Ex Parte Zaffino

Patent Trials and Appeals Board

May 24, 2019

14934534 - (D) (P.T.A.B. May. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/934,534 11/06/2015
26096 7590 05/29/2019
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Pascal Zaffino
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.
67340-003 PUS4 1072
EXAMINER
SAAD, ERIN BARRY
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
05/29/2019 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PASCAL ZAFFINO
Appeal2018-002537
Application 14/934,534
Technology Center 1700
Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
March 31, 2017 decision rejecting claims 1-20, which are all of the claims
pending in the application ("Non-Final Act."). We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant is the Applicant, Dr. Ariel Andre W aitzman, who is also
identified as the real party in interest (Appeal Br. 1 ).
Appeal2018-002537
Application 14/934,534
CLAIMED SUBJECT MATTER
Appellant's disclosure relates to a method of providing a mold with a
conformal cooling passage (Abstract). A conformal cooling passage is
described as a passage in a plastic injection mold which generally conforms
to or follows the contour of a molded part beneath the finished mold surface
and through which a cooling fluid is passed to cool the molded plastic part
and improve cycle times (Spec. ,r,r 3--4 ). The Specification describes that it
can be difficult to create conformal cooling passages for molds having a
complex shape (Spec. ,r 4 ). The claimed method provides a method of
creating such conformal cooling passages for molds (Spec. ,r 6).
Independent claim 1 is representative of the claimed invention, and is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A method of providing a mould with a conformal cooling
passage compnsmg:
cutting conformal cooling slots into a mould cavity;
shutting the conformal cooling slots to provide conformal
cooling passages;
laying weld beads in the conformal cooling slots until the
weld beads are proud of an adjacent surface of the mould; and
machining a surface over the conformal cooling passage
corresponding to a finished mould part shape.
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Appeal2018-002537
Application 14/934,534
REJECTIONS
I. Claims 1--4 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Brand 2 in view of Malburg3 and Masaoka. 4
II. Claims 5-7 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Brand, Malburg, and Masaoka, and further in view of
Gabriel. 5
III. Claim 8 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Brand in view of Malburg and Masaoka, and further in view of
Ambaum. 6
IV. Claims 9-13 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Brand in view of Malburg, Masaoka, and Okamoto. 7
V. Claims 14--20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Elliott8 in view of Okamoto, Malburg, and Masaoka.
DISCUSSION
We address the claims as grouped by Appellant.
Claims 1-4. Appellant states that "[t]he central issue for review" is
whether Malburg is analogous art and hence properly used in the § 103
rejections (Appeal Br. 4). In order to be properly relied upon in an
2 Brand et al., US 6,802,705 B2, issued October 12, 2004.
3 Malburg, US 3,613,207, issued October 19, 1971.
4 Masaoka et al., US 4,234,119, issued November 18, 1980.
5 Gabriel et al., US 2005/0072386 Al, published April 7, 2005.
6 Ambaum, DE 196 23 148 Al, published January 2, 1998 (Ambaum is in
German, so we rely, as did Appellant and the Examiner, on the translation of
record).
7 Okamoto et al., US 2002/0153130 Al, published October 24, 2002.
8 Elliott, US 2006/0099295 Al, published May 11, 2006.
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Appeal2018-002537
Application 14/934,534
obviousness analysis, a prior art reference must qualify as "analogous art,"
i.e., it must satisfy one of the following conditions: (i) the reference must be
from the same field of endeavor as the claimed invention; or (ii) the reference
must be reasonably pertinent to the particular problem with which the inventor
is involved. Innovention Toys, LLCv. MGA Ent., Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011). "A reference is reasonably pertinent if it, as a result of its
subject matter, 'logically would have commended itself to an inventor's
attention in considering his problem."' K-TEC, Inc. v. Vita-Mix Corp., 696
F.3d 1364, 1375 (Fed. Cir. 2012) (citing Innovention Toys, 637 F.3d at 1321).
In this instance, Appellant argues that Malburg, which describes a
combustion chamber for a rocket engine (Malburg 1: 19-26), is not in the
same field of endeavor as the claimed invention, which relates more
specifically to part-producing molds and molding methods (Appeal Br. 4).
This argument is persuasive. As noted by Appellant, Malburg is generally
directed to a rocket combustion chamber (e.g., Malburg 1:1-2). Brand is
directed to a mold-cooling assembly (Brand, Abstract). Although Malburg
relates to cooling of the combustion chamber, we determine that it is not in the
same field of endeavor as the claimed invention, which is specific to the field
of cooling molds.
However, with respect to whether Malburg is "reasonably pertinent to
the particular problem with which the inventor is involved," we conclude that
Appellant has not demonstrated reversible error in the Examiner's
determination that Malburg is reasonably pertinent. As noted above, "a
