Ex Parte Wodrich

Patent Trial and Appeal Board

Jun 17, 2016

12495271 (P.T.A.B. Jun. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/495,271 0613012009
21839 7590 06/21/2016
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Timothy D. Wodrich
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1007300-000102 2527
EXAMINER
BELLINGER, JASON R
ART UNIT PAPER NUMBER
3617
NOTIFICATION DATE DELIVERY MODE
06/21/2016 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY D. WODRICH
Appeal2013-008436
Application 12/495,271 1
Technology Center 3600
Before NINAL. MEDLOCK, BART A. GERSTENBLITH, and
KEVIN W. CHERRY, Administrative Patent Judges.
GERSTENBLITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Timothy D. Wodrich ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-3 and 40-42. We have
jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 1 and 40 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A track chain bushing comprising:
a bushing comprising non-carburized hardened steel and
having at least one wear surface therein, comprising an inner
1 Appellant identifies Deere & Company as the real party in interest. Appeal
Br. 2.
Appeal2013-008436
Application 12/495,271
surface having an inner diameter and/or an outer surface having
an outer diameter;
a metallurgically bonded wear-resistant coating disposed
on at least a portion of the wear surface around said inner
diameter and/ or said outer diameter and along at least a portion
of a length of the bushing, the wear-resistant coating
comprising a fused hard metal alloy comprising at least 60% by
weight of iron, cobalt, nickel, or alloys thereof and having a
Vickers hardness greater than 950 HV.
Appeal Br., Claims App. 1.
Rejections
The Examiner's Final Rejection includes the following rejections:
I. Claims 1-3 and 40-42 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderton (US 6,402,862 B 1, iss. June 11, 2002) and
Jachowski (US 4,626,464, iss. Dec. 2, 1986) and
II. Claims 1 and 40 are rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 3 of
U.S. Patent No. 6,948,784.
SUMMARY OF DECISION
We AFFIRM-IN-PART.
ANALYSIS
Rejection I - Obviousness of Claims 1-3 and 40--42
over Anderton and Jachowski
The Examiner concludes that the combination of the teachings of
Anderton and Jachowski would have rendered the subject matter of
claims 1-3 and 40-42 obvious to one of ordinary skill in the art as of the
time of the invention. Ans. 5. The Examiner finds that Anderton discloses
many of the elements of the claims, but "does not show a metallurgically
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Application 12/495,271
bonded wear resistant coating disposed on a portion of the wear surface."
Id. The Examiner finds that Jachowski discloses "the use of a
metallurgically bondable wear resistant coating formed of a fused hard metal
alloy of at least 60% by weight iron, cobalt, or nickel and having a Vickers
hardness of greater than 950 HV (Example 1)." Id. The Examiner
determines that it would have been obvious to one of ordinary skill in the art
at the time of invention to provide the bushing of Anderton with the wear
resistant coating of Jachowski "for the purpose of increasing the durability
of the bushing by reducing wear during use, thus reducing maintenance
costs." Id.
Appellant raises several arguments in response to the rejection,
including that "neither reference discloses a metallurgically bonded
wear-resistant coating around said inner diameter and/or said outer
diameter." Appeal Br. 4. Appellant contends that "Jachowski is concerned
with obtaining a harder surface for a metal part by mixing molten metal with
particles of an alloy during a casting process." Id. at 5. In particular,
Appellant asserts that Jachowski discloses forming a compound body "by
introducing the hard substance or hard metal particles into the molten alloy
while in the mold." Id. at 6.
In response to Appellant's arguments, the Examiner makes several
additional factual findings. First, the Examiner finds that Jachowski
discloses a "metallurgical bond":
First, the wear resistant material of Jachowski et al is added to
the molten base material and forms a wear resistance layer
thereon once solidified. It is well known in the art that solid
material placed in molten material will soften and bond with the
molten material. This is a type of metallurgical bond.
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Application 12/495,271
