Ex Parte Fink et alDownload PDFPatent Trial and Appeal BoardNov 28, 201712543938 (P.T.A.B. Nov. 28, 2017) 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. 12/543,938 08/19/2009 Kenneth Fink A39.2B-14385-US01(22275-U 8349 65282 7590 11/30/2017 VAS/Orbital ATK, Inc. c/o Vidas, Arrett & Steinkraus, P.A. 9531 West 78th Street Suite #400 Eden Prairie, MN 55344 EXAMINER BERGIN, JAMES S ART UNIT PAPER NUMBER 3641 NOTIFICATION DATE DELIVERY MODE 11/30/2017 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): mail@vaslaw.com rleaf@vaslaw.com rarrett @vaslaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KENNETH FINK, DAVID A. SMITH, CRAIG F. BORCHARD, DAVID J. FEHR, SCOTT V. HANSON, MARK J. SHIREMAN, ROBERT J. STANEK, and JOHN S. KOSHUBA Appeal 2017-001468 Application 12/543,938 Technology Center 3600 Before STEFAN STAICOVICI, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. STEPINA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 23, 24, 27, 32-43, and 45-47.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Claims 1—22, 25, 26, and 28—31 are canceled and claim 44 is withdrawn. Appeal Br. 2 (filed Feb. 29, 2016). Appeal 2017-001468 Application 12/543,938 CLAIMED SUBJECT MATTER The claims are directed to a vent plug for ordnance and rocket motors. Spec. 14. Claim 23, reproduced below, is illustrative of the claimed subject matter: 23. An apparatus comprising: a casing defining a vent opening; an energetic material contained in said casing; and a non-threaded metal plastically deformed plug oriented in said vent opening, said plug sealing said vent opening. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Radnich US 3,665,857 May 30, 1972 Dassis US 2002/0020454 A1 Feb. 21, 2002 Ljungwald US 7,739,956 B2 June 22,2010 REJECTIONS (I) Claims 23, 24, 27, 32-41, and 45 are rejected under 35 U.S.C. § 102(b) as anticipated by Dassis. Final Act. 2. (II) Claims 23, 24, 27, 34-41, 43, and 45^47 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ljungwald. Final Act. 3. (III) Claim 42 is rejected under 35 U.S.C. § 103(a) as unpatentable over Dassis and Radnich. Final Act. 5. (IV) Claims 23, 24, 27, 34-41, 43, and 45^47 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ljungwald and Dassis. Final Act. 6. 2 Appeal 2017-001468 Application 12/543,938 OPINION Rejection (I); Anticipation by Dassis The Examiner finds, inter alia, that Dassis’ force-fitted tin plug 7 is a plastically deformed metal plug. Final Act. 2. Appellants argue that the claimed “plug is placed into the hole and plastically deformed in place, which is quite different than being force-fitted into a hole.” Appeal Br. 6. The Examiner responds that the force-fitting of Dassis’ plug 7 into vent opening 6 “inherently involves some plastic deformation of the tin plug during the force-fitting of the plug within the vent opening 6.” Ans. 8. The Examiner notes that the plug of claim 23 only needs to be plastically deformed and does not does not need to be “plastically deformed while oriented in the hole.” Ans. 8. Appellants respond that Dassis force-fits plug 7 into vent opening 6, whereas interpreting the claims in light of the Specification requires “orienting the plug in the vent opening AND THEN plastically deforming it.” Reply Br. 2. Independent claim 23 is a device claim that does not specify when the plastic deformation occurs, only that the plug is “plastically deformed.” See Appeal Br. 11 (Claims App.). Nonetheless, the Examiner does not explain adequately why the force-fit of Dassis inherently involves plastic deformation. We understand the term “plastic deformation” to include a permanent deformation or change in shape of a body under a sustained force. This is consistent with Appellants’ Specification which discloses that “the cooperative action of a ram 22 and an anvil 20 transforms the plug slug 18 3 Appeal 2017-001468 Application 12/543,938 into a plug 12,” and that “[t]he action of the ram 22 against the plug slug 18 modifies the plug slug 18 into a plug 12 that has the same configuration as the hole 8.” Spec. 28, 29. Therefore, the term “plastic deformation,” in claim 23 requires that the plug permanently deforms or changes in shape. Here, the Examiner has not established by a preponderance of the evidence that the force-fit of Dassis’ plug would necessarily result in permanent deformation or a permanent change in shape of the plug. “Inherency . . . may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal quotation marks omitted). Accordingly, we reverse the rejection of claim 23 and the claims depending therefrom as anticipated by Dassis. Rejection (II); Obviousness Based on Ljungwald Claims 23, 24, 27, 35—41, 43, and 45—47 The Examiner finds that Fjungwald discloses most of the limitations of claim 23 including a plug, but that the plug is not made from a metal material. Final Act. 3—4. However, according to the Examiner, it would have been obvious to one of ordinary skill in the art to make Fjungwald’s plug from a metal material that has “a relatively low modulus of elasticity and a degree of hardness compared to the material of the metal of the Fjungwald . . . casing” because “it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.” Final Act. 5 (citing In re Leshin, 277 F.2d 197 (CCPA 1960). 4 Appeal 2017-001468 Application 12/543,938 Appellants argue that the rejection based on Ljungwald should be reversed, because “Ljungwald fails to disclose a metal plug oriented in the vent opening, as required by all the independent claims.” Appeal Br. 8. The Examiner responds that the rejection is not based on Ljungwald disclosing every claim limitation, and relies on a modification of Ljungwald to make the plug of Ljungwald from metal as a matter of obvious design choice. Ans. 9. Appellants do not contest in the Appeal Brief that the Examiner’s proposed modification to Ljungwald (using obvious design choice) would result in “a plastically deformable metal material for the plug.” final Act. 4. As such, Appellants do not explain why the Examiner’s proposed modification is improper and, thus, do not explain why design choice as a rationale, in the present circumstances, is inadequate. As for Appellants’ contentions that choosing a metal plug is based only on impermissible hindsight (see Reply Br. 2), and that one of ordinary skill in the art would understand “pressed” and “forged” to mean a force-fit (see Reply Br. 3), these arguments are untimely inasmuch as they were not made in the Appeal Brief, are not responsive to any new issue raised in the Examiner’s Answer, and good cause has not been shown to consider these untimely arguments. Accordingly, we do not address these arguments because Appellants’ failure to raise them in the Appeal Brief constitutes waiver of the issue. See 37 C.E.R. § 41.41(b)(2). The Examiner’s rejection of claim 23 as unpatentable over Ljungwald is affirmed. Appellants rely on the same arguments for the patentability of independent claims 46 and 47 (Appeal Br. 8), and, for the same reasons, we affirm the Examiner’s rejection of these claims. Appellants make no 5 Appeal 2017-001468 Application 12/543,938 separate arguments for dependent claims 24, 27, 35—41, 43, and 45. Appeal Br. 8. Accordingly, these claims fall with claim 23. Claim 34 Appellants argue that Ljungwald does not suggest a plug “formed by a process of crimping or swaging.” Appeal Br. 8 (citing Spec, 28—37). The Examiner responds that crimping and swaging are product-by process limitations that do not “impart patentability to a product claim where the product is not patentably distinguished over the prior art.” Ans. 10 (citing In re Dike, 394 F.2d 584 (CCPA 1968)). Appellants reply that claim 34 requires “crimping or swaging the plug to plastically deform the metal plug after it has been oriented into the hole — which is not met by Ljungwald.” Reply Br. 3. Appellants’ arguments are unpersuasive because the Examiner has properly regarded the phrase “crimping or swaging” as being a product-by process limitation, and is correct in noting that if the product is the same as or obvious over a product in the prior art, the claim is unpatentable even though the prior product was made by a different process. Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). Appellants do not provide persuasive evidence that the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. Moreover, an ordinary and customary 6 Appeal 2017-001468 Application 12/543,938 meaning of the term swaging is “to reduce or taper (an object), as by forging or squeezing.” Dictionary.COM, http://www.dictionary.com/ browse/swaging (last visited November 13, 2017). Appellants do not provide adequate technical analysis that distinguishes the claimed swaging from Ljungwald’s forging. See Ljungwald, col. 3,11. 5—7 (’’The resilient inserts . . . might be . . .forged . . . into each opening.”). Accordingly, we affirm the rejection of claim 34 as unpatentable over Ljungwald. Rejection (III); Obviousness based on Dassis and Radnich Claim 42 depends indirectly from claim 23. The Examiner does not rely on the disclosure of Radnich in any manner that would remedy the deficiencies in the anticipation rejection of claim 23 based upon Dassis discussed above in Rejection (I). Thus, for the same reasons, we reverse Rejection (III). Rejection (IV) Appellants do not state that Rejection (IV) is appealed (see Appeal Br. 5), and make no arguments against this rejection. See Appeal Br. 6—10; see also Reply Br. 2—A. Accordingly, we summarily affirm the rejection of claims 23, 24, 27, 34-41, 43, and 45—47 as unpatentable over Ljungwald and Dassis. DECISION (I) The Examiner’s rejection of claims 23, 24, 27, 32-41, and 45 as anticipated by Dassis is reversed. 7 Appeal 2017-001468 Application 12/543,938 (II) The Examiner’s rejection of claims 23, 24, 27, 34-41, 43, and 45—47 as unpatentable over Ljungwald is affirmed. (III) The Examiner’s rejection of claim 42 as unpatentable over Dassis and Radnich is reversed. (IV) The Examiner’s rejection of claims 23, 24, 27, 34-41, 43, and 45—47 as unpatentable over Ljungwald and Dassis is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). 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