Ex Parte FonteDownload PDFPatent Trial and Appeal BoardAug 19, 201311460100 (P.T.A.B. Aug. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTHEW V. FONTE ____________ Appeal 2011-008631 Application 11/460,100 Technology Center 3600 ____________ Before JENNIFER D. BAHR, GAY ANN SPAHN, and MICHAEL C. ASTORINO, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 57, 58, 61, 62, and 64-69. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2011-008631 Application 11/460,100 2 Claimed Subject Matter The claimed subject matter relates to “methods of making tubes for repeatedly guiding fired projectiles,” and includes “flowforming metals that have not heretofore been used to fabricate gun barrels or tubular devices for repeatedly guiding fired projectiles.” Spec. 3, ll. 4-5 and 17-18. Claim 57, reproduced below, is illustrative of the appealed subject matter. 57. A method of making a machine gun barrel, the method comprising: producing a metal preform selected from the group consisting of a nickel-based superalloy, a cobalt-based superalloy, an iron-based superalloy, a high strength steel, titanium, a titanium alloy, tantalum, a tantalum alloy, chromium, a chromium alloy, and two or more of these metals that have been integrally bonded together; and flowforming the metal preform to form a machine gun barrel. Evidence Relied Upon The prior art relied upon by the Examiner in rejecting the claims on appeal is: Pizzola US 4,411,569 Oct. 25, 1983 Wegwerth US 4,622,080 Nov. 11, 1986 Witherell US 2006/0288854 A1 Dec. 28, 2006 Understanding Flowforming – A Precision Metal Forming Process Uniquely Capable To Accomplish Your Design Objectives, PMF Industries, Williamsport, PA, accessed at www.flowformingplus.com, published Oct. 13, 2004 (hereinafter “PMF”). Appeal 2011-008631 Application 11/460,100 3 Rejections The following Examiner’s rejections are before us for review: I. claims 57, 58, and 64 under 35 U.S.C. § 102(e) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Witherell; II. claim 61 under 35 U.S.C. § 103(a) as unpatentable over Witherell and Wegwerth; III. claim 62 under 35 U.S.C. § 103(a) as unpatentable over Witherell and Pizzola; IV. claims 65-67 under 35 U.S.C. § 103(a) as unpatentable over Witherell and PMF; V. claim 68 under 35 U.S.C. § 103(a) as unpatentable over Witherell, PMF, and Wegwerth; and VI. claim 69 under 35 U.S.C. § 103(a) as unpatentable over Witherell, PMF, and Pizzola. OPINION Rejection I – Anticipation or Obviousness based on Witherell Anticipation Appellant did not file a Reply Brief in response to the Examiner’s rejection of claims 57, 58, and 64 under 35 U.S.C. § 102(e) as anticipated by Witherell in the Answer on page 4 and therefore, presents no arguments of error regarding this ground of rejection. Accordingly, we summarily sustain this rejection. See In re Berger, 279 F.3d 975 (Fed. Cir. 2002) (holding that Board did not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the applicant failed to contest the rejection on appeal). Appeal 2011-008631 Application 11/460,100 4 Obviousness Claim 57 The Examiner finds that Witherell “discloses a method of making a weapons barrel[,] the method including flow-forming a superalloy to form the weapon barrel,” but “does not expressly disclose the weapon barrel being a machine gun barrel.” Ans. 4; see also Witherell, p. 1, para. [0018], ll. 7- 10. The Examiner concludes that it would have been obvious to one of ordinary skill in the art “to utilize the known technique of flowforming to form a machine gun barrel,” because “[t]here is nothing in the current claims or [S]pecification that would differentiate the present invention from that of Witherell . . . (i.e.[,] there is no disclosure of any different steps o[r]anything about the barrel that would differentiate it from that of Witherell et al. except for the name of the barrel).” Ans. 5. Appellant argues that “[t]he office action provided no factual evidence to support the assertion that it would have been obvious to form a machine gun barrel in light of the teachings of Witherell to form a mortar tube,” and Appellant “has provided more than sufficient arguments and evidence to rebut any prima facie case.” App. Br. 9. More particularly, Appellant’s arguments on pages 11-14 of the Appeal Brief point to paragraphs 5-10 of the “Declaration of Matthew V. Fonte under . . . 