Soliden, LLC

Patent Trials and Appeals Board

May 12, 2020

14545566 - (D) (P.T.A.B. May. 12, 2020)

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.
14/545,566 05/23/2015 Randall Wilfred Oehrlein MINN1053 1518
44088 7590 05/12/2020
KAUFHOLD DIX PATENT LAW
P. O. BOX 89626
SIOUX FALLS, SD 57109
EXAMINER
YOON, KEVIN E
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
05/12/2020 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):
jason@kaufholdlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDALL WILFRED OEHRLEIN and MARK DAVID BLISS
Appeal 2019-004810
Application 14/545,566
Technology Center 1700
Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
JULIA HEANEY, Administrative Patent Judges.
HEANEY, 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, 2, 4, and 16. See Final Act. 1. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real parties in interest as the applicants,
Randall W. Oehrlein and Mark Bliss. Appeal Br. 1.
Appeal 2019-004810
Application 14/545,566
2
CLAIMED SUBJECT MATTER
The claims are directed to methods of sand casting a metal alloy with
improved mechanical properties. According to Appellant, introducing
helium into the pressurized vessel used in its casting method imparts
improved tensile strength, yield strength, and elongation properties, and little
to no porosity. Appeal Br. 8. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A method of casting a metal alloy comprising the following
steps:
forming a sand based mold having a mold cavity with an
appropriate geometry to generate a desired object to be
cast;
placing the sand based mold without any pattern in an open
pressure vessel;
filling the mold cavity of the sand based mold with a molten
metal alloy;
immediately thereafter closing and pressure sealing the pressure
vessel;
pressurizing the sealed pressure vessel with an inert gas for a
predetermined measured time, said inert gas consisting of
helium;
said predetermined measured time sufficient for the molten metal
to cool and solidify;
depressurizing the sealed pressure vessel;
opening the pressure vessel and removing the metal filled sand
mold; and
extracting the desired object from the sand mold.
Appeal Br. 11 (Claims Appendix).
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Application 14/545,566
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REFERENCES
The prior art relied upon by the Examiner is:

Name Reference Date
Garat US 5,058,653 Oct. 22, 1991
Zenpo US 8,490,677 B2 July 23, 2013
Uozumi et al.2 JP 58-84662 May 20, 1983
Doutre WO 90/13374 May 20, 1983

REJECTIONS
The Examiner maintains the following rejections on appeal:
Claims 1 and 16 are rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Uozumi and Doutre. Final Act. ¶ 4.
Claim 2 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combination of Uozumi, Doutre, and Zenpo. Final Act. ¶ 5.
Claim 4 is rejected under 35 U.S.C. § 103 as being unpatentable over
the combination of Uozumi, Doutre, and Garat. Final Act. ¶ 6.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced.
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.”). In arguing against the rejections of

