Ex parte Mordue et al.

Board of Patent Appeals and Interferences

Dec 18, 2000

08651571 (B.P.A.I. Dec. 18, 2000)

Claims 6 and 8 on appeal are currently indicated as1
being dependent from canceled claim 4. For purposes of this
appeal we have considered these claims as being dependent from
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GEORGE S. MORDUE and RICHARD S. HENDERSON
____________
Appeal No. 1999-0405
Application No. 08/651,571
____________
HEARD: November 15, 2000
____________
Before FRANKFORT, NASE, and JENNIFER D. BAHR, Administrative
Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's refusal
to allow claims 1 through 3, 5 through 8 and 20 as amended
subsequent to the final rejection in a paper filed October 22,
1997 (Paper No. 6) and from the examiner’s final rejection of
claims 9 through 19. Claim 4 has been canceled.1
Appeal No. 1999-0405
Application No. 08/651,571
claim 1. Appellants should correct this oversight during any
further prosecution of this application before the examiner.
We also note that there does not appear to be any proper
antecedent basis for "said adhesive joint" in line 3 of claim
6.
2
Appellants’ invention is directed to a molten metal
impeller (e.g., claims 1, 9, 14 and 20) and to a shaft for a
molten metal impeller (claim 19). In the paragraph bridging
pages 2 and 3 of their specification, appellants indicate that
historically, a bearing ring is cemented to both the shaft and
molten metal impeller. More particularly, appellants note
that a typical impeller (usually formed of graphite) has a
generally cylindrical portion which is machined to include a
notched periphery, with a bearing ring (often of silicon
carbide) cemented into the notch. Appellants observe that such
prior art designs have remained a frequent area of failure
because the joint is incompletely filled with cement and the
graphite to cement adherence is relatively poor.
To increase the useful operable life of a molten metal
pump and increase its overall reliability, appellants have
Appeal No. 1999-0405
Application No. 08/651,571
3
devised a system whereby they have improved the means for
attachment of the bearing ring to the impeller and shaft of a
molten metal pump. That attachment system involves the
inclusion of one or more generally concentric grooves on one
or both of the surface portions of the notch in contact with
the bearing ring. Note, for example, the grooves (58) in the
radially facing wall (59) and axially facing wall (61) of the
notch (56) seen in Figure 5 of the drawings. As indicated on
page 8 of the specification, appellants have found that the
grooved walls facilitate even distribution of the cement over
the entire joint surface between the impeller notch and the
bearing ring and improves the mechanical bonding at the
graphite/refractory cement interface. Independent claims 1, 9,
14, 19 and 20 are representative of the subject matter on
appeal and a copy of those claims may be found in the Appendix
to appellants’ brief.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Mordue et al. (Mordue) 5,028,211 Jul. 2,
1991
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Application No. 08/651,571
Our understanding of this foreign language document is2
based on a translation prepared for the U.S. Patent and
trademark Office. A copy of that translation is attached to
this decision.
In reviewing appellants’ specification (e.g., pages 83
and 9) and independent claims 1 and 20, we note some confusion
and inconsistencies in the disclosure and in the claim
recitations concerning the "radial wall" and "axial wall" in
the enumerated claims. As is apparent from viewing Figures 5
and 6 of the application, it appears that the recitations in
claims 1 and 20 should more properly be expressed as a
"radially facing wall formed by said second section" and as an
"axially facing wall formed by said first section." Likewise,
the specification at page 9 should be reviewed to correct this
same type of oversight.
4
Cooper 5,203,681 Apr. 20,
1993
Thut 5,597,289 Jan.
28, 1997
Hattori 62-164525 Jul. 21,
1987
(Japanese patent)2
Claims 1 through 3, 5 through 8 and 20 stand rejected3
under 35 U.S.C. § 103 as being unpatentable over Thut in view
of Hattori.
Claims 9 through 13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Cooper in view of Hattori.
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Application No. 08/651,571
5
Claim 19 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Mordue in view of Hattori.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellants
regarding the rejections, we make reference to the examiner's
answer (Paper No. 11, mailed May 28, 1998) for the reasoning
in support of the rejections, and to appellants’ brief (Paper
No. 10, filed February 23, 1998) and reply brief (Paper No.
13, filed July 28, 1998) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellants and the examiner. As a
consequence of our review, we have made the determinations
which follow.
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6
Looking first at the examiner’s rejections relying on
Thut and Cooper, each of which is modified in view of Hattori,
we note that the primary references both disclose a molten
metal impeller including a circumferential notch and a bearing
ring cemented into said notch. As can be seen in Figure 1 of
Thut and Figure 10 of Cooper, the joint between the notch and
bearing ring in both of these references includes flat
surfaces of the notch cemented to flat surfaces on the bearing
ring. To account for the lack of grooves in the wall or walls
of the notch in Thut or Cooper as is required in the claims
before us on appeal, the examiner has turned to Hattori.
The Hattori reference is specifically directed to an
adhesion structure for fluorocarbon polymers. On page 2 of
the reference it is noted that the invention concerns the
adhesion of a fluorocarbon polymer to a partner material.
Difficulties in bonding fluorocarbon polymers to normal
partner materials with adhesive are also discussed on page 2.
In the example of the invention on page 4 of Hattori the
partner material is indicated to be a bondable metal member
(2) and the fluorocarbon polymer member (1) is provided with
Appeal No. 1999-0405
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7
grooves (4) oriented in the circumferential direction relative
to the shear force shown by the arrow seen in Figure 1 of the
drawings, with the gap between the members (1) and (2) and the
grooves (4) being filled with an epoxy-based resin adhesive