37 C.F.R. §1.132” (hereinafter “Declaration”), filed with an amendment on December 3, 2009, as being evidence supporting that “mortar tubes and machine gun barrels have drastically different dimensional and mechanical property requirements due, in part, to the vastly different operating conditions of these two types of weapons,” and “[a]s a result, a metal working approach that might be used for forming a mortar tube [as taught by Witherell] would not necessarily Appeal 2011-008631 Application 11/460,100 5 lead to a ‘predictable result’ of forming an acceptable machine gun barrel, and thus would not be obvious to one skilled in the art.” App. Br. 9-10. We agree with the Examiner that neither step recited in independent claim 57 differentiates a method for making a machine gun barrel from a method of making a mortar tube. Claim 57’s first step requires “producing a metal preform,” wherein the metal of the preform is selected from a group of materials. The group of materials listed in claim 57 are materials that are common to both machine guns and mortar tubes. See original claims 1 and 2 of present application filed July 26, 2006. Claim 57’s second step requires “flowforming the metal preform to form a machine gun barrel,” but Appellant’s Specification does not set forth any flowforming steps that are specific to machine gun barrels as opposed to mortar tubes. See Spec. 28, ll. 4-20 and Spec. 29, l. 15 to Spec. 30. l.16, which sets forth specifics as to flowforming mortar tubes; and Spec. 6, l. 19, which is the only place in Appellant’s Specification where the term “machine gun” appears. We agree with the Examiner that a person of ordinary skill in the art seeking to make a machine gun barrel would turn to the general teachings of Witherell of making a mortar tube by flowforming a superalloy based on one of cobalt, iron, and nickel (Witherell, Abstr. and p.1, para. [0018], lines 7- 10). Although Appellant cites to the “different operating conditions” of a machine gun barrel versus a mortar tube that would “lead to different dimensional and mechanical property requirements,” so that one of ordinary skill in the art would recognize “the metal forming methods that may be used for one type of weapon may not necessarily be acceptable for forming the other,” we note that the particular design considerations to which Appellant points in the Declaration do not seem to affect the type of metal Appeal 2011-008631 Application 11/460,100 6 used for the preform recited in the first step of claim 57. In other words, Appellant’s reliance on the differences between machine gun barrels and mortar tubes with respect to the number of rounds fired per minute (para. 6), the operating temperatures (para. 7), the wall thickness (para. 8), the inner diameter (para. 9), and the use of a liner material versus being monolithic (para. 10) is misplaced, because these particular differences as discussed in the Declaration do not affect the selection of the metal for the preform in claim 57’s first step of producing a metal preform. Since none of paragraphs 5-10 of the Declaration specifically discuss selecting any particular metals for the preform of a machine gun barrel that are different than the metals of a mortar tube, we are not persuaded by Appellant’s arguments with respect to the first step of claim 57. Turning to the second step of claim 57, dimensional differences such as wall thickness (Decl., para. 8) and inner diameter (Decl., para. 9) appear to be parameters that may affect how one of ordinary skill in the art would perform the step of flowforming the metal preform to form a machine gun barrel. However, even assuming arguendo that there would be a difference in the flowforming step, to impart whatever differences in dimensions there may be between a mortar tube and a machine gun barrel, as a person of ordinary skill in the art would understand these terms, Appellant has not established that the nature of those differences is such that they would have dissuaded a person of ordinary skill in the art from using the method of Witherell to form a machine gun barrel. Nor has Appellant established that any potential modifications in the flowforming step required to afford those different dimensions would have been beyond the technical grasp of a person of ordinary skill in the art., See Ans. 8 (wherein the Examiner stated Appeal 2011-008631 Application 11/460,100 7 that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp,” and “if this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense”); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Thus, we are not persuaded by Appellant’s arguments with respect to the second step of claim 57. Accordingly, we sustain the Examiner’s rejection of independent claim 57 under 35 U.S.C. § 103(a) as unpatentable over Witherell. Claim 58 Claim 58 depends from claim 57 and recites that “flowforming is performed below the recrystallization temperature of the metal preform material.” The Examiner finds that Witherell “does not expressly disclose the flowforming performed below the recrystallization temperature of the metal preform,” but Witherell “discloses the superalloy based on cobalt, iron or nickel.” Ans. 4. The Examiner also finds that “[f]lowforming is usually performed as a cold working process, i.e.