Ex Parte Fonte

Patent Trial and Appeal Board

Dec 13, 2017

11460100 (P.T.A.B. Dec. 13, 2017)

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.
11/460,100 07/26/2006 Matthew V. Fonte AFP-2246/140040 1453
66376 7590 12/15/2017
ALLEGHENY TECHNOLOGIES INCORPORATED
1000 SIX PPG PLACE
PITTSBURGH, PA 15222-5479
EXAMINER
CLEMENT, MICHELLE RENEE
ART UNIT PAPER NUMBER
3641
NOTIFICATION DATE DELIVERY MODE
12/15/2017 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):
maria.dunn@atimetals.com
ATIDocketing@ atimetals.com
uspatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW V. FONTE
Appeal 2017-004080
Application 11/460,100
Technology Center 3600
Before JENNIFER D. BAHR, MICHAEL C. ASTORINO, and
ANTHONY KNIGHT, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matthew V. Fonte (Appellant)1 appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision, set forth in the Final Action (dated Dec. 4,
2015) [hereinafter “Final Act.”] and repeated in the Answer (dated Nov. 18,
2016) [hereinafter “Ans.”], rejecting claims 57, 70-72, and 74—77.2 We
have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
1 The Appeal Brief (dated Apr. 12, 2016) [hereinafter “Appeal Br.”]
identifies ATI Properties, Inc. as the real party in interest. Appeal Br. 4.
2 Although listed as a rejected claim in the Office Action Summary of the
Final Action, claim 73, which is the only other claim pending in the
application, is not subject to any rejection set forth in the Final Action or the
Answer. See Final Act. 3—6; Ans. 2—5.
Appeal 2017-004080
Application 11/460,100
THE CLAIMED SUBJECT MATTER
Claim 57, reproduced below, is illustrative of the claimed subject
matter.
57. A method of making a machine gun barrel, the method
comprising:
producing a first metal preform selected from the group
consisting of a nickel-based superalloy, a cobalt-based
superalloy, an iron-based superalloy, a high strength steel,
titanium, a titanium alloy, tantalum, a tantalum alloy, chromium,
a chromium alloy, and two or more of these metals that have
been integrally bonded together;
flowforming the first metal preform below the
recrystallization temperature of the metal preform to provide an
inner liner comprising an inner surface, wherein flowforming the
first metal preform includes imparting helical rifling to the inner
surface;
producing a second metal preform selected from the group
consisting of a nickel-based superalloy, a cobalt-based
superalloy, an iron-based superalloy, a high strength steel,
titanium, a titanium alloy, and a steel;
flowforming the second metal preform to form an outer
supporting structure; and
assembling the inner liner together with the outer
supporting structure to form a machine gun barrel.
REJECTIONS
I. Claims 57, 72, and 74—77 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Witherell (US 2006/0288854 Al, published
Dec. 28, 2006), Rolf (US 2003/0019269 Al, published Jan. 30,
2003), Fonte (Yen Fonte, Flowforming of Thin-Walled Tubes and
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Application 11/460,100
Cylinders, Dynamic Machine Works, Inc., 2001),3 and Briggs
(US 7,934,332 B2, issued May 3, 2011).4
II. Claims 70 and 71 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Withered, Rolf, Fonte, Briggs, and PMF (PMF
Indus., Understanding Flowforming A Precision Metal Forming
Process Uniquely Capable To Accomplish Your Design Objectives,
web archived Oct. 13, 2004,
(http ://web .archive. Org/ web/20041013173007/http ://www.pmfmd.
com/Flo wforming/Flo wforming-6-04.pdf)).5
DISCUSSION
Rejection I
Appellant argues that “the Examiner failed to consider the claimed
subject matter as a whole” — particularly, “that the claims recite a method
of making a machine gun barrel including ‘flowforming the first metal
preform ... to provide an inner liner comprising an inner surface, wherein
flowforming the first metal preform includes imparting helical rifling to the
inner surface’” — in reaching a conclusion of obviousness. Appeal Br. 15
(alteration in original). Further, Appellant contends that the prior art cited in
3 This article was submitted by Appellant as part of an Information
Disclosure Statement filed December 4, 2015, with the publication year of
the reference supplied by Appellant.
4 The Examiner’s detailed explanation of this rejection addresses at least
some aspects of limitations set forth in claim 73 (Final Act. 5; Ans. 4), but
claim 73 is not mentioned in either the statement of the rejection or the
detailed explanation thereof. Thus, we decline to speculate on whether the
Examiner intended to include claim 73 in this rejection.
5 This article was cited by the Examiner in the Notice of References Cited
dated March 31, 2010.
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Application 11/460,100
the rejection, whether taken individually or combined as set forth in the
rejection, “do not teach or suggest a method of making a machine gun barrel
in that manner and using the other actions recited in the claims.” Id.
To the extent that Appellant’s argument demands an explicit teaching,
suggestion, or motivation in the prior art to combine the prior art as called
for in the claims, such arguments have been foreclosed by the Supreme
Court. See KSR Inti Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (the
Supreme Court stating that rigid insistence on teaching, suggestion, or
motivation is incompatible with its precedent concerning obviousness).
Appellant begins by pointing out that Withered, Rolf, Fonte, and PMF
teach flowforming, but none of these references teaches or suggests
flowforming a metal preform including imparting helical rifling to the inner
surface, as recited in claim 57. Appeal Br. 15—18; Reply Brief 5 (dated Jan.
17, 2017) [hereinafter “Reply Br.”]. Appellant further points out that Briggs
teaches rifling by rotary forging, and not by flowforming. Appeal Br. 17.
These arguments do not demonstrate error in the Examiner’s rejection
because they attack the references individually, rather than as combined by
the Examiner. “Non-obviousness cannot be established by attacking
references individually where the rejection is based upon the teachings of a
combination of references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986) (citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)). The
Examiner does not find that any one of these references alone teaches or
suggests flowforming a metal preform including imparting helical rifling to
