Ex Parte PiggushDownload PDFBoard of Patent Appeals and InterferencesJun 30, 201111823699 (B.P.A.I. Jun. 30, 2011) Copy Citation 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: Appeal 2010-008661 Application 11/823,699 2 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. Appeal 2010-008661 Application 11/823,699 3 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, Appeal 2010-008661 Application 11/823,699 4 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) Appeal 2010-008661 Application 11/823,699 5 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 Appeal 2010-008661 Application 11/823,699 6 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. Appeal 2010-008661 Application 11/823,699 7 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 Appeal 2010-008661 Application 11/823,699 8 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. Appeal 2010-008661 Application 11/823,699 9 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). 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