Pratt & Whitney Services Pte Ltd.

Patent Trials and Appeals Board

Dec 27, 2021

2020004634 (P.T.A.B. Dec. 27, 2021)

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.
15/038,853 05/24/2016 Yuan Kwang Lim 67097-2730PUS1;74156US01 3216
54549 7590 12/27/2021
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
HA, STEVEN S
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
12/27/2021 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
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUAN KWANG LIM, YAN SENG LOH, ANDREW TAN,
YAHO HUI CHEE, SHIH HAN WONG, and YEE LING KWAN
Appeal 2020-004634
Application 15/038,853
Technology Center 1700
Before CATHERINE Q. TIMM, BRIAN D. RANGE, and
JANE E. INGLESE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 7, 9–15, and 17–20. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as United Technologies Corporation.
Appeal Br. 1.
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Application 15/038,853

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to multi-layered shot
sleeve for a die casting machine. Spec. 1:5–6. A shot sleeve has a pour
opening for receiving molten metal. Id. at 2:10–11. The Specification
explains that shot sleeves may be distorted during the die casting process. Id.
at 2:10–29. The Specification describes use of a ceramic layer between inner
and outer metal layers to help mitigate such distortion. Id. at 1:30–2:5. We
reproduce claim 1 below while adding emphasis to a recitation particularly
relevant to this decision:
1. A method of manufacturing a shot sleeve for a die
casting machine, the method comprising:
engaging an intermediate sleeve layer with one of an
outer sleeve layer and an inner sleeve layer; and
shrink fitting the other of the outer sleeve layer and an
inner sleeve layer into engagement with the intermediate sleeve
layer, wherein the inner sleeve layer is metal and the
intermediate sleeve layer is ceramic, and wherein the first and
second radial compressive forces generate a compressive
stress of 35-45 MPa on the intermediate sleeve layer.
Appeal Br. 8 (Claims App.) (emphasis added).

REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:

2 In this Decision, we refer to the Final Office Action dated June 26, 2019
(“Final Act.”), the Appeal Brief filed October 23, 2019 (“Appeal Br.”), the
Examiner’s Answer dated April 3, 2020 (“Ans.”), and the Reply Brief filed
June 2, 2020 (“Reply Br.”).
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Application 15/038,853

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Name Reference Date
Hansma US 5,322,111 June 21, 1994
Siddle et al.
(“Siddle”)
US 2007/0187061 Aug. 16, 2007
Kuriyama3 JP 06-047515 A
Yamamoto et al.
(“Yamato”)4
JP 2000-033467 July 17, 1998
Ueki5 JP 2005-0140404 Nov. 24, 2006
Ito (“Daihatsu”)6 JP 2008-039265 Feb. 20, 2008

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1–4, 9–13, and 19 under 35 U.S.C. § 103 as obvious over
Kuriyama, Siddle, and Hansma. Final Act. 3.
B. Claim 7 under 35 U.S.C. § 103 as obvious over Kuriyama, Siddle,
Hansma, and Yamamoto. Id. at 9.
C. Claims 14, 15, 17, and 18 as obvious over Kuriyama, Siddle, Hansma,
and Daihatsu. Id. at 9–10.
D. Claim 20 as obvious over Ueki, Siddle, and Hansma. Id. at 11.

3 As the Examiner did (Final Act. 3), we refer to Appellant’s submitted
English machine translation. The readily available machine translation for
this reference does not indicate a date, but Appellant does not argue that the
reference is not prior art.
4 As the Examiner did (Final Act. 9), we refer to Appellant’s submitted
English machine translation.
5 We refer to the same machine translation as the Examiner. Final Act. 11.
6 Although the named inventor for this reference is Ito Naoki, we refer to
this reference as “Daihatsu” because the Examiner does so. Final Act. 10. As
the Examiner did (Final Act. 10), we refer to Appellant’s submitted English
machine translation.
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Application 15/038,853

