Ex Parte Xiong et al

Patent Trial and Appeal Board

Apr 23, 2018

14159809 (P.T.A.B. Apr. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/159,809 01/21/2014 XIAOCHUAN XIONG
104102 7590 04/23/2018
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
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.
P025816-CIP-R&D-DPH 9355
EXAMINER
BESLER, CHRISTOPHER JAMES
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
04/23/2018 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 XIAOCHUAN XION and JEFF WANG 1
Appeal2017-007942
Application 14/159,809
Technology Center 3700
Before DANIELS. SONG, WILLIAM A. CAPP, and
SEAN P. O'HANLON, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 the Examiner's final
rejection of claims 8-11, 13, and 14 in the present application (App. Br. 4).
Claims 1-7 and 12 have been withdrawn (id.). We have jurisdiction under
35 U.S.C. §§ 6(b) and 134.
We AFFIRM.
1 Collectively referred to as "Appellant" herein. The real party in interest is
General Motors LLC (Appeal Brief (hereinafter "App. Br.") 4).
Appeal2017-007942
Application 14/159,809
The claimed invention is directed to a method for treating a cast iron
workpiece (Abstr.). Claim 8, which is the sole independent claim on appeal,
and dependent claim 14, read as follows (App. Br. 16-17 (Claims App'x)):
8. A method for treating a cast iron workpiece, the method
compnsmg:
deforming a machined, finish surface of the cast iron
workpiece by rubbing the machined, finish surface against a
blunt tool, thereby forming a nanocrystallized microstructure at
the machined, finish surface; and
cooling the machined, finish surface simultaneously with
the deforming, thereby promoting nanocrystallization of the
machined, finish surface.
14. The method as defined in claim 8, further comprising:
nitrocarburizing the cast iron workpiece, the
nanocrystallized microstructure accelerating diffusion of
nitrogen atoms and carbon atoms therethrough, the
nitrocarburizing taking place:
i) if the workpiece is stress relieved, for a period of
time ranging from about 1 hour to about 2 hours at a
temperature ranging from about 550°C to about 570°C, or
ii) if the workpiece is not stress relieved, for a period
of time ranging from about 5 hours to about 10 hours at a
temperature ranging from about 370°C to about 450°C,
thereby rendering the nanocrystallized microstructure into
i) a friction surface, or ii) a corrosion resistant surface by the
nitrocarburizing.
REJECTIONS
1. The Examiner rejects claims 8-11 and 13 under 35 U.S.C.
§ 103(a) as being obvious over the combination of Hester (US 5,664,648,
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Application 14/159,809
iss. Sept. 9, 1997) in view of Prevey, III (US 5,826,453, iss. Oct. 27, 1998
(hereinafter "Prevey") ).
2. The Examiner also rejects claim 14 under 35 U.S.C. I03(a) as
being obvious over the combination of Hester, Prevey, and Zurecki (US
2012/0118435 Al, pub. May 17, 2012).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In re Jung, 637 F.3d 1356,
1365---66 (Fed. Cir. 2011); Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI
2010 (precedential) ).
Rejection 1
The Examiner rejects claims 8-11 and 13 as being obvious over the
combination of Hester and Prevey (Final Office Action (hereinafter "Final
Act.") 2). The Examiner finds that Hester teaches a method for treating a
cast iron brake rotor by "roller burnishing ( column 3, lines 48 - 51 ), which is
a process which is known to include the step of subjecting a surface to
rubbing with a blunt tool." (Final Act. 2; see also id. ( citing Hester, Fig. 1;
col. 3, 11. 5-6 and 36-51)). The Examiner also finds that:
such a burnishing process would impart a nanocrystalilized
mi[]crostructure on the surface of the machined, finish surface.
Evidence for this can be found because Hester teaches burnishing
the rotor such that compressive stresses are imparted into the
given surface (column 3, lines 37-39). It is known that in order
to impart compressive stresses via burnishing, the burnishing
must be performed with sufficient force to plastic deformation
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occurs on the given surface. Applicant's Specification further
teaches that plastic deformation causes the nanocrystallized
micro structure to be formed on the surface (page 3, paragraph
25).
(Final Act. 2-3).
The Examiner finds that "while Hester teaches burnishing the brake
rotor, Hester does not teach the method of burnishing." (Final Act. 3). The
Examiner relies on Prevey for disclosing "a method of burnishing a surface
of a workpiece (abstract), wherein the surface is cooled simultaneously with
the burnishing." (Final Act. 3 (citing Prevey, Fig. 1, col. 6, 11. 20-42)). The
Examiner states that the "Applicant's Specification teaches that when the
cooling is performed simultaneously with the deforming, the cooling acts to
promote nanocrystallization (page 7, paragraph 40)." (Final Act. 3).
