Ex Parte Witney et al

Patent Trial and Appeal Board

Jan 29, 2018

13101686 (P.T.A.B. Jan. 29, 2018)

United States Patent and Trademark Office
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.
13/101,686 05/05/2011 Andrew Batton Witney 242896-1 5529
80944 7590 01/31/2018
Hoffman Warniok T T .P
EXAMINER
540 Broadway
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KOSLOW, CAROL M
Albany, NY 12207 ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
01/31/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptocommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW BATTON WITNEY and ROBIN CARL SCHWANT
Appeal 2017-004060
Application 13/101,686
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY,
and MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1—3, 5, 8—10, and 20-24 of
Application 13/101,686 for nonstatutory obviousness-type double patenting
and under 35 U.S.C. § 103(a) as obvious. Final Act. (Oct. 2, 2012) 2—6.
Appellants1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we AFFIRM.
1 General Electric is identified as the real party in interest. Appeal Br. 2.
Appeal 2017-004060
Application 13/101,686
BACKGROUND
The present application generally relates to a treatment for prevention
of stress corrosion cracking (SCC) in metal parts. Abstract. The application
teaches a method where a surface of a relatively high tensile strength
component is heated to a temperature at which tempering or annealing
occurs. The surface is then cooled in a controlled manner so as to maintain a
reduced tensile strength at the surface that minimizes SCC while keeping a
relatively high tensile strength in the remainder of the component. Id.
Claim 1 is representative of the pending claims and is reproduced
below:
1. A method for treating a component to minimize stress
corrosion cracking (SCC), comprising:
heating a surface layer of a component to a temperature
at which at least one of tempering or annealing occurs only at
the surface layer, wherein the component includes a steel
material; and
cooling the component in a controlled manner so as to
maintain a surface tensile strength that minimizes SCC, wherein
the resultant surface tensile strength is lower than a resultant
high tensile strength of an adjacent remainder of the component
beneath the surface layer, the adjacent remainder undergoes no
tempering or annealing during the heating, and wherein the surf
ace layer undergoes no quenching during the cooling.
Appeal Br. 13 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1—3, 5, 8—10, and 20—24 are provisionally rejected for
nonstatutory obviousness-type double patenting over claims 1—5
and 8—10 of copending Application No. 13/457,753. Final Act. 2—
3.
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Application 13/101,686
2. Claims 1—3, 5, 8—10, and 20—24 are rejected under 35 U.S.C.
§ 103(a) as obvious over Conrad et al. (US 3,730,785, issued May
1, 1973) (hereinafter “Conrad”). Id. at 4.
3. Claims 1—3, 5, 8—10, and 20—24 are rejected under 35 U.S.C.
§ 103(a) as obvious over Manning et al. (US 6,344,098 Bl, issued
Feb. 5, 2002) (hereinafter “Manning”). Id. at 4—5.
4. Claims 1—3, 5, 8—10, and 20—24 are rejected under 35 U.S.C.
§ 103(a) as obvious over Masahiro et al. (Japanese Patent
Publication No. 01-312028, published Dec. 15, 1989) (hereinafter
“Masahiro”). Id. at 5—6.
5. Claim 2 is rejected under 35 U.S.C. § 103(a) as obvious over
Conrad, Manning, or Masahiro in view of Korb (US 3,535,481,
issued Oct. 20, 1970). Id. at 6.
DISCUSSION
Rejection 1. The Examiner provisionally rejected claims 1—3, 5, 8—
10, and 20—24 for nonstatutory obviousness-type double patenting over
claims 1—5 and 8—10 of copending Application No. 13/457,753. Final Act.
2—3. Appellants indicate that they “are not presently appealing the
provisional double patenting rejection included in the Final Action.” Appeal
Br. 11; Reply 2. Application 13/457,753 was abandoned on January 24,
2018. Therefore, the provisional obviousness-type double patenting
rejection is moot.
Rejections 2—4. The Examiner issued redundant rejections of claims
1—3, 5, 8—10, and 20-24 as obvious over Conrad, Manning, and Masahiro.
We address the rejection predicated on Masahiro first.
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Application 13/101,686
The Examiner found that Masahiro teaches a method that “includes
steps such as heating in temperature range from tempering temperature to
Acl point and control cooling to soften the stress concentrating surface up to
1 mm thick (abstract).” Final Act. 5. The Examiner further found that
Masahiro “discloses steps such as heating and cooling surface in order to
