Ex Parte Schmidt et al

Patent Trial and Appeal Board

Jun 23, 2017

13416310 (P.T.A.B. Jun. 23, 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.
13/416,310 03/09/2012 Wayde R. Schmidt 57257US1;
67097-1544PUS1
1846
54549 7590 06/27/2017
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EXAMINER
400 West Maple Road
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3745
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WAYDE R. SCHMIDT, JAMES T. BEALS,
and AARON T. NARDI
Appeal 2016-003189
Application 13/416,310
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Wayde R. Schmidt et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 1—6, 8, 10—18, and
21—24. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2016-003189
Application 13/416,310
CLAIMED SUBJECT MATTER
Appellants’ invention relates to articles having modified surfaces that
are subject to ice formation and erosive conditions. Spec. para. 1.
Claims 1 and 17 are independent. Claim 1 is illustrative of the
claimed invention and reads as follows:
1. An article, comprising:
a core having a first hardness; and
a surface on the core, the surface including a plurality of
geometric features having a second, greater hardness and
defining a surface porosity by area percent (SP) and a surface
solidity by area percent (SS), the surface including a ratio of
SS/SP that is 1.8 or greater, the plurality of geometric features
and the ratio establishing the surface to be hydrophobic such that
the surface would not be hydrophobic in absence of the plurality
of geometric features or the ratio, and the second, greater
hardness and the ratio establishing an erosion rate of the surface
that is equal to or less than an erosion rate of the core under
identical erosion conditions such that the erosion rate of the
surface would not be equal to or less than an erosion rate of the
core in absence of the second, greater hardness or the ratio,
wherein each of the plurality of geometric features extends along
a respective central axis from a base at the core to a free end, the
base defining a reference plane and the central axis being at a
non-perpendicular angle to the reference plane, and wherein the
non-perpendicular angles are non-equivalent.
THE REJECTIONS
The Examiner has rejected:
(i) Claims 1—4, 8, 10—16, and 24 under 35 U.S.C. § 103(a) as being
unpatentable over Hulseman (US 2010/0319183 Al, published Dec. 23,
2010) in view of Subramanian (US 6,716,539 B2, issued Apr. 6, 2004) and
Campbell (US 7,371,352 B2, issued May 13, 2008);
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Appeal 2016-003189
Application 13/416,310
(ii) Claims 5 and 6 under 35 U.S.C. § 103(a) as being unpatentable
over Hulseman in view of Subramanian, Campbell, and Loebert (US
4,736,912, issued Apr. 12, 1988); and
(iii) Claims 17, 18, and 21—231 under 35 U.S.C. § 103(a) as being
unpatentable over Tholen (US 2010/0247291 Al, published Sept. 30, 2010)
in view of Hulseman and Wobben (US 2005/0008495 Al, published Jan. 13,
2005).
A rejection of claims 1—6, 8, 10—18, and 21—24 under 35 U.S.C.
§112, second paragraph, as being indefinite, is withdrawn by the Examiner.
Ans. 13.
ANALYSIS
Claims 1—4, 8, 1CC16, and 24—Obviousness—
Hulseman/Subramanian/Campbell
Independent claim 1 recites, in part, “a core having a first hardness;
and a surface on the core, the surface including a plurality of geometric
features having a second, greater hardness.” Appeal Br. 10 (Claim App.
(emphasis added)).
The Examiner finds that Hulseman discloses an article 201 having a
core with a first hardness and a surface having a plurality of geometric
features 202 with a second greater hardness. Final Act. 6. The finding that
the surface has a greater hardness is not based on any explicit disclosure in
Hulseman to that effect, but rather, the Examiner opines that work hardening
1 The Examiner inadvertently omitted claim 23 from the heading, however,
the rejection of this claim is explained under this heading. See Final Act. 12;
see also id. at 1 (Office Action Summary).
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Appeal 2016-003189
Application 13/416,310
during a rolling fabrication process results in a greater hardness. Id., (citing
Hulseman, Fig. 2, para. 10). That paragraph states, in pertinent part:
The production part can be produced from the metal tool by
casting, molding, stamping, imprinting, rolling, or embossing.
Hulseman, para. 10. Nowhere else in Hulseman is fabrication by rolling
mentioned or explained. Id., passim. The Examiner explains the position
taken by pointing to evidence that surface work hardening by a cold-working
process such as rolling is a well-known technique. Ans. 16 (citing US
