Ex Parte Bullied et al

Patent Trials and Appeals Board

Jun 25, 2019

14865453 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/865,453 09/25/2015 Steven J. Bullied
54549 7590 06/27/2019
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
63352US02;
67097-2078PUS1
3132
EXAMINER
YUEN,JACKY
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN J. BULLIED, AW ADH B. PANDEY, and
BRIANS. TRYON
Appeal 2018-007581
Application 14/865,453
Technology Center 1700
Before ROMULO H. DELMENDO, JEFFREY B. ROBERTSON, and
BRIAND. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-13, 15-1 7, 21, and 22. We have jurisdiction.
35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, United Technologies Corporation, which,
according to the Appeal Brief, is also the real party in interest. Appeal Br. 1.
Appeal 2018-007581
Application 14/865,453
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a die and system for
high temperature die casting. Spec. ,-J 2. Die casting involves moving
molten metal into a die cavity to form a desired shape. Id. f 3. The
Specification explains that a challenge in die casting is maximizing die life
(which can be a problem due to thermal mechanical fatigue) while
minimizing die cost. Id. ,-i 4. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A die casting die comprising:
a shoe comprised of a first material and including a pocket;
an insert arranged in the pocket, the insert comprised of a
second material that is different from the first material, and the
insert providing a contoured surface; and
a coating on the contoured surface, the coating providing
a cast part contour, wherein the coating is approximately 0.1
inches thick.
Appeal Br. 16 (Claims App.).
Figure 1, reproduced below, is illustrative of the claimed invention.
-/
/
44
20
2 In this Decision, we refer to the Final Office Action dated September 13,
2017 ("Final Act."), the Appeal Brief filed February 13, 2018 ("Appeal
Br."), the Examiner's Answer dated June 1, 2018 ("Ans."), and the Reply
Brief filed July 16, 2018 ("Reply Br.").
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Application 14/865,453
Figure 1 schematically illustrates an example die casting system as described
in the Specification. Spec. ,i 28. Figure 1 depicts, for example, first die 12
and second die 14 having first shoe 22 and second shoe 24 respectively. It
also depicts first insert 26 providing contoured surface 28 with coating 30.
Id. f29.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Bennett et al. us 3,582,467 June 8, 1971
("Bennett")
Barto et al. us 3,615,880 Oct. 26, 1971
("Barto")
Aoshima et al. us 5,799,717 Sept. 1, 1998
("Aoshima")
Kowalczyk et al. US 6,470,550 Bl Oct. 29, 2002
("Kowalczyk")
Tsuchiya et al. US 2003/0024682 Al Feb. 6,2003
("Tsuchiya")
REJECTIONS
The following rejections are before us on appeal:
Rejection 1. Claims 1-5 and 8 under 35 U.S.C. § 103 as unpatentable
over Tsuchiya in view of Barto and Aoshima. Final Act. 3.
Rejection 2. Claims 6 and 7 under 35 U.S.C. § 103 as unpatentable
over Tsuchiya in view of Barto and Aoshima and further in view of
Kowalczyk. Id. at 6.
Rejection 3. Claims 9-13, 15, and 16 under 35 U.S.C. § 103 as
unpatentable over Tsuchiya in view of Barto and Kowalczyk. Id. at 7.
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Application 14/865,453
Rejection 4. Claim 17 under 35 U.S.C. § 103 as unpatentable over
Tsuchiya in view of Barto and Kowalczyk and further in view of Bennett.
Id. at 11.
Rejection 5. Claims 21 and 22 under 35 U.S.C. § 103 as unpatentable
over Tsuchiya in view of Barto, Kowalczyk, and Bennett and further in view
of Aoshima. Id. at 11.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellants 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 evidence
presented in this Appeal and each of Appellant's arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Rejection 1. The Examiner rejects claims 1-5 and 8 under 35 U.S.C.
§ 103 as unpatentable over Tsuchiya in view of Barto and Aoshima. Final
Act. 3. Appellant presents separate arguments for claims 1 and claim 2.
Appeal Br. 5, 10. Consistent with the provisions of 37 C.F.R.
