Ex Parte Hay et al

Patent Trial and Appeal BoardFeb 13, 2019

14457426 (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/457,426 08/12/2014 Thomas E. Hay 116 7590 02/15/2019 PEARNE & GORDON LLP 1801 EAST 9TH STREET SUITE 1200 CLEVELAND, OH 44114-3108 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 ATTORNEY DOCKET NO. CONFIRMATION NO. NAT-44872US1 5823 EXAMINER KATCOFF, MATTHEW GORDON ART UNIT PAPER NUMBER 3725 NOTIFICATION DATE DELIVERY MODE 02/15/2019 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): patdocket@peame.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS E. HAY and DONALD E. KRINTZLINE 1 Appeal 2018-004676 Application 14/457 ,426 Technology Center 3700 Before MICHAEL L. HOELTER, JAMES P. CAL VE, and BRENT M. DOUGAL, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a Decision on appeal, under 35 U.S.C. Â§ 134(a), from the Examiner's final rejection of claims 16-32, which constitute all the claims pending in this Application. App. Br. 1. We have jurisdiction under 35 U.S.C. Â§ 6(b ). For the reasons explained below, we find error in the Examiner's rejections of these claims. Accordingly, we REVERSE the Examiner's rejections. 1 "The real party in interest in this matter is National Machinery LLC, the assignee of record." App. Br. 2. We, thus, proceed on the basis that, for purposes of this appeal, National Machinery LLC is the "Appellant." Appeal 2018-004676 Application 14/457 ,426 CLAIMED SUBJECT MATTER The disclosed subject matter "relates to metal cold-forming and, in particular, machine arrangements and methods for achieving a high reduction in area of a workpiece." Spec. ,r 1. Claims 16, 17, 23, and 30 are independent. Claim 16 is illustrative of the claims on appeal and is reproduced below. 16. A multi-station cold-forming machine having a die breast and a slide reciprocal towards and away from the die breast, a plurality of workstations, the die breast carrying dies at respective workstations and the slide carrying tools at respective workstations, the die and tool of at least one workstation being arranged to perform a hydrostatic large reduction in cross- sectional area of a workpiece utilizing hydrostatic pressure of liquid lubricant in a closed cavity workpiece forming space defined by the tool and die surrounding the workpiece at a plane of separation of the tool and die when the workpiece is fully trapped in said closed space whereby an area reduction exceeding 55% is obtained on the workpiece determined by the forming space of the tool and die, the die and tool of the one workstation having mutually engageable surfaces of a size and finish such that when engaged, during a forming stroke, provide sufficient contact pressure and sealing to maintain such hydrostatic pressure. Wisebaker et al. Hayes REFERENCES us 3,188,849 us 5,531,085 THE REJECTIONS ON APPEAL June 15, 1965 July 2, 1996 Claims 21, 22, and 24--29 are rejected under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. 2 Appeal 2018-004676 Application 14/457 ,426 Claims 16 and 30-32 are rejected under 35 U.S.C. Â§ 102(b) as anticipated by Wisebaker. Claims 17-29 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Wisebaker and Hayes. ANALYSIS The rejection of claims 21, 22, and 24-29 as being indefinite The Examiner states, "[f]or claims 21-22 and 24-25 there is no antecedent basis for 'said one workstation. "'2 Final Act. 2; Ans. 2. Appellant disagrees stating, "[t]he antecedent for 'said one workstation' for dependent claims 21 and 22 exists in parent claim 1 7, and for dependent claims 24 and 25 exists in parent claim 23." App. Br. 9; see also Reply Br. 2. Indeed, parent claim 17 recites "a plurality of workstations" and thereafter recites components "of one workstation." The same can be said of parent claim 23. We, thus, are not in agreement with the Examiner that there is a lack of antecedent basis for "said one workstation" in dependent claims 21, 22, and 24--29. We reverse the Examiner's rejection of these claims as being indefinite due to a lack of antecedent basis. The rejection of claims 16 and 30-32 as anticipated by Wisebaker Because independent claims 16 and 30 differ in aspects that are important to this analysis, we address each claim separately. 2 Claims 26-29 depend directly or indirectly from claim 24. 