Ex Parte Song et al

Board of Patent Appeals and Interferences

Mar 24, 2009

11231479 (B.P.A.I. Mar. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SHIHONG GARY SONG,
and RAYMOND C. BENN
____________

Appeal 2009-1629
Application 11/231,479
Technology Center 1700
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Decided:1 March 25, 2009
____________

Before BEVERLY A. FRANKLIN, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, 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).

Appeal No. 2009-1629
Application 11/231,479

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-33. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).
Claims 1, 9, 10, 11, and 26 are representative of the subject matter on
appeal and are set forth below:
1. A method of casting an aluminum alloy, the method comprising the
steps of:
forming the aluminum alloy including aluminum, at least
one rare earth element selected from the group consisting of ytterbium,
gadolinium, yttrium, erbium and cerium, and at least one minor alloy
element selected from the group consisting of copper, nickel, zinc, silver,
magnesium, strontium, manganese, tin, calcium, cobalt and titanium;

controlling solidification of the aluminum alloy in a quenchant.

9. The method as recited in claim 1 further including the steps of
determining an optimal composition of the aluminum alloy and controlling a
solidification rate of the aluminum alloy.

10. The method as recited in claim 1 further including the step of heating
the quenchant to approximately 100 °С.

11. The method as recited in claim 1 wherein the quenchant comprises
water and a water soluble material.

26. The method as recited in claim 1 wherein the step of controlling
solidification of the aluminum alloy forms a primary eutectic microstructure
and a second eutectic microstructure.

Appeal 2009-1629
Application 11/231,479

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Song ('774) US 6,622,774 B2 Sep. 23, 2003
Song ('893) 10/770,893 Feb. 3, 20042
Song ('739) 2004/0156739 A13 Aug. 12, 2004

SUMMARY OF THE DECISION
We affirm.

THE REJECTIONS
I. Claims 1-33 are rejected under 35 U.S.C. 103(a) over Song ’739 in
view of Song '774.

II. Claims 1-33 are provisionally rejected on the ground of non-statutory
obviousness-type double patenting as being unpatentable over claims 17-25
of Song '893 in view of Song ‘774.
ISSUE
1. Have Appellants shown reversible error in the Examiner’s rejection
because the use of the controlled solidification process taught by Song ‘774
in the process taught by Song ‘739 would destroy the intended function of
the products made by Song ‘739, and thus there is no motivation to combine
the references?

2 This is the filing date of the application.
3 This is the publication of application S.N. 10/770,893. On page 3 of the
Answer, the Examiner lists both the patent publication as well the
corresponding application. This is proper, because Song ‘739 is prior art
under § 102(b), while Song ‘893 is the basis of the provisional obviousness
type double patenting rejection.
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2. With regard to claims 26-32, have Appellants shown reversible error
in the Examiner’s rejection by evincing that the combination of Song’ 774 in
view of Song ‘739 does not suggest that the controlled solidification of the
alloy forms a primary and second or secondary eutectic microstructure as
recited in these claims?
3. Have Appellants shown reversible error in the Examiner’s
determination that Appellants’ claimed invention is obvious over claims 17-
25 of copending Application No. 10/770,893 (Song ‘893) in view of Song
‘774 on the ground of nonstatutory obviousness-type double patenting
(provisional rejection)?

