Hamilton Sundstrand Corporation

Patent Trials and Appeals Board

Aug 11, 2020

14501111 - (D) (P.T.A.B. Aug. 11, 2020)

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.
14/501,111 09/30/2014 William T. Lockwood 76081US01;
67010-572PUS1
6666
26096 7590 08/11/2020
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
LAWSON, STACY N
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
08/11/2020 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM T. LOCKWOOD, MICHAEL C. EDELEN,
and TIMOTHY R. BOYSEN

Appeal 2020-001283
Application 14/501,111
Technology Center 3600
____________

Before JAMES P. CALVE, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 9, 14, and 15. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Hamilton
Sundstrand Corporation. Appeal Br. 1.
Appeal 2020-001283
Application 14/501,111

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BACKGROUND
“This application relates to a method for welding components formed
of dissimilar materials.” Spec. ¶ 1.

ILLUSTRATIVE CLAIM
Claim 9 is the only independent claim on appeal and recites:
9. A method of forming a fluid connection comprising the
steps of:
identifying a first component formed of a first material to
be connected to a second component formed of a second
material;
forming a transition joint, including a first stub portion
formed of a third material, which is connectable to said first
material, and forming a second stub portion formed of a fourth
material, which is connectable to said third material;
connecting said first and second stub portions to be fixed
together using friction welding techniques;
then connecting said first stub portion to said first
component and connecting said second stub portion to said
second component, wherein said components are components in
a refrigerant system;
wherein said third material and said first material are the
same material, and said fourth material and said second material
are the same material;
wherein one of said first and second components is a heat
exchanger and the other is a tube;
wherein said first and second materials include at least one
of aluminium, titanium, and steel; and
wherein said tube connecting said heat exchanger to one
of a compressor and an expansion device in a refrigerant cycle.
Appeal Br. 5.
Appeal 2020-001283
Application 14/501,111

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REJECTION
The Examiner rejects claims 9, 14, and 15 under 35 U.S.C. § 103 as
unpatentable over Nelson2 in view of Messer.3
DISCUSSION
With respect to claim 9, the Examiner finds that Nelson discloses a
method of forming a fluid connection as claimed, except that Nelson does
not disclose using friction welding techniques. Final Act. 3–4. More
specifically, the Examiner finds that Nelson teaches a transition joint
composed according to the claim including a first component, second
component, first portion, and second stub portion with the material
requirements claimed, and wherein the components are portions of a
refrigerant system as claimed. Id. The Examiner then finds that Messer
teaches a method for forming a fluid connection by welding dissimilar
materials including components with the material properties claimed. Id. at
4. The Examiner determines:
It would have been obvious to a person having ordinary skill in
the art, before the effective filing date of the claimed invention,
to use friction welding techniques as taught by Messer for the
connection of Nelson because such is a known dissimilar metals
welding technique that would provide the expected benefit of
low distortion and shrinkage, no solidification related defects, no
shielding gas required, and enhanced fatigue life (e.g. Messer,
paragraph 0015).
Final Act. 4.

2 Nelson et al., US 2008/0202738 A1, pub. Aug. 28, 2008.
3 Messer et al., US 2010/0233501 A1, pub. Sept. 16, 2010.
Appeal 2020-001283
Application 14/501,111

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We agree with and adopt the Examiner’s findings and conclusions
with respect to the rejection of claim 9. See Final Act. 2–4; see also Ans. 3–
4. As discussed below, we are not persuaded by Appellant’s argument.
Appellant argues that the method disclosed in the written description
portion of the Specification provides a “synergistic benefit” by allowing the
use of a stub shaft that achieves a friction welded connection of large
refrigerant system components of a heat exchanger with other elements.
Appeal Br. 3. Appellant asserts that Messer “does not speak to the particular
location [of the friction welded intermediate member, and] does not speak to
the benefit of utilizing the Messer structure for connecting two large
components which would otherwise be difficult to rotate for friction
welding.” Id. Appellant also asserts that “neither of the references would
achieve the benefits as mentioned above of facilitating attachment of a tube
to a heat exchanger and utilizing the claimed welding techniques.” Id.
We are not persuaded. The key to supporting a conclusion of
obviousness under 35 U.S.C. § 103 is the clear articulation of the reason
why the claimed invention would have been obvious. The Court in KSR
International Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) indicated that
the analysis supporting a rejection under 35 U.S.C. § 103 should be made
explicit. The Federal Circuit has stated that “rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at 418. We determine
that the rejection here is adequately supported. The Examiner provides
numerous reasons, as taught by Messer, regarding why one of ordinary skill
Appeal 2020-001283
Application 14/501,111

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in the art would have found it beneficial to use the method provided in
Messer in the device of Nelson to connect the parts of a heat exchanger with
a tube including low distortion and shrinkage, no solidification related
defects, no shielding gas required, and enhanced fatigue life. See Messer
¶ 15. Further, Messer appears to contemplate the alleged synergistic
benefits of using a friction welded adapter of dissimilar materials, i.e.,
Messer discloses the use of dissimilar materials as an adapter in an
intermediate position between dissimilar materials and that “coupling of
dissimilar materials in the field via the adaptors is greatly simplified as
conventional welding methods can now be employed.” Id. at Abstract.
Thus, Messer contemplates that the use of a stub portion with dissimilar
materials welded as claimed would allow for the ease of connection of parts
via conventional welding methods, which appears to be the same synergistic
benefit Appellant is alleging. Thus, to the extent Appellant argues that the
claim provides some “synergistic benefit” that is not contemplated by the
art, we disagree.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 9. Appellant does not raise separate arguments with respect to
dependent claims 14 and 15, and thus, we are also not persuaded of error in
the rejection of dependent claims 14 and 15 for the same reasons.
Accordingly, we sustain the rejection of claims 9, 14, and 15.
CONCLUSION
We AFFIRM the rejection of claims 9, 14, and 15.
In summary:
Claims
Rejected
35 U.S.C. § Basis  Affirmed Reversed
9, 14, 15 103 Nelson, Messer 9, 14, 15
Appeal 2020-001283
Application 14/501,111

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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