Ex Parte Molz et al

Patent Trial and Appeal Board

Jun 13, 2017

13499764 (P.T.A.B. Jun. 13, 2017)

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.
13/499,764 08/30/2012 Ronald J. Molz P7828US 9237
78631 7590 06/15/2017
RORFRTS TtRFFN
EXAMINER
OERLIKON METCO (US) INC. MORGAN, EILEEN P
1101 PROSPECT AVENUE
WESTBURY, NY 11590 ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
06/15/2017 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):
ROBERT.GREEN@OERLIKON.COM
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD J. MOLZ and
PETER ERNST
Appeal 2015-007533
Application 13/499,764
Technology Center 3700
Before LINDA E. HORNER, MICHAEL L. HOELTER, and
BRENT M. DOUGAL, Administrative Patent Judges.
HOELTER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision, as set forth in the Final Office Action dated September
10, 2014 (“Final Act.”), rejecting claims 1—21. App. Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM—IN—PART.
THE CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to pulsed waterjets and,
in particular, to surface preparation using pulsed waterjets, and more
particularly to surface preparation of engine cylinder bores using pulse
Appeal 2015-007533
Application 13/499,764
waterjets.” Spec. 12. Claims 1, 10, and 20 are independent (claims 1 and
20 are directed to a method while claim 10 is directed to an apparatus).
Claim 1 is illustrative of the subject matter on appeal and is reproduced
below.
1. A method of prepping a surface of a cylinder bore
of an internal combustion engine to receive a coating using a
pulsed waterjet, the method comprising:
generating a signal having a frequency f using a signal
generator;
applying the signal to generate a pulsed waterjet through
an exit orifice of a nozzle having an exit orifice of diameter d and
having a cylindrical portion of the exit orifice of length L; and
prior to applying the coating, causing the pulsed waterjet
to impinge upon the surface of the cylinder bore to be prepped to
prepare the surface to within a predetermined range of surface
roughness sufficient to allow bonding thereto of the coating
when subsequently applied,
wherein the predetermined range of surface roughness is
determined by selecting operating parameters comprising a
standoff distance (SD), a traverse velocity VTr of the nozzle, a
water pressure P, a water flow rate Q, an orifice length-to-
diameter (L/d) ratio, the frequency f, and an amplitude A of the
signal.
REFERENCE RELIED ON BY THE EXAMINER
Vijay et al. (“Vijay”) US 8,550,873 B2 Oct. 8, 2013
THE REJECTIONS ON APPEAL
Claims 10-14 and 16—18 are rejected under 35 U.S.C. § 102(e) as
anticipated by Vijay.
Claims 1—9, 15, and 19-21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Vijay.
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Application 13/499,764
ANALYSIS
The rejection of claims 10—14 and 16—18
as anticipated by Vijay
Appellants argue claims 10-14 and 16—18 together. App. Br. 7—9.
We select apparatus claim 10 for review with dependent claims 11—14 and
16—18 standing or falling with claim 10. See 37 C.F.R. § 41.37(c)(l)(iv).
Claim 10 recites, in the preamble, a waterjet apparatus “structured and
arranged to prepare an internal combustion engine cylinder bore surface with
a predetermined roughness so as to allow bonding thereto of a thermal spray
coating.” Claim 10 concludes reciting certain parameters and stating, “said
predetermined parameters ensure that the given cylinder bore surface attains
the predetermined roughness sufficient to allow bonding thereto of a thermal
spray coating.” The Examiner finds such language to be an “intended use”
of the recited apparatus. Ans. 4. The Examiner states that “in order to
patentably distinguish the claimed invention from the prior art,” “a recitation
of the intended use of the claimed invention must result in a structural
difference between the claimed invention and the prior art.” Ans. 4. Here,
the Examiner states that the language “drawn to the step of ‘thermal spray
coating the bore’ does not further limit the base claim of ‘a waterjet
apparatus.’” Ans. 4. The Examiner further concludes, “[a]ny steps that
happen after the ‘prepping’ limitations, such as a coating step, are not
germane to the claimed invention [of the waterjet] and therefore do not
provide patentable subject matter over the prior art of record.” Ans. 5.
Appellants agree with the Examiner that “claim 10 specifically recites
an apparatus that can prepare an engine cylinder bore surface to receive a
coating.” App. Br. 8. However, Appellants dispute “that claim 10 merely
recites non-limiting intended use language” directed to preparing an engine
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Application 13/499,764
cylinder bore surface and further dispute “that such language can be properly
ignored” by the Examiner. App. Br. 8. Appellants contend, “[b]oth the
preamble and the body of claim 10 recite an engine cylinder bore surface
that is prepared with a predetermined roughness and that can receive a
thermal spray coating” and that “VIJAY is silent” on this point. App. Br. 8;
Reply Br. 2, 4.