FINDINGS OF FACT
Song ‘739 is directed to an aluminum alloy suitable for making parts
such as for gas turbine engines (parts for elevated temperature applications).
The rare earth elements and minor alloy elements, and amounts thereof,
which are included in the alloy of Appellants’ claims are taught by Song
‘739. Appellants do not argue these aspects of their claimed invention and
do not dispute the teachings of Song ‘739 in this regard.
Song ‘739 teaches, in paragraph [0045], that various casting methods
can be used to form a desired part. These methods include sand casting,
investment casting, and die casting.
In particular, in paragraph [0046] of Song ‘739, Song ‘739 teaches
that investment casting can be utilized for engine housing manufacturing,
allowing for more design flexibility. Song ‘739 teaches that investment
casting is beneficial for making engine parts having a complex geometry,
allowing parts to be cast with greater precision and complexity. Song ‘739
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teaches that investment casting can be expensive because of the use of
tooling and the process of shell molds.
Song ‘739 teaches, for example, that die casting is advantageous as it
allows for relatively fast cooling and high production rates [0047].
Appellants do not dispute the Examiner findings that cooling rates of sand
casting and investment casting processes are slower than the cooling rate of
a die casting process. Nor do Appellants dispute the Examiner’s finding that
the cooling rate determines the as-cast microstructure.
Paragraph [0048] of Song ‘739 teaches that for engine applications the
aluminum alloy is cast without post-casting solution and aging treatments,
and that these treatments are heat treatment processes that are optional.
Song ‘739, in paragraph [0049], teaches that conventional cooling
rates for many conventional casting methods range from 10 to 100 ºK/sec
(which converts [1 K = 1° C] to 600 to 6000°C /min).
Song '774 discloses an investment casting process which utilizes rapid
cooling by immersing the shell mold into a quenching oil bath. According
to Song ‘774, the rapid solidification achieves a uniform fine microstructure
in the as-cast component (Abstract), while slow solidification produces a
coarse and heterogeneous casting microstructure (col. 1, l. 18-19).
In the process of Song '774, the mold is lowered at a predetermined
immersion rate to produce a desired final microstructure for the as-cast
component (col. 4, l. 1-3). Song ‘774 does not specify a particular cooling
rate, but teaches that the cooling rate can be specifically tailored to various
component types/shapes by controlling/varying the immersion rate of the
shell mold into the bath (col. 1, l. 58-64). Cooling rate is also a function of
the thickness and permeability of the shell mold.
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PRINCIPLES OF LAW
“Often, it will be necessary for a court to look to interrelated teachings
of multiple patents; the effects of demands known to the design community
or present in the marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue.” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1740-41 (2007). “To facilitate review, this analysis should be made
explicit.” Id. “[T]he analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id.
That which is inherent in the prior art, if not known at the time of the
invention, cannot form a proper basis for rejecting the claimed invention as
obvious under § 103. See In re Shetty, 566 F.2d 81, 86 (CCPA 1977).
A particular parameter must first be recognized as a result-effective
variable, i.e., a variable which achieves a recognized result, before the
determination of the optimum or workable ranges of said variable might be
characterized as routine experimentation. In re Peterson, 315 F.3d 1325,
1330 (Fed. Cir. 2003) (“The normal desire of scientists or artisans to
improve upon what is already generally known provides the motivation to
determine where in a disclosed set of percentage ranges is the optimum
combination of percentages.”).
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An examiner will balance the suggestive power of the conflicting
prior art, taking into account the degree to which one reference might fairly
discredit the other. See In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991).
ANALYSIS
I. The § 103 Rejection of Claims 1-33
A . Claims 1-8, 12-20, 22, 24, 25, and 334
The Examiner has given sufficient reason for combining the
references according to KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727
(2007). The Examiner explains how Song ’739 teaches that investment
casting can be used in forming a desired aluminum alloy part according to
the invention of Song ‘739. Song ‘774 provides such a process [investment
casting] which utilizes rapid cooling by immersing the shell mold into a
quenching oil bath. On pages 6-7 of the Answer, the Examiner states that it
would have been obvious to have utilized the solidification process of Song
‘774 in making the an aluminum alloy part of Song '739 “to better control
the solidification process and to speed up the cooling rate and thereby to
speed up the production rate and to obtain a uniform fine microstructure in
the as-cast component.”
Appellants attempt to show that the proposed modification would
render the Song ‘739 inoperable for its intended purpose, but Appellants’
arguments are not convincing in this regard. Appellants’ assertion that the
resulting microstructure of the aluminum alloy part would be altered, which
“could” have negative effects on the properties of the aluminum alloy, and
that such properties would be unknown, is not supported by credible

