Ex Parte DeBiccari et al

Patent Trial and Appeal BoardOct 25, 2012

11588814 (P.T.A.B. Oct. 25, 2012)

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. 11/588,814 10/27/2006 Andrew DeBiccari PA-085.11126-US (05-277) 4375 52237 7590 10/25/2012 BACHMAN & LAPOINTE, P.C. c/o CPA Global P.O. Box 52050 Minneapolis, MN 55402 EXAMINER MEHTA, MEGHA S ART UNIT PAPER NUMBER 1781 MAIL DATE DELIVERY MODE 10/25/2012 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 ANDREW DEBICCARI, JEFFREY D. HAYNES, CHARLES-ANDRE MORISSET, and GARY SHUBERT ____________ Appeal 2011-008963 Application 11/588,814 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and GEORGE C. BEST, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 2-9, 11-29, and 32 under 35 U.S.C. § 103(a) as unpatentable over the combined prior art of Grinberg1, Haynes2, and Takeda3. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 29 is illustrative of the subject matter on appeal: 29. A method comprising the steps of: 1 US Patent 6,749,002 B2, June 15, 2004. 2 GB 2 394 479, April 28, 2004. 3 JP 58-50187, September 22, 1981; English abstract. Appeal 2011-008963 Application 11/588,814 2 selecting at least one material for a filler material; providing a spray nozzle; deriving a nozzle path for said spray nozzle across an interface surface of a first component, travel speed of said nozzle, and distance from a joint surface prior to initiating deposition of said at least one filler material; depositing said at least one filler material from said nozzle onto the interface surface of said first component so that said filler material plastically deforms without melting and bond to the joint surface upon impact with the joint surface; said depositing step comprising controlling a transition rate and an orientation of said nozzle so as to achieve a uniform filler material thickness on said interface surface; and joining said first component to a second component wherein said joining step comprises holding said first and second components in a fixture and applying heat to said first and second components and said heat applying step comprises heating said first and second components to a temperature above the temperature at which the filler material turns liquid. PRINCIPLES OF LAW In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for Appeal 2011-008963 Application 11/588,814 3 a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.”). Id. at 418. “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). ANALYSIS With respect to the prior art rejection on appeal, Appellants state that claims 2-5, 12, 27 and 32 stand or fall together with independent claim 29 (App. Br. 11). We also consider Appellants’ separate remarks drawn to claims 6-8, 9, 11 and 28. We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in 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 for essentially those reasons expressed in the Answer, including the Response to Argument section, and we add the following primarily for emphasis. Appellants’ main argument in the Appeal Brief is that the prior art does not teach or suggest the claimed invention because Haynes does not teach or suggest the deriving and controlling steps of claim 29 (App. Br. 8- 10; wherein Appellants state that “deriving” means “calculating”). This argument is unavailing. First, it is well established that “the PTO must give claims their broadest reasonable construction consistent with the specification. . . . Therefore, we look to the specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 Appeal 2011-008963 Application 11/588,814 4 (Fed. Cir. 2007). “[A]s applicants may amend claims to narrow their scope, a broad construction during prosecution creates no unfairness to the applicant or patentee.” Id. The Examiner reasonably determined that the claim language does not require the deriving step to mean “calculating” as argued in the Appeal Brief (Ans. 9). The plain meaning of “derived” only means that the parameter be reached or obtained by reasoning, that is, a “known” parameter (Ans. 9). It would have been readily apparent to one of ordinary skill in the art that the nozzle path, travel speed and distance are derived (determined) prior to deposition of the filler material. Notably, Appellants have provided no evidence, or any persuasive line of technical reasoning, explaining why the Examiner’s broadest reasonable interpretation is in error (Ans. 9; see generally Briefs). Appellants’ argument there is no teaching to apply a heating step after the cold spray step of Grinberg (App. Br. 11) also fails to consider the prior art as a whole. Appellants’ Specification discusses in the Background of the Invention section that brazing (heating) after cold spray deposition of the braze filler material is a known technique. This is further exemplified by Haynes (which shares a common assignee as the case on appeal) (Haynes 2, ll. 3-5 explaining that a high temperature braze is performed after the cold spray deposition). It is well established that ordinary creativity is presumed on the part of one of ordinary skill in the art. See KSR, 550 U.S. at 421 (“[a] person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Appellants have not adduced any persuasive technical reasoning or otherwise in response to the Examiner’s reasonable determination that an artisan would have, using no more than ordinary creativity, derived a spray nozzle path, speed and distance as exemplified in Appeal 2011-008963 Application 11/588,814 5 Haynes and controlled a transition rate and nozzle orientation so as to apply a uniform spray of brazing material (as also exemplified in Haynes) for subsequent brazing (heating) of the two components which are held and joined together in Grinberg or Grinberg/Takeda4. The arguments presented for dependent claims 2-9, 11-28, and 32 (App. Br. 11-13) are unavailing for reasons explained by the Examiner (Ans. 10, 11). Accordingly, the preponderance of the evidence supports the Examiner’s rejection on appeal. DECISION The decision of the Examiner is affirmed. 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). AFFIRMED tc 4 It appears that the Examiner’s reliance on Takeda may not be necessary, since as discussed in our Decision, Haynes and the instant Specification exemplify the obviousness of brazing after cold spray deposition. Grinberg exemplifies the obviousness of holding two components to be joined together in place.