In view of the above, the Examiner concludes that "[i]t would have
been obvious to one skilled in the art to burnish the machined, finished
surface of Hester, by the burnishing tool of Prevey," which is disclosed as
allowing for inexpensively burnishing the workpiece, and minimizing
surface damage, while simultaneously cooling the workpiece (Final Act. 3
( citing Prevey, col. 2, 11. 26-42); see also the Examiner's Answer
(hereinafter "Ans.") 1 ). We agree with the Examiner's findings and
conclusion of obviousness, and address the Appellant's arguments infra.
The Appellant initially argues that "the Examiner has not provided a
legitimate reason with rational underpinning as to why one of ordinary skill
in the art would make the proposed combination of Hester and Prevey."
(App. Br. 9). However, as the Examiner finds (Final Act. 3), the evidence is
clear that while Hester discloses roll burnishing a cast iron brake drum or
rotor (Hester, col. 3, 11. 1--4, 48-51), it does not disclose what roll burnishing
entails. Prevey explicitly discloses a burnishing tool, and a method of using
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Application 14/159,809
the same, which is relatively inexpensive, and further discloses the use of a
lubricant for lubrication and cooling purposes (Prevey, Fig. 1, col. 6, 11. 20-
42; see also id. at col. 8, 11. 27-31 ("the method and apparatus ... provides a
relatively inexpensive and effective means of providing a compression force
on a workpiece")). Thus, the Examiner's articulated reason for utilizing the
burnishing tool of Prevey to burnish the machined, finished surface of
Hester, is well supported by the record and rational underpinnings.
The Appellant argues that:
neither Prevey nor Hester disclose "cooling the machined, finish
surface simultaneously with the deforming, thereby promoting
nanocrystallization of the machined, finish surface" as recited in
claim 8. (SFl - SF6)[.] Prevey merely discloses lubricating and
cooling the burnishing ball. (SF3-SF4)[.] Hester does not
disclose cooling a work-hardened surface. (SF6).
(App. Br. 10).
In that regard, the Appellant argues that "Prevey merely discloses
providing a thin layer of lubricating fluid to the burnishing ball and tool in
order to provide a freely rotating fluid bearing, and to provide lubrication
and cooling to the burnishing ball and burnishing operation." (Reply Brief
(hereinafter "Reply Br.") 4). According to the Appellant, the Examiner
erroneously found that:
the presence of fluid as disclosed by Prevey would matter-of-
factly result in "cooling the machined, finish surface
simultaneously with the deforming, thereby promoting
nanocrystallization of the machined, finish surface," as recited in
claim 8, despite there being no apparent teaching, suggest[ion],
or motivation disclosed by Hester or Prevey. (SF1-SF6).
(App. Br. 11 ).
This factual challenge of the Appellant is unpersuasive, and we agree
with the Examiner that the fluid lubrication "acts to both cool and lubricate
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the workpiece during roll burnishing." (Final Act. 6 (citing Prevey, col. 6, 11.
20-42; Fig. 1)). The portion of Prevey cited by the Examiner discloses that
"a desired amount of lubrication fluid will ... be transferred onto the
surface 178 of the workpiece 144 to provide the desired lubrication and
coolingfor the burnishing operation." (Prevey, col. 6, 11. 37--42 (emphasis
added)). Indeed, Prevey further discloses that:
Another primary object of this invention is to provide an
apparatus for inducing a compressive stress layer on the surface
of a part and which automatically provides the work surface of a
metal part with a fluid for lubricating and cooling the work
surface during burnishing operations.
(Prevey, col. 4, 11. 1-5 (emphasis added)).
The Appellant appears to also argue that there is no explicit disclosure
of "promoting nanocrystallization," and argues that Examiner improperly
bases the rejection upon improper hindsight and teaching in its own
Specification in rejecting the claims, and that "rejection is incomplete
without Applicant's own teaching." (App. Br. 11; Reply Br. 4). However,
we agree with the Examiner that "promoting nanocrystallization" naturally
results from the combination of Hester and Prevey (Final Act. 2-3). As
explained by the Examiner, "when a workpiece surface is deformed and
simultaneously cooled, such as the process taught by Hester in view of
Prevey, nanocrystallization will be promoted on the workpiece surface as a
result of the deformation/cooling." (Ans. 2). Indeed, the record is clear that
"Applicant's Specification is not being cited in order to show that it would
have been obvious to cool and promote nanocrystallization," but that the
Examiner is finding that promoting of nanocrystallization in the workpiece
is a natural result of burnishing and cooling in the combination of Hester and
Prevey (Final Act. 6).
