Ex Parte Kern

Board of Patent Appeals and Interferences

Jan 10, 2008

09862803 (B.P.A.I. Jan. 10, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BERNHARD KERN
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Appeal 2008-0655
Application 09/862,803
Technology Center 1700
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Decided: January 10, 2008
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Before BRADLEY R. GARRIS, THOMAS A. WALTZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1-7, which are the only claims pending
in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2008-0655
Application 09/862,803

I. BACKGROUND
The invention relates to a method of producing light metal castings
composed of magnesium or magnesium alloys. Claim 1 is illustrative:
1. A method of producing light metal castings
composed of magnesium or magnesium alloys, comprising the
steps of supplying a liquid metal first to a casting retort;
pumping gas under pressure into the casting retort so as to press
the liquid metal into a preliminarily evacuated casting mold;
performing a production process continuously without
interruption of individual casting process with a pressure
differential between the casting retort and the casting mold;
heating of the liquid metal in a lower part of a melting device
which adjoins a feed system; after reaching a melting
temperature approximately 630˚, providing a connection
between said casting retort and said casting mold through a
valve system over a short time without connection with outside;
selecting a quantity of the supplied liquid light metal to be a
multiple of a quantity of the light metal required for each light
metal casting so as to compensate losses of a quantity of the
light metal in said casting retort; performing a transformation of
the liquid metal from a melting condition with a temperature of
approximately 630˚C to a solidification condition; and
supplying and withdrawing a protective gas by a differential
pressure system.

The Examiner relies upon the following references as evidence of
unpatentability:
Jorn 4,205,721 Jun. 3, 1980
Sugiura (as translated) JP 63-268,559 Nov. 7, 1988
Blum 5,280,847 Jan. 25, 1994
Muller 5,294,096 Mar. 15, 1994
Callihan 5,358,027 Oct. 25, 1994
Braun (as translated) DE 44 31 865 A1 Mar. 14, 1996
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Claims 1-7 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 applicant regards as the invention.
Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Braun in view of Callihan and further in view of either
Jorn, Blum, Muller or Sugiura.
Appellant does not separately argue with any reasonable specificity
the individual claims rejected under 35 U.S.C. § 103(a) (Br. 18). Therefore,
we select the broadest independent claim 1 to decide this issue on appeal
regarding claims 1-7.
ISSUES ON APPEAL
The first issue is whether Appellant has shown that the Examiner
erred in determining that claims 1-7 fail to comply with the requirements of
35 U.S.C. § 112, second paragraph.
For the reasons that follow, we determine that the Examiner has
established a prima facie case that these claims fail to comply with 35
U.S.C. § 112, second paragraph.
The second issue is whether the Appellant has shown that the
Examiner reversibly erred in rejecting all the claims as unpatentable under
35 U.S.C. § 103 over the applied references.
For the reasons that follow, we determine that the Examiner has
established a prima facie case of obviousness in view of the reference
evidence, which prima facie case has not been adequately rebutted by
Appellant’s arguments.
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Accordingly, we AFFIRM the rejections, under 35 U.S.C. § 112,
second paragaph, and 35 U.S.C. § 103, presented in this appeal essentially
for the reasons stated in the Answer, as well as those reasons set forth below.
Thus, the decision of the Examiner to reject the claims on appeal is
AFFIRMED.
OPINION
1. The Rejection under § 112, ¶ 2
“The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994); see also Miles Lab., Inc. v. Shandon, Inc.,
997 F.2d 870, 875 (Fed. Cir. 1993) (If the claims read in light of the
specification reasonably apprise those skilled in the art of the scope of the
invention, § 112 demands no more). “The degree of precision necessary for
adequate claims is a function of the nature of the subject matter.” Id. If the
language is such that a person of ordinary skill in the art could not interpret
the metes and bounds of the claim so as to understand how to avoid
infringement, a rejection under 35 USC 112, ¶ 2, would be appropriate. See
Morton Int’l, Inc v. Cardinal Chem. Co., 5 F. 3d 1464, 1470 (Fed. Circ.
1993).
The Examiner finds that it is not clear what “without interruption of
individual casting process” refers to in claim 1 (Ans. 3 and 5). The
Examiner also finds: that the claim 1 phrase “losses of a quantity of the
light metal in said casting retort” is indefinite; that it is not clear how
additional solid light metal is supplied as recited in claims 2, 3; and that it is
unclear what “tool device” is referring to in claims 5 and 7 (Ans. 3-5).
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The initial burden rests with the Examiner of presenting evidence or
reasoning why persons of ordinary skill in the art would not understand the
metes and bounds of the claims. We determine that the Examiner has met
this initial burden by pointing out that “without interruption of individual
casting process” is indefinite, inter alia, because it is not defined in the
original Specification, and Appellant has failed to explain what this
language means in the context of the claimed invention (Br. 9-11). Instead,
Appellant’s explanation appears to focus on other aspects of the invention,
namely, that the invention requires an “automatic tool ventilation.”1 and
that there are “material losses” during the casting. We fail to see how
Appellant’s remarks establish the meaning of “without interruption of
individual casting process”. Claim 1 recites “performing a production
process continuously without interruption of individual casting process”.
The emphasized phrase was added during prosecution. How does this
phrase “without interruption of individual casting process” further define
“continuously”? It is an ambiguous phrase. At a minimum, it could mean
either that each individual casting is done without interruption, or that all
the individual castings are done without interruption. Since the Appellant
has provided no explanation of this phrase, and the phrase is not used in the
Specification, we are constrained to agree with the Examiner that one can
not determine the scope of independent claim 1 and concomitantly
dependent claims 2-7.
However, the claim 1 phrase “so as to compensate losses of a
quantity of the light metal . . .” is discussed in the Appellant’s Specification