Assuming, for the sake of argument, that Vijay is silent regarding this
particular use, such silence does not detract from the Examiner’s finding that
the above referenced language is directed to the intended use of the claimed
waterjet apparatus. See Ans. 4. Appellants identity no structural difference
between the claimed invention and the prior art, only a difference in usage.1
App. Br. 8—9. We are instructed that “apparatus claims cover what a device
is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc.,
909 F.2d 1464, 1468 (Fed. Cir. 1990). We are also instructed that claims
directed to an apparatus must be distinguished from the prior art in terms of
structure rather than function. See In re Schreiber, 128 F.3d 1473, 1477—78,
(Fed. Cir. 1997).
Appellants also contend that the teachings in Vijay regarding
preparing a tube, pipe, or curved surfaces “is not the same as preparing
engine cylinder bore surfaces to receive a thermal spray coating.” App. Br.
9; see also Vijay 10:50-54. Appellants explain, “[a]n engine cylinder bore
is typically subject to combustion temperatures and piston friction forces —
which is generally not the case in pipes and tubes.” App. Br. 9. Be that as it
may, Appellants still fail to identify structural distinctions between the
1 We further note the similarity (if not identity) between Vijay’s Figures 1C,
2, 3A—3F, 4, and 5 with, respectively, Appellants’ Figures 1—10.
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Application 13/499,764
recited claim language and the device disclosed in Vijay. In other words,
Appellants recite no claim language addressing a difference in structure that
might be required for Vijay to be used “to prepare an internal combustion
engine cylinder bore surface” as claimed.
Appellants further state, “VIJAY appears entirely unconcerned with
the aim of the invention.” App. Br. 9 (arguing the aim of the invention is to
achieve “a specific surface finish or surface roughness to ensure bonding for
the coating”); see also Reply Br. 4. However, we have also been instructed,
“[i]t is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” Schreiber,
128 F.3d at 1477. Appellants have not claimed a specific surface finish or
surface roughness, and have not demonstrated why the device disclosed in
Vijay is not capable of being used to “attain the predetermined roughness
sufficient to allow bonding thereto of a thermal spray coating” as recited in
claim 10.
Appellants also argue that claim 10 recites “predetermined
parameters” and that “the Examiner continues to ignore this feature.” Reply
Br. 3, 4. We disagree. Other than making this general allegation,
Appellants do not identify any specific predetermined parameter that is not
already disclosed in Vijay. See, e.g., Vijay Abstract.
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 10—14 and 16—18 as being anticipated
by Vijay.
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Application 13/499,764
The rejection of claims 1—9, 15, and 19—21
as unpatentable over Vijay
Appellants separately argue each of claims 1 and 19-21. App. Br.
10—17. We address each such claim separately, and in the same order as
presented by Appellants. Dependent claims 2—9 stand or fall with parent
claim 1. Apparatus claim 15 depends from claim 10 (discussed supra).
Appellants do not argue claim 15 separate from its parent claim or otherwise
indicate how claim 15 is not obvious over Vijay. Accordingly, we
summarily sustain the Examiner’s rejection of claim 15 as being
unpatentable over Vijay.
Claim 1
Method independent claim 1 is directed to “prepping a surface of a
cylinder bore of an internal combustion engine” so as to receive a coating
thereon. Appellants acknowledge that Vijay teaches, “how a waterjet
apparatus can be utilize[d] to prepare cylindrical surfaces” but argue that the
“invention specifically relates to the preparation of engine cylinder bore
surfaces” which “is not necessarily the same as” “[preparing tube, pipe or
curved surfaces” App. Br. 10-12 (referencing Vijay 10:51—54); see also
Reply Br. 4. Appellants further argue, “[preparing engine cylinder bore
surfaces does not appear to be in any way disclosed or suggested in VIJAY,
much less, in the manner claimed.”2 App. Br. 11; see also Reply Br. 4.
The Examiner, on the other hand, states,
2 On this point, Appellants further argue, “claim 1 is distinguishable from
VIJAY at least in regards to the type of surface being prepared” and that
“VIJAY appears entirely silent as to preparing a cylinder bore surface, much
less, one of an internal combustion engine cylinder bore surface that can
receive a coating.” App. Br. 11.