§ 41.37(c)(l)(iv) (2013), we limit our discussion to those claims. Claim 8
stands or falls with claim 1 (because claim 8 depends from claim 1) and
claims 3-5 stand or fall with claim 2 (because claims 3-5 directly or
indirectly depend from claim 2).
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Application 14/865,453
As to claim 1, the Examiner finds that Tsuchiya teaches a die meeting
most of the recitations of claim 1. Final Act. 3 ( citing Tsuchiya). The
Examiner finds that Tsuchiya teaches that its insert is made of copper
( corresponding to the second material in the parlance of claim 1 ), but
Tsuchiya does not disclose the material of the frame member ( corresponding
to the first material in the parlance of claim 1 ). Id. The Examiner finds,
however, that Barto teaches a die having steel backup blocks. Id. ( citing
Barto). The Examiner determines that it would have been obvious to use
steel, as taught by Barto, for Tsuchiya's frame as follows:
As Tsuchiya et al is quiet to the material of the frame, it would
have been obvious to one of ordinary skill in the art to use steel,
as recognized in Barto et al, as a material that meets minimum
property requirements and have sufficient yield strength for
supporting the mold inserts. Note that the combination suggests
a steel frame and copper alloy mold inserts, thereby meeting the
limitation of the second material being a different material from
the first material.
Id. at 4.
Although the Examiner finds that Tsuchiya teaches an insert having a
contoured surface with a coating (id. at 3), the Examiner also finds that the
combination of Tsuchiya and Barto does not teach that the coating is
approximately 0.1 inches thick. Id. at 4. The Examiner finds, however, that
Aoshima discloses a copper alloy mold with a similar coating and teaches a
thickness range for the coating that encompasses claim l's recited value of
approximately 0.1 inches thick. Id.
Appellant argues that the Examiner improperly combines Tsuchiya
and Barto. Appeal Br. 5-6. Appellant argues that Tsuchiya discloses
rheocasting and thixocasting while Barto discloses a conventional die
casting process. Id. at 5; see also Reply Br. 2. Appellant also argues that
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Application 14/865,453
Tsuchiya and Barto disclose molding of different materials and that,
according to Tsuchiya, its copper insert is sufficient because of low
temperature. Id. at 6.
Appellant's arguments are unpersuasive because the Examiner relies
on Barto for teaching an appropriate material for the first material of
Tsuchiya (i.e., the material of the frame or, in the parlance of claim 1, the
shoe). Ans. 4. The Examiner reasonably determined that a person of skill in
the art would select Barto's steel for Tsuchiya's frame because of the steel's
strength. Id. Appellant's arguments do not rebut this determination.
Appellant's arguments regarding the suitability of copper for the Tsuchiya
insert and the differences in the process of Tsuchiya and Barto address what
material is appropriate for an insert (inside the shoe); these arguments do not
rebut that steel would be appropriate for Tsuchiya's outer frame or shoe.
Appellant also argues that Tsuchiya teaches away from the
Examiner's combination by stating that copper alloys are "generally
considered not very suitable for die-casting." Ans. 8 (quoting Tsuchiya ,i 4).
This Tsuchiya statement, however, refers to art predating Tsuchiya. As the
Examiner explains, Tsuchiya teaches that a copper insert is appropriate for
its configuration. Ans. 5 (citing Tsuchiya ,i 37). Moreover, Appellant's
teaching away argument does not, in any way, establish disparagement of
the use of steel for Tsuchiya' s frame, and this is the teaching the Examiner
combines into Tsuchiya from Barto. See, e.g., In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) ( explaining that a teaching away must "criticize,
discredit, or otherwise discourage" the claimed solution).
Appellant also argues that the Examiner improperly combines
Tsuchiya and Barto with Aoshima. Appeal Br. 9-10. In particular,
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Application 14/865,453
Appellant argues that Aoshima is used for casting aluminum unlike the
processes of Tsuchiya or Barto. Id. at 9. This argument is unpersuasive
because the Examiner finds that Tsuchiya alone already discusses a cermet
coating as discussed in Aoshima. Ans. 7. The Examiner therefore
reasonably relies on Aoshima as teaching a range of suitable thicknesses for
the Tsuchiya coating. Id. Moreover, Appellant does not rebut, for example,
the Examiner's findings concerning similarity of the Tsuchiya and Aoshima
coatings on similar copper alloy molds.
