12273903 (P.T.A.B. Jan. 30, 2013)

Ex Parte Owens et al

Patent Trial and Appeal BoardJan 30, 2013

12273903 (P.T.A.B. Jan. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/273,903 11/19/2008 JOHN N. OWENS P003996-RD-MJL 9247 74829 7590 01/30/2013 Julia Church Dierker Dierker & Associates, P.C. 3331 W. Big Beaver Road Suite 109 Troy, MI 48084-2813 EXAMINER LE, NINH V ART UNIT PAPER NUMBER 1744 MAIL DATE DELIVERY MODE 01/30/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte JOHN N. OWENS, INGRID A. ROUSSEAU, ELISABETH J. BERGER, and HAMID G. KIA ____________________ Appeal 2011-011977 Application 12/273,903 Technology Center 1700 ____________________ Before RICHARD E. SCHAFER, MARK NAGUMO, and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. CRUMBLEY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011977 Application 12/273,903 2 John N. Owens, Ingrid A. Rousseau, Elisabeth J. Berger, and Hamid G. Kia (collectively, “Appellants” or “Owens”) timely appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of Claims 16-18.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The appealed claims are directed to a method of forming a part with a feature having a die-locked geometry. Claim 16, set forth below, is illustrative of the subject matter on appeal: 16. A tool for forming a part with a feature having a die- locked geometry, the tool comprising: at least one die; a cavity defined in a surface of the at least one die; a protrusion formed in the cavity and positioned normal to an inner surface of the least one die, the protrusion configured to enable part removal from the tool; and a shape memory polymer insert, in its temporary shape, disposed on the protrusion, the shape memory polymer insert having i) the die-locked geometry as its temporary shape, and ii) a geometry that is removable from the part feature as its permanent shape. Appellants have argued the patentability of Claims 16-18 together, therefore all appealed claims stand or fall together with Claim 16. 37 C.F.R. § 41.37(c)(1)(vii). 1 Application Ser. No. 12/273,903, entitled Method of Forming a Part With a Feature Having a Die-Locked Geometry, filed November 19, 2008. The real party in interest is listed as GM Global Technology Operations LLC. Appeal 2011-011977 Application 12/273,903 3 The Examiner relies upon the following evidence of unpatentability: Browne US 2006/0137424 A1 Jun. 29, 2006 The Rejected Claims Claims 16-18 stand rejected under 35 U.S.C. §102(b) as being anticipated by Browne. Appellants’ Brief also raises two additional rejections which were subsequently withdrawn by the Examiner. App. Br. 8. 2 Claims 16-18 were rejected as indefinite under 35 U.S.C. § 112, second paragraph, and were also rejected under 35 U.S.C. § 102(b) as anticipated by US 2004/0117955 A1 to Barvosa-Carter et al. Final Office Action 2, 5.3 Both rejections were withdrawn in the Examiner’s Answer and are therefore moot. Ans. 8, 10. The Issue Presented The issue before us on appeal is whether Browne discloses a “die- locked geometry,” as defined in Owens’ Specification. ANALYSIS Processes for creating machine parts typically involve molding a material between two opposing dies, with the resulting shape of the molded part being dependent on the shapes of the particular dies used. When the desired shape is complex or intricate, such processes have traditionally been 2 We refer to the Appeal Brief filed February 28, 2011 (“App. Br.”), the Examiner’s Answer mailed May 10, 2011 (“Ans.”), and the Reply Brief filed July 11, 2011 (“Reply Br.”). 