Ex Parte Burns et al

Patent Trial and Appeal Board

Dec 11, 2012

10606436 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/606,436 06/25/2003 Steven M. Burns 085.10940-US (03-325) 6928
52237 7590 12/11/2012
BACHMAN & LAPOINTE, P.C.
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
IP, SIKYIN
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
12/11/2012 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 STEVEN M. BURNS and STEVEN P. HAHN
____________

Appeal 2011-009130
Application 10/606,436
Technology Center 1700
____________

Before EDWARD C. KIMLIN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal from the final rejection of claims 34-47.1 We have
jurisdiction under 35 U.S.C. § 6(b). Claim 34 is illustrative:
34. A method for heat treating at least one workpiece comprising the
steps of:

cleaning a furnace chamber to be used during said heat treating
method;

1 Appellants incorrectly state that “[c]laims 34-37 are pending in the
application” and are on appeal (Prin. Bf. 2, first para.).
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Application 10/606,436

2
said cleaning steps being performed without said at least one
workpiece being present in said furnace chamber;

said cleaning step comprising introducing a cleaning gas into the
furnace chamber only at a center of an area where the at least one workpiece
is to be located;

said introducing step comprising injecting said gas at a partial
pressure and a flow rate sufficient to create a pressure differential within
said furnace chamber which carries contaminants away from said center of
an area where the at least one workpiece is to be located and toward an exit
of said furnace chamber;

said cleaning step further comprising heating said furnace chamber at
a temperature which is 200 to 300 degrees Fahrenheit above a temperature to
be used in a subsequent diffusion heat treating step for at least 30 minutes;
and

after said cleaning step has been completed, placing said at least one
workpiece within said cleaned chamber and diffusion heat treating said at
least one workpiece in a gas atmosphere with said gas being introduced into
the furnace chamber only at said center of an area in said furnace chamber
where the at least one workpiece is to be located.

The Examiner relies upon the following references as evidence of
obviousness:
Burns et al. (Burns) 6,042,898 Mar. 28, 2000
Naoyuki et al. (Naoyuki) JP 62139810 Jun. 23, 1987
Ritoku et al. (Ritoku) JP 2003027209 Jan. 29, 2003

Appellants’ claimed invention is directed to a method for heat treating
a workpiece in a furnace. The method entails cleaning the furnace without
the workpiece being present by introducing a cleaning gas into the furnace
chamber only at a center of an area where the workpiece is to be located.
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Application 10/606,436

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After the cleaning step is completed the workpiece is placed in the cleaned
area.
Claims 34-47 stand rejected under 35 U.S.C. § 112, second paragraph.
Claims 34-47 also stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Burns in view of JP ‘810 and JP ‘209.
The present application was the subject of a prior appeal to this Board.
In a Decision dated February 20, 2009, the Board sustained the Examiner’s
§ 103 rejection of similar claims over the same prior art (Appeal No. 2008-
4945). The appealed claims now require the introduction of the cleaning gas
into the furnace chamber only at a center of an area where the workpiece is
to be located.
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection under § 103 for
essentially those reasons expressed in the Answer. We will not, however,
sustain the Examiner’s rejection under § 112, second paragraph.
We consider first the Examiner’s rejection under § 112, second
paragraph. According to the Examiner, the claim language “center of an
area” is unclear because more than one workpiece can be treated and the
workpiece can be placed anywhere inside the furnace chamber. However,
we agree with Appellants that when the claim language is read in light of the
present Specification, as it must be, it is clear that the center of an area is the
area where the workpiece or workpieces are located for treatment. We
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Application 10/606,436

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concur with Appellants that one of ordinary skill in the art could determine
the metes and bounds of this limitation (Prin. Br. 6, second para.).
We now turn to the § 103 rejection. There is no dispute that Burns
discloses a method for heat treating a workpiece in a furnace and using an
inert cleaning gas to clean the workpiece in the furnace. Also, as noted by
the Examiner, Appellants have acknowledged on the record that “[a]s for
cleaning a contaminated furnace before heat treatment is contemplated, there
is no question that this is known in the prior art” (Ans. 8, last para.,
referencing Appellants’ remarks filed Jan. 29, 2010, pages 10-11). JP ‘810
further evidences that it was known in the art to clean a furnace before
processing a workpiece.
As acknowledged by the Examiner, the prior art of record does not
expressly teach introducing a cleaning gas only at the center area where the
workpiece is to be located. However, we are convinced that it would have
been obvious for one of ordinary skill in the art to clean either the entirety of
the furnace, or only the area where the workpiece is to be located, in order to
avoid contamination of the treated workpiece. In either case, as shown in JP
‘810, the furnace would be evacuated of the contaminants before placing the
workpiece in the furnace. Also, in order to reduce the costs of cleaning, it
would have been obvious for one ordinary skill in the art to limit the area of
cleaning to only where the workpiece is to be located.
Appellants have not established any unexpected result associated with
cleaning the area only where the workpiece is to be located. While
Appellants reference Figures 2-4 of the present Specification for
demonstrating improvements in the treated workpiece when the claimed
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process is performed, we agree with the Examiner that the Specification falls
far short of explaining the heat treatment method that is asserted to be
outside the scope of the claimed invention which is offered for comparison.
Indeed, the Specification states only that “FIG. 4 illustrates a coating which
was not formed using the heat diffusion treatment of the present invention”
(Spec. 8, second para.). Conspicuously lacking is any detail of the specific
heat diffusion treatment and cleaning method of the comparative illustration.
Consequently, Appellants have not established that cleaning only at the
recited center area provides an unexpected benefit compared to cleaning the
entire furnace. Furthermore, the Specification discloses that Figure 3 is
representative of “a coating which has been formed using the method
described herein which was surface finished by shot peening” (id.).
However, inasmuch as original claim 15 recites a method that does not
include a cleaning step, but diffusion heat treating with a gas being injected
at a workpiece center location, it is not clear that the appealed claims are
commensurate in scope with the method associated with Fig. 3.
As for the claimed partial pressure and flow rate of the injected
cleaning gas, we agree with the Examiner that it would have been a matter of
routine experimentation to determine the optimum conditions for the
injected gas. Appellants have presented no evidence of unexpected results
attached to the claimed partial pressure and flow rate.
In conclusion, based on the foregoing, the Examiner’s decision
rejecting the appealed claims is affirmed.
The decision of the Examiner is affirmed.
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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)(iv).
AFFIRMED

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