Ex Parte Steinhauser

Board of Patent Appeals and Interferences

Apr 15, 2010

10540226 (B.P.A.I. Apr. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LUDWIG STEINHAUSER
____________

Appeal No. 2009-005986
Application 10/540,226
Technology Center 1700
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Decided: April 16, 2010
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and
CHARLES F. WARREN, Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 9 through 21, and 26, which are all of the
claims pending in the above-identified application. See page 2 of the Appeal
Appeal 2009-005986
Application 10/540,226

Brief (“App Br.”) filed May 15, 20081. We have jurisdiction under 35
U.S.C. §§ 6 and 134.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a process for the
production of half-tubes or tubes of a metallic, high-temperature-resistant
material with a plurality of openings passing through their surface, for the
fabrication of heat exchanger tubes for recuperative waste gas heat
exchangers” (Spec. 1, ll. 1-5). Details of the appealed subject matter are
recited in representative claim 9 reproduced from the Claims Appendix to
the Appeal Brief as shown below:
9. A process for producing one of (a) half-tubes and (b) a tube of a
metallic, high-temperature-resistant material with a plurality of openings
passing though a surface of the one of (a) the half-tubes and (b) the tube for
fabricating heat-exchanger tubes for a recuperative waste gas heat
exchanger, comprising:

forming a model, destroyable by heat, of each of the one of (a) the
half-tubes and (b) the tube;

forming a mold shell by finishing with a conventional gate system and
immersion of the model in a ceramic coating composition and sanding with
a cast shell ceramic material, alternating in several cycles;

melting-out of the model from the mold shell;

hardening the mold shell by firing;

producing a melt from the metallic, high-temperature-resistant
material;

1 The Supplemental Appeal Brief (“Supp. App. Br.”) was filed June 17,
2008 to provide only a revised “Summary of Claimed Subject Matter”
section in response to the Notification of Non-Compliant Appeal Brief dated
May 22, 2008.
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casting the melt in the mold shell one of (a) by applying a vacuum and
(b) under excess pressure of an inert gas;

removing, after solidification of the melt, the one of (a) the half-tubes
and (b) the tube fiom the mold by destroying the mold shell;

cleaning and trimming the one of (a) the half-tubes and (b) the tube
and removing a sprue; and

post-treating, as necessary, the openings passing through the surface
of the one of (a) the half-tubes and (b) the tube by one of (a) spark erosion
and (b) blasting with an abrasive blasting agent.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following prior art references at pages 2 and 3 of the
Answer (“Ans.”) dated August 18, 2008 and page 2 of the Miscellaneous
Communication dated August 28, 2008:
King, Jr. 3,895,672 Jul. 22, 1975
Ostrowski 4,223,716 Sep. 23, 1980
Wilkinson 4,321,010 Mar. 23, 1982
Wunder 4,589,478 May 20, 1986
Chandley 5,299,619 Apr. 5, 1994
Ottenschlaeger 5,600,950 Feb. 11, 1997

Appellant’s admission at pages 1 through 4 of the Specification (hereinafter
referred to as “the admitted prior art”).

Appellant requests review of the following grounds of rejection2 set
forth in the Answer:

2 Appellant does not question or challenge the Examiner’s statements at page
3 of the Answer that the admitted prior art is included in the grounds of
rejection directed to claims 10 and 16.
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1) Claims 9, 11 through 15, 17 through 21, and 26 under 35 U.S.C
§ 103(a) as unpatentable over the combined teachings of the admitted prior
art, any one of Wilkinson, Wunder or Ottenschlaeger, and Chandley;
2) Claim 10 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of the admitted prior art, any one of Wilkinson, Wunder
or Ottenschlaeger, Chandley, and Ostrowski; and
3) Claim 16 under 35 U.S.C. § 103(a) as unpatentable over the
combined teachings of the admitted prior art, any one of Wilkinson, Wunder
or Ottenschlaeger, Chandley, and King, Jr. (App. Br. 3).
Appellant traverses the Examiner’s § 103(a) rejections, arguing that
one of ordinary skill in the art would not have been led to employ the
claimed conventional high precision casting process for making metallic,
high-temperature-resistant half-tubes or tube having a plurality of openings
useful for fabricating heat-exchanger tubes of a recuperative waste gas heat
exchanger within the meaning of 35 U.S.C. § 103(a) (App. Br. 4-8). In
support of this argument, Appellant contends that the conventional
investment casting method taught by either Wilkinson, Wunder or
Ottenschlaege, as explained by Chandley, is not directed to forming the
claimed half-tubes or tube having a myriad of openings as explained at page
2 of the Specification, is not used for the reasons contemplated by Appellant,
and does not include the claimed post-treatment step (App. Br. 4-7).

