Ex Parte Fonte

Patent Trial and Appeal Board

Aug 19, 2013

11460100 (P.T.A.B. Aug. 19, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MATTHEW V. FONTE
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Appeal 2011-008631
Application 11/460,100
Technology Center 3600
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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.
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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”).

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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).
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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
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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
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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
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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.”
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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
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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
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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

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