Ex Parte McClain et alDownload PDFPatent Trial and Appeal BoardOct 15, 201311694214 (P.T.A.B. Oct. 15, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 11/694,214 03/30/2007 Robert David McClain 207435 1605 7590 10/15/2013 Steven J. Rosen 4729 Cornell Rd. Cincinnati, OH 45241 EXAMINER WASAFF, JOHN SAMUEL ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 10/15/2013 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 ROBERT DAVID McCLAIN, BRIAN MICHAEL DAVIS, and SEETHA RAMAIAH MANNAVA ____________ Appeal 2011-011468 Application 11/694,214 Technology Center 3700 ____________ Before STEFAN STAICOVICI, MICHAEL C. ASTORINO, and BENJAMIN D. M. WOOD, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-24. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-011468 Application 11/694,214 2 Claimed Subject Matter Claim 1 is the sole independent claim on appeal, is representative of the subject matter on appeal, and is reproduced below. 1. A method for laser shock peening an article, the method comprising: laser shock peening a laser shock peening surface of the article and forming at least one pre-stressed region having deep compressive residual stresses imparted by the laser shock peening, the pre-stressed region extending into the article from a laser shock peened surface formed by the laser shock peening, and machining a feature into the article in the pre-stressed region after the laser shock peening. Rejections Claims 1-16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dulaney (US 6,144,012, iss. Nov. 7, 2000) and Takayanagi (US 5,571,575, iss. Nov. 5, 1996). Claims 17-24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Dulaney in view of Takayanagi as stated above and further in view of Suh (US 6,570,125 B2, iss. May 27, 2003). OPINION Obviousness over Dulaney and Takayanagi The Appellants argue claims 1-16 as a group. Br. 15-17. We select claim 1 as representative of claims 2-16. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds, inter alia, Dulaney teaches the method of claim 1 except for “machining a feature into the article in the pre-stressed region Appeal 2011-011468 Application 11/694,214 3 after the laser shock peening.” See Ans. 3-4. The Examiner relies on Takayanagi to remedy this deficiency with regard to claim 1. See Ans. 4-5. The Examiner finds Takayanagi discloses laser shock processing of the inner surface of a bore, then machining the inner surface of the bore by honing. See id. (citing Takayanagi col. 15, l. 65-col. 16, l. 5). The Examiner concludes “[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to combine the laser peening of Dulaney . . . with the machining of Takayanagi” because “the fatigue strength around the hole/bore can be eliminated, as well as a finished product with minimal deformation (col. 16, ll. 1-20).” Ans. 5. The Appellants contend that the combination of Dulaney and Takayanagi would not result in “machining a feature into the article in the pre-stressed region after the laser shock peening,” as recited in claim 1. See Br. 15-17. The Appellants assert that the only machined feature in Takayanagi’s article is a bore, which is machined prior to laser shock peening. Br. 15. The Appellants contend that the Examiner’s application of the Takayanagi disclosure (i.e., machining a smoother surface of a bore by honing) implies a construction of the phrase “machining a feature” which is “arbitrary and capricious and was made using explicit and implicit forbidden hindsight.” See Br. 15-16. Contra Advisory Action, mailed October 10, 2010, p. 2. At the outset, we note that the Appellants’ Specification does not provide an explicit definition of the term “feature.” In the absence of an express definition of a claim term in the Specification or a clear disclaimer of scope, the claim term is interpreted as broadly as the ordinary usage of the term by one of ordinary skill in the art would permit. In re ICON Health & Appeal 2011-011468 Application 11/694,214 4 Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). The Specification does provide examples of a “feature”, e.g., “a hole or a scallop” (Spec. 6, ll. 6-7, passim), but these examples are not definitions. A dictionary definition of the term “feature” is: “[t]he general term given to any physical portion of a part such as holes, slots, surfaces, and pins.” Illustrated Dictionary of Metalworking and Manufacturing Technology, 161, (Steven F. Krar et al. eds., 1999). This definition of the term “feature” is within the broadest reasonable interpretation consistent with the underlying Specification. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Notably, the dictionary definition of the term “feature” includes “surfaces.” Accordingly, the Examiner’s finding that honing the inner surface of a bore corresponds with “machining a feature,” as recited in claim 1, is correct. The Appellants offer as evidence three publications1 “refer[ring] to holes and other cuttings as machined features.” See Br. 16. The Appellants’ evidence is unpersuasive because it merely provides examples of what a feature can be, e.g., “holes and other cuttings.” Moreover, the Appellants’ evidence is consistent with the dictionary definition of “feature” as discussed supra. The Appellants assert “[t]he Examiner has offered no evidence that honing is considered machining a feature and has offered no evidence that ones skilled in the art would even consider that honing is considered machining a feature.” Id. However, the Appellants do not cogently explain 1 The three publications in the Appeal Brief are: “Feature Recognition Research at The University of Maryland,” http://www.cs.umd.edu/projects/ cimlfeature_rec.html; “Feature Based Machining in NX 6”; and “Feature Based Machining.” Br., Evid. App’x. Appeal 2011-011468 Application 11/694,214 5 why honing the inner surface of a bore does not correspond to “machining a feature.” See Ans. 7. The Appellants contend the Examiner’s finding that Takayanagi’s “honing occurs on the [inner surface of a] bore that extends through the pre- stressed region” because “the feature is machined entirely through the pre- stressed region and between inner and outer sides of the article” (Ans. 8 (citing Takayanagi, col. 16, ll. 1-2)) is incorrect. Br. 17. However, the contention stems from the faulty premise that honing the inner surface of a bore does not constitute “machining a feature.” See id. For the reasons provided above, the Appellants’ contention is unpersuasive. Thus, the rejection of claims 1-16 as unpatentable over Dulaney and Takayanagi is sustained. Obviousness over Dulaney, Takayanagi, and Suh The Appellants have not provided further arguments for the rejection of claims 17-24 under 35 U.S.C. § 103(a) as unpatentable over Dulaney, Takayanagi, and Suh. See Br. 18-19. The Appellants merely reiterate arguments presented for the Examiner’s rejection of claim 1 for this ground of rejection. See id. For the same reasons we have sustained the rejection of claim 1, we likewise sustain the rejection of claims 17-24 under 35 U.S.C. § 103(a) as unpatentable over Dulaney, Takayanagi, and Suh. DECISION We AFFIRM the rejections of claims 1-24. Appeal 2011-011468 Application 11/694,214 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh Copy with citationCopy as parenthetical citation