Ans. 7. Second, the Examiner finds that Anderton "already discloses
a wear resistant material layer disposed on the outer surface of a
bushing. Jachowski et al was only used to teach the use of a substitute
equivalent type of wear resistant material." Id.
In the Reply Brief, Appellant challenges each of the Examiner's
findings. First, Appellant notes that Jachowski does not disclose "a
metallurgically bonded wear-resistant coating" because "Jachowski is
concerned with obtaining a harder surface for a metal part by mixing molten
metal with particles of an alloy during a casting process." Reply Br. 4--5.
Second, Appellant contests the Examiner's finding of equivalence between
Anderton and Jachowski. Id. at 5.
Claims 1 and 40 are each directed to a track chain bushing
comprising, inter alia, a metallurgically bonded wear-resistant coating
comprising "at least 60% by weight of iron, cobalt, nickel, or alloys thereof
and having a Vickers hardness great than 950 HV." Appeal Br., Claims
App. 1. The Examiner relies upon Jachowski's Example 1 in support of the
finding that Jachowski's material has a hardness greater than 950 HV. See
Ans. 5 (citing Jachowski, Example 1). Jachowski explains the following
regarding Example 1:
In its individual regions, the beater has the following
hardnesses.
metallic region HV30=240,
wear resistant zone HV30=450 to 550,
hard metal particles in the wear resistant zone HV30=1100.
Jachowski, 5:7-12. Although the Examiner finds that Example 1 discloses a
wear resistant material with a hardness greater than 950 HV, only the hard
metal particles in the wear resistant zone satisfy the hardness requirement of
the claims, not the alloy itself. The Examiner has not explained why we
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Application 12/495,271
should construe the H V range of the hard metal particles as disclosing the
HV level of the alloy. Rather, a more reasonable interpretation of Jachowski
is that the wear resistant material disclosed therein has an HV range of only
450-550 (that of the wear resistant zone). Thus, the Examiner's finding that
Jachowski discloses a wear resistant material with a hardness greater than
950 HV is not supported by a preponderance of the evidence before us. 2
Accordingly, we do not sustain the rejection of claims 1-3 and 40-42.
Rejection II - Double Patenting
The Examiner rejected claims 1 and 40 on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claim 3 of U.S.
Patent No. 6,948,784. Final Act. 5 (mailed Aug. 3, 2012); Ans. 6. Although
it is presumed that an appeal is taken from the rejection of all claims under
rejection unless cancelled by an amendment (see 3 7 C.F .R. § 41.31 ( c) ),
Appellant does not address this rejection in the Appeal Brief and identifies
only the ground under§ 103(a); listed above; as a ground of rejection to be
reviewed on appeal. See Appeal Br. 3. In the Reply Brief, Appellant states
that "[ w ]hile not acquiescing in the double patenting rejection, Appellant[]
will file a terminal disclaimer, if necessary, once the claims are indicated to
be otherwise allowable." Reply Br. 2. Because Appellant did not present
argument directed to the double patenting rejection in the Appeal Brief and
2 Also, we note that the Examiner has presented two somewhat opposite
rationales for modifying Anderton. The first, is that there is a benefit in
making a modification to Anderton based on Jachowski (i.e., to increase the
durability of the bushing). Ans. 5. The second, is that Jachowski is only
relied upon to teach the use of a substitute equivalent type of wear resistant
material. Id. at 7. If a reason to make the substitution is to increase the
durability of the bushing, it is hard to accept (without additional reasoning)
that the substitution is of equivalent wear resistant materials.
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has not attempted to show good cause for the omission, Appellant has
waived any argument directed to that rejection. 37 C.F.R. § 41.67(c)(l)(vii).
Accordingly, we summarily affirm the double patenting rejection.
DECISION
We reverse the Examiner's decision rejecting claims 1-3 and 40-42
under§ 103(a).
We sustain the Examiner's decision rejecting claims 1 and 40 on the
ground of nonstatutory obviousness-type double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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