Ex Parte Julien

Board of Patent Appeals and Interferences

Jun 24, 2003

09231897 (B.P.A.I. Jun. 24, 2003)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GERAILD J. JULIEN
____________
Appeal No. 2002-0018
Application No. 09/231,897
____________
ON BRIEF
____________
Before FRANKFORT, STAAB, and BAHR, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final rejection of claims 1-4, 16-19 and
24-36, all the claims currently pending in the application. Upon further review, the examiner now
considers (see Paper No. 14) that dependent claim 4 would be allowable if rewritten in independent
form to include all the limitations of base claim 1 from which it depends. Consequently, only the
rejections of claims 1-3, 16-19 and 24-36 remain before us for review.
Appeal No. 2002-0018
Application No. 09/231,897
2
Appellant’s invention pertains to a high pressure erosion resistant nozzle for cutting and
cleaning, and more particularly to an improved liquid jet nozzle made of Nitinol. Claim 1, a copy of
which appears in the Appendix to appellant’s corrected main brief, is exemplary of the subject
matter at issue.
The references of record relied upon by the examiner as evidence of obviousness are:
Buehler et al. (Buehler) 3,174,851 Mar. 23, 1965
Munoz 5,033,681 Jul. 23, 1991
Matsui et al. (Matsui) 5,434,112 Jul. 18, 1995
Claims 1, 2, 16, 19, 24, 28-30, 32, 33 and 36 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Matsui in view of Buehler.
Claims 3, 17, 18, 25-27, 31, 34 and 35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Matsui in view of Buehler and further in view of Munoz.
Reference is made to appellant’s corrected main brief and reply brief (Paper Nos. 11 and 13)
and to the examiner’s answer (Paper No. 12) for the respective positions of appellant and the
examiner regarding the merits of these rejections.
Discussion
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Application No. 09/231,897
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Having carefully considered the examiner’s position in light of the combined teachings of
Matsui, Buehler and Munoz we find ourselves in agreement with appellant that the standing
rejections cannot be sustained. Our reasons follow.
Independent claim 1 calls for a liquid jet nozzle for forming a high velocity liquid jet from
pressurized liquid comprising a nozzle body made of monolithic Nitinol. Claims 16, 24, 28 and 32,
the other independent claims on appeal, contain similar language.
In rejecting these claims, the examiner considers that Matsui discloses a high pressure
injection nozzle formed from a super hard alloy. The examiner concedes that the nozzle body of
Matsui is not made of Nitinol. The examiner takes the position, however, that it would have been
obvious to one of ordinary skill in the art to make Matsui’s nozzle body of a nickel based alloy such
as Nitinol in view of Buehler. More particularly, the examiner asserts (answer, pages 3-4):
Buehler et al teaches that Nickel-Based Alloys, such as Nitinol
containing 56-64% weight nickel, are capable of achieving high hardness and corrosion
resistance (column 1, line 35; and column 8, lines 36-37).
It would have been obvious to a person having ordinary skill in the art at the
time the invention was made to have replaced the metal alloy used in Matsui et al’s
invention with Monolithic Nitinol (or Nitinol 60), since 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. In re Leshing
[sic, Leshin], 125 USPQ 416.
The examiner’s position is further explained on page 5 of the answer as follows:
Appeal No. 2002-0018
Application No. 09/231,897
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. . . Matsui et al as well as applicant are interested in using materials to make
nozzles that are abrasive resistant (column 1, lines 12-16). It is the position of the
examiner that one having ordinary skill in the art would consider all materials that
exhibit abrasive resistant properties as candidates for a liquid jet nozzle that requires
high abrasion resistance. . . .
. . . Buehler discloses that Nitinol has abrasive resistant properties (column 1,
line 35; and column 8, lines 36-37). Therefore, while considering metals for
candidacy as a material for liquid jet nozzles, Nitinol would make a good candidate.
As correctly pointed out by appellant in both the corrected main brief and reply brief, the
thrust of Matsui is the provision of a high pressure injection nozzle member formed of a super hard
