Ex Parte Brunson

Board of Patent Appeals and Interferences

Aug 11, 2009

09844526 (B.P.A.I. Aug. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT WOOLLEY BRUNSON
____________

Appeal 2009-000195
Application 09/844,526
Technology Center 1700
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Decided: August 11, 2009
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Before CHARLES F. WARREN, CATHERINE Q. TIMM and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision twice rejecting claims 25-30 (Office Action, mailed Jun. 27, 2005).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2009-000195
Application 09/844,526

STATEMENT OF THE CASE
The invention relates to “deep cryogenic tempering processes for
brake components to produce improved molecular structures and enhanced
structural properties.” (Spec. [0001].) Claims 25 and 26 are illustrative of
the subject matter on appeal, and are reproduced from the Claims Appendix
to the Appeal Brief (“App. Br.”), filed Oct. 6, 2006:
25. A method for deep cryogenic tempering of metallic brake
rotors, the method comprising the steps of:
(a) determining a mass and cross sectional area of the brake
rotors;
(b) placing the brake rotors at a temperature within a
cryogenic processing chamber;
(c) cooling the brake rotors at a descent rate, the descent rate
being a function of the mass and cross sectional area of the brake
rotors, until the temperature of the brake rotors is approximately
-300°F;
(d) maintaining the brake rotors temperature at -300°F for a
stay time, the stay time being a function of the mass and the cross
sectional area of the brake rotors;
(e) raising the temperature of the brake rotors to
approximately 300°F at an ascent rate, the ascent rate being a function
of the mass and the cross sectional area of the brake rotors;
(f) maintaining the temperature of the brake rotors at 300°F
for a post temper time;
(g) lowering the temperature of the brake rotors to room
temperature at a cool down rate;
(h) raising the temperature of the brake rotors to
approximately 300°F at an ascent rate;
(i) maintaining the temperature of the brake rotors at 300°F
for a post temper time; and
(g) lowering the temperature of the brake rotors to room
temperature at a cool down rate.

26. The method of Claim 25, wherein steps (h), (i), and (g)
are repeated for a third post temper time.

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The Examiner relies on the following evidence to establish
unpatentability (Examiner’s Answer (“Ans.”), mailed Feb. 5, 2008, 3):
Paulin 5,865,913 Feb. 2, 1999
Workman 5,447,035 Sep. 5, 1995
Appellant’s acknowledged prior art admission (Spec. [0005])
Appellant requests review of the following grounds of rejection (App.
Br. 8; see Ans. 2-3, § (6)):
1. claims 26 and 27 under 35 U.S.C. § 112, second paragraph, as
indefinite; and
2. claims 25-30 under 35 U.S.C. § 103(a) as unpatentable over Paulin
in view of Workman and Appellant’s acknowledged prior art admission.
Rejection of claims 26 and 27 under
35 U.S.C. § 112, second paragraph, as indefinite

Appellant concedes that claims 26 and 27 are indefinite because claim
26 refers to an unrecited method step “(j)” in claim 25. (App. Br. 9.) In an
effort to overcome the rejection, Appellant filed an Amendment on Nov. 21,
2005, together with a Notice of Appeal. As explained in the Amendment
(App. Br., Evidence Appendix A (p. 8)), the recitation of a second step “(g)”
in claim 25 instead of a step “(j)” is clearly a typographical error. However,
because the Amendment was not entered (Advisory Action, mailed Dec. 6,
2005), we are constrained to affirm the Examiner’s rejection.1

1 The Examiner has advised that the “Amendment filed on November 21,
2005 would be entered to rectify this rejection if the 35 U.S.C. § 103
rejection is being reversed.” (Ans. 4.)
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Application 09/844,526

Rejection of claims 25-30 under 35 U.S.C. § 103(a)
as unpatentable over Paulin in view of Workman and
Appellant’s acknowledged prior art admission

