Ex Parte Matsen et al

Patent Trial and Appeal Board

Jun 28, 2018

14176878 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/176,878 02/10/2014
120226 7590 07/02/2018
Patterson & Sheridan - The Boeing Company
c/o Patterson & Sheridan, LLP
24 GREENWAY PLAZA, SUITE 1600
Houston, TX 77046
FIRST NAMED INVENTOR
Marc R. Matsen
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
13-0742 BOC0/0171 US 5046
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
P AIR_eofficeaction@pattersonsheridan.com
PatentAdmin@boeing.com
PSDocketing@pattersonsheridan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC R. MATSEN, MATTHEW DOUGLAS
CARTER, CAREY EUGENE WILKINSON,
and LEE C. FIRTH
Appeal2017-005801
Application 14/176,878
Technology Center 1700
Before A VEL YN M. ROSS, BRIAND. RANGE, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1---6, 8, 9, 11-14, 16, 18, 20, 22-24, 26, and 27. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 In our Opinion, we refer to the Specification filed February 10, 2014
("Spec."); the Final Action provided June 29, 2016 ("Final Act."); the
Appeal Br. filed November 28, 2016 ("Br."); and the Examiner's Answer
provided December 23, 2016 ("Ans."). Appellant did not file a Reply Brief.
2 Appellant is the applicant and real party in interest, the Boeing Company.
Br. 3.
Appeal2017-005801
Application 14/176,878
The claims are directed to methods of making parts from at least one
elemental metal powder. Claim 1, reproduced below from the Claims
Appendix with the disputed claim limitation italicized, is illustrative of the
claimed subject matter:
1. A method of making a part from at least one elemental
metal powder, the part having a near-net shape, a part volume,
and a part density, the method comprising:
providing a sintered preform having a sintered density;
separating a portion from the sintered preform, the
portion having a portion volume exceeding the part volume and
a portion shape different from the near-net shape of the part;
and
thermally cycling the portion for a thermal-cycling time
period at a thermal-cycling pressure while superplastically
deforming the portion to form the part having the near-net
shape and the part density.
Br. 14.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Matsen et al. US 2010/0018271 Al
("Matsen")
Fang et al. ("Fang") US 2014/0255240 Al
REJECTIONS
Jan.28,2010
Sept. 11, 2014
The Examiner maintains and Appellant seeks review of the rejection
of all pending claims under 35 U.S.C. § I03(a) as unpatentable over Fang in
view of Matsen. Final Act. 2-5; Br. 6.
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Appeal2017-005801
Application 14/176,878
OPINION
Appellant does not argue any claims separately. Br. 7-12. We select
the sole independent claim, claim 1, as representative. The dependent
claims stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
With respect to claim 1, the Examiner finds that Fang teaches, inter
alia, separating a portion from the sintered compact wherein the portion has
a volume greater than a final product and a shape different from the final
product, citing Fang's Abstract and paragraph 77 of the published
application. Final Act. 2-3. Appellants contend that Fang's Abstract and
paragraph 77 were first added to a continuation-in-part application filed on
January 10, 2014. Br. 7. In other words, Appellants contend that the
portions of Fang that the Examiner relies on for teaching the "separating"
limitation in claim 1 is not prior art to the application, which claims benefit
of U.S. Provisional Patent Application No. 61/894,205, filed October 22,
2013. Id.; see also Spec. ,r 1.
Our review of the record confirms Appellants' position that Fang's
Abstract and paragraph 77 do not qualify as prior art to all of the claimed
subject matter in the claims before us.
The Examiner responds to Appellants' challenge to the prior art status
of Fang's disclosure regarding a separating step by stating that separating
"appears to be a well-known step in the powder metallurgy because sintering
is usually followed by other steps ( e.g. a hot working or machining step) to
achieve desired properties and dimensions, providing a motivation to
separate a portion from the sintered compact of Fang ... for further
processing." Ans. 3--4. The Examiner provides no further support for the
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Appeal2017-005801
Application 14/176,878
statement that certain information was well-known at the time the
application before us was filed.
Claim 1 requires separating a portion of a sintered preform, then
thermally cycling the separated portion. Br. 14 (Claims App'x). The
Examiner fails to support adequately that the step of separating a portion
form a sintered preform was well-known to one of ordinary skill in the art at
the time of the invention. See Randall Mfg. v. Rea, 733 F.3d 1355, 1362
(Fed. Cir. 2013) ("In recognizing the role of common knowledge and
common sense, we have emphasized the importance of a factual foundation
to support a party's claim about what one of ordinary skill in the relevant art
would have known."); Perfect Web Techs. Inc. v. InfoUSA Inc., 587 F.3d
1324, 1330 (Fed. Cir. 2009) ("[T]o invoke 'common sense' or any other
basis for extrapolating from prior art to a conclusion of obviousness, [ the
factfinder] must articulate its reasoning with sufficient clarity for review.").
The Examiner fails to support a prima case of obvious of claim 1 over
Matsen in view of Fang; we do not sustain the rejection of claim 1. For the
same reasons given above, we also do not sustain the rejection of claims
2---6, 8, 9, 11-14, 16, 18, 20, 22-24, 26, and 27.
DECISION
For the above reasons, the Examiner's rejection of claims 1-6, 8, 9,
11-14, 16, 18, 20, 22-24, 26, and 27 is reversed.
REVERSED
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