Ex Parte Hanna et al

Patent Trial and Appeal Board

Feb 15, 2017

12165729 (P.T.A.B. Feb. 15, 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.
12/165,729 07/01/2008 Michael D. Hanna P001230-R&D-JMC 2405
104102 7590
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
02/15/2017 EXAMINER
YUEN, JACKY
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
02/15/2017 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 MICHAEL D. HANNA
and MOHAN SUNDAR
Appeal 2016-001018
Application 12/165,729
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—10, 12, 14, 15, 17, 18, and 29
of Application 12/165,729 under 35 U.S.C. § 103(a) as obvious. Final Act.
3—7 (October 24, 2014). Appellants1 seek reversal of the rejection pursuant
to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we AFFIRM.
1 General Motors LLC is identified as the real party in interest. Appeal
Br. 3.
Appeal 2016-001018
Application 12/165,729
BACKGROUND
The ’729 Application describes a method of manufacturing a damped
insert for a brake rotor assembly. Spec. 2, 30. The Specification
describes damped parts as capable of reducing noise caused by unwanted or
undesirable vibrations. Id. at 13.
Claim 1 is representative of the ’729 Application’s claims and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method for manufacturing a part comprising:
providing a damping insert for a brake rotor cheek, wherein
at least a portion of the insert is attracted to a magnet;
providing a sand mold in a vertical position comprising a first
sand mold portion, a second sand mold portion, and a magnet
having at least a portion thereof in the first mold portion;
while the mold is in an open position and the first mold
portion and second mold portion are spaced from each other
positioning the insert in the first mold portion such that the at
least one magnet is spaced a distance from the insert so as to at
least assist in holding the insert in place in the first mold portion
while the mold is in the open position; and
thereafter closing the mold so that the insert rests on the first
mold portion and the second mold portion and casting a molten
material into the mold and around or adjacent to at least a portion
of the insert and solidifying the material to provide a brake rotor
with the insert received in a brake cheek for frictional movement
therein and damping the rotor cheek.
Appeal Br. 15 (Claims App.).
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Appeal 2016-001018
Application 12/165,729
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1—10, 12, 14, 15, 17, 18, and 29 are rejected under
35 U.S.C. § 103(a) as unpatentable over the combination of
Hanna,2 Williamson,3 and Newcomb.4 Final Act. 3.
DISCUSSION
Appellants argue for the reversal of the rejection to these claims on
the basis of limitations present in claim 1. See Appeal Br. 5—11; Reply Br.
4—16. We, therefore, limit our analysis to claim 1 for the rejection of these
claims. Claims 2—10, 12, 14, 15, 17, 18, and 29 will stand or fall with claim
1. 37C.F.R. §41.37(c)(l)(iv).
Appellants argue that this rejection should be reversed because:
(1) the Examiner’s applied prior art fails to establish a prima facie case of
obviousness,5 Appeal Br. 5—7, and (2) the Examiner has misapplied the law
2 US 2007/0056815 Al, published Mar. 15, 2007.
3 US 6,860,315 B2, issued Mar. 1, 2005.
4 US 2007/0039710 Al, published Feb. 22, 2007.
5 Appellants further argue that none of the references relied upon by the
Examiner suggest “positioning the insert ‘so as to at least assist in holding
the insert in place in the first mold portion’ in a ‘vertical position’”. Reply
Br. 6; see Reply Br. 7—9, or “positioning the insert ‘so as to at least assist in
holding the insert in place in the first mold portion while the mold is in an
open position.’” Id. at 9; see id. at 9—11. Appellants further assert that
because “Newcomb teaches that an inversion in the horizontal plane ‘must’
occur[,]. . . Newcomb teaches away from the proposed combination . . . .”
Id. at 11; see id. at 11—12. To the extent that Appellants allege that the
Examiner has provided insufficient evidence of prima facie obviousness,
these particular arguments are untimely because they are raised for the first
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Appeal 2016-001018
Application 12/165,729
of In re Keller - finding that Appellants’ arguments for patentability were
unpersuasive because they were based on attacking each reference
individually rather than the cited combination of references - because the
burden is not on Appellants to show nonobviousness. Appeal Br. 7—11
(citing In re Keller, 642 F.2d 413, 425 (CCPA 1981)).
In connection with argument (1), Appellants argue that Hanna’s
method teaches casting metal around an insert disposed in a horizontally
positioned mold. Appeal Br. 6. Appellants further argue that Williamson
does not teach or suggest use of an insert; nor does it recognize any
problems that may be solved by casting metal around an insert in a vertical
mold. Id. Appellants assert that there is no reason to modify Hanna’s
horizontal mold with Newcomb’s magnet because: (i) Hanna does not
suggest inverting or changing angles of its horizontal mold; (ii) there is no
disclosure that Hanna’s insert is moved other than by flow of molten
material, such insert movement prevented by the inclusion of insert holes;
and (iii) Hanna does not suggest any problems with aligning the insert in a
horizontal mold. Id.