3,367,160 to Sperber and discussions from Wikepedia in regard to work
hardening).
The Examiner does not rely on Subramanian or Campbell in any
manner relative to the hardness limitations for the core and the surface of the
core.
Appellants argue that there are no factual findings for the
interpretation of Hulseman with regard to a surface on the core having a
higher hardness than the hardness of the core. Appeal Br. 7. More
specifically, Appellants contend that the Examiner has only alleged that the
claimed hardness could be present in Hulseman, which is insufficient to
establish that Hulseman inherently discloses the different hardness as
claimed. Id.
Appellants do not contest that work hardening is a known
phenomenon. Their position is instead that fabrication of the article in
Hulseman does not necessarily, as is required in an inherency finding, result
in a work hardening, or a greater degree of work hardening, only at the
surface of its device, such that the device has two different hardnesses as
claimed. Reply Br. 2.
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Appeal 2016-003189
Application 13/416,310
Appellants have the better position. As noted above, Hulseman
discloses that “[t]he production part can be produced from the metal tool by
casting, molding, stamping, imprinting, rolling, or embossing.” Hulseman,
para. 10 (emphasis added). Here, the Examiner relies only on “rolling” as
singularly recited by Hulseman. While rolling can produce work hardening
resulting in an article, or a surface of an article, having an increased
hardness, the Examiner fails to provide any factual evidence that, whatever
the rolling process disclosed in Hulseman entails, that process necessarily
results in any increase in hardness, more particularly, in an increase in the
hardness at the surface as compared to the hardness in the core of the article.
The Examiner’s position is thus based on speculation as to what results are
obtained in Hulseman’s envisioned rolling process, in terms of different
areas having different hardnesses. See MEHL/Biophile Int'l Corp. v.
Milgraum, 192 F.3d 1362, 1365 (Fed. Cir. 1999) (“Inherency, however, may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not
sufficient.”).
As such, the Examiner has not established a prima facie case of
obviousness directed to claim 1. The rejection of claim 1, and that of claims
2-4, 8, 10-16, and 24 depending therefrom, is not sustained.
Claims 5 and 6—Obviousness—Hulseman/Subramanian/Campbell/Loebert
The Examiner does not rely on Loebert in any manner that would
remedy the above-noted deficiency in the rejection of claim 1, from which
claims 5 and 6 depend, over Hulseman, Subramanian, and Campbell. Final
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Appeal 2016-003189
Application 13/416,310
Act. 10—11. For the same reasons discussed supra, we do not sustain the
obviousness rejection of claims 5 and 6.
Claims 17, 18, and 21—23—Obviousness—Tholen/Hulseman/Wobben
Similar to independent claim 1, independent claim 17 recites, in part,
“the airfoil including a core having a first hardness and a surface at the
leading edge on the core, the surface including a plurality of geometric
features having a second, greater hardness.” Appeal Br. 11 (Claim App.
(emphasis added)).
The Examiner again relies on Hulseman as teaching an article having
a core with a first hardness and a surface having a plurality of geometric
features 202 with a second greater hardness, based on the same premise as
discussed with respect to claim 1 above. Id. at 12. The Examiner includes
Tholen in this ground of rejection, concluding that it would have been
obvious to modify the Tholen turbine blades so as to have the surfaces
thereof include a plurality of geometric shapes as taught by Hulseman, to
give the blades a self-cleaning ability. Id. at 13—14. The Examiner does not
rely on Wobben in any manner relative to the recited hardnesses of the core
and the surface on the core.
Appellants argue that this rejection is deficient for the same reasons as
set forth with respect to claim 1. Appeal Br. 8. We agree that the same
deficiency in the rejection of claim 1 is present in the rejection of claim 17,
for the reasons stated above.
As such, the Examiner has not established a prima facie case of
obviousness directed to claim 17. The rejection of claim 17, and that of
claims 18 and 21—23 depending therefrom, is not sustained.
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Appeal 2016-003189
Application 13/416,310
DECISION
The rejections of claims 1—6, 8, 10-18, and 21—24 are reversed.
REVERSED
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