Ex Parte Lemke et al

Patent Trials and Appeals Board

Apr 29, 2019

14275106 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/275,106 05/12/2014
26710 7590 05/01/2019
QUARLES & BRADYLLP
ATTN: IP DOCKET
411 E. WISCONSIN A VENUE
SUITE 2350
MILWAUKEE, WI 53202-4426
FIRST NAMED INVENTOR
Jeffrey W. Lemke
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.
990029.00238 2407
EXAMINER
KRUPICKA, ADAM C
ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
05/01/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pat-dept@quarles.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY W. LEMKE,
IAN W. DONALDSON, and JOHN D. GUROSIK
Appeal 2018-003819
Application 14/275,106
Technology Center 1700
Before GEORGE C. BEST, GRACE KARAFFA OBERMANN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
OBERMANN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek relief from the Examiner's final rejection of
claims 1-6 and 9-11 under 35 U.S.C. § 103(a). Appeal Br. 1-12. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify GKN Sinter Metals, LLC as the real party in interest.
Appeal Br. 1.
Appeal 2018-003819
Application 14/275,106
STATEMENT OF THE CASE
Appellants explain that, in a brazing process, two or more metallic
components are joined together through the use of a brazing material.
Specifically, the brazing material is heated until it becomes a liquid, fills the
volume between the components, and-upon solidification-forms a bond
between the components. Spec. ,-J,-J 4-5. Appellants' invention relates to
controlling the flow of brazing material between the components to provide
stronger brazements. Id. ,-i,-i 3, 9. Claim 1 is illustrative and reproduced
below:
1. A brazed part including a first component and a
second component brazed together by a brazing material, the
brazed part comprising:
a plurality of locating joints, each of the plurality of
locating joints including:
a projection on one of the first component and the
second component; and
a corresponding recess on the other of the first
component and the second component;
wherein, in each of the plurality of locating joints,
the projection is located in the corresponding recess to
define an inter-component gap between the first
component and the second component, in which inter-
component gap is received a brazing material that brazes
the first component and the second component together,
the inter-component gap being sized so as to facilitate
transport of a liquid phase of the brazing material
therethrough via capillary action; and
at least one lip disposed on at least one of the first
component and the second component at a periphery of the
inter-component gap, the lip providing a gradual increase of the
inter-component gap at the periphery;
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Application 14/275,106
wherein, during brazing, the gradual increase of the inter-
component gap at the periphery produces a meniscus in the
liquid phase of the brazing material having a surface tension
sufficient to retain the brazing material in the inter-component
gap for solidification.
OPINION
Prior Art Rejections
The Examiner rejects claims 1, 4, 5, and 9-11 as obvious over Yano2
in view of Hall. 3 Final Action 4-5. Appellants argue these claims as a
group. Appeal Br. 3-12. We select claim 1 as representative of the group.
See 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Y ano discloses all of the elements of claim 1,
except for a lip disposed on at least one of the components at a periphery of
the inter-component gap. Final Action 4; Answer 5. For this claimed
feature, the Examiner relies on Hall's teaching of a fillet at the edge of
brazed surfaces. Final Action 4 (citing Hall, Fig. lB, 3:31-35, 7:45-49);
Answer 5-6. The Examiner reasons that selecting the conventional
configuration of Hall's fillet in Y ano' s brazing joint would have been the
result of ordinary skill not invention. Final Action 4; Answer 5.
Appellants assert that it would not have been obvious to combine Y ano
and Hall, arguing that ( 1) the Examiner's proposed modification changes
Y ano' s principle of operation; (2) the Examiner engaged in impermissible
hindsight in combining Y ano and Hall; and (3) the Examiner's identification
2 US 2004/0013897 Al (published Jan. 22, 2004).
3 US 6,581,438 Bl (issued June 24, 2003).
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Application 14/275,106
of "functional" claim limitations in fact carry structural weight. Appeal
Br. 3-11.
(])Principle of Operation
First, Appellants contend that Y ano describes the use of overflow
moats (i.e., grooves 4, 4') to collect excess brazing material that flows out
from the space between the components being brazed together. Appeal
Br. 5-6 ( citing Y ano ,i 46, Fig. 4, claims 1-2). According to Appellants,
these moats show that Y ano contemplates that material should flow out of
the space between the components, and that it would change Y ano' s
principle of operation to add Hall's fillet, which is designed to maintain
brazing material in the gap. Id. at 6-7. Appellants assert that both
maintaining brazing material in the gap and capturing overflowing brazing
material outside of the gap cannot occur simultaneously and, further, that
adding Hall's fillet to Yano would eliminate the need for Yano's moats. Id.
at 7-8.
We are not persuaded by Appellants' arguments because the
Examiner makes unrebutted findings that Y ano' s moats are intended to
eliminate the risk of impairing the appearance of the brazed component and
reduce the trouble of removing surplus brazing material (Answer 9 ( citing
Yano ,i 50)), that a fillet is known to accomplish the same purposes (id.), and
that Y ano' s moats would act as a safeguard in case the brazing material
escapes the fillet (Adv. Act. 2). Accordingly, we agree with the Examiner
that the addition of Hall's fillet does not change the operability of Y ano' s
brazing process or alter how Yano's moats operate. On the contrary, the
addition of Hall's fillet instead acts in furtherance of the same goals as
