Ex parte Schulz

Board of Patent Appeals and Interferences

Jul 26, 1999

08616787 (B.P.A.I. Jul. 26, 1999)

Application for patent filed March 15, 1996 as a 37 CFR1
§ 1.62 file wrapper continuation of Application 08/228,488,
filed April 15, 1994, now abandoned. Both the appellant and
the examiner may wish to look into discrepancies in the record
involving the March 15, 1996 filing date assigned to the
instant application. This filing date appears to be
subsequent to abandonment date of Application 08/228,488.
-1-
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DAVID W. SCHULZ
________________
Appeal No. 99-0158
Application 08/616,7871
________________
ON BRIEF
________________
Before COHEN, McQUADE and BAHR, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
David W. Schulz appeals from the final rejection of
Appeal No. 99-0158
Application 08/616,787
-2-
claims 1, 5, 9 through 11 and 23. Claims 2 and 3, the only
other claims pending in the application, stand withdrawn from
consideration pursuant to 37 CFR § 1.142(b). We reverse.
The invention relates to “superplastic forming of tubular
structures, and more particularly to end sealing of a tubular
blank of superplastic material in preparation for superplastic
forming to the final shape” (specification, page 1). A copy
of the appealed claims appears in the appendix to the
appellant’s main brief (Paper No. 25).
The references relied upon by the examiner as evidence of
obviousness are:
Macha 2,861,530 Nov. 25, 1958
Fields, Jr. et al. (Fields) 3,340,101 Sept. 5,
1967 Greacen 3,900,939 Aug. 26,
1975
Miller et al. (Miller) 5,022,135 Jun. 11, 1991
The claims stand rejected under 35 U.S.C. § 103(a) as
follows:
a) claims 1, 10 and 23 as being unpatentable over Fields
in view of Greacen;
b) claim 5 as being unpatentable over Fields in view of
Greacen and Macha; and
c) claims 9 and 11 as being unpatentable over Fields in
Appeal No. 99-0158
Application 08/616,787
-3-
view of Greacen and Miller.
Reference is made to the appellant’s brief (Paper No. 25)
and to the examiner’s answer (Paper No. 26) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.
Fields, the examiner’s primary reference, pertains to the
superplastic formation of various metal products. Of
particular interest is the subject matter depicted in Figure
3. As described by Fields,
FIGURE 3 shows apparatus for forming tubular
blank metal stock TB, having inner and outer
principal opposed surfaces TB and TB , respectively,1 2
into the expanded contour of die surface or shaping
member 20 formed in a die body 21. The shaping
member 20 is provided with vents or bleeds holes 22
in the female sections as described in connection
with FIGURES 1 and 2. One end of the tubular blank
metal TB, defining a first continuous edge thereof,
is clamped against the die body 21 and blocked
against fluid transmission by a plug member 23. The
opposite end of the tubular blank metal TB, defining
a second continuous edge thereof, is also clamped
against the die body 21 by a plug member 24, but
fluid communication therethrough is provided for the
introduction of a fluid pressure loading from a
suitable source (not shown) attached to conduit 25.
. . . It will be noted that the constrained two
separate continuous edges of the tubular blank TB
Appeal No. 99-0158
Application 08/616,787
-4-
define a closed periphery circumscribing that
portion of the surface area of the blank TB which is
in lateral operative projection with the die surface
or shaping member 20. The shaping member 20
adjacent the plug members 23 and 24 is provided with
relief radii 26 to minimize initial stress
concentrations. The final shape of the part formed
by the apparatus of FIGURE 3 is shown by broken line
a [column 5, lines 27 through 55].
With additional regard to the process involved, Fields states
that
[f]ull performance of our discovered process
requires that the metal blank be heated or otherwise
conditioned to exhibit its effective strain rate
sensitivity as indicated above and placed in the
apparatus provided in operative projection with an
opposed die portion. Tensile deforming stress is
then induced in the blank by application of a load
through a fluid pressure interface. . . . Loading
is continued until the blank has deformed against
and into intimate contact with the shaping member or
die surface [column 6, lines 30 through 41].
As conceded by the examiner (see page 4 in the answer),
Fields does not meet the limitations in independent claims 1,
10 and 23 requiring the end caps to have a coefficient of
thermal expansion greater than that of the tube. As explained
in the appellant’s specification, and as set forth to some
extent in claims 1 and 10, this difference in the coefficients
of thermal expansion produces a gas-tight seal between the end
Appeal No. 99-0158
Application 08/616,787
-5-
caps and the tube when the assembly is heated to the