[,] below the recrystallization temperature of the metal preform material.” Id. The Examiner concludes that since the superalloys disclosed by Witherell “are those best utilized in the cold working process (i.e.[,] not the alpha+beta[] titanium alloys[)], it would have been obvious to one having ordinary skill in the art to perform the flowforming process below the recrystallization temperature of the metal preform since doing otherwise would not have the optimum effect.” Id. Appellant argues that “[s]ince Witherell is silent with regard to any flowforming parameters at all, Witherell necessarily fails to disclose or suggest the additional limitations of claim[] 58.” Appeal 2011-008631 Application 11/460,100 8 We are not persuaded by Appellant’s argument since it is not commensurate with the Examiner’s rejection. The Examiner agrees with Appellant that Witherell does not disclose performing flowforming below the recrystallization temperature, but modifies Witherell to do so. Since Appellant has not addressed the Examiner’s modification nor explained why the modification is flawed, we sustain the Examiner’s rejection of claim 58 under 35 U.S.C. § 103(a) as unpatentable over Witherell. Claim 64 Claim 64 depends from claim 57 and recites that “flowforming is performed in two or more flowforming passes.” The Examiner finds that Witherell fails to disclose the subject matter of claim 64, but concludes that: It would have been obvious to one having ordinary skill in the art at the time the invention was made to perform the flowforming in two or more passes, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum value or workable ranges of a result effective variable (such as the number of passes required to obtain the optimum barrel thickness) involves only routine skill in the art. Ans. 5. Appellant argues that “[w]hen flowforming a machine gun barrel with a relatively large wall thickness and small inner diameter (e.g., 1:1 ratio or larger), taking two or more flowforming passes is particularly helpful in deforming the material without applying too much force to the inner mandrel.” App. Br. 14 (citing Declaration, paras. 8 and 9). Appellant also argues that “since Witherell is silent with regard to any flowforming process parameters at all, Witherell necessarily fails to disclose or suggest the additional limitations of claim[] . . . 64,” a person of ordinary “skill[] in the Appeal 2011-008631 Application 11/460,100 9 art would not find it obvious to flowform a machine gun barrel with two or more flowforming passes in light of the teachings of Witherell to produce a mortar tube with a larger inner diameter and thinner wall thickness.” App. Br. 14-15. We are persuaded by Appellant’s arguments. Discovery of an optimum value of a result effective variable is ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 276(CCPA 1980) and In re Aller, 220 F.2d 454, 456 (CCPA 1955). However, exceptions have been found where the results of optimizing the variable are unexpectedly good or where the parameter optimized was not recognized to be a result-effective variable. In re Antonie, 559 F.2d 618, 620 (CCPA 1977). In this case, the Examiner’s conclusion that Witherell recognized the number of flowforming passes was a results effective variable is speculative, because the Examiner has not pointed to any evidence in Witherell that establishes this recognition. Accordingly, we do not sustain the Examiner’s rejection of claim 64 under 35 U.S.C. § 103(a) as unpatentable over Witherell. Rejections II-VI – Obviousness based on Witherell/Wegwerth, Witherell/Pizzola, Witherell/PMF, Witherell/PMF/Wegwerth, Witherell/PMF/Pizzola, respectively Appellant argues the remaining claims based upon the arguments set forth supra for independent claim 57 and that none of the secondary or tertiary references cures the deficiencies of Witherell. App. Br. 15-18. As we found no deficiencies in Witherell with respect to claim 57 for the reasons discussed supra, we sustain the Examiner’s rejections, under 35 U.S.C. § 103(a), of: claim 61 as unpatentable over Witherell and Wegwerth; claim 62 as unpatentable over Witherell and Pizzola; claims 65-67 as Appeal 2011-008631 Application 11/460,100 10 unpatentable over Witherell and PMF; claim 68 as unpatentable over Witherell, PMF, and Wegwerth; and claim 69 as unpatentable over Witherell, PMF, and Pizzola. DECISION We SUMMARILY AFFIRM the Examiner’s rejection of claims 57, 58, and 64 under 35 U.S.C. § 102(e) as anticipated by Witherell. We AFFIRM the Examiner’s rejections, under 35 U.S.C. § 103(a), of claims 57, 58, 61, 62, 65-69, and we REVERSE the Examiner’s rejection, under 35 U.S.C. § 103(a), of claim 64. 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-IN-PART Klh Copy with citationCopy as parenthetical citation