Ex parte Clark

Board of Patent Appeals and Interferences

Jun 7, 1999

08578047 (B.P.A.I. Jun. 7, 1999)

Application for patent filed December 26, 1995. 1
Claims 2, 4, 11 and 12 were amended subsequent to the2
final rejection and the examiner's answer. Claims 5 through
10 were canceled subsequent to the final rejection.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM E. CLARK
____________
Appeal No. 1998-1772
Application No. 08/578,0471
____________
ON BRIEF
____________
Before ABRAMS, NASE, and CRAWFORD, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 4, 11 and 12, which are all of the
claims pending in this application.2
Appeal No. 1998-1772
Application No. 08/578,047
We AFFIRM-IN-PART.
Appeal No. 1998-1772 Page 3
Application No. 08/578,047
In determining the teachings of Sato, we will rely on3
the translation provided by the PTO. A copy of the
translation is attached for the appellant's convenience.
This rejection was set forth as a new ground of4
rejection in the examiner's answer (Paper No. 16, mailed
October 9, 1997). Since the grounds of rejection set forth in
(continued...)
BACKGROUND
The appellant's invention relates to a method for casting
a shaped metallic alloy article. An understanding of the
invention can be derived from a reading of exemplary claim 1,
which appears in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Brooks 3,826,301 July 30,
1974
Ashok et al. (Ashok) 5,381,847 Jan. 17,
1995
Sato et al. (Sato) 1-178345 (Japan) July 14, 19893
Claims 1, 2, 4, 11 and 12 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Brooks in view of Sato and
Ashok.4
Appeal No. 1998-1772 Page 4
Application No. 08/578,047
(...continued)4
the final rejection (Paper No. 9, mailed February 20, 1997)
were not set forth in the examiner's answer we assume that
these grounds of rejection have been withdrawn by the
examiner. See Ex parte Emm, 118 USPQ 180, 181 (Bd. App.
1957).
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
new ground of rejection, we make reference to the examiner's
answer (Paper No. 16, mailed October 9, 1997) and the
examiner's communication (Paper No. 19, mailed December 18,
1997) for the examiner's complete reasoning in support of the
new ground of rejection, and to the appellant's reply brief
(Paper No. 17, filed December 9, 1997) for the appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
Appeal No. 1998-1772 Page 5
Application No. 08/578,047
sufficient to establish a case of obviousness only with
respect to claim 1. Accordingly, we will sustain the
examiner's rejection of claim 1 under 35 U.S.C. § 103. We
will not sustain the examiner's rejection of claims 2, 4, 11
and 12 under
35 U.S.C. § 103. Our reasoning for this determination
follows.
The test for obviousness is what the combined teachings
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). Moreover, in
evaluating such 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 Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968). Furthermore, the conclusion
that the claimed subject matter is obvious must be supported
by evidence, as shown by some objective teaching in the prior
art or by knowledge generally available to one of ordinary
Appeal No. 1998-1772 Page 6
Application No. 08/578,047
skill in the art that would have led that individual to
combine the relevant teachings of the references to arrive at
the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With this as background, we turn to the examiner's new
ground of rejection of the claims on appeal (answer, pp. 3-4).
The examiner determined the teachings of Brooks and then
concluded that
Brooks substantially shows the invention as claimed
except that the semi-solid mass is not injected into a
die cavity and that the semi-solid mass is not moved away
from the molten stream as the semi-solid mass is
collected.
The examiner then determined that Sato "shows to inject semi-
solid mass into a die cavity to form a die casting product"
and that Ashok teaches "to maintain 5-50% volume fraction of
solid in the semi-solid mass during disrupting and partial
solidification process by maintaining a constant cooling zone
distance through moving the mold 46 or hot top 62, both are
considered as a container." The examiner then concluded from
the combined teachings of the applied prior art that it would
have been obvious to (1) inject the semi-solid mass of Brooks
Appeal No. 1998-1772 Page 7
Application No. 08/578,047
We note again that claims 2, 4, 11 and 12 were amended5
subsequent to the new ground of rejection set forth in the
examiner's answer.
into a injection die cavity to form a die casting product as
suggested by Sato's teaching, and (2) maintain a constant
cooling zone in the process of Brooks such that a uniform
fraction of solid in the semi-solid mass is maintained during
the spraying process as suggested by Ashok's teachings.
Implicit in this new ground of rejection is the
examiner's view that the above noted modifications of Brooks
would result in a method which corresponds to the method
recited in claims 1, 2, 4, 11 and 12 in all respects.5
Appeal No. 1998-1772 Page 8
Application No. 08/578,047
See especially column 5, lines 33-37, of Ashok.6
Claim 1
In applying the above-noted test for obviousness, we
reach the conclusion that it would have been obvious to one of
ordinary skill in the art at the time the invention was made
to have modified the Figure 4 embodiment of Brooks to (1)
maintain a constant cooling zone by moving Brooks' cylindrical
container 37 away from the tundish 10, nozzle 12 and gas
atomiser 13 as suggested by Ashok's teachings to inhibit the6
formation of coarse dendrites as taught by Ashok, and (2) form