prevent stress corrosion cracking as set forth above.” Id. at 6.
Appellants concede that Masahiro relates to heating the surface of a
steel component to prevent SCC. Appeal Br. 9. Appellants argue, however,
that Masahiro is a translated reference and it is unclear whether it teaches
that a distinct surface layer undergoes tempering or annealing relative to the
portion beneath the surface as required by the claims. Id. Appellants further
argue that Masahiro does not address the cooling step required by the claims.
Id. at 10.
With regard to Appellants’ first argument, that Masahiro is unclear
whether the subsurface portion of the component undergoes tempering or
annealing, Masahiro teaches to heat the component by “laser or high
frequency induction heating, and softening less than 1 mm from a
surface.” Masahiro (translation) at 3 (emphasis added). Masahiro does not
teach that any heating or “softening” (reduction in hardness) occurs beneath
the surface. Thus, the record supports the Examiner’s finding that Masahiro
teaches to heat only the surface layer.
Appellants’ second argument is that Masahiro is silent as to the
required “cooling the component in a controlled manner.” Appeal Br. 10.
The Specification teaches a number of methods of controlled cooling,
including “air cooling.” Spec. 8 (teaching suitability of air cooling), 9
(teaching in regard to air cooling and other methods, “[tjhese methods of
control over cooling rate can be used individually or in conjunction with one
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Application 13/101,686
another.”). The Examiner finds that it is within the ambit of a person of skill
in the art “that natural cooling starts when artificial heating stops in order to
achieve the softer surface layer and to reduce SCC.” Answer 12. Moreover,
one of skill in the art would understand that gradual cooling maintains
ductility while quenching is typically used to impart hardness. Final Act. 7.
Accordingly, the Examiner determines that the cooling step would have been
obvious to one of ordinary skill in the art. Appellants have failed to show
error in this determination.
Appellants additionally assert that claim 24 was rejected in error as
Masahiro does not teach that “the heating and cooling produce a full anneal
of the surface layer” as required by claim 24.2 Appellants, however, merely
recite the limitation and state that it is not taught by Masahiro. Appeal Br.
10. Patent Office rules require that an appeal brief include the “arguments
of appellant with respect to each ground of rejection, and the basis therefor,
with citations of the statutes, regulations, authorities, and parts of the Record
relied on. The arguments shall explain why the examiner erred as to each
ground of rejection contested by appellant.” 37 CFR § 41.37(c)(l)(iv); see
also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that “the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art”). Appellants have failed to set forth their arguments regarding the
2 Claim 24 requires both heating “to a temperature at which at least one of
tempering or annealing occurs,” and “wherein the heating and cooling
produce a full anneal of the surface layer.” There may be ambiguity as to
the degree of heating required by the claim. We do not, however, presently
determine whether claim 24 complies with 35 U.S.C. § 112(b).
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Application 13/101,686
“full anneal” limitation. Accordingly, such argument is waived. Id. (“any
arguments or authorities not included in the appeal brief will be refused
consideration”). Similarly, Appellants’ arguments in the Reply regarding
the “full anneal” limitation will not be considered as they comprise new
argument as to which Appellants have not sought to make a showing of good
cause. See 37 CFR § 41.41(b)(2).
In view of the foregoing, and the findings of the Examiner as set forth
in the Final Rejection and the Answer, Appellants have not shown reversible
error in the rejection of claims 1—3, 5, 8—10, and 20-24 as obvious over
Masahiro. In view of such determination which dispenses with all pending
claims, we need not reach the cumulative rejection of these claims as
obvious over Conrad or Manning.
CONCLUSION
The provisional rejection of claims 1—3, 5, 8—10, and 20-24 for
double patenting is moot. The rejection of claims 1—3, 5, 8—10, and 20-24
as obvious over Masahiro is affirmed. We need not consider the rejections
of claims 1—3, 5, 8—10, and 20-24 as obvious over Conrad or Manning.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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