UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals Board

May 7, 2021

2020003299 (P.T.A.B. May. 7, 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.
15/144,992 05/03/2016 Ying She 82124US01(16-199) 4011
52237 7590 05/07/2021
Bachman & LaPointe, P.C.
900 Chapel St., Suite 1201
New Haven, CT 06510
EXAMINER
SMITH, CATHERINE P
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
05/07/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YING SHE, AARON T NARDI, and
JOHN A. SHARON
Appeal 2020-003299
Application 15/144,992
Technology Center 1700
Before JEFFREY T. SMITH, JENNIFER R. GUPTA, and
JANE E. INGLESE, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1

1 In this Decision, we refer to the Specification filed May 3, 2016 (“Spec.”);
the Final Office Action dated March 5, 2019 (“Final Act.”); the Advisory
Action dated June 13, 2019 (“Adv. Act.”); the Appeal Brief filed October
10, 2019 (“Appeal Br.”); the Examiner’s Answer dated January 31, 2020
(“Ans.”); and the Reply Brief filed March 31, 2020 (“Reply Br.”).
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Application 15/144,992

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Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 8, 14, and 16–22.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM IN PART.
CLAIMED SUBJECT MATTER
The claims are directed to a method of treating atomized powder.
Spec. ¶ 12.
Independent claim 8, reproduced below, is illustrative of the claimed
subject matter:
8. A method to heat treat as-atomized powder to
reduce segregations and condition the powder into a state for
solid-state consolidation, comprising:
communicating an inert gas into a fluidized bed, the inert
gas exiting from the fluidized bed to a water bubbler;
communicating an atomized powder into the fluidized
bed;
heating the atomized powder in the fluidized bed;
communicating the heated atomized powder from the
fluidized bed into a quenching reservoir;
communicating the atomized powder from the quenching
reservoir to a three-way valve;

2 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 United
Technologies Corporation. Appeal Br. 2.
3 Claims 1–7 are withdrawn from consideration as directed to a non-elected
invention. Non-Final Action dated November 6, 2018. Claim 15 was
canceled in the Response filed May 6, 2019.
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communicating the atomized powder from the three-way
valve to a quenched powder collector;
collecting powder particles from the three-way valve in
the fine powder collector; and
collecting residual from the powder particles in the water
bubbler to avoid ejection into the environment.
Appeal Br. 16 (Claims App.) (with altered spacing and formatting).
REJECTIONS4
The Examiner maintains the following rejections on appeal (Ans. 3;
Final Act. 2–9):
Rejection 1: Claim 8 is rejected under 35 U.S.C. § 112(b) as
indefinite;5

4 Claim 15 was canceled in the Response filed May 6, 2019, rendering the
rejection of claim 15 moot. The objection of claim 21 was withdrawn by the
Examiner in the Advisory Action dated June 13, 2019. Adv. Act. 1.
5 The Answer states that “[e]very ground of rejection set forth in the Office
action dated March 5, 2019 . . . is being maintained by the examiner except
for the grounds of rejection (if any) listed under the subheading
“WITHDRAWN REJECTIONS.” Ans. 3. Notably, under the subheading
“WITHDRAWN REJECTIONS,” the Examiner indicates that the previous
rejections of claim 15 under 35 U.S.C. §112(b) and under 35 U.S.C. §103
have been withdrawn. Id. There is no indication in the record that the
rejection of claim 8 under 35 U.S.C. § 112(b) has been withdrawn.
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Rejection 2: Claims 8, 14 and 16–20 are rejected under 35 U.S.C. 103
as unpatentable6 over lchidate,7 Reynoldson,8 Sheiber,9 and Zurecki;10 and
Rejection 3: Claims 21 and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Ichidate, Reynoldson, Sheiber, Zurecki, and Barletta.11
DISCUSSION
Rejection 1 – Indefiniteness
The Examiner indicates in the Answer that every ground of rejection
set forth in the Final Office Action dated March 5, 2019, is maintained. Ans.
2; Final Act. 2. Thus, the § 112 rejection of claim 8 is properly before us on
appeal.
Because Appellant does not address the § 112 in its Briefs (Appeal Br.
9–14; Reply Br. 1–7), we summarily sustain the rejection of claim 8. See Ex
parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an
appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”); Manual of
Patent Examining Procedure (MPEP) § 1205.02 (9th ed. rev. 08.2017 Jan.
2018) (“If a ground of rejection stated by the examiner is not addressed in
the appellant's brief, appellant has waived any challenge to that ground of