superplastic forming temperature of the tube. Fields makes no
mention of the coefficients of thermal expansion of the tube
(tubular blank TB) and end caps (plug members 23 and 24)
disclosed therein, or of any heat-induced gas-tight seal
between the tube and end caps.
The examiner’s reliance on Greacen to overcome these
deficiencies is not well taken.
Greacen discloses an element 20 designed to plug a
defective tube in a heat exchange apparatus to avoid the
necessity of removing the apparatus from service to replace or
repair the tube. To this end, the plug is made of a shape
memory alloy “whereby it can be physically deformed into a
reduced diameter for insertion into the tube end and
thereafter induced to assume its original diameter to thus
secure the plug within the tube” (Abstract). Greacen explains
that
there is provided a method of plugging a defective
tube by means of a plug formed from the above
material comprising the steps of forming the plug
Appeal No. 99-0158
Application 08/616,787
-6-
with an external diameter greater than the internal
diameter of the tube to be plugged; heating the plug
to the prescribed temperature for imparting its
“memory” configuration; thereafter cooling the same
to a temperature below the minimum limit of the
transition range of temperatures for the plug
material where the plug is imparted with its
“intermediate” configuration. Thereafter the plug
is applied to the tube to be plugged and heated to a
temperature above the upper limit of its transition
range whereby the tube is caused to attempt to
assume its memory configuration and in so doing is
expanded into tight plugging engagement within the
tube interior [column 2, lines 18 through 33].
According to the examiner,
even though Greacen fails to expressly state that
the plug has a higher coefficient of thermal
expansion than
that of the tube, Greacen is considered to stand for
such a proposition because it recognizes that the
thermal properties of two members can be utilized to
expand one member relative to the other.
Because one having ordinary skill in the art
recognizes that the most efficient use of the
Fields’ apparatus could be realized if the
pressurizing fluid was not allowed to escape from
the ends of the tube, one would have found it
obvious to employ the tube plugging method of
Greacen in the process of Fields in order to ensure
that no pressurizing fluid is allowed to escape
[from] the ends of the tube while the tube is being
deformed thereby. When the tube plugging method of
Greacen is incorporated into the process of Fields,
the end caps will press the tube ends against the
internal die surface.
Appeal No. 99-0158
Application 08/616,787
-7-
If it is determined that Greacen does not at
least suggest that the plug has a higher coefficient
of thermal expansion than that of the tube, then the
claimed relative coefficients of thermal expansion
of the tube and end caps is deemed to be a matter of
design choice because such relative coefficients of
thermal expansion per se solve no stated problem nor
serve any apparent purpose insofar as the claimed
method is concerned [answer, pages 5 and 6].
As correctly pointed out by the appellant (see pages 9
and 10 in the brief), however, Greacen contains no teaching or
suggestion relevant to the coefficient of thermal expansion
limitations recited in claims 1, 10 and 23. The examiner’s
conclusion to the contrary is completely unfounded. As also
pointed out by the appellant (see page 9 in the brief), the
use
of plugs of the sort disclosed by Greacen to cap the ends of
Fields’ tube would apparently require the plugs to be cut from
the tube at the end of the forming operation. This would
certainly seem to be a disincentive which would have
discouraged one of ordinary skill in the art from combining
the two references in the manner proposed by the examiner.
Furthermore, the record in the instant application,
Appeal No. 99-0158
Application 08/616,787
-8-
particularly the appellant’s specification, belies the
examiner’s contention that the thermal expansion features
recited in claims 1, 10 and 23 do not solve a stated problem
or serve any purpose.
In light of the foregoing, we are satisfied that the
combined teachings of Fields and Greacen would not have
suggested the subject matter recited in independent claims 1,
10 and 23 to one of ordinary skill in the art. Accordingly,
we shall not sustain the standing 35 U.S.C. § 103(a) rejection
of these claims.
Since neither Macha nor Miller cures the foregoing flaws
in the basic Fields/Greacen combination, we also shall not
sustain the standing 35 U.S.C. § 103 rejections of dependent
claims 5, 9 and 11.
The decision of the examiner is reversed.
REVERSED
Appeal No. 99-0158
Application 08/616,787
-9-
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 99-0158
Application 08/616,787
-10-
Lawrence W. Nelson
The Boeing Co.
P. O. Box 3707 M/S 13-08
Seattle, WA 98124-2207
JPM/ki