Appellants conclude that the Examiner has not established a prima
facie case of obviousness because
a person of ordinary skill in the art would not be motivated to
incorporate the magnet disclosed in Newcomb or in the
horizontal brake rotor casting disclosed in Hanna[,] nor would a
person of ordinary skill in the art be motivated to invert the mold
of Newcomb.
Id.
time in the Reply Brief. See 37 C.F.R. §§ 41.37(c)(l)(iv), 41.41(b)(2); Ex
parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative).
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Application 12/165,729
We address these arguments below.
First, Appellants’ argument (1) is not persuasive because Hanna’s
teaching would not have precluded the ordinary skilled artisan, at the time of
the invention, from noting that: (i) vertical molds can be produced on a
Disamatic mold making machine to achieve lower costs than horizontal
molds, see Williamson 1:31—60, and (ii) inclusion of a magnet further
ensures proper alignment of a component for casting in place. See
Newcomb Abstract; Fig. 3.
Thus, the ordinarily-skilled artisan would have considered the whole
of Hanna’s disclosure regarding casting around an insert disposed in a
horizontal mold and realized that vertical molds may be made at lower costs,
according to Williamson’s teachings, and that proper alignment of a
component for casting in place may be ensured by a magnet, according to
Newcomb’s teachings, regardless of mold orientation. In re Preda, 401 F.2d
825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”).
Combinations such as Hanna’s known method of casting metal using
an insert disposed in a mold with Williamson’s known teachings regarding
low-cost vertical molds and Newcomb’s mold magnet for securing a
component for casting in place are likely to be obvious. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.”). Appellants have not persuaded us
that the Examiner erred in concluding that the subject matter of their claims
is such a case of obviousness.
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Appeal 2016-001018
Application 12/165,729
Likewise, Appellants’ arguments regarding the lack of recognition by
the applied prior art of problems solved by the claimed invention are
similarly not persuasive. “[I]t is not required . . . that the prior art disclose or
suggest the properties newly-discovered by an applicant in order for there to
be a prima facie case of obviousness.” In re Dillon, 919 F.2d 688, 697 (Fed.
Cir. 1990) (en banc).
Second, we are likewise not persuaded by Appellants’ argument
regarding the Examiner’s alleged misapplication of law. As an initial
matter, Appellants have the burden on appeal to the Board to demonstrate
reversible error in the rejection. See In re Kahn, 441 F.3d 977, 985—86 (Fed.
Cir. 2006) (“On appeal to the Board, an applicant can overcome a rejection
[under § 103] by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir.
1998)).
Appellants allege that the Examiner’s reliance upon the principles
from Keller only applies when “the Applicant is trying to ‘show
nonobviousness’ by submission of evidence in the form of a declaration or
affidavit.” Appeal Br. 7. This is incorrect.
As explained in the Answer, “[t]he Examiner cited In re Keller and In
re Merck & Co[\J” to address Appellants’ “arguments attacking the
references individually without considering the combination.” Ans. 4. In
the latter case, our reviewing court held that appellant’s teaching away
arguments were untenable. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Appellants’ arguments, in that case, did not involve
submission of evidence in the form of a declaration or affidavit. Id. Rather,
Merck’s appellant made these teaching away arguments for the same reason
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Application 12/165,729
as Appellants’ argument (1) in the instant case—to allege insufficient
evidence of prima facie obviousness. Thus, Appellants’ argument (2) is not
persuasive.
Furthermore, the Examiner applied the law correctly. Appellants’
arguments are not directed to the Examiner’s rationale for modifying Hanna
to incorporate Williamson’s vertical mold and Newcomb’s magnet. Rather,
Appellants’ arguments are directed to whether it was improper for the
Examiner to combine Hanna with Williamson and Newcomb when the
particular advantages of each reference’s method are exhibited in different
mold angles.
The test for obviousness[, however,] is not whether the features
of a secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.
Keller, 642 F.2d at 425. Appellants’ argument fails to identify reversible
error in the Examiner’s determination that it would have been obvious to the
ordinary skilled artisan to include such a vertical mold and magnet in
Hanna’s metal casting mold with a reasonable expectation of success. “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421.
For the reasons set forth above, in the Final Office Action, and the
Answer, we are not persuaded by any of Appellants’ arguments for reversal
of the obviousness rejection of claims 1—10, 12, 14, 15, 17, 18, and 29. We,
therefore, affirm Rejection 1.
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Appeal 2016-001018
Application 12/165,729
DECISION
For the reasons set forth above, we affirm the obviousness rejection
based upon the combination of Hanna, Williamson, and Newcomb.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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