Ex Parte Watson et al

Patent Trial and Appeal Board

Feb 27, 2013

11818701 (P.T.A.B. Feb. 27, 2013)

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.
11/818,701 06/15/2007 Thomas J. Watson PA0002526A-U73.12-108KL 2052
12208 7590 02/28/2013
Kinney & Lange, P.A.
c/o CPA Global
P.O. Box 52050
Minneapolis, MN 55402
EXAMINER
STONER, KILEY SHAWN
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
02/28/2013 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 PATENT TRIAL AND APPEAL BOARD
_______________

Ex parte THOMAS J. WATSON and RAJIV S. MISHRA
______________

Appeal 2011-005965
Application 11/818,701
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
HUBERT C. LORIN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
DECISION ON APPEAL
Applicants appeal to the Board from the final rejection of claims 1-7,
12, 13 and 15-20. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2010).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a welded structure, and is
representative of the claims on appeal:
1. A welded structure comprising:
a first metal part derived from a devitrified Al-RE-TM alloy having
nanometer-sized grain structures and nanometer sized intermetallic phases;
a second metal part derived from the same devitrified Al-RE-TM
Appeal 2011-005965
Application 11/818,701
2
alloy having nanometer-sized grain structures and nanometer sized
intermetallic phases; and
a friction stir welded joint between the first metal part and the second
metal part without leaving coarse microstructures that reduce strength and
ductility.
App. Br. 8 (Claim App’x).
Appellants request review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1-7 and 15-20 over
Deinken,1 Watson (US 6,974,510 B2), Appellants’ acknowledged prior art
(APA) (Spec. ¶ 0005), and claims 12 and 13 over Deinken and Watson, as
applied to claim 15, further in view of Mahoney (US 6,866,180 B2). App.
Br. 3; Ans. 4, 6.
Appellants principally argue the first ground of rejection. Thus, we
decide this appeal based on claim 1 with respect to the first ground and on
claim 12 to the extent the second ground is argued. 37 C.F.R.
§ 41.37(c)(1)(vii) (2010).
OPINION
We cannot agree with Appellants that the Examiner erred in
concluding that Deinken, Watson and APA would have led one of ordinary
skill in the art to weld metal parts derived from Watson’s devitrified
Al-RE-TM alloys, which Appellants acknowledge are known in the art to
have nanometer-sized grain structures and nanometer sized intermetallic
phases, by joining the parts with friction stir welding (FSW), which was
known to be used to weld aluminum alloy parts as disclosed by Deinken,
thus arriving at a welded structure, having high strength and high ductility as

