Ex Parte Serio

Board of Patent Appeals and Interferences

Mar 4, 2009

10035018 (B.P.A.I. Mar. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte EMILE DI SERIO
____________________

Appeal 2008-1790
Application 10/035,018
Technology Center 3700
____________________

Decided:1 March 4, 2009
____________________

Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY
and MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing a response, as recited in 37
C.F.R. § 41.50(b) (2007) begins to run from the Decided Date shown on this
page of the decision. The time period does not run from the Mail Date
(paper delivery) or Notification Date (electronic delivery).
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2
STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 (2002) from the final 2
rejection of claims 1 and 3 under 35 U.S.C. § 103(a) (2002) as being 3
unpatentable over Mikito2 (JP 07-195136, publ. Aug. 1, 1995), admitted 4
prior art,3 and Hiroshi4 (JP 05-146841, publ. Jun. 15, 1993); and from the 5
final rejection of claims 2 and 4 under 35 U.S.C. § 102(b) (2002) as being 6
anticipated by Mikito. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 7
We REVERSE the rejections of claims 1-4. Pursuant to 37 C.F.R. 8
§ 41.50(b) (2008), we enter NEW GROUNDS against claims 2 and 4 under 9
35 U.S.C. § 112, ¶ 2 (2002) as being indefinite for failing to particularly 10

2 All references in this opinion to “Mikito” will be to a translation of
JP-07-195136 prepared in March 2008 and made of record in this Appeal.
The named inventor on JP 07-195136 is translated at various points in the
record as “Mikito” and “Mikihito.” Both the Appellant and the Examiner
have used the name “Mikito.” For purposes of consistency, the reference
will be referred to as “Mikito” in this opinion.

3 The Examiner refers in the rejection to admitted prior art at page 4,
lines 10 to 19, of the Appellant’s Specification. This portion of the
Specification is reproduced below:

This part is intended to be obtained according to the
COBAPRESS method described in European patent No. 119
365 that implements successive foundry- casting then forging
operations for light alloy parts, such as aluminum alloy parts.
An intermediary operation is included between the casting and
forging operations in which the part in the foundry preformed
condition is introduced into a tunnel furnace that heats and
ensures a uniform temperature of said part before it is
transferred to the forging station.

4 All references in this opinion to “Hiroshi” will be to a translation of
JP 05-146841 prepared in February 2008 and made of record in this Appeal.
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point out and distinctly claim the subject matter which the Appellant regards 1
as the invention. 2
Independent claim 1 recites a method for manufacturing parts that are 3
molded then forged. The parts comprise one or more recesses. The method 4
includes the steps or “phases” of creating a foundry preform; transferring the 5
foundry preform to a tunnel furnace that ensures a uniform temperature of 6
the preform; introducing at least one multidirectional rod into at least one of 7
a recess and a cavity of the foundry preform; and performing a heading5 8
operation on the preform when the at least one rod is temporarily positioned 9
inside the at least one recess or cavity. The method further includes 10
“substantially maintaining by the at least one rod at least one shape of the 11
one or more shapes of the at least one of a recess and a cavity during the 12
heading operation.” 13
Claim 2 recites: 14
15
2. Installation to implement the method 16
of claim 1 wherein the control means comprises 17
one or more multidirectional rod translation 18
mechanisms positioned around the heading die 19
receiving the foundry preform, said at least one rod 20
being positioned temporarily in the foundry 21
preform through the corresponding at least one of a 22
recess and a cavity in order to be subjected to the 23
forging operation. 24
25