Appellant further argues that Barto teaches away from adding a
coating to the Tsuchiya and Barto combination. Appeal Br. 9-10. Appellant
does not dispute, however, the Examiner's finding that Tsuchiya already has
a coating. Ans. 7. Moreover, Barto' s teachings concerning the interior
structure of the die for the Barto process are not particularly relevant to the
suitability of selecting a thickness from Aoshima's range for Tsuchiya's
coating and are not particularly relevant to whether or not use of Barto' s
steel for Tsuchiya' s outer shoe is appropriate.
Because Appellant's arguments do not identify error, we sustain the
Examiner's rejection of claims 1 and 8.
Claim 2 recites, "The die casting die in claim 1, wherein the first
material has a thermal conductivity between 12 W•m-lK-1 and 62 W•m-lK-
1." Appeal Br. 16. The Examiner finds that Barto's steel (used in the
Examiner's combination for the shoe's first material as explained above)
would have such a thermal conductivity as taught by Barto. Final Act. 5
( citing Barto 8:28-35).
Appellant argues that Aoshima teaches away from the recited
conductivity range. Appeal Br. 10-11. Aoshima, however, only speaks to
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Application 14/865,453
the thermal conductivity of its copper alloy, and the Examiner's rejection
uses steel, not copper, for the first material. Ans. 8. Moreover, Appellant
fails to explain why the conductivity taught by Aoshima would be relevant
to the Tsuchiya mold making use of steel taught by Barto for its outer shoe
material and making use of the coating thickness taught by Aoshima.
Because Appellant's argument does not identify error, we sustain the
Examiner's rejection of claims 2-5.
Rejection 2. The Examiner rejects claims 6 and 7 under 35 U.S.C.
§ 103 as unpatentable over Tsuchiya in view of Barto and Aoshima and
further in view of Kowalczyk. Final Act. 6. Appellant argues claims 6 and
7 together, and we, therefore, focus on claim 6 with claim 7 standing or
falling with claim 6. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
Claim 6 recites, "The die casting die in claim 1, wherein the coating
has a hardness between 36 HRC and 62 HRC." Appeal Br. 16.3 The
Examiner finds that Kowalczyk discusses tools such as mold cavities having
a barrier coating with hardness overlapping those of claim 6. Final Act. 6-7
(citing Kowalczyk col. 6, 11. 15-30). The Examiner determines that it would
have been obvious to form the coatings of Tsuchiya with the hardness taught
by Kowalczyk in order to provide components "that are harder, tougher,
more wear resistant, and far more durable (Kowalczyk et al, col 2 lines 25-
30)." Id. at 7.
Appellant argues that "one of ordinary skill in the art would not have
been motivated to apply the coatings of Kowalczyk used for high
temperature molten metal to the copper insert of Tsuchiya used in semi-
solidified Fe alloys." Appeal Br. 12. This cursory argument is
3 HRC refers to Rockwell Hardness measured on the C scale.
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Application 14/865,453
unpersuasive, however, because Appellant does not dispute the Examiner's
stated rationale as to why a person of skill in the art would have been
motivated to use hard coatings (i.e., because they are "harder, tougher, more
wear resistant, and far more durable").
Appellant also argues that Barto teaches away from thick coatings.
Appeal Br. 12-13. This argument is unpersuasive for reasons explained
above including because the Examiner relies on Barto only as teaching steel
for an outer shoe.
Because Appellant's arguments do not identify error, we sustain the
Examiner's rejection of claims 6 and 7.
Rejections 3-5. For these rejections, Appellant relies on arguments
Appellant presented with respect to claims 1 and 2. Appeal Br. 13-15.
Those arguments are unpersuasive for the reasons explained above. We
sustain these rejections.
DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 1-13, 15-17, 21, and 22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a).
AFFIRMED
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