a die casting product as suggested by Sato's teaching instead
of extruding a product since die casting and extruding are
known alternatives of forming a product from a molten metal
alloy.
The appellant first argues (reply brief, pp. 2-3) that
the rejection is based on impermissible hindsight. We do not
agree. When it is necessary to select elements of various
teachings in order to form the claimed invention, we ascertain
whether there is any suggestion or motivation in the prior art
Appeal No. 1998-1772 Page 9
Application No. 08/578,047
to make the selection made by the appellants. Obviousness
cannot be established by combining the teachings of the prior
art to produce the claimed invention, absent some teaching,
suggestion or incentive supporting the combination. The
extent to which such suggestion must be explicit in, or may be
fairly inferred from, the references, is decided on the facts
of each case, in light of the prior art and its relationship
to the appellants' invention. It is impermissible, however,
simply to engage in a hindsight reconstruction of the claimed
invention, using the appellant's structure as a template and
selecting elements from references to fill the gaps. The
references themselves must provide some teaching whereby the
appellants' combination would have been obvious. In re
Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991) (citations omitted). That is, something in the prior
art as a whole must suggest the desirability, and thus the
obviousness, of making the combination. See In re Beattie,
974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992);
Lindemann Maschinenfabrik GmbH v. American Hoist and Derrick
Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984).
In this case, it is our view that the suggestion to combine
Appeal No. 1998-1772 Page 10
Application No. 08/578,047
See column 1, lines 36-48, of Ashok.7
See Sato's groove 23a on tool 23.8
the teachings of the applied prior art comes not from
impermissible hindsight but from the teachings of the applied
prior art as set forth above. In that regard, Ashok clearly
teaches the benefits of maintaining a constant cooling zone in
a vertical casting process very similar to Brooks. In fact,
Brooks is cited by Ashok as showing a prior art spray casting7
process. Furthermore, it is our opinion that die casting and
extruding are known alternatives of forming a product from a
molten metal alloy and accordingly it would have been obvious
to one of ordinary skill in the art at the time the invention
was made to have modified Brooks to have utilized die casting
when a die casted product was to be formed from a molten metal
alloy.
Lastly, the appellant argues (reply brief, pp. 3-5) that
it would not have been obvious to combine the teachings of
Ashok and Sato as suggested since it would not have been
obvious to use the auger style feeding system of Sato in the8
Appeal No. 1998-1772 Page 11
Application No. 08/578,047
process of Ashok. We find this argument unpersuasive for the
following reasons. First, the rejection does not contemplate
providing the auger style feeding system of Sato in the
process of Ashok or for that matter in the process of Brooks.
Second, all of the features of the secondary reference need
not be bodily incorporated into the primary reference (see In
re Keller, supra, at 642 F.2d 425, 208 USPQ 881) and the
artisan is not compelled to blindly follow the teaching of one
prior art reference over the other without the exercise of
independent judgment (see Lear Siegler, Inc. v. Aeroquip
Corp., 733 F.2d 881, 889, 221 USPQ 1025, 1032 (Fed. Cir.
1984)). Thus, for the reasons stated by the appellant, one
skilled in the art in modifying Brooks' process to die cast a
product would not have included the auger style feeding system
of Sato.
For the reasons stated above, the decision of the
examiner to reject claim 1 under 35 U.S.C. § 103 is affirmed.
Claims 2 and 4
Appeal No. 1998-1772 Page 12
Application No. 08/578,047
The applied prior art contains no teaching of the9
claimed "piston" within the container.
We agree with the appellant's argument (reply brief, pp.
5-7) that the claimed "piston" within the container is not
suggested or taught by the applied prior art. Accordingly,
the decision of the examiner to reject claims 2 and 4 under 35
U.S.C. § 103 is reversed.
The examiner's statement in the examiner's communication
(Paper No. 19) that "it would have been obvious to provide a
piston within the container of Brooks if the collected
semisolid is to be injected from the top, instead of bottom,
of the container" is not supported by any evidence that would9
have led one skilled in the art to arrive at the claimed
invention.
Claims 11 and 12
We agree with the appellant's argument (reply brief, pp.
7-8) that the claimed "rotating" steps set forth in claim 11
and the claimed "second container" set forth in claim 12 are
not suggested or taught by the applied prior art.
Appeal No. 1998-1772 Page 13
Application No. 08/578,047
Accordingly, the decision of the examiner to reject claims 11
and 12 under
35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 2, 4, 11 and 12 under 35 U.S.C. § 103 is affirmed
with respect to claim 1 and reversed with respect to claims 2,
4, 11 and 12.
Appeal No. 1998-1772 Page 14
Application No. 08/578,047
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 1998-1772 Page 15
Application No. 08/578,047
GARY N. SPEED
REDDING BUILDING, SUITE 125
1701 CENTERVIEW DRIVE
LITTLE ROCK, AR 72211
APPEAL NO. 1998-1772 - JUDGE NASE
APPLICATION NO. 08/578,047
APJ NASE
APJ CRAWFORD
APJ ABRAMS
DECISION: AFFIRMED-IN-PART
Prepared By: Gloria Henderson
DRAFT TYPED: 02 Jun 99
FINAL TYPED:
Gloria: The panel order was changed.