Ex Parte Brent et alDownload PDFPatent Trial and Appeal BoardDec 20, 201612952426 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 12/952,426 11/23/2010 Timothy J. Brent AG 100527 1626 116439 7590 Joel G. Landau Aerojet Rocketdyne P.O. Box 7922 RLB70 Canoga Park, CA 91304 12/22/2016 EXAMINER ZHU, WEIPING ART UNIT PAPER NUMBER 1733 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): joel.landau@rocket.com nicole.holieway@rocket.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TIMOTHY J. BRENT and MICHAEL T. STAWOVY Appeal 2015-007139 Application 12/952,426 Technology Center 1700 Before KAREN M. HASTINGS, CHRISTOPHER L. OGDEN, and MONTE T. SQUIRE, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134(a) of a decision of the Primary Examiner to reject claims 1—4, 6—15, 17, 18, and 20 under 35 U.S.C. § 103(a) based on Hetz (US 2007/0053785 Al, pub. Mar. 8, 2007).2 We have jurisdiction under 35 U.S.C. § 6. Upon consideration of the appeal record, including the Appellants’ position in this appeal as set forth on pages 3 and 4 of the Appeal Brief filed 1 According to Appellants, the real party in interest is Aerojet Rocketdyne, Inc., a wholly owned subsidiary of Gencorp Inc. (Br. 1). 2 The Examiner’s rejection under 35 U.S.C. § 112 was rendered moot by the amendment after final which removed the language the Examiner based this rejection on (Final Act. 2, 3; Advisory Act. mailed July 30, 2014 entered the amendment filed July 15, 2014) Appeal 2015-007139 Application 12/952,426 February 11, 2015, we determine that Appellants have not shown error in the Examiner’s rejection for the reasons stated by the Examiner (Examiner’s Answer mailed May 13, 2015 at 3, 4; no reply brief has been filed). Notably, Appellants have not disputed any of the Examiner’s findings and determinations that Hetz teaches or suggests steps a) to e) of claim 1 (Br. 3, 4; claim 1 reproduced in Claims Appendix, Br. 5). Rather, they contend the Examiner has not addressed the part of clause f) that states the sintering temperature is less than the liquid phase sintering temperature of the second mixture, and that Hetz teaches away from using a sintering step (Br. 4). They also contend that the Examiner “did not address” similar sintering limitations of claims 9 and 17 (Br. 4). Whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In evaluating references it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Fritch, 972 F.2d 1260, 1264—65 (Fed. Cir. 1992); In rePreda, 401 F.2d 825, 826 (CCPA 1968). Contrary to Appellants’ position, Hetz expressly teaches that sintering may indeed be used in their invention (e.g., Hetz 116 (“wherein the liner shape is sintered”), as well as in the prior art discussed in Hetz || 8—10). 2 Appeal 2015-007139 Application 12/952,426 Thus, Appellants’ argument that Hetz teaches away from a sintering step is not persuasive of reversible error. Appellants do not adequately address the Examiner’s explanation that if the sintering temperature is above the melting point of one or more of the constituents as described in | 8 of Hetz, the reasonable inference is that such a temperature will also be below the melting point of other constituents (for example above the melting temperature of Cu may also be below the melting temperature of Ni (Ans. 3, 4). Appellants’ mere statement that the Examiner “has not addressed” similar sintering temperature clauses in claims 9 and 17 does not adequately address the Examiner’s reasoning that since sintering temperatures may be above some constituents and below others, the argued features are rendered obvious by the applied prior art (Ans. 4; no reply brief has been filed). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 3 Copy with citationCopy as parenthetical citation