5 The Appellant’s Specification defines a heading operation as “a cold
working process wherein the material is squeezed into a die and finished
parts assume the shape of the die.” (Spec. 3).
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ISSUES 1
The Appellant does not argue the rejection of claim 3 separately from 2
the rejection of claim 1. (App. Br. 8; Reply Br. 2). Mikito discloses a 3
method including a forging process for molding a light metal product having 4
lateral holes or cavities. (Mikito 10, ¶ 0015 and 17, ¶ 0028). In rejecting 5
claim 1, the Examiner finds that Mikito discloses inset molds 63, 64 serve to 6
substantially maintain the shape of the cavities 51, 52 during the forging 7
process. The Examiner further relies on Hiroshi for a suggestion to provide 8
a preform forged product having cavities with insert rod elements during a 9
heading/forging step in order to substantially maintain the cavity shape. 10
(Ans. 5). The Appellant’s contentions regarding the rejection of claims 1 11
and 3 turn on one issue: 12
Has the Appellant shown that the Examiner failed to 13
articulate reasoning with some rational underpinning to support 14
the conclusion that Mikito and Hiroshi would have suggested 15
introducing a rod into a recess or a cavity of the foundry 16
preform and substantially maintaining by the rod the shape of 17
the recess or cavity during a heading operation? 18
(See App. Br. 7; Reply Br. 5-6). 19
The Appellant contends that claims 2 and 4 depend from claim 1. The 20
Appellant further contends that claims 2 and 4 are not anticipated by Mikito 21
under § 102(b) for the same reasons which the Appellant directs against the 22
rejection of claims 1 and 3 under § 103(a). (App. Br. 8). In addition the 23
Appellant contends that Mikito does not disclose one or more 24
multidirectional rod translation mechanisms positioned around the heading 25
die receiving the foundry preform as recited in claim 2 or a cylinder-type 26
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control means as recited in claim 4. (App. Br. 8-9). Before the issue of 1
whether the Examiner erred in rejecting claims 2 and 4 under § 102(b) may 2
be reached, however, the threshold issue of definiteness must be addressed: 3
Are claims 2 and 4 unreasonably ambiguous? 4
5
FINDINGS OF FACT 6
The record supports the following findings of fact (“FF”) by a 7
preponderance of the evidence. 8
1. Mikito discloses casting a preparatory molding having a shape 9
similar to that of the target product. The preparatory molding has one or 10
more lateral holes larger than the lateral holes to be formed in the target 11
product. (Mikito 14-15, ¶ 0023 and 16, ¶ 0027). 12
2. Mikito discloses sufficiently heating the preparatory molding to 13
a temperature in the range where the liquid phase and the solid phase of the 14
metal from which the preparatory molding is made coexist. (Mikito 15, 15
¶ 0025 and 17, ¶ 0028). 16
3. Mikito discloses setting the preparatory molding between the 17
dies of a secondary mold. (Mikito 14-15, ¶ 0024; Figs. 6-7; 16, ¶ 0027; and 18
Fig. 8). 19
4. Mikito discloses inserting inset molds in the one or more lateral 20
holes. (Mikito 15, ¶¶ 0024-25 and 16-17, ¶¶ 0027-28). Fig. 6 of Mikito 21
shows an inset mold having the shape of a rod whereas Fig. 8 shows inset 22
molds having the shape of enlarged heads formed at the ends of rods. 23
Mikito discloses setting an inset mold in a lateral hole of a preparatory 24
molding by means of a hydraulic cylinder. (Mikito 15, ¶ 0024). 25
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5. Mikito discloses driving a pressing mold into the secondary 1
mold to form the target product. (Mikito 15, ¶¶ 0024-25 and 17, ¶ 0028). 2
As the pressing mold is driven into the secondary mold, the metal fills 3
uniformly around the inset mold. (Mikito 11, ¶ 0016). 4
6. Mikito discloses that slowly pressing a preparatory molding 5
heated to a semi-solidified state to form the target product improves the 6
crystalline structure of the target product while creating no forces which act 7
to deform the inset molds. (Mikito 11, ¶ 0016; 12, ¶ 0019; and 17, ¶ 0029). 8
7. Hiroshi discloses a method in which metal is cast in a shape 9
close to that of a target product and then forged. (Hiroshi 2, ¶ 0002). 10
8. Hiroshi discloses casting the metal around the intermediate 11
parts. (Hiroshi 7, ¶ 0013). The intermediate parts are formed from alloy 12
tool steel coated with a separating agent of black lead. (Hiroshi 6, ¶ 0012). 13
9. Hiroshi discloses forging the metal casting to form the target 14
product. (Hiroshi 7, ¶ 0015). 15
10. Hiroshi discloses that the intermediate part may be re-used due 16
to excellent heat resistance and durability. (Id.) 17
18
PRINCIPLES OF LAW 19
A claim under examination is given its broadest reasonable 20
interpretation consistent with the underlying specification. In re American 21
Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the 22
absence of an express definition of a claim term in the specification, the 23
claim term is given its broadest reasonable meaning in its ordinary usage as 24
the term would be understood by one of ordinary skill in the art. In re ICON 25
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Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 1
127 F.3d 1048, 1054 (Fed. Cir. 1997). 2
The language of a claim satisfies § 112, ¶ 2 only if “one skilled in the 3
art would understand the bounds of the claim when read in light of the 4