ISSUES AND CONCLUSIONS
The first dispositive question is: Would one of ordinary skill in the art
have been led to employ the claimed conventional investment (precision)
casting method taught by either Wilkinson, Wunder or Ottenschlaeger, as
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explained by Chandley, corresponding to the claimed process steps for
making metallic, high-temperature-resistant half-tubes or tube having a
plurality of openings useful for fabricating heat-exchanger tubes of a
recuperative waste gas heat exchanger within the meaning of 35 U.S.C.
§ 103(a)? On this record, we answer this question in the affirmative.
The second dispositive question is: Has the post-treatment step
recited in claim 9 written as an optional step in the claimed process for
forming a metallic, high-temperature-resistant half-tubes or tube having a
plurality of openings useful for fabricating heat-exchanger tubes of a
recuperative waste gas heat exchanger? On this record, we answer this
question in the affirmative.
RELEVANT FACTUAL FINDINGS
The following relevant factual findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office):
1. Appellant does not dispute the Examiner’s finding that it was
admittedly well known at the time of the invention to produce half-tubes or a
tube of a metallic, high temperature-resistant material with a plurality of
openings passing through a surface of the half tubes or the tube for
fabricating heat-exchanger tubes of a recuperative waste gas heat exchanger
used in gas turbine plants. (Compare Ans. 3-4 with App. Br. 3-8; see also
Spec. 1-3.)
2. Appellant does not dispute the Examiner’s finding that the admittedly
known process for producing such half-tube or tube involves initially
forging half-tubes or a tube of a metallic, high temperature-resistant material
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and making a plurality of openings in the forged half-tubes or tube with
electrodischarge machining (EDM). (Compare Ans. 3-4 with App. Br. 3-8;
see also Spec. 2-3.)
3. Appellant acknowledges that the use of the EDM to form a myriad of
openings in the forged half-tubes or tube used for fabricating heat-exchanger
tubes of a recuperative waste gas heat exchanger was known to be
“extremely cost-intensive,” “time-consuming” and problematic in terms of
forming recast layers detrimental to soldering. (See Spec. 2-3 and Compare
Ans. 3 with App Br. 3-8.)
4. Appellant does not dispute the Examiner’s finding that Wilkinson,
Wunder, or Ottenschlaeger teaches a conventional investment (precision)
casting process for forming tubes having a plurality of openings, without
using an EDM step for forming the openings. (Compare Ans. 4 with App.
Br. 3-8).
5. Wilkinson teaches employing a conventional lost wax investment
casting process to produce a unitary cast structure of a ceramic material
corresponding to the claimed high temperature-resistant metallic material
comprising a hollow aerofoil member and a cooling air entry tub having a
plurality of small apertures as a blade or vane structure for a gas turbine
engine (Abstract, col. 2, l. 9 to col. 5, l. 14 and Fig. 3).
6. Appellant acknowledges that Wunder teaches advantageously
employing an investment casting to cast a tubular heat exchanger shell body
having “the number of parts of different sizes and orientations protruding”
therefrom (App. Br. 5).
7. Wunder also teaches that the tubular heat exchanger shell body cast
also has a long internal cylindrical bore (39), annular recesses (43 and 44),
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and openings and passages (18, 19, 21 35, 32, and 38) (col. 2, l. 30 to col. 3,
ll. 29 and Figs. 1 and 2).
8. Ottenschlaeger teaches employing lost wax (precision) casting to
produce pipe segments having projections (6) with screw holes (7) and
opening (4) in a cost efficient manner for their use as an exhaust gas pipe for
charged multi-cylinder internal combustion engines, without any additional
costs associated with making screw holes separately (col. 1, ll. 52-56, col. 2,
ll. 40-67 and Figs. 1 and 4).
9. Chandley explains that a known lost wax investment casting of high
temperature-resistant metallic alloys or ceramic materials is carried out in
the presence of an inert gas to avoid oxidation. (See col. 4, l. 47 to col. 8, l.
44; Compare Ans. 4 with App. Br. 3-8).
9. Appellant does not argue that the conventional lost wax investment
(precision) process taught by Wilkinson, Wunder, or Ottenschlaeger, as
further explained by Chandley, does not include all the casting process steps
recited in claim 1, with the exception of the claimed optional post treatment
step (App. Br. 3-8).
10. In fact, Appellant acknowledges that the present invention lies in
employing a known high-precision casting process for producing the
claimed half-tubes or tubes (Spec. 4).
11. Appellant does not proffer any objective evidence to show that one of
ordinary skill in the art would not have reasonably expected to employ the
known lost wax investment (high-precision) casting process to cast or
produce the claimed half-tubes or tube (App. Br. 3-8).
12. Appellant does not dispute the Examiner’s determinations at page 5 of
the Answer that:
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It would have been obvious to perform the dewax step in
an autoclave [as required by claim 10] in view of Ostrowske
who shows that feature to be conventional.
. . . .
It would have been obvious to preheat shell mold prior to
pouring of molten metal to prevent molten metal from
premature solidification [as required by claim 16] in view of
King, Jr. et al who show that feature to be conventional.
[(Compare Ans. 5 with App. Br. 7-8.)]

