Brunswick Corporation

Patent Trials and Appeals Board

Dec 16, 2020

2019006247 (P.T.A.B. Dec. 16, 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.
15/389,989 12/23/2016 Kevin R. Morasch 1636-00998 6559
11787 7590 12/16/2020
Andrus Intellectual Property Law, LLP
790 North Water Street, Suite 2200
Milwaukee, WI 53202
EXAMINER
WU, JENNY R
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
12/16/2020 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):
patentdocketing@andruslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN R. MORASCH, KEVIN R. ANDERSON,
RAYMOND J. DONAHUE, and CHRISTOPHER J. MISORSKI
__________

Appeal 2019-006247
Application 15/389,989
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) the final rejection of
claims 1–14. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We REVERSE.

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 Brunswick
Corporation. (Appeal Br. 1).
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Application 15/389,989

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STATEMENT OF THE CASE
Appellant’s invention is directed to heat treatment of high pressure die
cast objects, and more particularly to the solution heat treatment of high
pressure die cast objects with pressure (Spec. ¶ 2). According to the
Specification, the high pressure die casting process results in air entrained or
entrapped in the castings (id. ¶ 4). To increase the strength of a high
pressure aluminum die cast object, the Specification describes that it is
preferable to heat treat the cast object after casting (id.).
The Specification describes that the entrained or entrapped air often
expands during the solution heat treatment at temperatures above 700°F,
creating blisters on and in the cast product (id. ¶¶ 4, 6). The Specification
describes that these blisters cause aesthetic issues with the surface finish and
create large pores that adversely affect the mechanical properties of the
casting (id.). According to the Specification, application of external pressure
during the solution heat treatment process results in a beneficial pressure
equilibrium such that air entrained in the high pressure die casting cannot
expand and form blistering defects (id. ¶ 10).
Claim 1 is illustrative (emphasis added):
1. A method of heat treating a high pressure die cast
aluminum alloy object, the method comprising: obtaining a
high pressure die cast aluminum alloy object; and solution heat
treating the high pressure die cast aluminum alloy object above
700°F while applying pressure between 2.5 and 10 KSI for 2 to
8 hours in a solution heat treatment vessel, and quenching the
high pressure die cast aluminum alloy object after removing the
object from the solution heat treatment vessel; wherein the step
of solution heat treating eliminates blistering defects on the
high pressure die cast [object].
Appeal Br. 19 (Claims App.) (emphasis added).
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Application 15/389,989

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Appellant appeals the rejection of claims 1–14 under 35 U.S.C.
§ 103(a) as unpatentable over Lin et al. (US 2012/0261034 A1, published
Oct. 18, 2012, “Lin”), in view of Statham (US 3,732,128, issued May 8,
1973), and further in view of Barone et al. (US 6,524,409 B2, issued Feb.
25, 2003, “Barone”) (Final Act. 2–6).
FINDINGS OF FACT & ANALYSIS
Appellant’s arguments for reversal of the Examiner’s rejection of
claims 1–14 focus on limitations recited in independent claims 1 and 8 (see
Appeal Br. 4; Reply Br. 6–7). We select claim 1 as representative of claims
1–14.
The Examiner’s findings and conclusions regarding Lin, Statham, and
Barone are located on pages 2–6 of the Final Office Action. To resolve the
present appeal, we need only discuss these findings and conclusions with
respect to Lin and Statham.
The Examiner finds that Lin teaches the steps recited in claim 1 of
obtaining an aluminum alloy by high pressure die casting and, thereafter,
solution heat treating and quenching the casting (Final Act. 2). The
Examiner finds that Lin does not disclose, inter alia, the claimed solution
heat treatment parameters including the application of 2.5–10 KSI pressure
in a vessel to eliminate blistering defects on the heat treated cast (id. at 3).
The Examiner, however, finds that Statham teaches “heat treatment of
die casting under pressure for [an] aluminum alloy without forming blisters
to improve mechanical strength” (id. at 3 (citing Statham Title; 1:35–38;
1:55–60)). The Examiner finds Statham teaches heat treatment “under a
pressure of 100–10,000 psi (i.e.[,] 0.1–10 KSI),” which overlaps the claimed
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pressure range (Final Act. 3 (citing Statham 2:55–61)). The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
at the time of the invention to replace Lin’s solution heat treatment with
Statham’s high pressure solution treatment at the claimed pressure range to
improve a die cast object’s mechanical strength without forming blisters
(Final Act. 3).
Appellant argues, inter alia, that the ordinarily skilled artisan would
not have modified Lin’s solution heat treating a high pressure die cast
aluminum alloy with Statham’s pressure range “to solve blistering defects
that [Lin] never recognized in the first place” (Appeal Br. 11). Appellant
argues that Lin’s alloy specifically includes at least one grain refining
element, including titanium diboride or titanium carbide (id. at 10 (citing Lin
¶ 52)). Appellant argues that these grain refiners are “well known in the art
to reduce porosity.”2 Appeal Br. 11 (citing Spec. ¶ 6); see also Final Act. 7.
Appellant argues that because Statham’s alloy is not disclosed as
including grain refiners, one of ordinary skill in the art would have viewed
Statham’s alloys as having pores (Appeal Br. 10).
Appellant contends that the obviousness rejection is reversibly
erroneous because the Examiner fails to explain why Statham would have
motivated one of ordinary skill in the art to use heat treatment at 0.1–10 KSI