specification.” Exxon Research & Eng’g Co. v. United States, 265 F.3d 5
1371, 1375 (Fed. Cir. 2001). A claim is indefinite if the language of the 6
claim is susceptible of no reasonable interpretation. Id. A claim under 7
examination susceptible of more than one reasonable interpretation may be 8
indefinite if the scope of the claim differs significantly depending on which 9
of the reasonable interpretations one adopts. Ex Parte Miyazaki, 89 10
USPQ2d 1208, 1211-12 (BPAI 2008). 11
“To anticipate a claim, a prior art reference must disclose every 12
limitation of the claimed invention, either explicitly or inherently.” In re 13
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). A determination 14
concerning anticipation cannot be based on unsupported speculative 15
assumptions concerning the meaning of the claim at issue, however. 16
Reversal of a rejection under § 102(b) may be appropriate if the claim is 17
indefinite. In re Steele, 305 F.2d 859, 863 (CCPA 1962). 18
The Appellant’s burden in this appeal with respect to the rejections of 19
claims 1 and 3 is to show that the Examiner has failed to identify sufficient 20
evidence to support a conclusion of prima facie obviousness. In re Kahn, 21
441 F.3d 977, 985-86 (Fed. Cir. 2006)(citing In re Rouffet, 149 F.3d 1350, 22
1355 (Fed. Cir. 1998)). “[T]he simple substitution of one known element for 23
another” or “the mere application of a known technique to a piece of prior 24
art ready for the improvement” generally will be obvious unless the 25
substitution or the application of the known technique would have been 26
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beyond the level of ordinary skill in the art; or the results of the substitution 1
or the application of the known technique would not have been predictable 2
by one of ordinary skill in the art. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 3
398, ___, 127 S. Ct. 1727, 1740 (2007). On the other hand, “rejections on 4
obviousness grounds cannot be sustained by mere conclusory statements; 5
instead, there must be some articulated reasoning with some rational 6
underpinning to support the legal conclusion of obviousness.” Kahn, 441 7
F.3d at 988. 8
9
ANALYSIS 10
The Examiner considers the question of whether to reform the shapes 11
of the cavities in a preparatory molding as disclosed by Mikito or to 12
maintain the shapes of the cavities as disclosed by Hiroshi is “an obvious 13
exercise of mechanical design depending on the complexity and location of 14
the cavity profile desired in the product.” (Ans. 4). The Examiner further 15
reasons that: 16
17
Hiroshi’s use of [an] insert 50 which allows 18
the shape of cavities 22 and 24 to substantially 19
remain unchanged during a forging step is an 20
improvement over the prior art in that it allows for 21
[an] easy, inexpensive forging process of a 22
metallic part having a complex shape without a 23
reduction in strength . . . . 24
25
(Ans. 8). 26
Mikito discloses casting a preparatory molding having one or more 27
lateral holes larger than the lateral holes to be formed in the target product. 28
(FF 1). During Mikito’s forging process, the metal fills uniformly around 29
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the inset molds. (FF 5). Mikito’s inset molds do not substantially maintain 1
the shapes of the lateral holes during the forging operation. Instead, Mikito 2
discloses a technique in which pressure slowly applied to a preparatory 3
molding pre-heated to a semi-solidified state promotes not only Mikito’s 4
overall goals such as improving the grain structure of the target product but 5
also preserve the inset molds from deformation by creating no forces which 6
act to deform the inset molds. (FF 6). By way of contrast, Hiroshi discloses 7
making intermediate parts used to form the recesses in the target part from a 8
durable metal such as alloy tool steel so that the intermediate parts may be 9
re-used after the target product is forged. (FF 10). 10
This distinction implies that the Appellant is correct (see Reply Br. 3) 11
in asserting that Mikito and Hiroshi disclose entirely different methods. The 12
choice of whether to reform the shapes of the cavities in a preparatory 13
molding as disclosed by Mikito or to maintain the shapes of the cavities as 14
disclosed by Hiroshi would not have been an obvious exercise of mechanical 15
design depending on the complexity and location of the cavity profile 16
desired in the product. Any modification of Mikito’s method in view of 17
Hiroshi so as to substantially maintain the shape of a lateral hole in the 18
preparatory molding during Mikito’s forging process would have been 19
contrary to the principles on which Mikito’s process operates. Likewise, the 20
teachings of Mikito and Hiroshi do not suggest how the insertion of inset 21
molds which substantially maintain the shapes of the lateral holes of a 22
preparatory molding would be an improvement for which Mikito’s method 23
is ready. The Examiner provides no reasoning with some rational 24
underpinning which would close this gap so as to support a conclusion that 25
the subject matter of claims 1 and 3 would have been obvious. The 26
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Examiner does not point to any teaching in the admitted prior art that would 1
remedy this deficiency in the combination of Mikito and Hiroshi. 2
The scope of claims 2 and 4 is indefinite. There are two reasons for 3
