Ex Parte Hanna et al

Patent Trial and Appeal Board

Sep 29, 2016

13113636 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/113,636 05/23/2011 Michael D. Hanna
104102 7590 09/30/2016
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P001530-US-DIV2-R&D-MJL 1016
EXAMINER
HA, STEVENS
ART UNIT PAPER NUMBER
1735
MAILDATE DELIVERY MODE
09/30/2016 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,
MOHAN SUNDAR, and ANDREW SCHERTZER
Appeal2015-003592
Application 13/113,636
Technology Center 1700
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 24--30 and 43--48 of Application
13/113,636 under 35 U.S.C. § 112, i-f 2 as indefinite and under 35 U.S.C.
§ 103(a) as obvious. Final Act. (February 27, 2014). Appellants 1 seek
reversal of the§ 103 rejections2 pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 General Motors LLC is identified as the real party in interest. Appeal Br. 3
2 The Examiner has withdrawn the rejection of claims 24--30 and 43--48
under 35 U.S.C. § 112, i-f 2. Advisory Action 2 (May 5, 2014).
Appeal2015-003592
Application 13/113,636
BACKGROUND
The '636 Application describes a mold the can be used to manufacture
a part with an insert that provides frictional dampening. Spec. i-fi-12, 38.
Claim 24---the only independent claim on appeal-is reproduced
below:
24. A product comprising:
a vertical mold constructed and arranged for use in insert
casting and to produce a final part with a material comprising a
metal
wherein the final part comprises a brake rotor having an
annular rotor portion comprising cast metal around an
insert,
wherein the vertical mold is constructed and arranged to
produce the brake rotor wherein the insert is in the center
of the annular rotor portion,
the mold comprising a first part and a second part and wherein
one of the first part or second part retains the insert while the
material is being poured; and
at least one gate positioned in the lower half of the vertical
mold and biased to one side of the vertical mold such that
molten metal may enter the at least one gate from the bottom of
the vertical mold,
wherein the cross-sectional area of the gate is large
enough to avoid turbulent flow of molten material
comprising a metal through the gate.
Appeal Br. 17 (Claims App.; some paragraphing and indentation added).
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Appeal2015-003592
Application 13/113,636
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 24, 25, 28-30, and 43--48 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Deane, 3
Williamson, 4 and Ban. 5 Final Act. 3.
2. Claims 26 and 27 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Deane, Williamson, Ban,
Chandley, 6 and Miki. 7 Final Act. 7.
DISCUSSION
We affirm the Examiner's rejections based upon the record before us,
the Examiner's findings of fact, reasoning, and legal conclusions as set forth
in the Final Action, the Advisory Action, and the Examiner's Answer. We
add the following.
Rejection 1. The Examiner rejected claims 24, 25, 28-30, and 43--48
as unpatentable over the combination of Deane, \Villiamson, and Ban. Final
Act. 3; Answer 3-7. Appellants' two arguments for reversal of this rejection
do not appear to rely upon the limitations of any claim. See Appeal Br. 10-
13. To the extent necessary, we select claim 24 as representative of the
claims subject to this rejection. The remaining claims stand or fall with
claim 24. 37 C.F.R. § 41.37(c)(l)(iv).
3 US 5,259,486, issued November 9, 1993.
4 US 6,860,315 B2, issued March 1, 2005.
5 US 2004/0020626 Al, published February 5, 2004.
6 US 4,651,799, issued March 24, 1987.
7 US 6,343,642 Bl, issued February 5, 2002.
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Appeal2015-003592
Application 13/113,636
First, Appellants argue that the Examiner has not established a prima
facie case of obviousness because a person having ordinary skill in the art at
the time of the invention would not have been motivated to combine Deane,
Williamson, and Ban. Appeal Br. 10-12. In particular, Appellants argue
that Deane does not suggest that there is a need to provide a casting mold
having a gate with a cross-sectional area large enough to avoid turbulent
flow of the molten metal. Id. at 10. Based upon Deane's silence regarding
this need, Appellants argue that a person skilled in the art would not infer
from Deane that there is any need to alter or modify the gating of Deane's
mold as posited by the Examiner. Id. at 11.
This argument is not persuasive because it does not address the
Examiner's stated reason to combine Deane with Williamson and Ban. In
particular, the Examiner does not rely upon any description or suggestion in
Deane as providing the motivation to combine the references relied upon in
this rejection.
The Examiner found that a person of ordinary skill in the art would
have been motivated to combine Deane and Williamson because Williamson
shows that it is conventional to use a vertical mold comprising at least one
gate positioned in the lower half of the vertical mold to cast a metal article.
Final Act. 4. The Examiner further found that the person having ordinary
skill in the art would have been motivated to modify the gate suggested by
the combination of Deane and Williamson in view of Ban's description of a
gate having a large cross-sectional area has been useful to prevent turbulent
molten metal flow. Id. We do not discern reversible error in these findings,
and Appellants have not brought any to our attention. It has been
established that "the [obviousness] analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
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Appeal2015-003592
Application 13/113,636
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Cf id. at 416 ("The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.").
Second, Appellants argue that the Examiner's proposed combination
would destroy the intent, purpose, or function of the references. Appeal
Br. 12-13. In particular, Appellants argue that "[m]odifying Dean [sic] and
Williamson in view of Ban would not result in a product of better quality."
Appeal Br. 12-13.
This argument is not persuasive because, as the Examiner explains, it
is based upon a misinterpretation of Ban's description. See Advisory Action
2-3; Answer 10 (discussing Ban i-fi-17-10).
Rejection 2. The Examiner rejected claims 26 and 27 as unpatentable
over the combination of Deane, Williamson, Ban, Chandley, and Miki.
Final Act. 7. Appellants' sole argument for reversal of this rejection is that
"the addition of the [sic] Chandley and Miki does not make up for the
shortcomings of Deane, Williamson, and Ban already explained in this
Appeal Brief." Appeal Br. 14.
As discussed above, Appellants have not persuaded us that the
Examiner reversibly erred in rejecting claim 24 as unpatentable over the
combination of Deane, Williamson, and Ban. Thus, we also affirm the
rejection of claims 26 and 27.
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Appeal2015-003592
Application 13/113,636
CONCLUSION
For the reasons set forth above, we affirm the rejection of claims 24--
30 and 43--48 of the '636 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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