Ex Parte Burns et al

Patent Trial and Appeal BoardDec 11, 2012

10606436 (P.T.A.B. Dec. 11, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/606,436 06/25/2003 Steven M. Burns 085.10940-US (03-325) 6928 52237 7590 12/11/2012 BACHMAN & LAPOINTE, P.C. c/o CPA Global P.O. Box 52050 Minneapolis, MN 55402 EXAMINER IP, SIKYIN ART UNIT PAPER NUMBER 1735 MAIL DATE DELIVERY MODE 12/11/2012 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 STEVEN M. BURNS and STEVEN P. HAHN ____________ Appeal 2011-009130 Application 10/606,436 Technology Center 1700 ____________ Before EDWARD C. KIMLIN, LINDA M. GAUDETTE, and MICHAEL P. COLAIANNI, Administrative Patent Judges. KIMLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the final rejection of claims 34-47.1 We have jurisdiction under 35 U.S.C. § 6(b). Claim 34 is illustrative: 34. A method for heat treating at least one workpiece comprising the steps of: cleaning a furnace chamber to be used during said heat treating method; 1 Appellants incorrectly state that “[c]laims 34-37 are pending in the application” and are on appeal (Prin. Bf. 2, first para.). Appeal 2011-009130 Application 10/606,436 2 said cleaning steps being performed without said at least one workpiece being present in said furnace chamber; said cleaning step comprising introducing a cleaning gas into the furnace chamber only at a center of an area where the at least one workpiece is to be located; said introducing step comprising injecting said gas at a partial pressure and a flow rate sufficient to create a pressure differential within said furnace chamber which carries contaminants away from said center of an area where the at least one workpiece is to be located and toward an exit of said furnace chamber; said cleaning step further comprising heating said furnace chamber at a temperature which is 200 to 300 degrees Fahrenheit above a temperature to be used in a subsequent diffusion heat treating step for at least 30 minutes; and after said cleaning step has been completed, placing said at least one workpiece within said cleaned chamber and diffusion heat treating said at least one workpiece in a gas atmosphere with said gas being introduced into the furnace chamber only at said center of an area in said furnace chamber where the at least one workpiece is to be located. The Examiner relies upon the following references as evidence of obviousness: Burns et al. (Burns) 6,042,898 Mar. 28, 2000 Naoyuki et al. (Naoyuki) JP 62139810 Jun. 23, 1987 Ritoku et al. (Ritoku) JP 2003027209 Jan. 29, 2003 Appellants’ claimed invention is directed to a method for heat treating a workpiece in a furnace. The method entails cleaning the furnace without the workpiece being present by introducing a cleaning gas into the furnace chamber only at a center of an area where the workpiece is to be located. Appeal 2011-009130 Application 10/606,436 3 After the cleaning step is completed the workpiece is placed in the cleaned area. Claims 34-47 stand rejected under 35 U.S.C. § 112, second paragraph. Claims 34-47 also stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Burns in view of JP ‘810 and JP ‘209. The present application was the subject of a prior appeal to this Board. In a Decision dated February 20, 2009, the Board sustained the Examiner’s § 103 rejection of similar claims over the same prior art (Appeal No. 2008- 4945). The appealed claims now require the introduction of the cleaning gas into the furnace chamber only at a center of an area where the workpiece is to be located. We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in complete agreement with the Examiner that the claimed subject matter would have been obvious to one of ordinary skill in the art within the meaning of § 103 in view of the applied prior art. Accordingly, we will sustain the Examiner’s rejection under § 103 for essentially those reasons expressed in the Answer. We will not, however, sustain the Examiner’s rejection under § 112, second paragraph. We consider first the Examiner’s rejection under § 112, second paragraph. According to the Examiner, the claim language “center of an area” is unclear because more than one workpiece can be treated and the workpiece can be placed anywhere inside the furnace chamber. However, we agree with Appellants that when the claim language is read in light of the present Specification, as it must be, it is clear that the center of an area is the area where the workpiece or workpieces are located for treatment. We Appeal 2011-009130 Application 10/606,436 4 concur with Appellants that one of ordinary skill in the art could determine the metes and bounds of this limitation (Prin. Br. 6, second para.). We now turn to the § 103 rejection. There is no dispute that Burns discloses a method for heat treating a workpiece in a furnace and using an inert cleaning gas to clean the workpiece in the furnace. Also, as noted by the Examiner, Appellants have acknowledged on the record that “[a]s for cleaning a contaminated furnace before heat treatment is contemplated, there is no question that this is known in the prior art” (Ans. 8, last para., referencing Appellants’ remarks filed Jan. 29, 2010, pages 10-11). JP ‘810 further evidences that it was known in the art to clean a furnace before processing a workpiece. As acknowledged by the Examiner, the prior art of record does not expressly teach introducing a cleaning gas only at the center area where the workpiece is to be located. However, we are convinced that it would have been obvious for one of ordinary skill in the art to clean either the entirety of the furnace, or only the area where the workpiece is to be located, in order to avoid contamination of the treated workpiece. In either case, as shown in JP ‘810, the furnace would be evacuated of the contaminants before placing the workpiece in the furnace. Also, in order to reduce the costs of cleaning, it would have been obvious for one ordinary skill in the art to limit the area of cleaning to only where the workpiece is to be located. Appellants have not established any unexpected result associated with cleaning the area only where the workpiece is to be located. While Appellants reference Figures 2-4 of the present Specification for demonstrating improvements in the treated workpiece when the claimed Appeal 2011-009130 Application 10/606,436 5 process is performed, we agree with the Examiner that the Specification falls far short of explaining the heat treatment method that is asserted to be outside the scope of the claimed invention which is offered for comparison. Indeed, the Specification states only that “FIG. 4 illustrates a coating which was not formed using the heat diffusion treatment of the present invention” (Spec. 8, second para.). Conspicuously lacking is any detail of the specific heat diffusion treatment and cleaning method of the comparative illustration. Consequently, Appellants have not established that cleaning only at the recited center area provides an unexpected benefit compared to cleaning the entire furnace. Furthermore, the Specification discloses that Figure 3 is representative of “a coating which has been formed using the method described herein which was surface finished by shot peening” (id.). However, inasmuch as original claim 15 recites a method that does not include a cleaning step, but diffusion heat treating with a gas being injected at a workpiece center location, it is not clear that the appealed claims are commensurate in scope with the method associated with Fig. 3. As for the claimed partial pressure and flow rate of the injected cleaning gas, we agree with the Examiner that it would have been a matter of routine experimentation to determine the optimum conditions for the injected gas. Appellants have presented no evidence of unexpected results attached to the claimed partial pressure and flow rate. In conclusion, based on the foregoing, the Examiner’s decision rejecting the appealed claims is affirmed. The decision of the Examiner is affirmed. Appeal 2011-009130 Application 10/606,436 6 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED cam