Ex Parte Piggush

Board of Patent Appeals and Interferences

Jun 30, 2011

11823699 (B.P.A.I. Jun. 30, 2011)

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.
11/823,699 06/27/2007 Justin D. Piggush 0002577-US(06-421) 1486
52237 7590 07/01/2011
BACHMAN & LAPOINTE, P.C.
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
LIN, KUANG Y
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
07/01/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JUSTIN D. PIGGUSH
____________

Appeal 2010-008661
Application 11/823,699
Technology Center 1700
____________

Before CHUNG K. PAK, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-14, 19-22, 25, and 26. We have jurisdiction under
35 U.S.C. § 6. An oral hearing was held on June 16, 2011.

STATEMENT OF THE CASE
Claims 1, 2, 25, and 26 are representative of the subject matter on
appeal and are set forth below:

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1. A method comprising:

forming a casting core assembly, the forming including:

deforming a wire, the deforming including increasing a transverse
linear dimension along at least one portion of the wire by at least 100%; and

assembling the wire to a ceramic core.

2. The method of claim 1 wherein the increasing includes:
including a transverse cross-sectional area along said portion.

25. The method of claim 1 wherein the deforming increases said
transverse linear dimension by 2-5 times the undeformed dimension.

26. The method of claim 2 wherein the deforming increase said
transverse linear dimension by 2-5 times the undeformed dimension.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Akin 3,214,877 Nov. 2, 1965
Clifford 4,684,322 Aug. 4, 1987
Weiss 6,133,540 Oct. 17, 2000
Parkos, Jr. 2006/0086479 Apr. 27, 2006
Beck 7,237,595 Jul. 3, 2007
Uchimoto JP 57-58,947 Apr. 9, 1982

THE REJECTIONS
1. Claims 1-14, 25, and 26 are rejected under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement.
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2. Claims 1-14, 19-22, 25, and 26 are rejected as being unpatentable
under 35 U.S.C. §103(a) over Parkos, Jr. in view of Beck, and further in
view of Uchimoto, Weiss, or Akin.
Rejection 1
It is the Examiner’s position that there is no written descriptive
support for the phrase “increasing a transverse linear dimension along at
least one portion of the wire by at least 100%” as recited in claim 1. The
Examiner states that the range of “at least 100%” is beyond the range
disclosed by Appellant. Also, it is the Examiner’s position that there is no
written descriptive support for “transverse dimension” in claims 25 and 26
because “liner dimension” is different from “cross-sectional dimension.”
Ans. 3, 5, and 6.
We note that the test for sufficiency of a written description is whether
the disclosure “clearly allow[s] persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed.” Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (quoting
Vas–Cath Inc. v. Mahurkar, 935 F.2d 1355, 1562-63 (Fed. Cir. 1991)).
“The ‘written description’ requirement must be applied in the context of the
particular invention and the state of the knowledge.” Capon v. Eshhar, 418
F.3d 1349, 1358 (Fed. Cir. 2005).
On page 7 of the Reply Brief, Appellant argues that the original
disclosure in the Specification of “increasing” encompasses the range of “at
least 100%” (see original claim 1, for example), and the specific support of
100% (doubling) is supported by “2-5” times (see para. [0031]). However,
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we agree with the Examiner that when the original claim relating to
“increasing” is interpreted in light of the original written description in the
Specification relating to “2-5”times, the original disclosure as a whole does
not indicate increasing a transverse linear dimension along at least one
portion of the wire by greater than 5 times. Hence, we agree with the
Examiner’s rejection in this regard.
With respect to the term “linear dimension”, Appellant convincingly
explains that this term is not longitudinal, and therefore is clearly the linear
dimension of a cross-section, for example, the diameter for a circular cross-
section. Reply Br. 7.
In view of the above, we affirm Rejection 1.

Rejection 2
As an initial matter, Appellant has not presented separate arguments
for all of the rejected claims. Any claim not separately argued will stand or
fall with its respective independent claim. See 37 C.F.R. § 41.37(c)(1)(vii).
In this regard, we note that while Appellant lists claim 9 (along with claim 6)
on page 7 of their Brief (claim 9 recites the forming step of claim 1 further
comprises machining the compartment (recited in claim 5) into the ceramic
core), Appellant does not specifically address the subject matter of claim 9
in his arguments in the Brief or Reply Brief. Because Appellant does not
specifically argue the subject matter of claim 9, we do not consider this
claim on appeal. We do consider the claims listed below.
In determinations involving affirmance of any one claim considered
herein, we essentially adopt the Examiner’s findings pertinent to the issue(s)
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raised by Appellant for this rejection. We, therefore, incorporate the
Examiner’s position as set forth in the Answer when affirming the
Examiner’s position. We add the following for emphasis only.
Claims 1, 2, and 3
Appellant argues that there is no basis for asserting that one of
ordinary skill in the art would seek to modify the RMC of Parkos as
proposed by the Examiner (incorporating the flare shape taught by Beck).
Br. 6. We refer to the Examiner’s statement of the rejection on page 3-4 in
this regard. However, we are not convinced of error because as explained by
the Examiner on page 7 of the Answer, Beck teaches that such a shape is
useful to cool component 1. Beck, col. 2, ll. 10-15. Beck furthers teaches
that projection 19 is formed by casting ceramic material into a through hole
13 or by insertion of suitably shaped pins, for example, ceramic pins, into
walls 25, 28 of the casting mold. Beck, col. 2, ll. 41-48. Albeit, Beck does
not indicate the use of metal pins; however, Parkos shows that the use of
metal wire is state of the art in connection with RMCs. Parkos, paras.
[0018-0019]. Thus, Beck suggests the idea of utilizing pins having a flared
shape to achieve corresponding through-holes having such a shape for
cooling purposes. Hence, we are not persuaded by Appellants’ argument
that the Examiner’s rejection lacks the proper motivation.
Also, with particular attention to the forming step involving
deforming the wire into the shapes as recited in claims 1, 2, and 3, we also
agree with the Examiner that (1) Beck’s figures 1-4 suggests a flare portion
more than 100%, and (2) it would have been obvious to have optimized a
particular dimension through routine experimentation. Ans. 7. Absent
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evidence of criticality, we are not convinced of error in the Examiner’s
position in this regard.