1 This phrase is not in any claim, nor is it discussed in the Specification.
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at page 9, and we do not agree with the Examiner that this phrase is
indefinite. We determine that one of ordinary skill in the art would
understand that adding additional metal because of “metal losses in the
casting retort” as discussed on Specification page 9 means that the
additional metal is added to compensate for losses of the metal during the
casting process.
With respect to the language that the Examiner found unclear in
dependent claims 2, 3, the Examiner has not explained why he continues to
find the language of these claims unclear in light of the application record.
On August 1, 2003, Appellant amended the paragraph bridging pages 7 and
8 of the Specification to recite that the supply of solid light metal can be “by
means of a sluice device 11”. Fig. 1 shows a device numbered 11 and the
Specification describes a sluice means at page 5 as well as in numerous
originally filed claims (e.g., claims 2, 3, 8, 11). Further comments were
provided regarding this feature on page 7 in the September 15, 2004
response. The Examiner stated on page 4 of the non-final rejection of
October 7, 2004 that this feature is conventional. Thus, we fail to see how
this language can be viewed as indefinite.
With respect to the phrase “tool device” that the Examiner found
unclear in dependent in claims 5 and 7, this is original language found in the
claims. Appellant appears to be saying that the casting mold 19 is a tool
(Br. 11). Furthermore, the translation of the Braun reference (discussed in
the “Background of the Invention” section of Appellant’s Specification)
refers to the mold parts as a “lower tool 14 and an upper tool 16”. Thus,
one of ordinary skill in the art would know that a “tool device” is merely an
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alternative word for the “mold device” in the context of this invention.
Thus, we conclude that this langauge in claims 5 and 7 is not indefinite.
However, for the foregoing reasons with respect to claim 1, we
determine that the Examiner has presented sufficient facts or reasoning to
meet the initial burden of proof, and all the claims fall as dependent on
claim 1 which we have found to be indefinite. Accordingly, the Examiner's
rejection of the claims on appeal under 35 U.S.C. § 112, ¶ 2, for lack of
definiteness, is affirmed2.