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Appeal 2015-007533
Application 13/499,764
Regarding using the device to prep an internal bore, Vijay
discloses prepping the inside of cylinders or tubular structures
and is therefore capable of prepping a bore of an engine block
which could receive a thermal spray. Therefore, it would have
been obvious to one of ordinary skill in the art at time invention
was made to use the device on any known workpiece, such as to
prep a bore which could receive a coating, since Vijay teaches
any surface can be prepped (metal, non-metal, rock, ceramic,
concrete, wood etc.) and to prep a bore of an engine block
would be within the level of ordinary skill.
Final Act. 3.
Appellants’ above contentions, that Vijay does not teach using a water
jet to prepare an engine cylinder bore surface, does not address the
Examiner’s rationale for making the obviousness determination. Appellants’
do not contest the Examiner’s finding that “to prep a bore of an engine block
would be [an obvious use] within the level of ordinary skill,” (id.) only that
Vijay does not expressly teach doing so. Thus, Appellants’ above
contentions are not persuasive that such rationale is in error.
Accordingly, we sustain the Examiner’s rejection of claim 1, and
dependent claims 2—9, as being unpatentable over Vijay.
Claim 20
Method independent claim 20 includes language similar to that
discussed above regarding claim 1. Appellants repeat the arguments
presented above. App. Br. 12—14. For similar reasons, Appellants’
arguments are not persuasive of Examiner error.
Claim 19
Claim 19 depends directly from method claim 1 and “further
compris[es] applying a thermal spray coating onto the prepared surface of
the cylinder bore.” Despite this explicit claim language, the Examiner
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Application 13/499,764
states, “[t]he claims are not drawn to a method of applying a thermal
coating” and “the thermal coating is merely an intended step of the bore after
the prepping, and not the inventive step of [Appellants’] invention.”3 Ans.
5; see also Ans. 6. These statements are not correct when applied to claim
19 that, as stated by Appellants, “specifically recites ‘applying a thermal
spray coating onto the prepared surface of the cylinder bore.’” Reply Br. 6.
Appellants contend that the Examiner “ignores the features of claim 19” and
that the Examiner “makes no attempt to identify subject matter in VIJAY
which discloses, teaches or suggest the feature of claim 19.” App. Br. 15;
see also Reply Br. 6.
As indicated above, claim 19 specifically recites the step of “applying
a thermal spray coating.” Although Vijay teaches, “prepping the insides of
cylindrical or tubular structures” (Vijay 10:51—54), Vijay is silent as to why
such inside surfaces are being so prepped. The Examiner first states that
Vijay is “capable of prepping a bore of an engine block” and second, that
because of such prepping, this engine block “could receive a thermal spray.”
Final Act. 3; see also Ans. 6.
We agree with the Examiner that Vijay expressly teaches preparing an
inside cylindrical surface and that, based on such teachings, it would have
been reasonable for one skilled in the art to have understood that Vijay is
“capable of prepping a bore of an engine block” (i.e., an inside cylindrical
surface). Final Act. 3. However, the Examiner relies on further conjecture
that the cylinder bore “could receive a thermal spray.” Final Act. 3. The
Examiner proffers no reason why one skilled in the art would have
3 On the other hand, the Examiner states, “[t]he workpiece of Vijay is
capable of receiving a thermal spray.” Ans. 6.
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Appeal 2015-007533
Application 13/499,764
understood Vijay as teaching “applying a thermal spray coating” or why it
would have been otherwise obvious to apply such a coating to an engine
bore. Instead, the Examiner states, “to prep a bore of an engine block would
be within the level of ordinary skill” without explaining why the additionally
recited step of “applying a thermal spray coating onto the prepared surface
of the cylinder bore” of claim 19 would have been expected to occur, other
than that “Vijay is capable of receiving a thermal spray.” Final Act. 3; Ans.
6; see also In re Giannelli, 739 F.3d 1375, 1380 (Fed. Cir. 2014). In other
words, the Examiner’s conjecture lacks articulated reasoning with rational
underpinning to support a conclusion of obviousness. Consequently, and
based on the record presented, we reverse the Examiner’s rejection of claim
19 as being obvious over Vijay.
Claim 21
Claim 21 depends from independent claim 20 and includes a
limitation identical to that discussed above regarding claim 19. For similar
reasons previously expressed, we reverse the Examiner’s rejection of claim
21 as being obvious over Vijay.
DECISION
The Examiner’s rejections of claims 1—18 and 20 are affirmed.
The Examiner’s rejection of claims 19 and 21 are reversed.
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)(l)(iv).
AFFIRMED-IN—PART
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