Ex Parte Liu

Patent Trial and Appeal Board

Feb 27, 2018

12355394 (P.T.A.B. Feb. 27, 2018)

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.
12/355,394 01/16/2009 Huimin Liu 81177734 6642
28395 7590 03/01/2018
RROOKS KTTSHMAN P C /FfTET
EXAMINER
1000 TOWN CENTER CIGNA, JACOB JAMES
22ND FLOOR
SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
docketing @brookskushman. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HUIMIN LIU1
Appeal 2017-006785
Application 12/355,394
Technology Center 3700
Before STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1, 3, 4, 7—9, 14, 16—21, and 24—26. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appeal Brief lists Ford Motor Company as the real party in interest.
Appeal Br. 3.
Appeal 2017-006785
Application 12/355,394
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to “texturing of thin metal
sheets/foils ... for enhanced formability and manufacturability.” Spec. 1:8—
9. Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method comprising:
texturing a metal sheet or foil to form a first plurality of
waves extending in a first direction with a first wavelength a
second plurality of waves having a second wavelength exceeding
the first wavelength and extending in a second direction; and
forming curved channels with channel-widths formed by
the first wavelength of the first plurality of waves, and channel-
lengths formed by the second wavelength of the second plurality
of waves.
Appeal Br. (Claims App. 1).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chapman US 2007/0105000 A1 May 10, 2007
Matsui JP 2000-317531 A Nov. 21, 2000
REJECTIONS
(I) Claim 9 is rejected under 35 U.S.C. § 112, second paragraph, as
indefinite.
(II) Claims 1, 3, 4, 7—9, 14, 16—21, and 24—26 are rejected under
35 U.S.C. § 103(a) as unpatentable over Chapman and Matsui.
OPINION
Rejection (I)
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Application 12/355,394
Claim 9 recites, in part, “wherein the texturing is carried out at a high­
speed metal mill.” Appeal Br. (Claims App. 2). The Examiner finds that the
term “high speed” is a relative term that renders the claim indefinite. Final
Act. 3.
Appellant does not address Rejection (I). See Appeal Br. 6—12.
Accordingly, this rejection is summarily affirmed.
Rejection (II)
Claims 1, 3, 4, 7—9, 14, 16—20, 25, and 26
The Examiner relies on Chapman to teach many of the features recited
in claim 1, but relies on Matsui (Figures 5(a)—(c)) to teach that the process of
forming channels includes a texturing step. See Final Act. 3—5. According
to the Examiner, “the wavelengths of CHAPMAN are formed by the first
pressing step of MATSUI... the first wave lengths are considered to be the
channel widths as shown . . . the channel lengths ... are considered the
second wavelengths and are longer than the first wavelengths.” Final Act. 5.
Appellant argues that although Chapman discusses various methods of
forming channels in the background of the invention, Chapman does not
disclose a method other than sandblasting to form intricate channels. Appeal
Br. 8. According to Appellant, because Matsui’s texturing is to improve
metal flow and because there is no metal flow in sandblasting, one of
ordinary skill in the art would not use Matsui’s texturing techniques prior to
Chapman’ sandblasting. Id.
The Examiner responds by stating, “Chapman is not relied upon to
teach the method by which the channels are formed,” rather, in the rejection,
“the groove shape of Chapman [is] made entirely by the process of Matsui.”
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Application 12/355,394
Ans. 14—15. The Examiner states that because Chapman discloses that
machining, embossing, molding, and sandblasting are known alternate
methods of forming grooves, Chapman’s choice of a preferred method, i.e.,
sandblasting does not negate the underlying disclosure of different groove
forming methods. Id. The Examiner concludes that although “the dies of
Matsui would need to be designed to mimic the shape of Chapman,” one of
ordinary skill in the embossing art would have known how to configure
embossing dies and following the teachings of “Matsui would have known
how to achieve the end of goal of a geometry having the grooves of
Chapman.” Id. at 15.
Appellant replies that because “Chapman describes sandblasting as
being ‘particularly useful for the present invention,’” the Examiner has
provided “no evidence that machining, embossing, or moulding could or
would be used to form the shape of the final product of [Chapman’s] Figure
16 due to its intricacies.” Reply Br. 2 (citing Chapman, | 6). Appellant
contends that “the Examiner has cited to no evidence as to how or why the
texturing of Matsui could be modified to arrive at the final shape of
Chapman, other than to conclude that ‘the dies of Matsui would need to be
designed to mimic the shape of Chapman.’” Id.
Appellant’s argument that sandblasting must be used to form intricate
channels is not persuasive. Chapman relates to fuel cells and discloses that
the fuel cells are formed from a stack of plates having a pattern of grooves
on a surface of the plate. Chapman, || 1 and 5. Chapman further discloses
that “it has been proposed to form such grooves by machining, embossing or
moulding (WO00/41260), and (as is particularly useful for the present
invention) by sandblasting through a resist.” Id. 1 6. Appellant points to no
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Application 12/355,394
portion of Chapman that states that sandblasting must be used. Thus, we
