Ex Parte Molz et alDownload PDFPatent Trial and Appeal BoardJun 13, 201713499764 (P.T.A.B. Jun. 13, 2017) 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. 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. 2 Appeal 2015-007533 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 3 Appeal 2015-007533 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. 4 Appeal 2015-007533 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. 5 Appeal 2015-007533 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. 6 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 7 Appeal 2015-007533 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. 8 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 9 Copy with citationCopy as parenthetical citation