6 Although the statement of the rejection says “anticipated,” we believe the
Examiner intended to mean “unpatenable” given that the rejection appears
under the heading “Claim Rejections – 35 U.S.C. §103.” Final Act. 3.
7 Ichidate et al., US 4,385,929, issued May 31, 1983.
8 Reynoldson, US 2009/0297725 A1, published Dec. 3, 2009.
9 Scheiber, US 3,869,300, issued March 4, 1975.
10 Zurecki et al., US 5,294,242, issued March 15, 1994.
11 Barletta et al., US 4,919,847, issued April 24, 1990.
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rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner’s answer.”).
Rejections 2 and 3 – Obviousness over Ichidate, Reynoldson, Sheiber, and
Zurecki, alone or further in view of Barletta
Regarding claim 8, the Examiner finds that Ichidate teaches, among
other things, communicating the atomized powder from the cooling reservoir
pipe (cooling pipe 29) to a quenched powder collector (product hopper 30)
and collecting residual from the powder particles in the fine particle
collector (dust catcher 31) to avoid ejection into the environment. Final
Act. 4 (citing Ichidate 5:67–68, 6:1–2, 4–5). The Examiner acknowledges,
however, that Ichidate does not specifically teach that the cooling after the
fluidized bed is quenching. Final Act. 5.
The Examiner finds that Reynoldson teaches a similar method of
introducing powder into a fluidized furnace where the product from the
fluidized bed furnace is communicated to a quenching bed. Id. (citing
Reynoldson ¶¶ 13, 16, 74). Based on Reynoldson’s teachings, the Examiner
finds that one of ordinary skill in the art would have used a quenching bed in
place of Ichidate’s cooling pipe “to control the grain size of the powder, and
the solute precipitation.” Id.
The Examiner also acknowledges that lchidate in view of Reynoldson
do not teach the atomized powder is communicated from the quenching
reservoir to the fine powder collector. Final Act. 5. The Examiner finds that
it would have been obvious to one of ordinary skill in the art to first
communicate the heated atomized powder to the quenching reservoir before
communicating atomized powder to the fine powder collector because
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“rearranging parts of an invention involves only routine skill in the art.” Id.
The Examiner finds that:
[o]ne would be motivated to communicate the atomized powder
first in the quenching reservoir and then to the fine powder
collector in order to filter out finer particles from the final,
quenched product, and thus maintain a particular size distribution
while optimizing for the amount of powder to be collected.
Id.
The Examiner finds that even though Ichidate and Reynoldson teach
the quenched atomized powder is communicated to both the fine powder
collector and to the quenched powder collector, it is not taught that this
occurs by means of a three-way valve. Id. at 6. The Examiner finds,
however, that Sheiber teaches using a three-way valve for a system
including a fluidized bed. Id. (citing Sheiber 6:26–28). The Examiner finds
that one skilled in the art would have been motivated to use the three-way
valve in Ichidate’s system, as modified by Reynoldson, to circulate the
fluidized metal powder to multiple areas of the system as a method of
process control because “a three-way valve would allow airflow
adjustments, and thus a means of filtering out particle size being delivered to
the quenched powder collector and the fine powder collector, and a means to
tailor the end particle size of the product.” Id.
Appellant argues that the Examiner is merely selecting individual
components piecemeal and arguing that they can be readily combined into a
theoretical system without specific teachings to do so. Appeal Br. 13.
Appellant argues that because none of the references teach or suggest a
separate collector arrangement downstream of the quenching system, the
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Examiner is utilizing hindsight reasoning to arrive at claim 8’s method. See
Reply Br. 3–4.
We are persuaded by Appellant’s arguments that the Examiner’s
proposed reason to modify Ichidate lacks sufficient evidentiary support.
“[R]ejections 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). “The mere fact
that a worker in the art could rearrange the parts of the reference device to
meet the terms of the claims on appeal is not by itself sufficient to support a
finding of obviousness.” Ex parte Chicago Rawhide Mfg. Co., 223 USPQ
351, 353 (Bd. Pat. App. & Inter. 1984). “The prior art must provide a
motivation or reason for the worker in the art, without the benefit of the
appellant’s specification, to make the necessary changes in the reference
device.” Id.
We are not persuaded by the Examiner’s characterization that altering
Ichidate’s system, as modified by Reynoldson, would have been an obvious
rearranging of parts involving only routine skill in the art. Final Act. 5.
Rather, altering Ichidate’s system, as modified by Reynoldson, to first
communicate the heated atomized powder to the quenching reservoir before
communicating the atomized powder to the fine powder collector is a
substantial redesign of Ichidate. On this record, the Examiner has not
provided the required articulated reasoning with rational underpinning as to
why one of ordinary skill in the art would rearrange the components of
Ichidate’s system, as modified by Reynoldson. That is, the Examiner has not
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identified sufficient support in the prior art references why one of ordinary
skill in the art would have modified Ichidate’s system, as modified by
Reynoldson, to communicate atomized powder from the quenching reservoir
to a quenched powder collector (Ichidate’s product hopper 30), via a three-
way valve, and to collect powder particles from the three-way valve in a fine
powder collector (Ichidate’s dust catcher 31). Final Act. 4 (citing Ichidate
6:1–2, 4–5). Because the Examiner’s § 103 rejections are not adequately
supported by factual evidence, the Examiner has not met the initial burden of
setting forth a prima facie case of obviousness over Ichidate, Reynoldson,
Sheiber, and Zurecki alone or in further combination with Barletta.
Accordingly, we do not sustain the § 103 rejections of claims 8, 14, and 16–
22.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8 112 Indefiniteness 8
8, 14, 16–20 103 Ichidate,
Reynoldson,
Sheiber, Zurecki
8, 14, 16–20
21, 22 103 Ichidate,
Reynoldson,
Sheiber, Zurecki,
Barletta
21, 22
Overall
Outcome
8 14, 16–22

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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).
AFFIRMED IN PART