Claim 4
Claim 4 recites that the increasing (in the deforming step) includes
melting. Appellant asserts “hindsight reconstruction from non-analogous
references.” Br. 7. Appellant’s assertion does not come with an adequate
explanation showing that the references of Uchimoto, Weiss, or Akin are
non-analogous art. As explained by the Examiner on page 8 of the Answer,
these three references were relied upon for exemplifying known methods for
shaping metallic articles. Appellant has not convinced us that one skilled in
the art would not have relied upon their teachings in this regard based upon
their non-analogous art assertion. “A reference is reasonably pertinent if,
even though it may be in a different field from that of the inventor’s
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992);
see also Agrizap, Inc. v. Woodstream Corp., 502F.3d 1337 (Fed. Cir. 2008)
(Analogous art is not limited to references in the field of endeavor of the
invention, but also includes references that would have been recognized by
those of ordinary skill in the art as useful for applicant’s purpose). In other
words, “familiar items may have obvious uses beyond their primary
purposes.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). Hence,
we are in agreement with the Examiner’s rejection of claim 4.

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Claims 6, 7, 14, 19, and 22
These claims involve an intermediate portion of the wire, or first and
second portions of the wire that provide respective outlet passageways. For
example, claim 6 recites that the assembling step of claim 1 comprises
“inserting an intermediate portion of the wire into a compartment of the
ceramic core.” Intermediate portion is depicted, for example, as item
number 150, which is embedded in the ceramic feed core 142, as shown in
Appellant’s Figure 14. Using such a configuration results in first and second
portions of the wire providing respective outlet passages.
It is the Examiner’s position that it would have been obvious to have
modified Parkos by using a single integrated piece of RMC rather than the 2
separate pieces as taught in Parker (e.g., items numbers 32 and 36), and to
have extended that single integrated piece between 2 side walls of shell 24
because such a modification “presents no unexpected or novel result and
would have been obvious to those of ordinary skill in the investment casting
art.” Ans. 9. However, we are persuaded by Appellant’s argument that this
proposed modification is unsupported. Reply Br. 13. The Supreme Court in
KSR stated “[a]lthough common sense directs one to look with care at a
patent application that claims as innovation the combination of two known
devices according to their established functions, it can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. at 418. In other words, the
Examiner’s basis for the rejection must identify a rationale that would have
led an ordinarily skilled artisan to modify a reference in a way that would
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have resulted in a device corresponding to the rejected claims. Id.; See also,
In re Vaidyanathan, No. 2009-1404, 2010 WL 2000682, at *9 (Fed. Cir.
May 19, 2010) (non-precedential) (“KSR did not free the PTO’s examination
process from explaining its reasoning. In making an obviousness rejection,
the examiner should not rely on conclusory statements that a particular
feature of the invention would have been obvious or was well known.
Instead, the examiner should elaborate, discussing the evidence or reasoning
that leads the examiner to such a conclusion.”) The Examiner’s rejection
does not identify a reason that would have prompted the proposed
modification other than to say that the modification “presents no unexpected
or novel result and would have been obvious to those of ordinary skill in the
investment casting art,” which is insufficient. Hence, we are convinced of
error regarding the Examiner’s rejection of claims 6, 7, 14, 19, and 22.

Claim 10
Claim 10 recites that the deforming step of claim 1 includes spiraling
the wire. Appellant asserts that there is no support for the Examiner’s
position that the use of a spiral cooling passageway is conventional. Br. 8-9.
However, in this instance, the Examiner has provided support when he
discusses the reference of Clifford on pages 3, 5, and 10 of the Answer,
which we incorporate herein, and we therefore are not convinced of error in
this regard, and therefore agree with the Examiner’s rejection of claim 10.

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CONCLUSIONS OF LAW AND DECISION
1. The rejection of claims 1-14, 25, and 26 under 35 U.S.C. §112, first
paragraph, as failing to comply with the written description requirement, is
affirmed.
2. The rejection of claims 1-5, 8-13, 20, 21, 25, and 26 under 35 U.S.C.
§103(a) over Parkos, Jr. in view of Beck, and further in view of Uchimoto,
Weiss, or Akin is affirmed. However, we reverse this rejection with respect
to claims 6, 7, 14, 19, and 22.

TIME PERIOD FOR RESPONSE

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART

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