2. The Obviousness Rejection under § 103(a)
A preponderance of the evidence of record supports the following Findings
of Fact (FF):
1. Braun describes a method of casting wherein the casting process is
not interrupted while an individual casting is being produced, since the
molten metal (e.g., a magnesium alloy) is supplied via a gas under pressure
and at high speed into a preliminarily evacuated mold cavity 18 via vacuum
chamber 48 and suction channel 56 (Braun p. 5). Braun further describes
that “…all cavities are approximately simultaneously and completely filled
with liquid metal.” (Braun p. 5). It would not be possible to simultaneously
and completely fill a mold cavity with pressurized, high speed, hot liquid
metal if the process were interrupted.
2. The Examiner found that Braun discloses a process as claimed in
claim 1 except Braun does not specify (1) using a multiple quantity of the

2 Note that dependent claim 4 appears redundant to claim 1’s recitation of
“selecting a quantity of the supplied liquid light metal to be a multiple…” .
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liquid metal needed for each light metal casting nor (2) that the heating
means are at a lower end of the molten metal dosing chamber (Ans. 4; Braun
pp. 4-5 and the sole figure).
3. Callihan illustrates that it is conventional to provide multiple
quantities of molten metal in a casting retort for casting a plurality of
castings (Ans. 4; col. 3, ll. 43-46; col. 5, ll. 40-45).
4. Braun describes that the walls of the portioning chamber 36 (i.e.,
the casting retort) have heating elements therein, as well as the sidewalls and
lower wall of the melting crucible 30, and the feed line 34 (Braun p. 4, 2nd
full paragraph). Thus, Braun recognizes the desirability of maintaining the
metal in a heated molten phase through out the process, including in the
retort chamber.
5. It appears from the record that both the Examiner and the
Appellant interpret the claimed “lower part of a melting device” to be the
lower part of the casting retort chamber (i.e., element 2 at the lower end of
element 1 of Appellant’s Figs 1-3). If one interprets the claimed “lower part
of a melting device” to be the lower part of the retort chamber, Braun only
fails to explicitly state that the heating is “in a lower part” of a melting
device as required by claim 1.
6. We find that a fair reading of claim 1 also allows one to read the
melting crucible 30 of Braun as “a melting device”, and thus Braun
inherently describes the claimed feature of “heating of the liquid metal in a
lower part of a melting device…” (Braun, p. 4, 2nd full paragraph).
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7. Jorn, Blum, Muller and Sugiura each exemplify that heating the
walls at the lower end of a molten metal dosing or dispensing chamber to
ensure free flow of the molten metal into a casting mold was well known
(Ans. 4).
8. One of ordinary level of skill in the art would be an engineer or
scientist who designs casting methods and articles as exemplified in the
applied references.
9. One of ordinary level of skill in the art would have known that
some molten metal will stick to various surfaces while being fed through the
system to the casting mold and it would have been prima facie obvious to
determine how much molten metal to use to make an acceptable quality
metal casting.

Principles of Law
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which
said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1734 (2007). The legal question of obviousness is resolved on the
basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, and (3) the level of skill in the art. Graham v. John
Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734
(“While the sequence of these questions might be reordered in any
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particular case, the [Graham] factors continue to define the inquiry that
controls.”)
Also, the Supreme Court has held that a "…combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR 127 S. Ct. at 1739.
Furthermore, “[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would improve
similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”. KSR 127 S. Ct. at 1740.