Y ano' s moats to maintain the appearance of the brazed part and prevent the
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Application 14/275,106
need to remove excess brazing material. Answer 9. Although Appellants
argue that using a fillet and moat are not compatible with each other and that
adding Hall's fillet would eliminate the need for Y ano' s moats ( Appeal
Br. 7-8), Appellants do not adequately rebut the Examiner's finding that the
moat would act as a safeguard in the event brazing material were to escape
the fillet feature (Adv. Act. 2). Accordingly, we find no reversible error in
the Examiner's reasoning that neither the operation of Y ano' s moats nor the
process of brazing itself is altered through the additional of Hall's braze
retaining feature. Answer 9.
(2) Improper Hindsight
Second, Appellants contend that the Examiner has made an
unsupported assumption that Y ano involves capillary action as required by
claim 1. Appeal Br. 9-10 ( citing Final Action 5). In the Examiner's
Answer, the Examiner explains why it would have been understood that
Y ano' s transport mechanism involves wetting by capillary action, and by
way of support, cites to Y ano' s teaching concerning backflow of brazing
material due to surface tension. Answer 10-11 ( citing Y ano ,i 1 7). The
Examiner's reasoning is sufficient to support the finding that Y ano involves
the transport of a liquid phase of brazing material via capillary action.
In the Reply Brief, Appellants argue that wetting alone is not
sufficient to establish the presence of capillary action. Reply Br. 3.
However, as we note above, the Examiner's reasoning goes beyond wetting
alone. See Answer 10. We also disagree with Appellants' argument that the
Examiner improperly relies on Y ano' s paragraph 1 7 to show transport via
capillary action because the geometric structure for preventing backflow into
the gap cannot be the same as the geometric structure to retain the flow in
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Application 14/275,106
the gap in the first instance. Reply Br. 3-4. The Examiner does not cite
Y ano' s paragraph 1 7 to show the geometric structures necessary to prevent
backflow or retain flow, but instead, to show that Yano suggests that
capillary action is present because Y ano' s structures prevent backflow of
surplus brazing material that would otherwise occur due to surface tension.
See Answer 10-11; see also Yano ,i 52. Appellants do not refute adequately
this finding by the Examiner.
We also disagree with Appellants that the Examiner relied solely on
Appellants' Specification and "not anything else on the record" in support of
finding obviousness. Reply Br. 2-3. The Examiner made unrebutted factual
findings to support a reason to combine Y ano and Hall ( as discussed in
Section (1) above) without citing Appellants' Specification (see Answer 9
(citing Yano ,i 9)) and it is for these reasons-not for the Examiner's
reliance on Appellants' Specification-that we sustain the Examiner's
rejection. The single sentence from Appellants' Specification on which the
Examiner relies may be removed from the Examiner's Answer and the
Examiner's analysis would remain intact. See id. at 9-10. Further, the
Examiner cited the Specification not to show support for the obviousness of
the proposed combination, but rather, only to show that Appellants' own
Specification contemplates "the use of multiple braze control features
including a dam which may be provided in addition to a lip"-a
disclosure that refutes Appellants' contradictory position on appeal that such
features are incompatible. Reply Br. 2 ( citing Answer 9-10) ( emphasis
supplied by Appellants). Accordingly, we discern no reversible error in the
Examiner's reference to Appellants' Specification.
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(3) Functional Claim Limitations
Third, Appellants assert that the claimed use of capillary action and
formation of a meniscus impart structural features as to the spacing of the
gap and the form of the lip that must be considered. Appeal Br. 11. The
Examiner found that the prior art performs each of those functions and that
the prior art also has the structure necessary to perform the functions.
Answer 11-12; see also id. at 10-11 (acknowledging that claim 1 requires
the gap to be sized "so as to facilitate transport of a liquid phase of the
brazing material therethrough via capillary action," and finding that Yano
teaches that claim limitation); id. at 12 ( explaining that Hall demonstrates
the formation of a meniscus to retain the brazing material within the inner-
component gap such that the chamfered edge feature disclosed by Hall has
the necessary structure to perform the functions required by claim 1 ( citing
Hall, Fig. lB)). Accordingly, we find that the Examiner properly considered
the structure imparted by the functional limitations of claim 1 and did not err
in finding this structure taught by the prior art.
Additionally, the Examiner rejected claims 2, 3, and 6 over Yano in
view of Hall and, further, in view of other secondary references. Final
Action 5-6. Appellants present no substantive arguments with respect to
claims 2, 3, and 6 separate or apart from the arguments raised in connection
with claim 1. Appeal Br. 12. Accordingly, we also sustain the Examiner's
rejections of claims 2, 3, and 6 for the same reasons discussed above.
Double Patenting
The Examiner also rejected claims 1-11 on the ground of nonstatutory
double patenting. Final Action 2-3. Appellants have not requested review
of that rejection on appeal. Appeal Br. 3-4, 11. Accordingly, we do not
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review the Examiner's nonstatutory double patenting rejection and we take
no position on the merits of that rejection.
ORDER
The Examiner's decision to reject claims 1-6 and 9-11 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
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