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As explained by the Examiner, "the discovery of a previously
unappreciated property of a prior art process does not render the old process
patentably new." (Ans. 2, internal quotations omitted). Indeed, "[t]he fact
that appellant has recognized another advantage which would flow naturally
from following the suggestion of the prior art cannot be the basis for
patentability when the differences would otherwise be obvious." In re
Obiaya, 227 USPQ 58, 60 (BP AI 1985); see also In re Wiseman, 596 F .2d
1019, 1023 (CCPA 1979) ("[The Appellants] are, in effect, arguing that a
structure suggested by the prior art, and, hence, potentially in the possession
of the public, is patentable to them because it also possesses an inherent, but
hitherto unknown, function which they claim to have discovered. This is not
the law. A patent on such a structure would remove from the public that
which is in the public domain by virtue of its inclusion in, or obviousness
from, the prior art"); In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995) ("The
inherent teaching of a prior art reference, a question of fact, arises both in
the context of anticipation and obviousness").
Therefore, in view of the above, we affirm the Examiner's rejection of
independent claim 8. The Appellant does not submit separate arguments
directed to dependent claims 9-11 and 13, which are also subject to this
rejection. Accordingly, these claims fall with claim 8.
Rejection 2
The Examiner rejects claim 14 as being obvious over the combination
of Hester, Prevey, and Zurecki, finding that while Hester does not disclose
nitrocarburizing, "Zurecki teaches a method of nitrocarburizing cast iron
workpieces (abstract and pages 2 - 3, paragraphs 22 and 24), the
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nitrocarburizing taking place at a temperature of 450°C (page 2, paragraph
23)." (Final Act. 4). Accordingly, the Examiner concludes that:
It would have been obvious to one skilled in the art to
nitrocarburize the cast iron rotor of Hester in view of Prevey, as
taught by Zurecki, because Zurecki teaches that nitrocarburizing
cast iron provides the benefit of increasing wear resistance,
hardness, and corrosion resistance (page 1, paragraph 3), which
are known to be desirable characteristics in brake rotors. Hester
expressly teaches that wear resistance is a desired property
( column 2, lines 16 - 19).
(Final Act. 4).
The Examiner concedes that "Zurecki does not teach the length of
time by which to nitrocarburize the workpiece at 450°C," but concludes that
based on the teachings of Zurecki, nitrocarburizing 5 to 10 hours would have
been obvious "so as to adequately diffuse nitrogen and carbon into the
surface," and that "one skilled in the art would recognize that
nitrocarburizing at 450 °C would take more than 4 hours." (Final Act. 4--5).
The Examiner cites to MPEP § 2144.05 pertaining to optimization of ranges
and result-effective variables to explain that the teachings of Zurecki are
adequate to "set[] forth a prima facie showing of obviousness of performing
nitrocarburizing at 450°C for 5 to 10 hours. MPEP [§] 2144.05." (Ans. 3
(citing MPEP § 2144.05); see also Final Act. 5).
The Appellant argues that "Zurecki merely teaches, vaguely, that
lower nitrocarburizing temperatures require longer nitrocarburizing time,"
but does not disclose the limitation of claim 14, and that "[ o ]ne of ordinary
skill in the art would not be led to arrive at the specifics of claim in light of
the generic teachings of Zurecki cited by the Examiner." (App. Br. 12-13).
We find the Appellant's arguments unpersuasive.
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Firstly, a statement which merely points out what a claim recites is not
considered an argument for separate patentability of the claim. 3 7 C.F .R.
§ 4I.37(c)(l)(iv). A general allegation that the art does not teach any of the
claim limitations is no more than merely pointing out the claim limitations.
Secondly, as the Examiner finds (Final Act. 4--5), Zurecki specifically
discloses nitrocarburizing temperatures including 450°C, and teaches that
lower temperatures, such as 350°C or 400°C require longer treatment time
(Zurecki ,r 23). Thus, while disclosure of Zurecki is broad, and does not
explicitly disclose the claimed "period of time ranging from about 5 hours to
about 10 hours at a temperature ranging from about 370°C to about 450°C,"
a person of ordinary skill in the art would understand that nitrocarburizing is
a result-effective variable based, inter alia, on temperature and time.
Accordingly, the recited temperature range and corresponding time duration
appear to be mere optimization of a known process that would have been
obvious to, and within the skill of, one of ordinary skill. See In re Aller, 220
F.2d 454, 456 (CCPA 1955) (the discovery of an optimum value of a
variable in a known process is normally obvious); In re Boesch, 617 F .2d
272,276 (CCPA 1980).
Therefore, in view of the above, we agree with the Examiner that a
prima facie case of obviousness has been adequately set forth relative to
claim 14. The Appellant does not contend that unexpected results were
attained through such optimization. In re Waymouth, 499 F.2d 1273, 1276
(CCPA 1974). Accordingly, the Examiner's rejection of claim 14 is also
affirmed.
CONCLUSION
The Examiner's rejections are AFFIRMED.
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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
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