ISSUE
Has Appellant shown reversible error in the Examiner’s finding that
Paulin inherently predetermines cross sectional area of a component and
determines descent rate, stay time and ascent rate as a function of the cross
sectional area?
We answer this question in the affirmative.
FINDINGS OF FACT (“FF”)
1. According to the Specification, the use of deep cryogenic
processing for improving the life and wear resistance of cutting tools and
firearms was known in the art at the time of Appellant’s invention. (Spec.
[0003].) The Specification acknowledges Paulin’s disclosure of “a specific
deep cryogenic processing flow and processing profile” which is “specific to
[] firearm application[s].” (Id.) However, the Specification states that
Paulin’s method “cannot be used for other applications due to the
dependence of the process on the mass of the processing load and the
materials treated.” (Id.)
2. According to the Specification, the desired set of structural
properties for brake components is unique due to the operating environment.
(Spec. [0005] - [0006].) Appellant is said to have discovered that
substantial improvements in the performance and service life of brake
components can be achieved by taking into account cross sectional area, as
well as material and mass of the brake components in determining the
processing profiles for deep cryogenic tempering. (Abstract.)
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3. Appellant contends that the Examiner reversibly erred in
finding that Paulin discloses the method of appealed claim 25 because
Paulin’s method is based solely on mass and the materials treated. (App. Br.
12 (citing Paulin, col. 3, ll. 53-58); Rep. Br. 4 (citing Paulin, col. 3, ll. 50-
67).) More specifically, Appellant argues that Paulin fails to disclose or
suggest determining cross sectional area of a structure (claim 25, step (a)),
and then determining descent rate, stay time and ascent rate as a function of
the cross sectional area (claim 25, steps (c)-(e)). (See id.)
4. The Examiner maintains that Paulin inherently predetermines
cross sectional area and employs heat treatment conditions as a function of
cross sectional area. (Ans. 6 (citing Paulin, col. 3, ll. 53-58).) The cited
portion of Paulin discloses a step of keeping firearm barrels and components
in a cryogenic processor “for a predetermined period of time, dependent
upon the total mass of the processing load and the materials treated.” In
support of this finding of inherency, the Examiner further relies on “general
knowledge that mass is [the] product of volume and density. Volume equals
cross-sectional area x length (height).” (Ans. 8.)
5. To refute the Examiner’s finding of inherency, Appellant relies
on a comparison between Figure 2 in each of Paulin, Workman, and the
Specification. (App. Br. 17, 22, 27, 31, 36.) These figures illustrate the
processing profiles (temperature versus time) used by Paulin, Workman, and
Appellant. (Paulin, col. 2, l. 30; Workman, col. 2, ll. 5-6; Spec. [0016].)
According to Appellant, a comparison of the figures establishes that the
claimed method results in a much longer stay time at the lower and higher
temperature points than the stay times in Paulin and Workman. (App. Br.
17.) Appellant contends that this longer stay time provides increased lattice
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changes to the molecular structure of the brake component and allows for
the temperature change to completely penetrate the material. (App. Br. 17.)
6. The Specification describes improvements to molecular
structure of a brake component as including “a certain transformation from
austenite to martensite for components having a steel material type.” (Spec.
[0012].) The improved molecular structure is said toe “enhance [] the
structural properties of brake components.” (Id.)
7. The Examiner responds to Appellant’s comparison evidence as
follows:
“appellant’s argument is immaterial because none of appealed claims
recite specific ‘stay time’ or how to determine ‘stay time’.” (Ans. 9.)
8. The Specification identifies exemplary brake rotor
compositions (Spec. [0026]) and describes specific processing profiles based
on different combinations of brake rotor mass and cross section (Spec.
[0027].) Appellant points out that “[b]rake rotors are typically a standard
structure” (Rep. Br. 3), i.e., solid plate-like (Rep. Br. 4).
PRINCIPLES OF LAW
“The inherent teaching of a prior art reference, a question of fact,
arises both in the context of anticipation and obviousness.” In re Napier, 55
F.3d 610, 613 (Fed. Cir. 1995). Where the Examiner establishes a
reasonable assertion of inherency and thereby evinces that a claimed process
appears to be identical to a process disclosed by the prior art and/or that the
products claimed by the applicant and disclosed in the prior art appear to be
the same, the burden is properly shifted to the applicant to show that they are
not. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d
1252, 1254-56 (CCPA 1977); cf., In re Robertson, 169 F.3d 743, 745 (Fed.
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Cir. 1999) (noting that inherency may not be established by probabilities or
possibilities).
When rebuttal evidence is provided, the prima facie case dissolves,
and the decision is made on the entirety of the evidence. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992); In re Spada, 911 F.2d at 708. All
evidence of nonobviousness, including data in the specification, must be
considered when assessing patentability, In re Soni, 54 F.3d 746, 750 (Fed.
Cir. 1995) (citing In re Margolis, 785 F.2d 1029, 1031 (Fed. Cir. 1986)).
ANALYSIS
The Examiner found that Paulin inherently predetermines cross
sectional area of a structure during the disclosed tempering process on the
basis that cross sectional area can be calculated by knowing volume, density
and length. (FF 4.) However, Appellant has provided an equally convincing
argument that Paulin does not measure cross sectional area because Paulin’s
method is directed to treating firearms (barrels and components) having
varying shapes for which cross sectional area cannot be readily determined.
(See Rep. Br. 2-3; FF 1-3.) In this regard, we note that the Examiner has not
directed us to, nor do we find, any disclosure in Paulin regarding
measurements of volume, density and/or length.
The Examiner also found that the descent rate, stay time, and ascent
rate used in Paulin’s method are inherently a function of cross sectional area
of the treated structures. (FF 4.) Appellant has attempted to rebut this
finding by identifying evidence in the Specification which is said to establish
a difference in Paulin’s and Appellant’s stay times and, therefore, a
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difference in the prior art and claimed methods. (FF 5, 8; see also, FF 6.)
The Examiner has not fairly considered this evidence. (FF 7.)
For the foregoing reasons, Appellant has convincingly shown that the
Examiner’s obviousness determination is not supported by a preponderance
of the evidence. Therefore, we do not sustain the rejection of claims 25-30
under 35 U.S.C. § 103(a) as unpatentable over Paulin in view of Workman
and Appellant’s acknowledged prior art admission.
CONCLUSION
We affirm the rejection of claims 26 and 27 under 35 U.S.C. § 112,
second paragraph, as indefinite, but reverse the rejection of claims 25-30
under 35 U.S.C. § 103(a) as unpatentable over Paulin in view of Workman
and Appellant’s acknowledged prior art admission.
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)(v).

AFFIRMED-IN-PART

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