PRINCIPLES OF LAW
The Supreme Court in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
417-18 (2007) instructs us that:
[A]nalysis [of whether the subject matter of a claim
would have been obvious under § 103] need not seek out
precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art
would employ. [Emphasis added.]

See also In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969) (“Having
established that this knowledge was in the art, the examiner could then
properly rely, as put forth by the solicitor, on a conclusion of obviousness
‘from common knowledge and common sense of the person of ordinary skill
in the art without any specific hint or suggestion in a particular reference.’”).
The common knowledge attributable to one of ordinary skill in the art
includes what was admittedly known in the art by Appellants at the time of
the invention. See In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The
admitted prior art in applicant’s Specification may be used in determining
the patentability of a claimed invention.); see also In re Davis, 305 F.2d 501,
503 (CCPA 1962).
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The Supreme Court also instructs us that:
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this
leads to the anticipated success, it is likely the product . . . of
ordinary skill and common sense.

KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421.

ANALYSIS
I. CLAIMS 9, 11 THROUGH 15, 17 THROUGH 21, AND 26
Appellant does not dispute the Examiner’s finding that it was
admittedly well known at the time of the invention to produce half-tubes and
a tube of a metallic, high temperature-resistant material with a plurality of
openings for fabricating heat-exchanger tubes of a recuperative waste gas
heat exchanger used in gas turbine plants. According to Appellant, a
conventional method used for producing such half-tubes or tube involves
electrodischarge machining (EDM) for making a significant number of
openings in a forged half-tubes or tube, which was known to be extremely
cost-intensive, time-consuming, and problematic in terms of forming recast
layers detrimental to soldering.
Although Appellant does not acknowledge that the claimed
conventional lost wax investment (precision) casting method (corresponding
to the claimed process steps) was known to be employed for forming such
half-tubes or tube, Wilkinson, Wunder, or Ottenschlaeger, as explained by
Chandley, teaches employing a conventional investment (precision) casting
process to form a complex high temperature-resistant metallic material
structure, including a tube having a plurality of openings, without using an
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EDM step for forming the openings. Wilkinson, for example, teaches
employing a conventional lost wax investment (precision) casting method to
produce a unitary cast structure of a ceramic material comprising a hollow
aerofoil member and a cooling air entry tube having a plurality of small
apertures as a blade or vane structure for a gas turbine engine. Wunder
teaches advantageously employing an investment (precision) casting method
to cast a tubular heat exchanger shell body having a number of parts of
different sizes and orientations, including protrusions, a long internal
cylindrical bore, annular recesses, and a plurality of openings and passages.
Ottenschlaeger teaches employing lost wax (precision) casting to produce
pipe segments having projections with screw holes and openings in a cost
efficient manner for their use as an exhaust gas pipe for charged multi-
cylinder internal combustion engines, without any additional costs
associated with making screw holes separately.
Given the usefulness of such conventional lost wax investment
(precision) casting method in forming complex high temperature-resistant
structures, including tubes having openings and protrusions, we concur with
the Examiner that one of ordinary skill in the art would have been led to
employ such conventional lost wax investment (precision) casting method
corresponding to the claimed steps to form known half-tubes or a known
tube of a metallic, high temperature-resistant material useful for fabricating
heat-exchanger tubes of a recuperative waste gas heat exchanger, with a
reasonable expectation of successfully casting such half-tubes or tube. KSR,
550 U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976)(“[W]hen a patent ‘simply arranges old elements with each
performing the same function it had been known to perform’ and yields no
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more than one would expect from such an arrangement, the combination is
obvious.”)
Appellant contends that Wilkinson, Wunder, or Ottenschlaeger, as
explained by Chandley, does not employ its conventional lost wax
investment (precision) casting method to address the problem contemplated
in Appellant’s Specification. In so contending, Appellant fails to consider
his own admission that one of ordinary skill in the art was aware of the cost,
time, and recast layer problems associated with a separate hole-making step,
such as electrodischarge machining (EDM). Thus, as correctly found by the
Examiner at page 5 through 7 of the Answer, one of ordinary skill in the art
looking to avoid such cost, time, and possibly recast layer problems would
have been led to employ the conventional lost wax investment (precision)
casting method with a reasonable expectation of successfully solving such
problems. As stated by the Examiner at page 5 of the Answer:
When there is a need or market pressure to solve
the problems (to simplify the process and to reduce the
processing cost) and there are a finite number of identified,
predictable solution[s] (casting methods), a person of ordinary
skill has good reason to pursue the known option (investment
casting process). [See KSR, 550 U.S. at 421].