this. First, claims 2 and 4 recite “installations.” The word “installation” 4
does not appear in the Appellant’s Specification. The ordinary usage of 5
“installation” is sufficiently broad to include “something that is installed for 6
use.” WEBSTER’S THIRD NEW INT’L DICTIONARY at 1171 (G&C Merriam 7
Co. 1971)(“installation,” def. 2). Therefore, claims 2 and 4 recite structures 8
or apparatuses. Claims 2 and 4 each also recite the method step of one rod 9
being positioned temporarily in a foundry perform. Therefore, it is unclear 10
whether infringement of claims 2 and 4 would occur when one installed an 11
installation allowing a user to implement the method of claim 1 or when the 12
user actually used the installation to position a rod temporarily in a foundry 13
preform. As such, claims 2 and 4 do not apprise a person of ordinary skill in 14
the art of their scope so as to meet the requirements of § 112, ¶ 2. See IPXL 15
Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). 16
Second, the word “installation” itself does not expressly or inherently 17
limit the scope of the claimed structure. Claims 2 and 4 themselves define 18
the “installation” almost entirely in terms of function, namely, “to 19
implement the method of claim 1 . . . .” The manner in which claims 2 and 4 20
recite this function is ambiguous. 21
The ordinary usage of the verb “implement” is sufficiently broad to 22
include either “to carry out, . . . esp. to give practical effect to and ensure of 23
actual fulfillment by concrete measures” or “to provide instruments . . . for.” 24
WEBSTER’S THIRD NEW INT’L DICTIONARY at 1135 (“implement,” defs. 1a 25
and 1b). Therefore, it is unclear from the language of claims 2 and 4 26
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whether the recited “installation” need actually perform the entire method of 1
claim 1 or instead might merely be an instrument or tool installed in some 2
fashion which by virtue of usefulness in performing one or more steps of the 3
method might give practical effect to the method. For example, it is unclear 4
whether a forging apparatus installed in a factory would constitute itself an 5
“installation to implement the method of claim 1” or whether an 6
“[i]nstallation to implement the method of claim 1” must include a foundry, 7
a forging apparatus and a tunnel furnace for performing all of the steps 8
recited in claim 1. The Appellant has identified no description in the 9
Specification which might clarify what type of apparatus or even how much 10
apparatus might be required “to implement the method of claim 1.” The 11
language of claims 2 and 4 does not suffice to permit one skilled in the art 12
would to understand the bounds of the claims when read in light of the 13
Specification. 14
15
CONCLUSIONS 16
The Appellant has shown that the Examiner failed to articulate 17
reasoning with some rational underpinning to support the conclusion that 18
Mikito and Hiroshi would not have suggested introducing a rod into a recess 19
or a cavity of the foundry preform and substantially maintaining by the rod 20
the shape of the recess or cavity during a heading operation. Therefore, the 21
Appellant has shown that the Examiner erred in rejecting claims 1 and 3 22
under § 103(a) as being unpatentable over Mikito and Hiroshi. 23
Claims 2 and 4 are ambiguous. Therefore, we enter new grounds of 24
rejection against claims 2 and 4 under § 112, ¶ 2 as being indefinite for 25
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failing to particular point out and distinctly claim the subject matter which 1
the Appellant regards as the invention. 2
Since claims 2 and 4 are unreasonably ambiguous, the Examiner’s 3
rejection of claims 2 and 4 under § 102(b) as being anticipated by Mikito is 4
based on unsupported speculative assumptions concerning the meaning of 5
the claims. We reverse the rejection of claims 2 and 4 under § 102(b) as 6
being anticipated by Mikito. 7
8
DECISION 9
We REVERSE the Examiner’s decision to reject claims 1-4. 10
We enter a NEW GROUND OF REJECTION against claims 2 and 4. 11
Under 37 C.F.R. § 41.50(b) a new ground of rejection has been 12
entered. 37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection 13
pursuant to this paragraph shall not be considered final for judicial review.” 14
Regarding the new ground of rejection, Appellant must, WITHIN 15
TWO MONTHS FROM THE DATE OF THE DECISION, exercise one of the 16
following options with respect to the new ground of rejection, in order to 17
avoid termination of the appeal as to the rejected claims: 18
(1) Reopen prosecution. Submit an appropriate 19
amendment of the claims so rejected or new 20
evidence relating to the claims so rejected, or both, 21
and have the matter reconsidered by the examiner, 22
in which event the proceeding will be remanded to 23
the examiner. . . [; or] 24
25
(2) Request rehearing. Request that the 26
proceeding be reheard under § 41.52 by the Board 27
upon the same record. . . . 28
29
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No time period for taking any subsequent action in connection with 1
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 2
3
REVERSED; 37 C.F.R. § 41.50(b) 4
5
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7
8
9
10
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hh 13
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HESLIN ROTHENBERG FARLEY & MESITI, P.C. 15
5 COLUMBIA CIRCLE 16
ALBANY, NY 12203 17