2 Citations herein to Uozumi are to the translation of record.
Appeal 2019-004810
Application 14/545,566
4
claims 1, 2, 4, and 16, Appellant argues all claims as a group, and states that
claim 1 is illustrative. Appeal Br. 4. Accordingly, our decision focuses on
claim 1. We have considered the arguments presented in support of
patentability of claim 1 to the extent applicable to the separate rejections of
claims 2 and 4. After considering the evidence presented and each of
Appellant’s arguments, we are not persuaded that Appellant identifies
reversible error.
The Examiner finds that Uozumi teaches a method of casting a metal
alloy comprising the steps recited in claim 1, except Uozumi does not
specify that the pressurized gas is helium. Final Act. 3 (citing Uozumi 2–3,
Figs. 1, 2). The Examiner finds that Doutre teaches introducing helium into
a metal casting chamber in order to cool the molten metal faster. Id. (citing
Doutre 4–10). The Examiner determines that it would have been obvious to
a person of ordinary skill in the art to modify Uozumi’s method by
introducing pressurized helium, because Doutre teaches the advantage of
using helium in order to cool the molten metal faster. Id.
Appellant argues that a person of ordinary skill in the art would not
have modified Uozumi as proposed by the Examiner for several reasons: (1)
Uozumi’s purpose in using pressurized air was different from Appellant’s
purpose, and Doutre teaches a different casting method which does not use
pressurized air; (2) using helium in Uozumi’s method would have
dramatically increased the manufacturing cost; and (3) using helium in
Uozumi’s method would render Uozumi unsatisfactory for its intended
purpose. Appeal Br. 6–8. We address these arguments in turn.
Appellant’s argument relating to Doutre’s different casting method,
lost foam casting, acknowledges that Doutre teaches replacing air at
atmospheric pressure with helium, because helium’s high thermal
Appeal 2019-004810
Application 14/545,566
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conductivity compared to air increases the rate of cooling of the molten
metal casting. Appeal Br. 7. Although Appellant argues that Doutre’s
method is different because it does not use helium in a sealed, pressurized
vessel, Appellant admits that at the time of Uozumi it was “known in the
industry that pressurized air will cool a casting slightly quicker than air at
atmospheric pressure….” Id. at 6. Thus, it is undisputed that both Doutre
and Uozumi suggest cooling a mold during casting. In view of that common
objective, and the fact that Doutre teaches the advantage of helium for
cooling a molten metal during casting, we are not persuaded by Appellant’s
argument that the Examiner’s combination of Uozumi and Doutre is based
on hindsight.
As to Appellant’s argument that a person of ordinary skill would not
have replaced air with helium in Uozumi’s method because of the increased
cost of helium, we do not find this argument persuasive because a
manufacturing cost tradeoff would not necessarily have prevented
modification of Uozumi’s process. See In re Farrenkopf, 713 F.2d 714, 718
(Fed. Cir. 1983) (“That a given combination would not be made by
businessmen for economic reasons does not mean that persons skilled in the
art would not make the combination because of some technological
incompatibility. Only the latter fact would be relevant.”). As the Examiner
finds (Ans. 6), the faster cooling rate with helium would shorten the process
time and minimize metal flash and oozing in Uozumi’s process. Absent
further evidence supporting Appellant’s argument that the cost of helium
would prohibit modification of Uozumi, Appellant does not persuade us of
reversible error.
We also are not persuaded by Appellant’s argument that using helium
in Uozumi’s method would render Uozumi unsatisfactory for its intended
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purpose. Appellant’s argument appears to be based on its assertion that
Uozumi has “a spring loaded cover (12) of a less permeable material so as to
delay the pressure equalization in the mold area . . . .” Appeal Br. 6. The
Examiner disputes this and finds that Uozumi would not want a delay in
pressure equalization, based on its teaching that the problem of flash and
oozing of the molten metal is caused by the pressure difference between the
molten metal and the internal die. Ans. 6 (citing Uozumi Abstract).
Appellant does not contest this finding. See generally Appeal Br.
Accordingly, Appellant does not persuade us of reversible error.
Appellant further argues that it discovered unexpected results when
using helium under pressure, as shown in Figure 5 of the Specification.
Appeal Br. 8. Specifically, Appellant argues that “samples of aluminum
castings formed under 10 atm of helium had substantial increases in tensile
strength, yield strength and elongation properties versus an aluminum
casting formed in 10 atm of air” and little to no porosity under microscopic
analysis. Id. The burden of showing unexpected results rests on Appellant
by establishing that the difference between the claimed invention and the
closest prior art was an unexpected difference. See In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests
on he who asserts them”). Appellant’s argument and evidence does not meet
that burden, and accordingly, fails to show unexpected results.
CONCLUSION
The Examiner’s rejections are affirmed.
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Application 14/545,566
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 16 103 Uozumi, Doutre 1, 16
2 103 Uozumi, Doutre, Zenpo 2
4 103 Uozumi, Doutre, Garat 4
Overall
Outcome
1, 2, 4, 16

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