This is especially true in this situation since it would have been readily
apparent to one of ordinary skill in the art from simple observation that the
conventional lost wax investment (precision) casting method taught by
Wilkinson, Wunder, or Ottenschlaeger, as explained by Chandley, does not
suffer from the problems associated with electrodischarge machining
(EDM). In re Ludwig, 353 F.2d 241, 244 (CCPA 1965).
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In any event, the teachings of the prior art relied upon need not be
combined for the reasons contemplated by Appellant as long as there is
some reason to combine such teachings. In re Beattie, 974 F.2d 1309, 1312
(Fed. Cir. 1992) ("As long as some [reason,] motivation or suggestion to
combine the references is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons
contemplated by the inventor."); KSR, 550 U.S. at 419-420. Thus, we find
no reversible error in determining that one of ordinary skill in the art would
have been led to employ the conventional lost wax investment (precision)
casting method taught by Wilkinson, Wunder, or Ottenschlaeger, as
explained by Chandley, to form known half-tubes or known tube of a
metallic, high temperature-resistant material useful for fabricating heat-
exchanger tubes of a recuperative waste gas heat exchanger, with a
reasonable expectation of successfully casting such half-tubes or tube with
such conventional lost wax investment (precision) casting method.
Appellant also contends that Wilkinson, Wunder, or Ottenschlaeger,
as explained by Chandley, does not teach forming the claimed half-tubes or
tube with a myriad of holes as explained at page 2 of the Specification.
However, as indicated supra, one of ordinary skill in the art would have
reasonably expected that the conventional lost wax investment (precision)
casting method taught by Wilkinson, Wunder, or Ottenschlaeger, as
explained by Chandley, useful for forming complex high resistant metallic
structures, including tubes having holes, is equally useful for forming the
claimed half-tubes or tube having a plurality of openings. On this record,
Appellant has not proffered any objective evidence to show that one of
ordinary skill in the art would not have reasonably expected that such
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conventional lost wax investment (precision) casting method is suitable for
forming the claimed half-tubes or tube. Appellant’s mere arguments in the
Appeal Brief regarding the suitability of such conventional lost wax
investment (precision) casting method in forming the claimed half-tubes or
tube cannot take the place of objective evidence. See, e.g., In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); In re Lindner, 457 F.2d 506, 508
(CCPA 1972).
Appellant further contends that none of the prior art relied upon by the
Examiner teaches or would have suggested the claimed post treatment
feature. However, claim 9 recites its post treatment step as an optional step,
i.e., “post-treating, as necessary, the openings passing through the surface of
the one of (a) the half-tubes and (2) the tube by one of (a) spark erosion and
(b) blasting with an abrasive blasting agent.” (Emphasis added). This
interpretation is consistent with page 7 of the Specification which requires
employing the claimed post-treatment step only if such treatment is deemed
necessary.
Accordingly, based on the totality of record, including due
consideration of Appellant’s arguments, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness
regarding the subject matter defined by claims 9, 11 through 15, 17 through
21, and 26 within the meaning of 35 U.S.C. § 103.
II. CLAIMS 10 AND 16
As to the § 103(a) rejections of claims 10 and 16, Appellant relies on
the same arguments advanced in connection with the § 103(a) rejection of
claims 9, 11 through 15, 17 through 21, and 26 as unpatentable over the
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combined teachings of the admitted prior art, either Wilkinson, Wunder or
Ottenschlaeger, and Chandley (App. Br. 7-8).
Thus, for the same reasons set forth above and in the Answer, we
determine that the preponderance of evidence weighs most heavily in favor
of obviousness regarding the subject matter defined by claims 10 and 16
within the meaning of 35 U.S.C. § 103.
ORDER
In view of the foregoing, the decision of the Examiner 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).

AFFIRMED

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