4 We group these claims together because Appellants set forth similar
arguments for these claims (Br. 16, 17, 19, 20, and 21).
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evidence. While Appellants do point to one process parameter as described
in paragraph [0048] of Song ‘739 regarding heat treatments in an effort to
show that such heat treatments would have to be eliminated if the process of
Song ‘774 were employed, the Examiner correctly points out that these heat
treatments are indicated as optional in Song ‘739.
Hence, absent some objective evidence in support of the proposition
that the proposed modification would destroy the intended function of Song
‘739, we are not convinced by Appellants’ arguments.
On page 2 of the Reply Brief, although belated, Appellants also argue
that if the casting process of Song ‘774 was employed, the parts “that are
required to be made by die casting and sand casting could not be made,
going against the specific disclosure of Song ‘739.” This is unconvincing in
view of the fact that Song ‘739 specifically teaches that investment casting
can be employed.
Also on page 2 of the Reply Brief, although belated, Appellants argue
that the solidification rate of an aluminum alloy affects the resulting
microstructure and properties of the aluminum alloy. Appellants argue that
if the solidification rate of the aluminum alloy of Song ‘739 was controlled
during casting, the solidification rate would change the resulting
microstructure and properties of the alloy of Song ‘739. This is
unconvincing because Song ‘739 recognizes that the use of different casting
methods affects the resultant properties of the alloy. Furthermore, Song
‘739, in paragraph [0049], teaches a cooling rate of from 10 to 100 ºK/sec
(which converts to 600 to 6000 °C/min). Song ‘739 teaches that this rate is
typical of many conventional casting methods. Song ‘774 does not specify a
particular cooling rate, but, as pointed out by the Examiner on page 6 of the
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Answer, Song ‘774 teaches that the cooling rate can be tailored to various
types/shapes, and is controlled by varying the type of quenchant or by
varying the temperature of the quenchant. Cooling rate is also a function of
the thickness and permeability of the shell mold. Appellants have not shown
that the cooling rate in Song ‘739 conflicts with the teachings in Song ‘774
such that one skilled in the art would have been dissuaded from employing
the investment casting method of Song ‘774 in making the aluminum alloy
part of Song ‘739.
Therefore, we conclude that Appellants have not shown reversible
error in the Examiner’s rejection of claims 1-8, 12-20, 22, 24, 25, and 33 as
obvious over Song ‘739 in view of Song ‘774.

B. Claim 9
Claim 9 is dependent upon claim 1 and recites, inter alia, the step of
determining an optimal composition of the aluminum alloy. Appellants
argue that neither of the references teaches such a step. We are in agreement
with the Examiner’s position as set forth on page 8 of the Answer that
because the phrase “optimal composition” is arbitrarily defined, the
composition in Song ‘739 is considered an optimal composition. Moreover,
optimization is an ordinary aspect of any preparative process. Accordingly,
Appellants have not shown reversible error in the Examiner’s determination
that “optimization,” as claimed broadly, would have been obvious.

C. Claims 10 and 21
These claims recite that the quenchant is heated to approximately
100ºC. We are in agreement with the Examiner’s position as set forth on
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page 8 of the Answer that Song ‘774 teaches that the cooling rate can be
controlled by varying the temperature of the quenchant, and therefore it
would have been obvious to have selected a particular quenchant
temperature through routine experimentation. In the instance case, the prior
art recognizes the result effective capability of a particular invention
parameter. Therefore, an expectation exists that optimizing a parameter
would successfully yield a desired result. Peterson, 315 F.3d at 1330.

D. Claims 11 and 23
Claims 11 and 23 are directed to a quenchant comprising water and a
water soluble material. As discussed by the Examiner on page 9 of the
Answer, the Examiner stated in the Final Office Action date January 18,
2007 that it is conventional to add an additive such as glycols to cooling
water to facilitate the cooling function thereof, and therefore it would have
been obvious to use a water-glycol mixture in the process of Song ‘774 to
obtain the optimal evaporative property. In this Final Office Action, the
Examiner referred to U.S. Patent Number 6,135,199 in support thereof.
(Final Office Action, page 4). The Examiner states that Appellants did not
dispute this statement until the filing of the Appeal Brief.5
In view of this prosecution history, the Examiner in effect has taken
official notice, with documentary evidence, of the fact that it is conventional
to add an additive to cooling water to facilitate the cooling function thereof.

5 On page 4 of the Nonfinal Office Action mailed August 11, 2006, the
Examiner also referred to U.S. Patent Number 6,135,199 in support of his
statement that “it is conventional to add an additive to cooling water to
facilitate the cooling function thereof." Appellants did not dispute this in
their response thereto, dated December 11, 2006.