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OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections.”). After considering the evidence
presented in this appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner’s rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Appellant does not present any substantively distinct arguments for
separate rejections or separate claims. See Appeal Br. 6 (addressing, for
example, claims 7 and 20 by referring to argument for claim 1). Therefore,
consistent with the provisions of 37 C.F.R. § 41.37(c)(1)(iv) (2013), we limit
our discussion to claim 1, and all other claims on appeal stand or fall
together with claim 1.
The Examiner finds that Kuriyama teaches a three layer shot sleeve
where the inner sleeve layer is metal and the intermediate sleeve is ceramic
and finds that Kuriyama teaches shrink fitting the three sleeves. Final Act.
3–4 (citing Kuriyama). The Examiner finds that Siddle teaches a shot tube
with an outer layer made of H13 steel and provides a reason why a person of
skill in the art would have combined these teachings regarding materials
with Kuriayama’s shot sleeve. Id. at 4–5 (citing Siddle). The Examiner finds
that Hansma teaches shrink fitting a shot sleeve with its ceramic liner to
achieve an interference fit of 0.04 inches via shrink fitting in order to
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Application 15/038,853

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provide tight frictional contact. Id. at 5 (citing Hansma). The Examiner
determines that it would have been obvious to a person of ordinary skill in
the art to modify the combination of Kuriyama and Siddle to shrink fit the
outer sleeve layer onto the intermediate sleeve layer to achieve an
interference fit. Id. at 5–6. The Examiner also determines that that a person
of skill in the art would have known to adjust compressive forces to reach an
optimum range of compresses stresses through optimization. Id.
Appellant argues that a person of skill in the art would not have
modified a three layer arrangement (like claim 1 or Kuriyama) based on
Hansma’s teachings because Hansma teaches only two layers. Reply Br. 2.
This argument is unpersuasive. Appellant does not dispute the Examiner’s
finding that Kuriyama teaches a three layer shot sleeve. Appellant also does
not dispute the Examiner’s findings that both Kuriyama and Hansma teach
assembling shot sleeves via shrink fitting. Final Act. 3, 5–6; Ans. 3–6. The
Examiner determines that a person of ordinary skill in the art would have
combined (1) Hansma’s teachings regarding tight shrink fitting to a specific
tolerance with (2) the combined teachings of Kuriyama and Siddle in order
“to provide a tight frictional contact between the outer and intermediate
sleeve layers.” Ans. 5. Hansma teaches that this tight fit is beneficial to its
shot sleeve (Hansma 7:16–56), and a person of ordinary skill in the art
would have expected other shot sleeves to benefit from a tight fit in the same
manner. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 4179 (2007) (“if a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond that person’s skill”).
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Application 15/038,853

6
Appellant argues that none of the references teach claim 1’s recited
compressive stress. Appeal Br. 3–6. Appellant also argues that the Examiner
does not establish that a person of skill in the art would have modified the
relied-upon teachings of the references to reach the recited compressive
stress, and does not establish that the recited compressive stress is
necessarily inherent in the combined references’ teachings. Id. This
argument is also unpersuasive.
Claim 1’s recitation regarding “compressive stress” assigns a specific
numerical value to the attribute of how tight the first and second sleeve
layers fit with the intermediate sleeve layer. The Specification does not
indicate that this value is achieved in any particular manner other than by
use of shrink fitting. Spec. 6:1–9. None of the references teach claim 1’s
specific numerical value, but both Kuriyama and Hansma teach shrink
fitting. Final Act. 3 (citing Hansma Abstract, ¶ 8), 5 (citing Hansma 7:1–56).
Hansma, in particular, teaches that shrink fitting should be used to assemble
its sleeves with “tight frictional contact” for a particular interference fit and
so that “elongated ceramic liner 60 . . . fits tightly into the receptacle bore
46.” Hansma 7:16–56. Hansma thus teaches that the degree of tightness of
the fittings (equivalent to compressive stress), as achieved via shrink fitting,
is a result effective variable.
It has long been held that “where the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456
(CCPA 1955); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.”). Thus, we agree with the
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Examiner that claim 1’s compressive stress recitation would have been
obvious because a person of skill in the art would have discovered optimal
or workable degree of tightness (i.e., degree of compressive force) by
routine experimentation.
Because Appellant’s arguments do not identify Examiner error, we
sustain the Examiner’s rejections.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 9–13,
19
103 Kuriyama Siddle,
Hansma
1–4, 9–13,
19

7 103 Kuriyama Siddle,
Hansma
7
14, 15, 17,
18
103 Kuriyama Siddle,
Hansma
14, 15, 17,
18

20 103 Ueki, Siddle, Hansma 20
Overall
Outcome
1–4, 7, 9–
15, 17–20

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED