Ex parte Fischer

Board of Patent Appeals and Interferences

Dec 22, 1999

08466507 (B.P.A.I. Dec. 22, 1999)

Application for patent filed June 6, 1995. 1
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not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN R. FISCHER
____________
Appeal No. 1998-2702
Application No. 08/466,5071
____________
ON BRIEF
____________
Before COHEN, ABRAMS and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 4-7, which constitute all of the
claims remaining of record in the application.
Appeal No. 1998-2702
Application No. 08/466,507
A PTO translation is enclosed.2
2
The appellant's invention is directed to a
superplastically formed part made from a blank. The claims
before us on appeal have been reproduced in an appendix to the
Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Bertolini et al. (Bertolini) 5,215,600 Jun.
1, 1993
Japanese Patent (Nakamura) 1-197020 Nov. 8,2
1989
THE REJECTIONS
Claims 4, 5 and 7 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
Claim 4 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Nakamura.
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Application No. 08/466,507
3
Claim 6 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Nakamura.
Claims 5 and 7 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Bertolini.
Claims 5 and 7 also stand rejected under 35 U.S.C. § 103
as being unpatentable over Bertolini in view of Nakamura.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejection and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejection, we make reference to the
Examiner’s Answer (Paper No. 22) for the reasoning in support
of the rejections, and to the appellant’s Brief (Paper No.
21), for the arguments thereagainst.
OPINION
The Rejection Of Claims 4, 5 and 7 Under 35 U.S.C. § 112
This rejection is not sustained.
From a review of the appellant’s specification, as well
as from the understanding of the technology that we have
obtained from the further explanations provided in the Brief
and from the applied prior art, it is our opinion that the
Appeal No. 1998-2702
Application No. 08/466,507
4
examiner’s positions with regard to the five instances of
alleged indefiniteness are not well taken. Claim 4 states
that the claim is directed to a “formed part made from a
blank,” which is confirmed by the appellant in the Brief (page
8). From our perspective, one of ordinary skill would not
have been confused by the use in claim 4 of the terms “part,”
“blank” and “original blank,” to which the examiner has taken
exception. So too would the artisan have understood that the
phrase “before reversing die pressure” refers to the
preliminary step that occurs prior to the step of pressurizing
the die in the direction in which the finished part will be
formed. What constitutes the “peak” and the “part floor”
recited in claim 5 would have been clear from a reading of the
specification in conjunction with viewing the drawings.
Finally, we agree with the appellant that the use of
“optionally” in claim 7 does not give rise to indefiniteness,
in that what is optional is readily apparent.
The Rejection Of Claim 4 Under 35 U.S.C. § 102(b)
This rejection is sustained.
It is uncontroverted that this is a product-by-process
claim (see Brief, page 8). In the case of this type of claim,
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Application No. 08/466,507
5
the guidance provided by our reviewing court is that the
determination of patentability is based on the product itself,
and not on its method of production. That is, if the product
in the product-by-process claim is the same as or obvious from
a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process. See
In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir.
1985) and Atlantic Thermoplastics Co. v. Faytex Corp., 970
F.2d 834, 843-47, 23 USPQ2d 1481, 1488-91 (Fed. Cir. 1992).
Once a rationale has been provided tending to show that the
claimed part appears to be the same or similar to that of the
prior art, albeit that the prior art part might have been
produced by a different process, the burden shifts to the
appellant to come forward with evidence establishing an
unobvious structural difference between the claimed part and
the prior art part. See In re Marosi, 710 F.2d 799, 803, 218
USPQ 289, 292-93 (Fed. Cir. 1983).
Looking now to claim 4, the “part” defined therein,
considered apart from the method steps in the claim, requires
the presence of a deep draw corner having a substantially
uniform thickness with a wall on the adjacent corner, with the
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Application No. 08/466,507
Anticipation is established when a single prior art3
reference discloses, either expressly or under the principles
of inherency, each and every element of the claimed invention.
See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671,
1675 (Fed. Cir. 1994).
6
wall being substantially uniformly thick where conventional
superplastic forming would produce a tapered thickness. We
agree with the examiner that this is found in Nakamura, and
therefore the reference anticipates the structure recited in3
claim 4. To wit, Nakamura is directed to a superplastic
molded part, is concerned
with the same problem as the appellant’s invention
(translation, pages 2 and 3), and discloses (in the figure
shown on the lower right on patent page 123) a part having two
deep draw corners that have a substantially uniform thickness
with the adjacent walls (translation, page 6). Nakamura
considers this to be an improvement over the part made by
conventional means, which has a tapered thickness on its walls
and bottom (figure shown on the lower right on patent page
122).
In view of this showing in Nakamura, it is our opinion
that the burden has been shifted to the appellant to provide
evidence that there are unobvious differences in structure
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between the product produced by the claimed process and the
product disclosed in the reference. Such evidence has not
been presented.
The Rejection Of Claim 6 Under 35 U.S.C. § 103
This rejection is not sustained.
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima
facie case of obviousness, it is incumbent upon the examiner
to provide a reason why one of ordinary skill in the art would
have been led to modify a prior art reference or to combine
reference teachings to arrive at the claimed invention. See
Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985).
To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. V. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
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Claim 6 recites a forming blank having a central bulge, a
peripheral bulge, and at least one unthinned portion between
the two bulges. While the forming blank disclosed by Nakamura
and the method by which it is formed into a part have much in
common with the appellant’s invention, Nakamura does not teach
that the various bulges shown in the upper right figure on
patent page 123, which at that point are prethinned, are
separated by an unthinned portion, nor does this appear to be
inherent. Moreover, the examiner has not set forth, nor have
we perceived on our own, any teaching, suggestion or incentive
which would have led one of ordinary skill in the art to
provide the Nakamura forming blank with the configuration of
thinned and unthinned portions required by the claim.
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The Rejection Of Claims 5 And 7 Under 35 U.S.C. § 102(b)
This rejection is sustained.
Both of these claims require that there be an upstanding
portion in the part, which is recited as a “peak” in claim 5
and a “male topographic feature” in claim 7. As we concluded
above, independent claim 4 is a product-by-process claim and
therefore claim 5, which depends from claim 4, is similarly
directed. Claim 5 adds to the superplastic part that is the
subject of claim 4 a “peak” connected to the part floor
through the corner and the wall. Bertolini discloses a part
manufactured of a superplastic material (column 1, line 13) in
a pressurized molding process. The part has an upstanding
“peak” formed over die portion 16, as seen in Figure 2.
Although not explicitly stated in the patent, it would appear
from Figure 2 that the thickness of all of the elements of the
part shown therein, including the peak, corner and wall, are
substantially the same and substantially uniform, as is
broadly required by the part recited in the claim. From our
perspective, therefore, all of the elements of the part
recited in claim 5 (which, of course, includes those of claim
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Application No. 08/466,507
While the presence of subparagraph (c) of claim 7 goes4
to the method of manufacture, we note that there appears to be
no support in the original disclosure for “trimming the bulge
from the formed blank,” and thus it runs afoul of 35 U.S.C. §
112, first paragraph.
10
4, from which claim 5 depends) are disclosed by Bertolini.
Thus, Bertolini anticipates the subject matter of claim 5.
The same reasoning causes us to reach a like result with
regard to independent claim 7. This claim also is a product-
by-process claim, in that it is directed to a
“superplastically formed part.” While the method of forming
the part in Bertolini might differ from that set forth in
claim 7, the resulting part meets the structural requirements
of claim 7, in that it has a male topographic feature
protruding in at least one portion of a female configuration,
with the male feature defining a steeply sloped wall of
substantially uniform thickness. The rejection of claim 7 is
affirmed.4
The Rejection Of Claims 5 And 7 Under 35 U.S.C. § 103
As we concluded above, all of the subject matter recited
in claims 5 and 7 is disclosed in Bertolini; we consider the
showing of Nakamura merely to be confirmatory. Anticipation
being the epitome of obviousness (see In re Fracalossi, 681
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11
F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982)), we will sustain
the rejection of claims 5 and 7 on the basis of these two
references.
We have carefully considered all of the arguments set out
by the appellant as they might apply to those rejections which
we have sustained. The arguments focus almost entirely upon
the method by which the finished part is manufactured, that
is, conditions that exist for a time prior to the final form
of the part. However, the claims are not directed to a method
of manufacturing a part, but to the part in its finished form.
For this reason, the arguments are not persuasive.
SUMMARY
The rejection of claims 4, 5 and 7 under 35 U.S.C. § 112,
second paragraph, is not sustained.
The rejection of claim 4 under 35 U.S.C. § 102(b) as
being anticipated by Nakamura is sustained.
The rejection of claim 6 under 35 U.S.C. § 103 as being
unpatentable over Nakamura is not sustained.
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Application No. 08/466,507
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The rejection of claims 5 and 7 under 35 U.S.C. § 102(b)
as being anticipated by Bertolini is sustained.
The rejection of claims 5 and 7 under 35 U.S.C. § 103 as
being unpatentable over Bertolini in view of Nakamura is
sustained.
The decision of the examiner is affirmed-in-part.
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
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
Appeal No. 1998-2702
Application No. 08/466,507
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)
)
JENNIFER BAHR )
Administrative Patent Judge )
bae
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John C. Hammar
The Boeing Company
P.O. Box 3707, MIS 13-08
Seattle, WA 98124-2207