not seek recourse to the teachings of Rasmussen” because
“Rasmussen clearly teaches that the use of aluminum and sand casting is
unlikely to be productive of the result sought by Rasmussen and the present
invention.” Id. at 7. According to Appellants, “Rasmussen repeatedly
emphasizes in paragraphs [0017] through [0019] that aluminum-based alloys
are unsuitable for use as pistons for internal combustion engines (including
diesel engines)” {id. at 6) and “Rasmussen repeatedly teaches away from the
use of the claimed material of choice (aluminum) and sand casting” {id. at
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Application 13/609,821
7). Appellants further contend that “the combination of Ozawa, Grassi, and
Buschkamp produces methods that are at odds with that intended in
Rasmussen” amounting to “impermissible lack of motivation.” Id. at 8.
The Examiner responds that Rasmussen’s discussion of prior art
methods having not been entirely satisfactory from either a weight or
strength standpoint is not “a blanket statement that aluminum or aluminum
alloys are entirely impossible to be used for diesel engine pistons.” Ans. 2—
3. The Examiner notes that Rasmussen teaches “the standard for IC [internal
combustion] pistons for over 60 years has been an aluminum piston.” Id. at
3 (citing Rasmussen | 15). The Examiner further finds that Rasmussen does
not teach against utilizing aluminum or aluminum alloys in a casting
method, but, rather, teaches that after being cast the object would eventually
fail, which is different from failing during casting. Id. The Examiner also
finds that Rasmussen does not teach away from the use of sand casting, but
rather promotes it. Id. (citing Rasmussen 149). In addition, the Examiner
finds that the combination of references relates to sand casting overall. Id.
In the Reply Brief, Appellants repeat their argument that paragraphs
17 through 19 of Rasmussen “repeatedly highlights . . . that aluminum-based
alloys are unsuitable for use as pistons for internal combustion engines
(including diesel engines).” Reply Br. 2. Appellants also argue that in view
of the alleged teaching away by Rasmussen, the combination of references is
athwart the requirements for establishing a prima facie case of obviousness.
Id. at 3—5.
We are not persuaded by Appellants’ arguments that the Examiner
reversibly erred in rejecting claim 1 for the reasons stated by the Examiner
in the Final Rejection and in the Answer. We add the following primarily
for emphasis.
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Application 13/609,821
The Examiner’s finding that “Rasmussen teaches investment casting
of a diesel engine piston wherein both the crown and skirt are cast with
minimal finish manufacturing tolerances (i.e., the crown is cast to zero net
size finished)” is supported by the record. Final Act. 5; Rasmussen 149.
Appellants do not dispute the Examiner’s finding that investment casting can
be equated to the claimed sand casting. Ans. 3 (“investment casting, as
known to those in the art, involves repeatedly coating a pattern with sand to
form the mold cavity.”). Nor do Appellants dispute the Examiner’s finding
that the references Ozawa, Grassi, Buschkamp, and Rasmussen relate to
sand casting overall.
Appellants’ argument that Rasmussen “teaches away from the claimed
material of choice (aluminum)” (Reply Br. 3) is unpersuasive because
Rasmussen acknowledges that aluminum has been the standard for internal
combustion pistons for over 60 years (Rasmussen 115) and the Examiner
relies on Ozawa for teaching an aluminum-based diesel piston (Final Act. 3),
not Rasmussen. Moreover, Appellants do not direct us to any evidence that
Rasmussen either discourages or disparages the use of sand casting to form
an aluminum-based piston. Rather, the cited paragraphs of Rasmussen
describe the “unsatisfactory characteristics” of “heat resistant alloys” and
“[c]ast or forged aluminum or aluminum alloy pistons with cast in place
ferrous inserts for ring grooves and piston tops/combustion cavities” as, first,
“costly”, “difficult to forge or case”, “prematurely fail in service”, and
“eventually erodes or loses necessary thermal strength.” Rasmussen H 16—
20. It is undisputed that Rasmussen goes on to promote the advantages of
investment or sand casting in paragraph 49. A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
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Application 13/609,821
would be led in a direction divergent from the path that was taken by the
applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). The record in
this case supports the Examiner’s finding that the disadvantages noted by
Rasmussen do not teach away from casting because Rasmussen does not
teach failure during casting. Ans. 3. Furthermore, Rasmussen also discloses
the advantages of the sand casting method. Rasmussen 149. In addition, it
is insufficient to establish a teaching away based on alternative material
being more costly. See In reFarrenkopf 713 F.2d 714, 718 (Fed. Cir. 1983)
(“additional expense associated with the addition of inhibitors would not
discourage one of ordinary skill in the art”); Orthopedic Equipment Co. v.
United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983).
In sum, we do not find the Appellants’ arguments persuasive to justify
a reversal of the Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) (requiring appellant to identify the alleged error in the
examiner’s rejections). Accordingly, we affirm the Examiner’s rejection of
claim 1 as obvious over the combination of Ozawa, Grassi, Buschkamp, and
Rasmussen.
CONCLUSION
We affirm the Examiner’s rejections of claims 1—18 as obvious under
35 U.S.C. § 103(a).
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
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).
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Appeal 2016-002875
Application 13/609,821
AFFIRMED
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