Analysis
Applying the preceding legal principles to the Factual Findings, we
determine that the Examiner has established a prima facie case of
obviousness that has not been sufficiently rebutted by Appellant.
Appellant’s arguments state that the references “do not teach the new
features of the present invention as defined in claim 1” (Br. 12 and 15). We
disagree. Appellant fails to specify any “new features” in claim 1 that are
not taught or rendered obvious by the applied prior art.
Implicit in our review of the Examiner’s obviousness analysis is that
the claim must first have been correctly construed to define the scope and
meaning of each contested limitation. See Gechter v. Davidson, 116 F.3d
1454, 1457, 1460 n.3 (Fed. Cir. 1997). During examination proceedings,
claims are given their broadest reasonable interpretation consistent with the
specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004). Although claims are to be interpreted in light of the
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specification, limitations from the specification are not to be read into the
claims. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Accordingly, for purposes of analyzing the § 103 rejection, we must
first construe the disputed term “without interruption of individual casting
process” as found in the pertinent clause of claim 1 on appeal. Neither the
original claims nor the original Specification used this phrase. However,
even though we have determined, for reasons set forth previously, that this is
an ambiguous phrase which renders the claims indefinite, we can
nonetheless construe it for the purposes of analyzing the prior art rejection to
mean that the casting process is not interrupted while an individual casting is
being produced (FF 1 ).3
Appellant states “Without the intervention of the operator in the
periodic course of the individual casting processes the manufacturing
process [of Braun] is not possible.” (Br. 13). However, Appellant does not
identify any support in Braun for this statement. To the contrary, Braun
teaches that the hot molten metal (e.g., a magnesium alloy) is supplied via a
gas under pressure and at high speed into a preliminarily evacuated mold
cavity 18 via vacuum chamber 48 and suction channel 56, and the molten
metal simultaneously and completely fills all cavities (FF 1). The Examiner
also found that Braun performs an uninterrupted process (FF 2; Final, p. 4, ¶

3 See, Ex parte Ionescu, 222 USPQ 537, 540 (Bd. App. 1984) (if a claim is
subject to two interpretations and one interpretation would render the claim
unpatentable over the prior art, the proper course of action is to enter two
rejections: (1) a rejection based on indefiniteness under 35 U.S.C. 112,
second paragraph, and (2) a rejection over the prior art based on the
interpretation of the claims which renders the prior art applicable.)
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b), which the Appellant does not dispute with any reasonable specificity (Br.
12-15).
As for the claim 1 distinctions found by the Examiner (FF 2), Callihan
exemplifies the use of multiple quantities of the liquid metal being available
in the retort so as to fill multiple casting molds (FF 3). Braun recognizes the
desirability of maintaining the metal in a heated molten phase through out
the process, including in the retort chamber (FF 4-6). Although not needed
under our interpretation of claim 1 and the Braun reference, the four
alternative tertiary references each exemplify the well known use of heating
the molten metal at the point of dispensing into the casting mold, namely, at
the lower part of a melting device (FF 7).
Appellant’s claimed invention appears to be no more than the
predictable use of prior art elements/steps (namely, heating molten
magnesium metal and applying same via a pressurized gas into a vacuum
mold) according to their established functions (namely, to produce a light
magnesium metal casting). See KSR, 127 S. Ct. at 1739. We determine
that it would have been prima facie obvious to a person of ordinary skill to
have used “a multiple” quantity of the molten liquid metal in the chamber 36
of Braun in order to take advantage of the known processing advantages of
using multiple quantities as taught by the applied prior art (FF 3).
We also determine that one of skill in the art would have found it
prima facie obvious to use a quantity of metal sufficient to produce an
appropriate casting and make up for any “losses” of the metal associated
with the casting process. A person of ordinary skill is also a person of
ordinary creativity, not an automaton. See KSR, 127 S. Ct. at 1742. We
determine that an engineer or scientist would have realized that molten metal
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will stick to the surfaces of the pipes, chambers, etc. and thus to use “a
multiple” to make up for these losses would have been within the ordinary
level of skill in the art (FF 9).
We agree with the Examiner that the differences between Braun and
Appellant’s claims would have been prima facie obvious, as the use and
advantages of multiple quantities of metal to be cast, and heating the molten
metal in a lower part of a melting device, were known in the art (Ans. 5-6, 9-
10, FF 1-7 and 9). One of ordinary skill in the art would have recognized
the use of these known techniques for casting molten metal would have
improved the process of Braun. See KSR, 127 S. Ct. at 1740.
Thus, we determine that the Examiner has established a
reasonable belief that the applied prior art would have suggested the
claimed casting process.
CONCLUSION
For the foregoing reasons, we affirm the rejection based on failure to
comply with 35 U.S.C. § 112, second paragraph.
For the reasons stated in the Answer and above, we determine that the
Examiner has established a prima facie case of obviousness in view of the
reference evidence. Therefore, we also affirm the rejection on appeal based
upon § 103(a).
DECISION
The Examiner’s decision is AFFIRMED.

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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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