agree with the Examiner that any of the known methods of forming grooves
in a fuel cell plate would have been considered by one of ordinary skill in
the art. We also agree with the Examiner that the knowledge of one of
ordinary skill in the art would include designing dies to achieve the desired
channel geometry. Appellant does not assert that the Examiner’s proposed
die modification would have been beyond the capabilities of one of ordinary
skill in the art. Further, Appellant has not provided any factual evidence or
persuasive technical reasoning to contradict the Examiner’s position
regarding the interchangeability of Chapman’s channel forming methods,
and thus does not apprise us of error.
Appellant also argues that Matsui does not teach texturing to form
channels, because “any ‘channels’ in Matsui, [] exist between the bumps
formed into the metal sheet.” Appeal Br. 10. According to Appellant, the
Examiner’s articulated reasoning is improper because it is premised on “pre-
textur[ing] metal with wavelengths that are eventually formed into channels
[whereas] Matsui clearly teaches pre-texturing metal with bumps to create
channels between the bumps.” Id.
The Examiner responds that although “Matsui only pre-textures along
the lines that will later be finally formed, this still meets the claim limitation
to texturing. The texturing occurs as waves that extend in a first and second
wavelength due to the shape of the channels of Chapman.” Ans. 16. The
Examiner states that the texturing of Matsui forms the channels of Chapman,
which have channel lengths and channel widths, and that the channel lengths
have a longer wavelength than a wavelength of the channel widths. Ans.
16-17.
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Application 12/355,394
Appellant replies that Matsui’s method forms bulges and that the
‘“channels’ reside in the areas between the bulges. And, these areas between
the bulges are not formed by the bulges themselves. In other words, the
channels (i.e., the areas between the bulges) are not formed by the waves
(i.e., the bulges in Figure 5a),” as required by the claims. Reply Br. 2—3.
We are not persuaded by Appellant’s argument on this point because
it does not address the Examiner’s rejection of claim 1, which provides that
Chapman discloses first and second wavelengths and “the wavelengths of
CHAPMAN are formed by the first pressing step of MATSUI.” Final Act.
5. The Examiner finds that “the first wave lengths are considered to be the
channel widths . . . the channel lengths . . . are considered the second
wavelengths and are longer than the first wavelengths.” Id. Appellant does
not dispute these findings. Arguments Appellant could have made but chose
not to make in the Briefs are waived. See 37 C.F.R. §41.37(c)(l)(iv). Thus,
Chapman already forms channels that are formed by the waves, and the
Examiner’s modification resides in forming the waves using a texturing
process as in Matsui. Appellant’s argument pointing out the deficiencies in
Matsui does not address the Examiner’s proposed combination of Chapman
and Matsui, which meets all the limitations of claim 1.
We have considered all of Appellant’s arguments regarding claim 1
and the rejection thereof as unpatentable over Chapman and Matsui, but we
are not apprised of Examiner error. Accordingly, we affirm the Examiner’s
rejection of claim 1 as unpatentable over Chapman and Matsui. Appellant
relies on the same arguments for the patentability of independent claim 14
(Appeal Br. 10), and for the same reasons discussed regarding the rejection
of claim 1, we affirm the rejection of claim 14 as unpatentable over
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Application 12/355,394
Chapman and Matsui. Appellant makes no additional arguments for claims
3, 4, 7—9, 16—20, 25, and 26 (Appeal Br. 8—10), all of which depend from
either claim 1 or claim 14, and these claims fall with claims 1 and 14.
Claims 21 and 24
Appellant relies on the same arguments discussed above for the
patentability of independent claim 21, and additionally argues that “Matsui
only teaches forming an array of uniform bumps with uniform channels
formed therebetween. There is no teaching whatsoever in Matsui as to pre­
texturing the metal to have different wavy patterns that are eventually
formed into straight channel portions and curved channel portions.” Appeal
Br. 11. As discussed above, the Examiner does not rely on Matsui having
different wavy patterns that are eventually formed into straight channel
portions and curved channel portions, and finds that Chapman discloses
these limitations. See Final Act. 5. Thus, Appellant’s additional argument
pointing out the deficiencies in Matsui, relating to features for which Matsui
is not relied upon, does not apprise us of Examiner error based on the
combination of Chapman and Matsui.
For this reason and for the same reasons discussed above regarding
the rejection of claims 1 and 14, we affirm the Examiner’s rejection of claim
21 as unpatentable over Chapman and Matsui. Appellant makes no
additional arguments for claim 24 (Appeal Br. 11), which depends from
claim 21, and, thus, falls with claim 21.
DECISION
The Examiner’s rejection of claim 9 as indefinite is affirmed.
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The Examiner’s rejection of claims 1, 3, 4, 7—9, 14, 16—21, and 24—26
as unpatentable over Chapman and Matsui is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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