Ex parte SEGUIN

Board of Patent Appeals and Interferences

Sep 26, 1997

07882928 (B.P.A.I. Sep. 26, 1997)

Application for patent filed May 14, 1992. According to1
the appellant, this application is a continuation-in-part of
Application 07/431,084, filed November 3, 1989; which is a
continuation-in-part of Application 07/108,638, filed October 15,
1987.
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(2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HERB J. J. SEGUIN
__________
Appeal No. 94-1325
Application 07/882,9281
__________
ON BRIEF
__________
Before COHEN, KIMLIN and LYDDANE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 10. Subsequent to the final rejection, an amendment
Appeal No. 94-1325
Application No. 07/882,928
In a grandparent application Serial No. 07/103,638, a2
decision of the Board of Patent Appeals and Interferences (BPAI)
was rendered in Appeal No. 89-3348 dated January 26, 1990 in which
the same art now applied was reviewed. In a parent application
Serial No. 07/431,084, the BPAI rendered a decision in Appeal No.
91-0995 dated October 4, 1991 again reviewing the same art as is
now applied in the present appeal. However, in the present case we
have before us different claimed subject matter and new
declaration evidence.
2
approved for entry (Paper No. 9) cancelled claims 1 through 4 and
8 through
10, and added new claim 11. Accordingly, we have before us claims
5 through 7, and 11. 2
Appellant's invention pertains to a method of repairing
cracks in the metal of a rail of a railway track or wheel of a
rail vehicle. A basic understanding of the invention can be
derived from a reading of exemplary claim 5, a copy of which
appears below.
5. A method of repairing cracks in
the metal of a rail of a railway track or
a wheel of a rail vehicle, the method
comprising:
generating at least one intense beam of
energy capable of generating a vapour
space in the metal;
Appeal No. 94-1325
Application No. 07/882,928
3
directing the intense beam of energy
towards the cracks in the metal;
vaporising [sic] metal within the rail or
wheel in the vicinity of the cracks to
form a vapour space extending at least 5
mm into the rail or wheel;
moving the beam of energy along the rail
or wheel at a speed such that the metal
surrounding the cracks melts when the beam
of energy is directed towards the metal
and solidifies after the intense beam of
energy moves on to form a narrow strip of
melted and solidified metal; and
depositing an alloying material within the
vapour space to form a microstructure upon
solidification of the alloying material
that is compatible with the rail metal.
As evidence of obviousness, the examiner has relied upon
the references listed below:
Gnanamuthu et al. 4,015,100 Mar. 29,
1977
(Gnanamuthu)
Shupe 4,201,602 May 6,
1970
The following rejection is before us for review.
Claims 5 through 7, and 11 stand rejected under 35
U.S.C. § 103 as being unpatentable over Gnanamuthu in view of
Shupe.
Appeal No. 94-1325
Application No. 07/882,928
An earlier request for an oral hearing was waived by3
appellant (Paper No. 16).
4
The full text of the examiner's rejection and response
to the argument presented by appellant appears in the answer
(Paper
No. 12), while the complete statement of appellant's argument can
be found in the brief (Paper No. 11). 3
OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
considered appellant's specification and claims, the applied
references, the declaration of Herb J. J. Sequin dated Nov. 5/92
(Paper No. 6) and the respective viewpoints of appellant and the
examiner. As a consequence of our review, we make the
determination which follows.
We cannot sustain the examiner's rejection of
appellant's claims under 35 U.S.C. § 103.
This panel of the board fully understands the opinion of
the examiner as clearly expressed in the answer. In particular, we
note the examiner's view that "Unless the instant claims require
Appeal No. 94-1325
Application No. 07/882,928
5
some additional, unclaimed and unmentioned step, it is difficult
to imagine how a vapor space could be formed in the process of the
instant claims and not in the process of Gnanamuthu et al".
As developed more fully below, we reach the conclusion
that the language of method claim 5, when understood in light of
the underlying disclosure, does address subject matter not
suggested by the evidence of obviousness.
The method of repairing cracks in the metal of a rail of
a railway track or a wheel of a rail vehicle, as set forth in
Claim 5, requires, inter alia, generating at least one intense
beam of energy capable of generating a vapour space in the metal,
vaporising metal within the rail or wheel in the vicinity of the
cracks to form a vapour space extending at least 5 mm into the
rail or wheel, and depositing an alloying material within the
vapour space.
We share the examiner's viewpoint that the collective
teachings of the applied prior art would have been suggestive of a
method of repairing cracks in the metal of a rail of a railway
track
Appeal No. 94-1325
Application No. 07/882,928
6
that relies upon the laser technique of Gnanamuthu. However, based
in particular upon the statements of declarant Seguin and the
present
specification, we are persuaded that the limitations in claim 5,
as specified above, would not have been suggested by the applied
prior art.
Declarant Seguin states (declaration, paragraph 6)
For the generation of a vapour
space, 2000 kWatts per sq. cm.
are required as a minimum. As
cited in the present application
(page 8, lines 8 - 16), the
required power density is in the
order of several thousand kWatts
per sq. cm.
The specification (page 8, lines 8 through 12) sets
forth that
Specifically, above a specific
laser power density threshold of
several million watts per square
centimeter, the beam intensity
is sufficient to create and
maintain a small diameter
opening or hole, extending a
very large distance below the
surface.
Appeal No. 94-1325
Application No. 07/882,928
7
In light of the above, we understand the recitation in
claim 5 of one intense beam of energy capable of generating a
vapour space in the metal as being required by the underlying
disclosure to be a beam with a power density threshold of several
million watts per square centimeter. This intense beam, as
disclosed and claimed, will vaporize metal within a rail or wheel
to form a vapour space extending at least 5 mm into the rail or
wheel, and permit the depositing of an alloying material within
the vapour space.
Having reviewed the teaching of Gnanamuthu in its
entirety, it is at once apparent to us that this patent, in
particular, would not have been suggestive of an intense beam of
energy with a power density threshold of several million watts per
square centimeter.
Further, lacking this aforementioned specific intense beam, we are
persuaded that the claimed vapour space extending at least 5 mm
into a rail or wheel would not have been suggested to one of
ordinary skill in the art by the Gnanamuthu patent. For these
reasons, we conclude that the evidence relied upon by the examiner
would not have rendered the now claimed method obvious.
Appeal No. 94-1325
Application No. 07/882,928
8
In summary, this panel of the board has reversed the
rejection of claims 5 through 7, and 11 under 35 U.S.C. § 103 as
being unpatentable over Gnanamuthu in view of Shupe.
The decision of the examiner is reversed.
REVERSED
Irwin Charles Cohen )
Administrative Patent Judge )
)
)
)
Edward C. Kimlin ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
William E. Lyddane )
Administrative Patent Judge )

Appeal No. 94-1325
Application No. 07/882,928
9
Anthony R. Lambert
10328 - 81 Avenue, #204
Edmonton, Alberta, Canada T6E 1X2