John Baumann et al.

Patent Trials and Appeals Board

May 26, 2021

2020003701 (P.T.A.B. May. 26, 2021)

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.
12/562,291 09/18/2009 John A. Baumann 09-0357-US-
NP_BNGCP106US
3944
112148 7590 05/26/2021
Kwan & Olynick LLP, Boeing
2000 Hearst Avenue, Suite 305
Berkeley, CA 94709
EXAMINER
GAMINO, CARLOS J
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
05/26/2021 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):
eofficeaction@appcoll.com
lsmith@kwanip.com
patentadmin@Boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN A. BAUMANN, RICHARD J. LEDERICH,
MICHAEL P. MATLACK, CHRISTOPHER M. WEINGART, and
KEITH A. YOUNG
Appeal 2020-003701
Application 12/562,291
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BEVERLY A. FRANKLIN, and
JULIA HEANEY, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 34–53. 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(a). Appellant identifies the real party in interest as The Boeing
Company. Appeal Br. 3.
Appeal 2020-003701
Application 12/562,291

2
CLAIMED SUBJECT MATTER
Claim 34 is illustrative of Appellant’s subject matter on appeal
and is set forth below (with text in bold for emphasis):
34. A method of forming a welded assembly, the method comprising steps
of:
forming a stack that comprises a first workpiece and a second
workpiece;
securing the stack to a platform such that the second workpiece is in
contact with the platform and the first workpiece is in contact with the
second workpiece;
forming a friction stir weld joint along a weld path while the stack is
secured to the platform, wherein:
the friction stir weld joint extends through the first workpiece
and through at least a part of the second workpiece and has a strength,
the friction stir weld joint creates distortion, including out-of-
plane bowing and complex buckling, of the welded assembly, and
the friction stir weld joint is formed using friction stir
welding parameters selected to maximize the strength of the
friction stir weld joint and the distortion of the welded assembly:
and

with the stack secured to the platform, plastically deforming a portion
the friction stir weld joint using a roller to elongate the portion of the friction
stir weld joint and to reduce the out-of-plane bowing and complex buckling
of the welded assembly, while maintaining the strength of the friction stir
weld joint.

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Application 12/562,291

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Dracup et al.
(Dracup)
US 2004/0050907
A1
March 18, 2004
Chua et al.
(Chua)
US 2008/0217380 Al Sept. 11, 2008

REJECTIONS2
1. Claims 34–53 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dracup in view of Chua.
2. Claims 34-53 are rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dracup, in view of Applicant's Admitted Prior Art
(AAPA) and Chua.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of

2 The rejection of claims 34-53 under 35 U.S.C. § 112 (pre-AIA), first
paragraph, has been withdrawn by the Examiner. Ans. 3.
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Application 12/562,291

4
reversible error in the appealed rejections essentially for the reasons stated
by the Examiner in the record, with the following emphasis.
Appellant does not make separate arguments in support of
patentability of any particular claim or claim grouping. Accordingly, the
claims subject to each ground of rejection will stand or fall with claim 34.
See 37 C.F.R. § 41.37(c)(iv).

Rejections 1 and 2
The dispositive issue involves whether Appellant misunderstands the
teachings of Dracup as they relate to the claim limitation of a “friction stir
weld joint is formed using friction stir welding parameters selected to
maximize the strength of the friction stir weld joint and the distortion of the
welded assembly”.
On the one hand, it is Appellant’s position that while Dracup is
concerned with maximizing the weld strength, Dracup is interested in
minimizing (rather than maximizing as claimed in Appellant’s claim 34) any
distortion, caused by friction stir welding (“FSW”). Appeal Br. 6.
Appellant refers to paragraph 8 of Dracup which states that “[c]ompared
with traditional fusion welding processes, it [friction stir welding] offers
simplified processing, improved mechanical properties, diminished weld
defect formation, equivalent corrosion resistance, and reduced distortion,
shrinkage, and residual stresses.” Appellant argues this teaching means that
reduced distortion is one of the reasons for selecting the friction stir welding
process. Appellant then states that accordingly, Dracup directly
teaches away from maximizing weld distortion. Id.
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Application 12/562,291

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It is the Examiner’s position that Appellant misapprehends Dracup’s
teachings in this regard. Ans. 3–4. The Examiner explains that one skilled in
the art would recognize that the reduction mentioned in Dracup’s paragraph
8 is made within the context of a comparison with traditional welding
processes. Ans. 4. In other words, Dracup’s teachings indicate that FSW
offers diminished weld defect formation when compared to traditional
welding processes. The Examiner states that the idea that Dracup teaches
against maximizing distortion is thus unsupported by the teachings in
paragraph 8 of Dracup. See Ans. 4 (finding that Dracup is
“better[]interpreted as maximizing strength while maximizing allowable
distortion, since distortion still happens”). We agree, and thus are persuaded
by the Examiner’s position in the record that Appellant’s understanding of
Dracup is flawed. The Examiner also points out that because Appellant’s
Specification does not indicate any reference point for the claimed
maximized distortion, any amount of distortion can be considered a
maximum amount respective to the other parameters. Id. Notably, Appellant
does not adequately address these points made by the Examiner in the Reply
Brief in response thereto. Reply Br. 2.
Appellant then discusses the secondary reference of Chua. Appeal Br.
7–8. Therein, Appellant argues that Chua does not cure the alleged
deficiencies of Dracup. We are unpersuaded by this line of argument for the
reasons discussed, supra, regarding the Dracup reference.
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Appellant additionally discusses the Examiner’s reliance upon AAPA
(involved in Rejection 2).3 Appeal Br. 6–7. For the reasons discussed by
the Examiner on pages 5–6 of the Answer, we are unpersuaded by this line
of argument. We agree with the Examiner that Appellant does not properly
address the merits of Rejection 2 for the reasons discussed therein (Ans. 5-
6).
In view of the above, we affirm Rejections 1 and 2.
CONCLUSION
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
34–53 103(a) Dracup, Chua 34–53
34–53 103(a) Dracup, Chua,
AAPA
34–53

TIME PERIOD FOR RESPONSE
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)(1)(iv).

3 The Examiner relies on AAPA to show that, at the time of the Appellant’s
invention, friction stir welding conditions and parameters were known to be
selected as a compromise between joint properties and distortion. Spec. 14,
ll. 7–9. The Appellant’s invention is exemplary, i.e., a stronger weld yields
a larger distortion. Spec. 14, ll. 9–13.
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AFFIRMED