the inner surface. Rather, the Examiner relies on Witherell for its teaching
of flowforming as a forming technique for making a conventional weapon
barrel, on Fonte for its teaching that flowforming is a seamless cold metal
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Application 11/460,100
forming process for use in manufacturing hollow, rotationally symmetrical,
dimensionally precise components, on Rolf for its teaching to perform
flowforming in two or more passes, and on Briggs for its teachings of
forming a composite barrel from first and second preforms by assembling an
inner liner formed by any known process with an outer supporting structure
and for its teaching of rifling the inner liner concurrently with the forming
process. Ans. 2-4. In view of the combined teachings of these references,
the Examiner determines it would have been obvious to make a composite
barrel by forming a rifled inner liner using the flowforming forming process
of Witherell in a manner such that it is rifled during the forming process as
taught by Briggs, and assembling the rifled inner liner with an outer
supporting structure as taught by Briggs. Ans. 4.
Appellant also submits that “the Examiner failed to articulate any
supportable reason to modify Witherell” in view of Briggs, Rolf, or Fonte so
that Witherell’s flowforming imparts rifling to an inner surface of
Witherell’s mortar tube. Appeal Br. 26 (italics omitted). Appellant also
contends that rifling a mortar tube such as that of Witherell would
significantly affect the design and manner of operation of the mortar tube,
and, thus, a person having ordinary skill in the art would not have been
motivated to do so. Appeal Br. 27—29. This line of argument misconstrues
the combination set forth in the rejection and appears to presume a bodily
incorporation of the references. “It is well-established that a determination
of obviousness based on teachings from multiple references does not require
an actual, physical substitution of elements.” In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012). The Examiner relies on Witherell not for the
particular weapon barrel disclosed therein, but rather, for its teachings, and
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Application 11/460,100
the teachings of Fonte, of the hollow tube-forming technique for weapon
barrels. See Ans. 8 (explaining that Witherell’s method of flowforming a
tube is combined with Briggs’s teaching of concurrently forming rifling
during the manufacturing process); see also id. at 3 (determining that it
would have been obvious to use the known technique of flowforming taught
by Witherell to form a machine gun barrel).
Appellant emphasizes that Briggs teaches imparting rifling by
providing a mandrel including rifling in raised relief and hammering the
blank around the mandrel using opposing hammers in a rotary forging
process, rather than using flowforming to impart the rifling. Appeal Br. 17.
The Examiner explains that “both flowforming and rotary forging are similar
types of processes both utilizing a mandrel on which a workpiece/barrel is
formed around by applying pressure to the workpiece/barrel.” Ans. 8.
Appellant does not dispute the Examiner’s findings in this regard. Briggs
alludes to a known rifled barrel-forming process in which the blank is
hammered around the mandrel (having rifling in raised relief on it) by
opposing hammers in a process known as rotary forging, rather than in a
flowforming process in which the blank is pressed around the mandrel
(having rifling in raised relief on it). Briggs 7:3—14. However, Briggs
teaches that inner tube 32 used in the process of forming composite barrel 20
“may be made by . . . any . . . processes conventionally used in the art.” Id.
4:19—31. Given the similarity in flowforming and rotary forging, as pointed
out by the Examiner, a person having ordinary skill in the art would have
had a reasonable expectation of success in using either flowforming or rotary
forging to form inner tube 32 with a mandrel having a raised rifling pattern.
The selection of either well known forming technique would lead to the
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Application 11/460,100
predictable result of a rifled inner tube. See KSR, 550 U.S. at 416 (citing
United States v. Adams, 383 U.S. 39, 40 (1966)) (“[W]hen a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”).
Appellant also asserts that applying the method of rifling by rotary
hammer forging taught by Briggs to the single walled tube of Witherell
would further reduce the thickness of the already thin walled mortar tube,
thereby undermining its structural integrity. Reply Br. 6; see id. at 7
(alleging the Examiner’s rationale is based on hindsight). This argument is
unavailing because the rejection does not propose applying a rotary hammer
forging technique to Withered’s mortar tube. As pointed out above, the
rejection proposes to combine the flowforming technique of Witherell with
the method of producing a composite barrel having a rifled inner tube taught
by Briggs. The combination proposed in the rejection is nothing more than
the predictable use of prior art elements according to their established
functions, and, thus, would have been obvious. See KSR, 550 U.S. at 417.
For the above reasons, Appellant’s arguments do not apprise us of
error in the rejection of claim 57, or claims 72 and 74—77, for which
Appellant merely relies on the same arguments asserted for claim 57.
Appeal Br. 36—38. Accordingly, we sustain the rejection of claims 57, 72,
and 74—77 under 35 U.S.C. § 103(a) as unpatentable over Witherell, Rolf,
Fonte, and Briggs.
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Application 11/460,100
Rejection II
In contesting this rejection, Appellant adds only that “PMF does not
remedy the deficiencies of Withered, Rolf, Fonte, and Briggs” asserted
against the rejection of claim 57. Appeal Br. 38-40 (italics omitted). For
the reasons discussed above, Appellant’s arguments fail to apprise us of any
deficiency in the rejection of claim 57 and, likewise, fail to apprise us of
error in the rejection of claims 70 and 71. Thus, we sustain the rejection of
claims 70 and 71 under 35 U.S.C. § 103(a) as unpatentable over Withered,
Rolf, Fonte, Briggs, and PMF.
DECISION
The Examiner’s decision rejecting claims 57, 70-72, and 74—77 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).
AFFIRMED
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