reference is reasonably pertinent if it, as a result of its subject matter,
'logically would have commended itself to an inventor's attention in
considering his problem."' K-TEC, 696 F.3d at 1375. Appellant contends
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Appeal2018-002537
Application 14/934,534
that the problem faced by the inventor related to molds having conformal
cooling, a problem with which Malburg is not concerned (Appeal Br. 4--5).
However, it is apparent that the general problem with which the inventor was
concerned was with cooling (see, Spec. ,r,r 3--4). The cooling system
described in Malburg is "reasonably pertinent" because Malburg's disclosure
"logically would have commended itself' to the inventor in considering the
problem of conformal cooling in molds because it addresses the creation of
cooling channels in metal walls (Mal burg 1: 64--71 ). 9
Accordingly, Appellant has not persuasively demonstrated that Malburg
is non-analogous art and improperly used in the rejections. Thus, Appellant
has not demonstrated error in the rejection of claim 1, which we, therefore,
affirm.
Claim 2. Claim 2 recites the method of claim 1, "wherein the step of
shutting the conformal cooling slots includes welding shut the conformal
cooling slots with a first number of weld beads that span the conformal
cooling slots." Appellant contends that the Examiner has not provided an
adequate reason why one of ordinary skill would have modified Malburg to
meet this limitation because Malburg uses rods and inserts, not weld beads,
for this purpose (Appeal Br. 5). Appellant argues that Malburg teaches that
its rods ensure that the channels are formed at the desired depth, so that
using weld beads instead would be contrary to Malburg's teachings (id.).
This argument is not persuasive. As suggested by the Examiner (Ans. 13),
because the additional step recited in claim 2 uses the term "includes" as a
9 Moreover, the Examiner finds that Malburg's cooling channels are
conformal cooling channels because they conform to the sides of the
combustion chamber (Ans. 12).
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Appeal2018-002537
Application 14/934,534
transitional word, claim 2 does not preclude the use of rods or inserts as
described by Malburg. Moreover, the Examiner finds that Malburg
specifically discloses the use of weld material 8 to form its cooling channels
(Malburg, FIG. 4). Appellant does not contest this finding (see, Reply Br.
2). Accordingly, Appellant has not persuasively demonstrated error in the
obviousness rejection of claim 2. 10
Claim 3. Appellant argues that "the Examiner's new position relative
to claim 2 conflicts with the claim language of dependent claim 3,"
necessitating a reversal of the rejection of claim 3 (Reply Br. 2). However,
Appellant does not provide an explanation of (a) why the Examiner's
position with respect to claim 2 is new, or (b) why the Examiner's position
with respect to claim 2 conflicts with the language of claim 3 (see, Reply
Br. 2).
We will not consider this argument (the Examiner's position on claim
2 conflicts with the language of claim 3) because it is not accompanied by a
showing of good cause explaining why it could not have been presented in
the Appeal Brief. 37 CPR § 41.41 (b )(2); see, also Ex parte Borden, 93
USPQ2d 1473, 1476-77 (BPAI 2010) (informative). Though the Appellant
contends that the Examiner's statements in the Answer necessitated this
argument, Appellant does not provide a persuasive explanation of how the
findings in the Answer have changed the rationale for the rejection.
10 Appellant argues that this finding in essence constitutes a new ground of
rejection (Reply Br. 2). We disagree because the Non-Final Action recited a
specific finding that Malburg disclosed closing conformal cooling slots by
welding (implicitly disclosing the use of weld material) (Non-Final Act. 3-
4). Moreover, the rejection specifically relies on Masaoka as suggesting the
use of weld beads (Non-Final Act. 4).
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Application 14/934,534
Moreover, Appellant's main argument-that "the Examiner's new position
relative to claim 2 conflicts with the claim language of dependent claim 3" -
is not adequately explained so as to permit us to understand exactly what
Appellant is contending necessitates reversal of the rejection.
Therefore, we also affirm the rejection of claim 3.
Appellant does not make additional substantive arguments with
respect to any other claim (see, Appeal Br. 6). Accordingly, we also affirm
the rejection of claims 4--20.
CONCLUSIONS
We AFFIRM the rejection of claims 1--4 under 35 U.S.C. § 103(a) as
unpatentable over Brand in view of Mal burg and Masaoka.
We AFFIRM the rejection of claims 5-7 under 35 U.S.C. § 103(a) as
being unpatentable over Brand, Malburg, and Masaoka, and further in view
of Gabriel.
We AFFIRM the rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Brand in view of Mal burg and Masaoka, and further in
view of Ambaum.
We AFFIRM the rejection of claims 9-13 under 35 U.S.C. § 103(a) as
unpatentable over Brand in view of Mal burg, Masaoka, and Okamoto.
We AFFIRM the rejection of claims 14--20 under 35 U.S.C. § 103(a)
as unpatentable over Elliott in view of Okamoto, Malburg, and Masaoka.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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