Ex Parte McGuire et al

Patent Trial and Appeal Board

May 10, 2016

12892550 (P.T.A.B. May. 10, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/892,550 09/28/2010
23598 7590 05/12/2016
BOYLE FREDRICKSON S.C.
840 North Plankinton A venue
MILWAUKEE, WI 53203
FIRST NAMED INVENTOR
Daniel S. McGuire
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.
1509.079 2444
EXAMINER
YOON, KEVIN E
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
05/12/2016 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):
docketing@boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL S. MCGUIRE AND ERICE. HELLSTROM
Appeal2014-006397
Application 12/892,550
Technology Center 1700
Before MARK NAGUMO, KAREN M. HASTINGS, and JULIA HEANEY,
Administrative Patent Judges.
HEANEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 request review pursuant to 35 U.S.C. § 134(a) of a
decision of the Examiner finally rejecting claims 25-30 of Application
12/892,550. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
BACKGROUND
The subject matter on appeal relates to a method for investment
casting, in particular a process for forming a pattern-coating stucco shell,
1 Appellants identify the real party in interest as WiSys Technology
Foundation. App. Br. 3.
Appeal2014-006397
Application 12/892,550
that further reduces drying time of the shell by incorporating a desiccant.
App. Br. 3--4. The stucco material comprises no less than 1 % by weight of
an inorganic desiccant material having a surface area greater than 100 m2 per
gram. Id. at 5; Specification iJ 12.
Claim 25 is illustrative and reproduced from the Claims Appendix of
the Appeal Brief as follows:
25. An investment casting method for creating an article from a
pattern, the method comprising:
applying a slurry to the pattern, wherein the slurry comprises a
colloidal silica mixed with water;
applying a stucco coat over the slurry to hasten the hardening of
the slurry into a shell, wherein the stucco coat comprises no less
than 1 % by weight of an inorganic desiccant material selected
from the group consisting of a zeolite or an activated alumina
having a surface area in excess of 100 m2 per gram;
replacing the pattern with a molten material;
allowing the molten material to solidify in the shell to produce
the article; and
removing the shell from the article.
REFERENCES
The Examiner relied upon the following prior art in rejecting the
claims on appeal:
McGuire US 7,278,465 Bl Oct. 9, 2007
(hereinafter "McGuire '465")
Desiccant Chart Comparisons, SorbentSystems.com,
http ://vvwvv. sorbentsystems. com/ desiccants charts.html, last visited
September 5, 2012 (hereinafter "Desiccant").
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Appeal2014-006397
Application 12/892,550
Desiccant Selection, SorbentSystems.com,
http ://v'lWW. sorbentsys terns. corn) desiccants se 1 ect.html, last visited
June 12, 2013 (hereinafter "Selection").
3A Molsiv Adsorbent, Offenbar-energy.com, http://wvv\v.offenbar-
energy .corn/pdf/3A %20Data%20Sheet.pdf, (2003).
THE REJECTIONS
1. Claims 25-30 are rejected on the ground of nonstatutory
obviousness type double patenting as being unpatentable over
claims 1-15 of McGuire '465 in view of Desiccant, Selection, and
3A Molsiv Adsorbent.
2. Claims 25-30 are rejected under 35 U.S.C. § 103(a) as
unpatentable over McGuire '465 in view of Desiccant, Selection,
and 3A Molsiv Adsorbent.
DISCUSSION
Appellants argue together both grounds of rejection, obviousness type
double patenting and§ 103(a) obviousness, and present argument for all
claims as a group, focusing on limitations in independent claim 25. App. Br.
8-14. We address only claim 25, with the dependent claims standing or
falling therewith.
The Examiner finds that McGuire '465 teaches all of the limitations of
claim 1, except that the inorganic desiccant material is selected from the
group consisting of a zeolite and has a surface area in excess of 100 m2 per
gram. Ans. 6 (citing McGuire '465 2:60-63; 5:59-6:3; 10:3--47). Regarding
these limitations, the Examiner finds that Desiccant discloses zeolite as a
water absorbent having a surface area of 700-800 m2 per gram, and that
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Application 12/892,550
Selection discloses that size of the desiccant is a result effective variable.
Ans. 6-7 (citing Desiccant p. 1; Selection p. l ). The Examiner further finds
that the Molsiv 3A data sheet discloses a 16 x 40 size molecular sieve. Id. at
7. The Examiner concludes that it would have been prima facie obvious to
modify the method of McGuire '465 to use Desiccant' s zeolite as an
inorganic desiccant in place of amorphous mineral silicate, because