3 Final Office Action, mailed September 28, 2010. App App less after illus Spec Figu form 4 We eal 2011-0 lication 12 useful due stamping. The Ow tration of t As used where a least in the mol having d shape th molding . ¶ 0007.4 Figure re 1B show ed betwee refer to th 11977 /273,903 to the tend Owens u ens Specif he term “d herein, th part cann part, to on d. Accord ie-locked at preven tool using 1B of the s a molde n upper di e specific ency for t ses the ter ication pro ie-locked, e term “di ot be rem e or more ingly, a “ geometry ts the pa conventio Owens sp d part 24 e 14 (unsh ation as “S 4 he die to g m “die-loc vides both ” as follow e-locked” oved from features o die-locked ” is a feat rt from b nal remov ecification (shaded re aded) and pec.” et stuck in ked” to re an explic s: refers to a a moldin f the part feature” ure of the eing remo al techniq is reprodu d/lighter f lower die the mold fer to this it definitio molding e g tool du being stu or a “fe part havi ved from ues. ced below or clarity) 12, which ed part problem. n and an vent e, at ck in ature ng a the : being further App App comp blue/ geom botto rema prov whic Afte inser Spec § 10 repro a cav 4-6. eal 2011-0 lication 12 rises prot darker for As show etry”: a d m, such th in stuck in iding the l h a shape r molding, t is allowe . ¶¶ 0012- The Exa 2(b). Spec duced bel ity and a p 11977 /273,903 rusion 18 clarity). n in Figur ove-tail sh at a unitar the part a ower die 1 memory p the die is d to return 0015. miner reje ifically, th ow, disclo rotrusion and shape e 1B, after aped cavit y die capa fter moldi 2 with a n olymer ins first remov to its perm cted Claim e Examin ses a mold , and a sha 5 memory p stamping y that is w ble of form ng. Owen on-die-loc ert 20, in ed, then t anent sha s 16-18 as er found th ing tool h pe memor olymer ins part 24 ha ider at the ing such s addresse ked protru its tempora he shape m pe and re anticipat at Figure aving at le y polymer ert 20 (sh s a “die-lo top than a a cavity w s this prob sion 18, ar ry shape, emory po moved fro ed under 3 6 of Brow ast one die insert 52, aded cked t the ould lem by ound is placed. lymer m the part 5 U.S.C. ne, 50 havin 62. Ans. . g Appeal 2011-011977 Application 12/273,903 6 Figure 6 of Browne shows a tool 50 for molding a blank 16, comprising dies 56, 58 and shape memory polymer insert 52, 62. The Examiner found that Figure 6 of Browne also discloses a “die- locked geometry,” reasoning as follows: Browne discloses a first reconfigurable insert 52 that corresponds to the geometry of the female die 56 upon activation which molds blank 16 to produce part 60 as shown in Figure 6. Browne also teaches that the shape memory material of said insert provides sufficient rigidity to impress a desired part processed therein. Therefore, upon molding of blank 16 to produce part 60 whereby the reconfigurable insert 52 corresponds to the female die 56, the rigidity of said insert would cause part 60 to be stuck inside of the female die 56 once part 60 is formed. This feature would correspond to the “die locked geometry” as claimed. Ans. 9-10 (internal citations omitted). In reply, Appellants argue that because Figure 6 of Browne shows dies having only square or rectangular features, they cannot have a “die- locked geometry” as defined in the instant specification. Reply. Br. 6. Given the explicit definition of “die-locked geometry” set forth in Owens’ specification, we find that Figure 6 of Browne does not disclose a part having such a geometry. While the Examiner’s reasoning – based on the rigidity of the shape memory material of Browne – is logical, we believe it misses the mark. As Appellants note, “die-locked geometry” is defined in the specification in relation to the shape of the part; specifically, the shape itself must prevent removal of the die from the part. Spec. 0007. The shape of the inserts disclosed in Figure 6 of Browne, having what appear to be 90º angles, would not necessarily become stuck in the molded part. Browne Appeal 2011-011977 Application 12/273,903 7 therefore cannot be said to disclose a “die-locked geometry,” as Appellants have defined the term. CONCLUSION For the foregoing reasons, we find that Browne does not disclose a die-locked geometry and therefore the reference does not disclose every element of the appealed claims. We therefore reverse the rejection of Claims 16-18 as anticipated under 35 U.S.C. § 102(b). REVERSED sld