11554193 (B.P.A.I. Nov. 30, 2010)

Ex Parte Krajewski et al

Board of Patent Appeals and InterferencesNov 30, 2010

11554193 (B.P.A.I. Nov. 30, 2010)

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. 11/554,193 10/30/2006 Paul E. Krajewski GP-307693-RD-JMC 5033 60770 7590 12/01/2010 General Motors Corporation c/o REISING ETHINGTON P.C. P.O. BOX 4390 TROY, MI 48099-4390 EXAMINER FORREST, MICHAEL ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 12/01/2010 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 PAUL E. KRAJEWSKI, RAVI VERMA, and JON T. CARTER ____________ Appeal 2010-007187 Application 11/554,193 Technology Center 1700 ____________ Before TERRY J. OWENS, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-007187 Application 11/554,193 2 Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1- 17. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative of Appellants’ invention: 1. A method for improving formability of magnesium and magnesium alloy tubes, the method comprising the steps of: (a) providing a substantially planar sheet of magnesium or magnesium alloy having a substantially uniform thickness; (b) roll-forming the sheet at a temperature below the recrystallization temperature of the sheet to develop a first arcuate cross sectional profile between lateral edges of the sheet so that the sheet has a single arc profile; (c) roll-forming the sheet at a temperature below the recrystallization temperature of the sheet following step (b) to substantially reverse the cross sectional profile developed in step (b) such that a second arcuate cross sectional profile between lateral edges of the sheet is developed, wherein the second arcuate cross sectional profile is characterized by reverse concavity from the first arcuate cross sectional profile; (d) following steps (b) and (c), roll forming the sheet at a temperature below the recrystallization temperature of the sheet to develop a substantially circular cross sectional profile; (e) adjoining the lateral edges of the sheet together to form a tube; and (f) heating the tube above the recrystallization temperature of the sheet following step (e). Appeal 2010-007187 Application 11/554,193 3 The Examiner maintains, and Appellants appeal, the following rejections under 35 U.S.C. § 103(a): 1) Claims 1-5, 13-15, and 17 as unpatentable over the combined prior art of Semaitin2 and Lowry3, and 2) Claims 6-12 and 16 as unpatentable over the combined prior art of Semaitin, Lowry, and Spinat4. Appellants argue the rejected claims in the first ground of rejection as a group (App. Br. 6-8). Thus, we select independent claim 1 as the representative claim on which our discussion will focus for the first ground of rejection. We will also address separately argued claims 6 and 16 in the second ground of rejection. MAIN ISSUE ON APPEAL Did the Examiner err in determining that the claimed method of claim 1 would have been obvious over the combined prior art of Semaitin and Lowry, because, as alleged by Appellants, a) Semaitin teaches away from the claimed method “by teaching four different ways of forming a tube, none of which are Applicant’s claimed method” (App. Br. 7); and b) Lowry does not suggest roll-forming (App. Br. 8)? We answer these questions in the negative. 2 Contour Roll Forming, Forming and Forging, Vo. 14, Metals Handbook Ninth Edition, ASM International, pp. 624-635 (1988). 3 US Patent 2,029,728 issued Feb. 4, 1936 4 US Patent Publication 2007/0181235 A1 issued Aug. 9, 2007 Appeal 2010-007187 Application 11/554,193 4 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). The analysis need not seek out precise teachings directed to the specific subject matter of the claim, for it is proper to 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). A reference "teaches away" when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of the Appellants' invention; the degree of teaching away will of course depend on the particular facts. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).5 ANALYSIS with Factual Findings We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the 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. 5 See also Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc. 73 F.3d 1085, 1090 (Fed. Cir. 1995) (to teach away, a reference must state that it “should not” or “cannot” be used in combination with other features in the prior art.) Appeal 2010-007187 Application 11/554,193 5 Accordingly, we will sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, and we add the following primarily for emphasis. Appellants’ main contention in the Briefs is that Semaitin teaches away from the claimed invention. This is of no persuasive merit. As pointed out by the Examiner, Lowry exemplifies that it was known in the art to use alternate bending and straightening to improve ductility of magnesium based alloy rolled products (Ans. 4). We agree with the Examiner that Semaitin merely exemplifies the process of forming a tube using contour roll forming (Ans. e.g., 9), and does not teach away from additionally using a reverse bending technique in rolling magnesium based alloys to improve the ductility of the metal as taught by Lowry. Accordingly, upon properly considering the prior art references as a whole, we agree with the Examiner that one of ordinary skill in the art would have been led to utilize a reverse bending pre-forming technique in the process of roll tube forming of Semaitin for imparting improved ductility as taught by Lowry (Ans. 4), with a reasonable expectation of successfully improving ductility as taught by Lowry (Ans., e.g., 4). Thus, in our view, the Examiner properly concluded that one of ordinary skill would have considered the use of roll-forming in opposite directions as claimed obvious from the teachings of the applied prior art. Furthermore, skill is presumed on the part of one of ordinary skill in the art. In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985); see also KSR, 550 U.S. at 421 (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). The Examiner’s position is reasonable in view of the applied prior art, and Appellants have not provided any Appeal 2010-007187 Application 11/554,193 6 convincing technical reasoning nor evidence that one of ordinary skill in the art would not have, using no more than ordinary creativity, successfully used roll-forming in opposite (reverse) directions as required by claim 1 (see generally App. Br.; Reply Br.). In this context, the use of reverse/alternate bending would have been nothing more than using a known technique in accordance with its known function for the predictable result of imparting ductility to magnesium or magnesium alloy tubes. See KSR, 550 U.S. at 415-16 (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). With respect to the second ground of rejection, Appellants’ arguments that Spinat does not teach or suggest plastically deforming a tube as required by claim 6 (App. Br. 9), as well as the similar requirement of elevated temperature deformation in claim 166, are unavailing for reasons set forth by the Examiner (Ans. 6-7, 10). Furthermore, the step of applying internal pressure in a heated mold to plastically deform a tube, as exemplified in Spinat, is an admittedly known technique for shaping tubular structures as discussed by Appellants (Spec. 1, Background of the Invention section).7 As a final note, Appellants have not offered any evidence of unexpected results on this record. 6 Appellants apparently overlooked that claim 16 was included in the rejection of claims 6-12 (App. Br. 8; Ans. 6-7). 7 A statement that something is prior art is binding on an applicant for determinations of anticipation and obviousness. See Constant v. Advanced Micro-Device, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) and In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (A statement by an applicant that certain matter is prior art is an admission that the matter is prior art for all purposes). Appeal 2010-007187 Application 11/554,193 7 Accordingly, the evidence as a whole supports the Examiner’s conclusion of obviousness, and on the record before us, we sustain the § 103 rejections of the claims as maintained by the Examiner.8 DECISION We affirm the Examiner’s § 103 rejections. 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 sld General Motors Corporation c/o REISING ETHINGTON P.C. P.O. BOX 4390 TROY MI 48099-4390 8 Only those arguments actually made by Appellants have been considered in this decision. Arguments which could have made but that Appellants chose not to make have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii) (2008).