Ex Parte Langan et al

Patent Trial and Appeal Board

Dec 27, 2012

11701836 (P.T.A.B. Dec. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/701,836 02/02/2007 Timothy Langan STTI 74741 4993
29694 7590 12/27/2012
PIETRAGALLO GORDON ALFANO BOSICK & RASPANTI LLP
ONE OXFORD CENTRE, 38TH FLOOR
301 GRANT STREET
PITTSBURGH, PA 15219-6404
EXAMINER
LEE, REBECCA Y
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
12/27/2012 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 TIMOTHY LANGAN, MICHAEL A. RILEY,
and W. MARK BUCHTA
________________

Appeal 2011-010296
Application 11/701,836
Technology Center 1700
________________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from the final rejection of
claims 1-13 and 15. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ claimed invention “utilizes the friction stir process to
modify the grain structure of bulk cast or wrought aluminum-scandium
alloys, thereby enhancing mechanical properties of such alloys.” Spec. 1.
Claim 1 is illustrative (italics and bracketed numbering added):
1. A method of treating a workpiece having an Al alloy substrate, the
method comprising:
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[step 1] providing a single workpiece having an Al alloy substrate
comprising Sc;
[step 2] thermally aging the workpiece to form Sc-containing
precipitates in the Al alloy substrate;
[step 3] plunging a rotating tool into a surface of the Al alloy substrate
of the workpiece and translating the workpiece with respect to the rotating
tool to produce a friction stirred zone over at least a portion of the surface of
the Al alloy substrate;
[step 4] recovering the single workpiece after the rotating tool has
been plunged into the surface of the Al alloy substrate of the workpiece; and
[step 5] heat treating and aging the Al alloy substrate of the
workpiece.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Pandey US 2006/0093512 Published May 4, 2006
Sankaran US 2006/0054252 Published Mar. 16, 2006

The Examiner maintains, and Appellants appeal, the rejection of
claims 1-13 and 15 under 35 U.S.C. § 103(a) as unpatentable over Pandey in
view of Sankaran.
OPINION1
The dispositive issue for the prior art rejection is:
Did the Examiner err in determining that the combination of Pandey
and Sankaran would have suggested to a person of ordinary skill in the art a

1 Appellants have not presented separate substantive arguments addressing
claims 1-13 and 15. In accordance with 37 C.F.R. § 41.37(c)(1)(vii), we
select claim 1 as representative for deciding the issue on appeal.
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method of treating a workpiece having an Aluminum (Al) alloy substrate as
described by the subject matter of independent claim 1?
After review of the arguments and evidence presented by both
Appellants and the Examiner, we affirm the stated rejection.
The Examiner found that Pandey discloses thermally aging an Al
alloy workpiece comprising Sc to form Al3Sc precipitate as recited in steps 1
and 2 of claim 1. Ans. 3; Pandey ¶¶ [0018]-[0019].
The Examiner acknowledged that Pandey does not teach further
treatment of the alloy (id. at 4). The Examiner found that Sankaran teaches
“an Al alloy could be treated by friction stir welding (FSW); i.e., plunging a
rotating tool into the surface of the Al alloy and produce a friction stirred
zone over the surface; followed by heat treating and aging in order to allow
joining of various types of metals while maintaining the strength of the
metal as taught by Sankaran et al.” (id.; Sankaran ¶¶ [0004], [0009]). The
Examiner found that it would have been obvious to further treat the alloy of
Pandey in order to allow joining of various types of metals while
maintaining the strength of the metal as taught by Sankaran. Appellants
argue generally that the combination of the two references does not teach the
invention as recited in independent claims 1 and 15. App. Br. 4. Appellants
do not dispute that the process called “friction stir welding” or “FSW” in
Sankaran (see Sankaran ¶[0004]) is the same “friction stirred” process
described by step 3 in Claim 1. Appellants also concede that the subsequent
heat treatment taught by Sankaran strengthens the aluminum alloy piece, but
distinguish the Sankaran process on the basis that it “is performed upon
welded aluminum alloy pieces after they have been joined together in order
to strengthen the joint that is formed by the welding process.” Id.
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Appellants also argue that no motivation exists to combine Pandey
with Sankaran because “[t]he fundamental purpose of Sankaran . . . is to join
separate pieces together to form a welded structure, and there would be no
reason to apply the process taught by Sankaran . . . to a process that does not
involve welding or joining.” Id. The existence of a motivation to combine
references, however, is not a rigidly applied test. KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 416 (2007). To the extent that Appellants argue that
there is no reason to apply the friction stir process of Sankaran to a single
workpiece such as Pandey, that position is inconsistent with Appellants’
Specification. The Background Information section of the Specification
acknowledges that it was known to use the friction stir process on a single
workpiece. Spec. 1 (“the friction stir process can be used to produce
aluminum alloys that can be superplastically formed.”)
We find here that all of the references relied upon by the Examiner
relate to aluminum alloys and strengthening aluminum alloys. Ans. 4;
Sankaran [0009]; Pandey [0011]. Accordingly, absent any argument from
Appellants that the claimed process when performed on more than one
workpiece, e.g. “joined” workpieces, would have different properties than
when the process is performed on a single workpiece, we are unpersuaded
the Examiner is in error.
For the foregoing reasons, we affirm the rejection of claims 1-13 and
15 under 35 U.S.C. § 103(a) as being unpatentable over Pandey in view of
Sankaran.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
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