Desiccant teaches that zeolite absorbs water better than other desiccants, and
Desiccant' s surface area of 700-800 m2 per gram overlaps the claimed
range. Id.
Appellants argue that the Examiner did not meet the burden of proof
to establish that a person of ordinary skill in the art would have had a
reasonable expectation of success in substituting the amorphous mineral
silicate of McGuire '465 with the zeolite of Desiccant, because the
Examiner's reasoning for modifying McGuire '465 with Desiccant does not
take into account the expectation at the time of Appellants' Specification
that high absorption desiccant material, such as zeolite, would create "steam
bombs" where the mold explodes during the casting process under the force
of rapidly vaporizing liquid water contacting molten metal. App. Br. 8, 10-
11. Further, Appellants argue that the Examiner failed to acknowledge an
affidavit of co-inventor Daniel S. McGuire under 37 C.F.R. 1.132
(hereinafter, "McGuire Affidavit") as evidence of nonobviousness, and that
the McGuire Affidavit provides a factual basis supporting "an expectation
that this invention would not be successful" because it shows that "excess
water retention would normally be expected to retard drying of the shell and
to create the risk of 'steam explosions."' App. Br. 12, 14.
Having reviewed Appellants' arguments and considered the evidence,
we find that a preponderance of the evidence supports the determination of
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Appeal2014-006397
Application 12/892,550
obviousness. We are not persuaded of harmful error in the Examiner's
reasoning that a person of ordinary skill would have been led to modify
McGuire '465 with the zeolite of Desiccant because Desiccant teaches the
advantage of using zeolite, and shows that it absorbs water better than other
desiccants. Ans. 11-12. The reasoning provides "some rational
underpinning to support the legal conclusion of obviousness" and therefore
is sufficient. KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007).
Further, Appellants' argument that the Examiner disregarded Exhibits
A-G of the McGuire Affidavit, and the co-inventor's statements in the
Affidavit, is not persuasive of reversible error. Reply Br. 2-6. The
Examiner finds that Exhibits A-G describe that steam explosions occur if
molten metal contacts moist sand, if water is entrapped under the surface of
molten metal, or if water contacts molten metal. Ans. 12. Reasoning from
those findings, the Examiner concludes that a person of ordinary skill would
not have expected zeolite in the stucco to lead to a steam explosion, because
zeolite would absorb water from moist sand in the mold and thereby prevent
those situations. Id. Although Appellants dispute the Examiner's findings
concerning Exhibits A-G, they do not in their briefs point to anything in
those exhibits indicating that better water retention in zeolites would have
been expected to increase the risk of steam explosions. App. Br. 8, 10-11;
Reply Br. 2-6. Nor does the McGuire Affidavit explain why a person of
ordinary skill in the art would have extended the teachings of the Exhibits to
zeolites. In this regard, the lack of factual corroboration, technical
publications, or data regarding the release of water from zeolites at high
temperatures, limit our ability to assess the technical merits of Mr.
McGuire's statements. As to the opinion stated in the McGuire Affidavit
that "the use of zeolite increases the inherent risk of steam bombs and would
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Application 12/892,550
be avoided," we discern no reversible error in the Examiner's assessment of
the weight to be given to the opinion of an interested party. In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) ("[T]he Board is
entitled to weigh the declarations and conclude that the lack of factual
corroboration warrants discounting the opinions expressed in the
declarations."). See also Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir.
2003) ("In giving more weight to prior publications than to subsequent
conclusory statements by experts, the Board acted well within [its]
discretion."); Sud-Chemie, Inc. v. Multisorb Techs., Inc., 554 F.3d 1001,
1009 (Fed. Cir. 2009)("conclusory statements in a patent's specification
cannot constitute evidence of unexpected results in the absence of factual
support") citing In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). Accordingly,
we affirm the rejections.
SUMMARY
\Ve affirm the rejections of claims 25-30.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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