(5). Hattori notes, in the paragraph bridging pages 4 and 5,
that "[i]n this way, the surface area is increased to the
extent that grooves (4) are formed, not only increasing the
adhesive strength, but also, since the hardened adhesive (5)
is made to fill the grooves (4) of the fluororesin, the
adhesive (5) serves as a key, and the fluorocarbon polymer (1)
becomes extremely difficult to remove from the partner
material (2)."
In the examiner’s view, it would have been obvious to one
of ordinary skill in the art at the time appellants’ invention
was made to form the notched wall of the molten metal impeller
of either Thut or Cooper with a plurality of circumferentially
extending grooves in the form of a spiral as taught by Hattori
for the purpose of forming a strong joint.
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8
Appellants assert that the Hattori reference is non-
analogous art because it is not within appellants’ field of
endeavor (i.e., molten metal pumps/impellers) or reasonably
pertinent to the particular problem that appellants address
(i.e., attaching a silicon carbide bearing ring to a graphite
impeller of a molten metal pump). Appellants also argue that
Hattori is not even a general teaching on mating of two
components, because it is specific to the bonding of fluorine
resin articles, and that, even if it were analogous art, there
is no motivation or justification supporting the examiner’s
proposed combinations with Thut and Cooper since 1) the
applied references do not in any way recognize a problem with
the attachment of a bearing ring to a molten metal pump
impeller and 2) there is no justification for applying the
teachings of Hattori relating to bonding fluorine resin
articles to metal to a structure involving attaching a silicon
carbide bearing ring to a graphite impeller which is to be
immersed in molten metal as in Thut and Cooper. In this
regard, appellants assert that the examiner has employed an
improper "obvious to try" standard of patentability and relied
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9
upon impermissible hindsight in attempting to combine Hattori
with Thut or Cooper.
Assuming for argument sake that Hattori is analogous
prior art, we share appellants’ view that there would have
been no motivation and no suggestion in the applied references
for the examiner’s proposed combination of Hattori with Thut
or Cooper. In our opinion, the examiner has used
impermissible hindsight derived from appellants’ own teachings
to combine the molten metal impeller arrangements of Thut and
Cooper involving attaching a silicon carbide bearing ring to a
graphite impeller with the totally disparate adhesion
structure for fluorocarbon polymers taught in Hattori. In
this regard, we note that, as our court of review indicated in
In re Fritch, 972 F.2d 1260, 1266 n. 14, 23 USPQ2d 1780, 1783-
84 n. 14 (Fed. Cir. 1992), it is impermissible to use the
claimed invention as an instruction manual or "template" to
piece together isolated disclosures and teachings of the prior
art so that the claimed invention is rendered obvious. That
same Court has also cautioned against focussing on the
obviousness of the differences between the claimed invention
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and the prior art rather than on the invention as a whole as
35 U.S.C. § 103 requires, as we believe the examiner has done
in the present case. See, e.g., Hybritech Inc. v. Monoclonal
Antibodies, Inc., 802 F.2d 1367, 1375, 231 USPQ 81, 93 (Fed.
Cir. 1986), cert. denied, 480 U.S. 947 (1987).
Since we have determined that the teachings and
suggestions found in Thut or Cooper considered with those of
Hattori would not have made the subject matter as a whole of
claims 1 through 3, 5 through 18 and 20 on appeal obvious to
one of ordinary skill in the art at the time of appellants’
invention, we must refuse to sustain the examiner’s rejections
of those claims under
35 U.S.C. § 103.
As for the examiner’s rejection of claim 19 under 35
U.S.C. § 103 as being unpatentable over Mordue in view of
Hattori, we have reviewed the Mordue patent, noting that it
discloses (in Fig. 9) a shaft (15) for a molten metal impeller
and a bearing ring (32) bonded to the shaft using refractory
cement. Mordue does not disclose, teach or suggest a
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11
plurality of grooves on the surface of the shaft adjacent the
bearing ring, with the plurality of grooves receiving an
adhesive for securing the bearing ring to the shaft, as set
forth in claim 19 on appeal. Again the examiner has turned to
the teachings of Hattori, urging that it would have been
obvious to one of ordinary skill in the art to form the shaft
(15) of Mordue with a plurality of grooves adjacent the
bearing ring as taught by Hattori for the purpose of forming a
strong joint.
Similar to Thut and Cooper, Mordue is directed to the
high temperature environment of a molten metal pump and
involves the use of a graphite shaft and a silicon carbide
bearing ring bonded thereto. We note again that Hattori is
specifically directed to a solution for poor bonding of
fluorocarbon polymer articles to metal partner materials and,
absent appellants’ disclosure, we see no reasonable suggestion
or motivation for combining Mordue and Hattori in the manner
urged by the examiner. Certainly the mere fact that the
Hattori reference is classified in class 156, Adhesive
Bonding, does not mean that it is automatically or obviously
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combinable with the molten metal pump shaft and impeller
arrangement involved in Mordue. Like appellants, we consider
that the examiner has improperly relied upon an "obvious to
try" standard of patentability and used impermissible
hindsight in attempting to combine the disparate teachings of
Mordue and Hattori so as to arrive at appellants’ claimed
subject matter. Thus, the examiner’s rejection of claim 19
under
35 U.S.C. § 103 will not be sustained.
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In light of the foregoing, the decision of the examiner
to reject claims 1 through 3 and 5 through 20 under 35 U.S.C.
§ 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF/sld
Appeal No. 1999-0405
Application No. 08/651,571
14
SCOTT A. MCCOLLISTER
FAY, SHARPE, BEALL, FAGAN,
MINNICH AND MCKEE
1100 SUPERIOR AVENUE, SUITE 700
CLEVELAND, OH 44114-2518
Shereece
Appeal No. 1999-0405
Application No. 08/651,571
APJ FRANKFORT
APJ J. BAHR
APJ NASE
REVERSED
Prepared: August 14, 2001