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Appellants had an opportunity to challenge this factual assertion in their
Response mailed December 11, 2006 or in a response to the Final Office
Action, before the filing of the Appeal Brief, but did not. As a result,
because Appellants did not traverse the Examiner’s assertion of official
notice, the Examiner states, on page 9 of the Answer that Appellants
argument “is not deemed to be meritorious.” In other words, Appellants
missed their opportunity to challenge the Examiner’s position, and as a
result, waived their opportunity to do so in the Appeal Brief.
On the present record, we accept the Examiner’s “it is conventional”
finding, which is based on the teachings of a prior U.S. patent (and, we
expect, on the everyday experience of car drivers with radiator fluid), as
admitted prior art.
We are aware of Appellants’ discussion regarding the use of oil as a
quenchant by Song ‘774. We are also aware of Appellants’ discussion that
Song ‘774 teaches that water is too evaporative. (App. Br. 18-19 and Reply
Br. 3-4). However, we are unconvinced that the negative teachings pointed
out by Appellants in Song ‘774 would have led the skilled person to reject
such a technique in light of the Examiner’s position on this issue. The
Examiner’s discussion in the paragraph bridging pages 8-9 of the Answer is
persuasive in this regard. An examiner will balance the suggestive power of
the conflicting prior art, taking into account the degree to which one
reference might fairly discredit the other. Young, 927 F.2d at 591.
Therefore, we affirm the Examiner’s rejection of claims 11 and 23.

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E. Claims 26-326
On page 19 of the Brief, Appellants argue that neither reference
discloses the feature of formation of a primary eutectic microstructure and a
secondary eutectic microstructure.
We find the Specification indicates that this claimed feature is highly
dependent on the selection of the compositional alloying elements combined
with controlled solidification. See, e.g., paragraphs [30] through [41].
Also, on page 9 of the Answer, the Examiner asserts that the
aluminum alloy of Song ‘739 is “substantially the same” as the claimed
composition and that “it would have been obvious to control the cooling rate
in the process of Song ‘739 in view of Song ‘774 to obtain designated
microstructure.”
It appears to us that the Examiner is using an inherency argument in
an obviousness context, which is a critical flaw in the Examiner’s position.
That which is inherent in the prior art, if not known at the time of the
invention, cannot form a proper basis for rejecting the claimed invention as
obvious under § 103. Shetty, 566 F.2d at 86. Furthermore, the Examiner has
not adequately explained how the claimed microstructure is inherent in the
applied art.
In view of the above, we reverse the Examiner’s rejection of claims
26-32.

6 Appellants argue claims 26-28 and claims 29-32 (Br. 19). We address
these claims together because these claims are directed to a primary eutectic
microstructure and a second or secondary eutectic microstructure.
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II. The Provisional Obviousness-type Double Patenting Rejection of
Claims 1-33

As stated by the Examiner on pages 9-10 of the Answer, Appellants
did not raise any substantive objections to the provisional rejection under
non-statutory obviousness-type double patenting of claims 1-33 in their
Brief. On pages 4-5 of the Reply Brief, Appellants explain that they
deferred responding to this rejection as it is a provisional rejection.
Appellants go on to state that this rejection is improper for the “reasons set
forth above”.
Because we have affirmed, in part, the rejection over Song ‘739, and
in view of Appellants’ failure to raise any substantive objections regarding
the patentability of any claims vis-à-vis this rejection, we affirm the
provisional obviousness-type double patenting rejection of claims 1-33 in
view of Song ‘893.

CONCLUSIONS OF LAW
1. Appellants have not shown reversible error in the Examiner’s
rejection because Appellants failed to show that the use of the controlled
solidification process taught by Song ‘774 in the process taught by
Song ‘739 would destroy the intended function of the products made by
Song ‘739. Thus, proper motivation exists in the Examiner’s rejection.

2. With regard to claims 26-32, Appellants have shown reversible error
in the Examiner’s rejection by evincing that the combination of Song '774 in
view of Song ‘739 does not suggest that the controlled solidification of the
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alloy forms a primary and second or secondary eutectic microstructure as
recited in these claims.

3. Appellants have not shown reversible error in the Examiner’s
determination that Appellants’ claimed invention is obvious over claims
17-25 of Song ‘893 in view of Song ‘774 on the ground of nonstatutory
obviousness-type double patenting (provisional rejection).

DECISION
I. The rejection of claims 1-25 and 33 under 35 U.S.C. 103(a)
over Song ‘739 in view of Song '774 is affirmed. However, the rejection of
claims 26-32 under 35 U.S.C. 103(a) over Song ‘739 in view of Song '774 is
reversed.
II. The provisional rejection of claims 1-33 on the ground of non-
statutory obviousness-type double patenting as being unpatentable over
claims 17-25 of Song '893 in view of Song ‘774 is affirmed.

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)(iv)(2008).

AFFIRMED

tc

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