Ex Parte Newcomb

Board of Patent Appeals and Interferences

Mar 31, 2008

11208095 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS P. NEWCOMB
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Appeal 2008-1694
Application 11/208,095
Technology Center 1700
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Decided: March 31, 2008
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CATHERINE Q. TIMM, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2008-1694
Application 11/208,095

I. BACKGROUND
The invention relates to a mold assembly device. The device is used
for sand casting engine cylinder blocks and includes a magnet for securing a
cast-in-place cylinder bore liner on core features during assembly of the
mold package (Specification ¶ 0001). Claim 1 is illustrative of the subject
matter on appeal:
1. A mold assembly device comprising:

a handling fixture adapted to be releasably connected to a barrel slab
core; and

means for producing a magnetic field to attract a cylinder bore liner
disposed on a barrel core feature of the barrel slab core toward an inner
surface of the barrel slab core toward an inner surface of the barrel slab core.

Appellants request review of the sole rejection maintained by the
Examiner, namely, the rejection of claims 1-12 under 35 U.S.C. § 103(a)
over Landua (US 5,730,200 issued Mar. 24, 1998) in view of Osborne (US
5,524,696 issued Jun. 11, 1996).

II. DISCUSSION
The issue for our consideration in this case is the same as the issue we
faced in Appeal No. 2007-3846, an appeal arising in divisional application
11/457,551: Has the Examiner shown that one of ordinary skill in the art
would have found it obvious to have replaced the gripping apparatus 3 of
Landua with a magnet based on the teachings of Osborne? The difference is
that, here, the claims are directed to the mold assembly whereas the claims
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Application 11/208,095

of the previously decided appeal were directed to the method of assembling
a mold package.
We determine that, for reasons similar to those provided in the earlier
Decision (Decision of Jan. 31, 2008 rendered on Appeal No. 2007-3846), we
cannot sustain the rejection presented to us in this appeal.
A preponderance of the evidence of record supports the following
Findings of Facts (FF):
1. Landua describes a gripping apparatus 3 for gripping a casting core
such as a sole core 1 (Landua, col. 5, ll. 53-55).
2. The gripping apparatus 3 of Landua functions to engage the casting
core 1 and reversibly press it against cylinder liner 19 so the assembly
may be raised, moved, or handled without gripping the cylinder liner
19 (Landua, col. 4, ll. 46-51).
3. Osborne is directed to a “lost foam” casting method involving a step
of positioning a porous preform within the casting (Osborne, col. 1, ll.
4-7). The process involves engulfing a porous preform in a fugitive
pattern (e.g., of expanded polystyrene (EPS)) serving to define a mold
cavity in a bed of loose sand, and introducing molten metal into the
mold cavity to completely destroy the pattern (vaporize the EPS) and
replace the pattern with the metal and impregnate the porous preform
(Osborne, col. 2, ll. 16-31; col. 1, ll. 52-57).
4. To form the EPS pattern with the preform imbedded within, Osborne
describes including magnets 68 and 70 in the ends of a mold,
positioning pins having magnetic heads 66 in the preform, and
magnetically holding the pins within apertures 80 and 86 in the mold
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Appeal 2008-1694
Application 11/208,095

walls. The magnetic attraction between the magnets and pin heads
holds the preform within the fugitive pattern forming mold cavity
(Osborne, col. 6, ll. 12-47).
As we stated in our Decision of January 31, 2008 rendered in the
related appeal, the Examiner bears the initial burden of presenting a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). In order to establish a prima facie case of obviousness, the Examiner
must show that each and every limitation of the claim is described or
suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
We cannot say the Examiner has met the initial burden of presenting a
prima facie case. This is because the rejection is based on the obviousness
of replacing the gripping apparatus of Landua with the magnet of Osborne,
however, the magnet 68 within the mold cover of Osborne functions only to
maintain a preform in a mold cavity through an attraction to pin heads
embedded in the preform (FF 3-4). The grip of Landua serves a different
purpose: it functions to grip a sole core and retain a liner on the sole core to
allow the entire assembly to be raised and moved to another location (FF 1-
2). The functions of the Landua apparatus and Osborne apparatus are
sufficiently different that it is not clear that one of ordinary skill in the art
would have recognized that the magnet within the upper mold of Osborne
would be able to carry the weight of the core and liner assembly of Landua,
nor is it clear that those of ordinary skill would have recognized how to
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Application 11/208,095

adapt the magnet and pin teaching of Osborne to the molding system of
Landua in a way that meets the claim requirements.
As the Examiner relies upon Landua as teaching the claimed
“handling fixture adapted to be releasably connected to a barrel slab core”
and Osborne as teaching the claimed “means for producing a magnetic
field,” i.e., the magnet, the rejection fails because the evidence does not
support the obviousness of replacing the gripping apparatus of Landua with
the magnet of Osborne.
III. DECISION
The decision of the Examiner is reversed.
REVERSED

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