alloy or a hard sintered material having a hardness of more that about 94 HRA (Rockwell A)
(column 3, lines 55-56; column 3, lines 64-67; column 4, lines 7-10). This is a result of Matsui’s
finding that hardness is of paramount importance in designing a high pressure injection nozzle, to
the point of accepting lower than previously thought to be acceptable tenacity in order to obtain the
desired high degree of hardness (column 9, lines 41-45; column 10, lines 47-56; column 13, lines
20-23). The range of acceptable hardness for Matsui’s purposes is further exemplified upon review
of the graphs of Figures 2, 12 and 14, where the black circles (!) represent Matsui’s invention and
the white circles (") represent what Matsui calls “conventional” technology. As can be clearly
discerned from the graphs of Figures 2, 12 and 14, the alloys of Matsui’s invention all have
hardnesses of about 94 HRA (Rockwell A) or higher, whereas the alloys of the “conventional”
technology having hardnesses as high as 88 to 93 HRA (Rockwell A) are not acceptable in
accordance with Matsui’s teachings.
Appeal No. 2002-0018
Application No. 09/231,897
1In considering the teachings of Buehler, we consider Rb to denote Rockwell B hardness
and Rc to denote Rockwell C hardness.
2Our conversion of the Rockwell B and Rockwell C hardnesses set forth in Buehler is
derived from the attached “Equivalent Hardness Conversion Table,” found at:
http://www.gordonengland.co.uk/hardness/hardness_conversion_1m.htm.
5
Turning to Buehler, this reference teaches, among other things, that the titanium-nickel alloy
disclosed therein is “capable of heat treatment to any required hardness value from approximately
about 65 Rb to approximately about 62 Rc” (column 1, lines 50-52)1. Thus, the “high hardness”
referred to, for example, in column 3, line 12, of Buehler must be read in the context of the overall
disclosure of that reference to refer to hardness in the range of about 65 Rb (65 Rockwell B) to about
62 Rc (62 Rockwell C), which converts to a hardness of about 42 Rockwell A to about 83 Rockwell
A2.
Matsui teaches that the material used to make the nozzle thereof should have a hardness of
about 94 Rockwell A or higher. Moreover, Matsui rejects as unacceptable nozzles made of
materials in accordance with “conventional” technology that have hardnesses as high as 88 to 93
Rockwell A. Given these facts, the examiner has not adequately explained, and it is not apparent to
us, why one of ordinary skill in the art would consider the titanium-nickel alloy disclosed in
Buehler, which is disclosed as having a hardness in the range of about 65 Rb (42 Rockwell A) to
about 62 Rc (83 Rockwell A), to be a good candidate for use in Matsui. From our perspective, one
of ordinary skill in the art would not consider the alloys disclosed in Buehler to be good candidate
materials for use in Matsui because Buehler’s alloys are even softer than the materials of the
Appeal No. 2002-0018
Application No. 09/231,897
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“conventional” technology that Matsui rejects as being too soft. As cogently argued by appellant on
page 4 of the reply brief, the examiner’s approach would have the person of ordinary skill behave
contrary to logic, by selecting a material on the basis of a single vague and general statement about
abrasion resistance in the face of a detailed explanation in Matsui, the primary reference, about the
benefits of choosing much harder materials than disclosed in Buehler.
In light of the forgoing, the standing rejection of claims 1, 2, 16, 19, 24, 28-30, 32, 33 and 36
as being unpatentable over Matsui in view of Buehler cannot be sustained.
As for the standing rejection of claims 3, 17, 18, 25-27, 31, 34 and 35 as being unpatentable
further in view of Munoz, we have carefully considering the teachings of this additional reference
but find nothing therein that makes up for the deficiencies of Matsui and Buehler discussed above.
Accordingly the rejection of claims 3, 17, 18, 25-27, 31, 34 and 35 also cannot be sustained.
The decision of the examiner is reversed.
REVERSED
Appeal No. 2002-0018
Application No. 09/231,897
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CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
LJS/lp
Appeal No. 2002-0018
Application No. 09/231,897
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J. MICHAEL NEARY
542 SW 298TH STREET
FEDERAL WAY, WA 98023