2 We have not considered M. Easton and D. St. John: Metallurgical and
Materials Transactions A, 30A (1999) 1613, relied on by Appellant to
establish that “[t]he addition of grain refiners . . . reduces the size of defects
such as microporosity.” Appeal Br. 11, Ex. A. We find no evidence in the
electronic record of this Application that this reference was submitted prior
to the filing of the Appeal Brief. Ans. 6. Thus, we are of the view that the
reference is inadmissible. 37 C.F.R. § 41.33(d)(1) and (d)(2).
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“to solve a problem not present in Lin[’s non-porous alloy],” namely the
formation of blister defects from heat treatment (Reply Br. 7).
The Examiner responds to Appellant’s arguments by finding that “no
evidence in Lin suggests [that] Lin’s grain refine element is used to address
porosity. That is pure speculation” (Ans. 6; see also Final Act. 10). The
Examiner contends that Statham’s recognition of the “well-known problem”
of blister defects “during heat[] treating a die cast alloy,” provides the
requisite motivation to modify Lin’s heat treatment method with pressure
(Ans. 6–7).
We find Appellant’s arguments persuasive that one of ordinary skill in
the art would have viewed Lin’s heat treated high pressure die cast
aluminum alloy, comprising grain refiners, as having reduced porosity. We
note that during heat treatment, “the use of heat and time can modify the
grain structure of metals leading to improved strength.” Dictionary of
Chemical Engineering (2014) — “heat treatment.”3 A grain refiner is “[a]
material added to a molten metal to induce a finer-than-normal grain size in
the final structure.” Dictionary of Metals (2012) — “grain refiner.” The
final structure of a metal, which has been heat treated with grain refining

3 See 37 C.F.R. § 41.30, which makes clear that “Evidence,” as referred to in
37 C.F.R. § 41.33(d)(1) and (d)(2), does not encompass dictionaries.
Treating dictionaries in this manner is consistent with Supreme Court and
Federal Circuit precedent, which contemplate that such materials may be
consulted by tribunals “at any time.” See, e.g., Nix v. Hedden, 149 U.S. 304,
307 (1893) (citations omitted) (admitting dictionaries to understand the
ordinary meaning of terms “not as evidence, but only as aids to the memory
and understanding of the court”); Phillips v. AWH Corp., 415 F.3d 1303,
1322–23 (Fed. Cir. 2005) (“[J]udges are free to consult dictionaries and
technical treatises” at any time in order to better understand the underlying
technology.) (en banc) (citation omitted).
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additives, would thus have finer grain size, improved mechanical strength,
and, concomitantly, less small voids in the metal’s body. See id. (defining
pores: “small voids in the body of a metal.”).
We agree with Appellant that one of ordinary skill in the art would not
have modified Lin’s solution heat treating a die cast alloy comprising grain
refiners with Statham’s pressure range to solve the problem of blister
defects. Ans. 7; Appeal Br. 11. We find that the Examiner engaged in
impermissible hindsight in rejecting claim 1. The Examiner reversibly errs
in concluding that Statham provides sufficient motivation to modify Lin’s
method of heat treating.
On this record, we reverse the Examiner’s 35 U.S.C. § 103(a)
rejection of claims 1–14.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
1–14 103 Lin, Statham, Barone 1–14
REVERSED