1 Jay Deinken, Friction Stir Welding, Rockwell Science Center (July 20,
1999).
Appeal 2011-005965
Application 11/818,701
3
taught by Watson, that is encompassed by product-by-process claim 1.
Deinken pp. 7, 8, 11-12, 26-27, 31. Watson col.1 ll.6-12 and 57-60. Ans.
4-5, 8-9, 11-13; App. Br. 3-6; Reply Brs.
We find Deinken would have disclosed to one of ordinary skill in the
art that FSW “[c]an weld all Al alloys – including some, such as Al-Li,
which cannot be fusion welded.” Deinken 31. We find that Deinken would
have disclosed that FSW produces plastic flow in the workpiece, thus
producing a weld below the melting point in the solid phase which has
excellent metallurgical properties in the joint area, including “[f]ine
microstructure,” “[m]echanical properties as good as, or better than, fusion
welds,” and “[t]ensile strength approach[ing] the strength of the base
material.” Deinken 11, 12, 27. We find Watson would have disclosed to
one of ordinary skill in the art devitrified Al-RE-TM alloys that have high
tensile strength and high ductility, and are used for structural applications in
the aerospace industry. Watson col.1 ll.6-12 and 57-60.
We find Appellants acknowledge it was known in the art that
Al-RE-TM alloys derive their strength properties from
nanometer-sized grain structures and nanometer sized
intermetallic phases. Accordingly, such alloys are not easily
fusion welded due to the fact that the refined microstructures
that give these alloys their strengths are destroyed within the
melt pool, thereby leaving coarse microstructures that are
significantly lower in strength as well as ductility. As such,
there is a need for welding techniques that substantially
preserve the strengths and ductilites of metal parts derived from
Al-RE-Tm alloys.
Spec. ¶ 0005.
The Examiner submits that one of ordinary skill in the art would have
reasonably predicted successfully obtaining a welded structure having high
Appeal 2011-005965
Application 11/818,701
4
strength and ductility from Watson’s devitrified Al-RE-TM alloy parts using
Deinken’s FSW because Deinken would have taught that FSW can weld all
Al alloys and one of ordinary skill in the art would have had good reason to
pursue this welding option. Ans. 4-5, 8-9. The Examiner further submits
that the welded structure formed by one of ordinary skill in the art following
the teachings of Deinken and Watson would not have been expected by one
of ordinary skill in the art to form coarse microstructures that reduce
strength and ductility because FSW is a grain refining process. Ans. 4, 9,
12; Supp. Ans. 3-4.
Appellants submit that Deinken’s statement that FSW can be used
with “all Al alloys” does not specify any particular Al alloys, and “does not
disclose alloys of nanometer sized grain structures and intermetallic phases,”
and thus there is no expectation that the grain size would remain the same.
App. Br. 4. Appellants further submit that Deinken does not teach the
effects of FSW on metallurgical properties. App. Br. 4. Appellants contend
that the APA teaches that fusion welding of Watson’s devitrified Al-RE-TM
alloys result in coarse microstructures with loss of strength and ductility,
thus establishing that some Al alloys can be fusion welded and other alloys
not. App. Br. 4-5. Appellants thus submit that the unsuccessful fusion
welding of Watson’s devitrified Al-RE-TM alloys, which alloys did not exist
when Deinken was published, suggest that some Al alloys can be welded
with FSW and other Al alloys cannot, and there is no evidence that coarse
microstructure will not form. App. Br. 5. Appellants further submit that
Deinken’s disclosure that all Al alloys can be welded by FSW applied only
to the conventional “legacy” Al alloys disclosed in Deinken. Reply Br. 1;
see Supp. Reply Br. 1.
Appeal 2011-005965
Application 11/818,701
5
On this record, we agree with the Examiner that, contrary to
Appellants’ contentions, one of ordinary skill in the art would have had a
reasonable expectation that Deinken’s FSW can be used with Watson’s
devitrified Al-RE-TM alloy parts. Indeed, Appellants acknowledge that it
was known in the art that fusion welding is ineffective in preserving the
metallurgical and mechanical properties of Watson’s devitrified Al-RE-TM
alloys. Thus, one of ordinary skill in the art would have reasonably tried
Deinken’s FSW in view of the disclosure therein that FSW can be used with
any Al alloys, including alloys that cannot be fusion welded, with the
expectation of metallurgically retaining fine grain structure and mechanical
properties better than fusion welding, including tensile strength. Thus, one
of ordinary skill in the art routinely following the combined teachings of
Deinken, Watson and APA would have reasonably arrived at welded
structures encompassed by claim 1. See, e.g., KSR Int'l Co. v. Teleflex Inc.,
550 U.S. 398, 421 (2007) (“When there is a design need or market pressure
to solve a problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill in the art has good reason to pursue the
known options within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innovation but of ordinary
skill and common sense.”); In re Kahn, 441 F.3d 977, 985-88 (Fed. Cir.
2006); In re Sovish, 769 F.2d at 743 (skill is presumed on the part of one of
ordinary skill in the art); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The
test for obviousness is . . . . what the combined teachings of the references
would have suggested to those of ordinary skill in the art.”); see also, e.g., In
re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988) (“For obviousness
under § 103, all that is required is a reasonable expectation of success.”
Appeal 2011-005965
Application 11/818,701
6
(citations omitted)).
We are not persuaded otherwise by Appellants’ contentions that the
combination of Deinken, Watson and APA is silent with respect to whether
welding Watson’s devitrified Al-RE-TM alloys with Deinken’s FSW would
result in a welded joint that has a coarse microstructure that reduces strength
and ductility. Indeed, to the contrary, Deinken’s disclosure would have
reasonably suggested to one of ordinary skill in the art that Al alloys welded
with FSW retain fine grain structure and mechanical properties, even if the
extent of coarse grain microstructure formation is not disclosed. See, e.g., In
re Skoner, 517 F.2d 947, 950 (CCPA 1975) (“Appellants have chosen to
describe their invention in terms of certain physical characteristics . . . .
Merely choosing to describe their invention in this manner does not render
patentable their method which is clearly obvious in view of [the reference].”
(citation omitted)).
We further find that, as the Examiner points out, Appellants have not
supported the contention that the nanometer sized grains of Watson’s alloys
are unstable above 500 ºF and thus at temperatures generated during FSW.
Reply Br. 2; Supp. Ans. 2-5. Thus, Appellants’ position is entitled to little,
if any, weight. See, e.g., In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Lindner,
457 F.2d 506, 508 (CCPA 1972).
Turning now to the second ground of rejection, product-by-process
claim 12 specifies the rotational rate of a tool of an FSW system. We agree
with the Examiner’s findings and the Examiner’s conclusion based thereon
that one of ordinary skill in the art would have used rotational rates for a tool
of an FSW system taught by Mahoney in using Deinken’s FSW system to
Appeal 2011-005965
Application 11/818,701
7
form a welded structure from Watson’s devitrified Al-RE-TM alloys, thus
arriving at a welded structure encompassed by claim 12. Ans. 7, 12-13
(citing Mahoney col.3 l.62 to col.4 l.10). Appellants submit that Mahoney’s
process is inapplicable because the surface microstructure of a metal part is
modified so that the same can be bent, and thus does not weld two pieces
together with FSW. App. Br. 6. We cannot agree with Appellants position
because, as the Examiner contends, Mahoney would have disclosed to one of
ordinary skill in the art the conditions for rotating the tool of an FSW system
to provide an acceptable fine-grained microstructure. Mahoney col.3
ll.62-63. Ans. 7, 12-13.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Deinken, Watson and APA alone and with Mahoney,
with Appellants’ countervailing evidence of and argument for
nonobviousness and conclude, by a preponderance of the evidence and
weight of argument, that the claimed invention encompassed by appealed
claims 1-7, 12, 13 and 15-20 would have been obvious as a matter of law
under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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).
AFFIRMED

sld