3 Appeal 2018-004676 Application 14/457 ,426 Claim 16 Claim 16 is directed to a cold-forming machine having multiple workstations. Claim 16 states, "at least one workstation [is] arranged to" reduce the "cross-sectional area of a workpiece utilizing hydrostatic pressure of liquid lubricant." This claim also recites that such hydrostatic reduction of the workpiece occurs "in a closed cavity workpiece forming space." The Examiner finds that Wisebaker discloses these limitations but provides no guidance as to where such findings might be supported by Wise baker. 3 See Final Act. 3. Appellant disagrees stating that (a) "[ t ]here is no liquid lubricant in Wise baker" and (b) "there is no closed cavity in Wisebaker when performing a reduction in cross-sectional area." App. Br. 9; see also Reply Br. 3. Appellant also fails to specifically identify where, in Wisebaker, Appellant is referring to. Our investigation ofWisebaker reveals the following passage ( occurring after a discussion of "venting passages 117," "radial slots 118," and "venting passages 119"): This [ referring to the passages and slots] provides a limited bleed of the compressed air and prevents the entrapment of cooling and lubricating oils which might interfere with the proper seating of the die segments. Wise baker 6:33--40 ( emphasis added). Based on this teaching, two matters are unclear regarding the above claim limitations. First, it is not clear how structure specifically designed to avoid entrapping oil can be "arranged to" generate hydrostatic pressure. Second, in view of the passages and slots disclosed in Wise baker allowing 3 The Examiner explains, "the structure of the machine of Wise baker has all the salient features of that of [Appellant's] invention." Ans. 12. 4 Appeal 2018-004676 Application 14/457 ,426 oil to "bleed," it is not clear how this structure can also be said to be "a closed cavity." Thus, in view of the above teachings in Wise baker, and lacking any guidance by the Examiner to the contrary, we are not persuaded the Examiner has established by a preponderance of the evidence that Wisebaker anticipates claim 16. We reverse the Examiner's rejection of this claim. Claim 30 Claim 30 lacks the limitations discussed above regarding claim 16. Instead, claim 30 recites "a force lever." The Examiner finds, in Wisebaker, "a force lever operated by a spring" 73. Final Act. 4. Appellant argues, "[t]he Examiner fails to allege any particular element of Wise baker- by numeral or otherwise - is a lever. There is no lever in Wisebaker." App. Br. IO; see also Reply Br. 3. Appellant further states that the term "lever," "is used in its ordinary meaning" (App. Br. 10) and provides a definition of this term by "The American Heritage Dictionary of the English Language (Third Edition)" (see Evidence Appendix). We understand from the Examiner's findings that a force lever is operated by Wisebaker's spring 73. See Final Act. 4. Wisebaker's spring 73 is depicted in Figure 1 thereof. This depiction illustrates a spring that applies an in-line force and the Examiner does not identify the "lever" upon which this spring 73 operates. We, likewise, fail to identify any lever (as this term is commonly understood) upon which spring 73 operates. Accordingly, we are not persuaded the Examiner has established by a preponderance of the evidence that Wisebaker anticipates claim 30. We reverse the Examiner's rejection of claims 30-32. 5 Appeal 2018-004676 Application 14/457 ,426 The rejection of claims 17-29 as unpatentable over Wisebaker and Hayes Both independent claims 1 7 and 23 include language ( similar to claim 16 above) directed to "hydrostatic forming" in a "closed cavity." The Examiner relies on Hayes for disclosing an oil dispenser. See Final Act. 6; see also Hayes Title. The Examiner concludes that it would have been obvious "to add the dispenser of Hayes to the apparatus of Wisebaker" and provides a rationale for such combination. Final Act. 6. Appellant disagrees for reasons already addressed ( e.g., "Wisebaker has no closed cavity"). App. Br. 14; see also id. at 11; Reply Br. 3, 4. For the sake of argument (and for the following analysis only), we will presume that Hayes applies oil to a workpiece. 4 Even with such presumption, the Examiner does not make clear how Wise baker's ventilated structure (which "prevents the entrapment" of oil), would achieve "hydrostatic forming" of the workpiece in a "closed cavity" because Wisebaker allows oil to "bleed" away. See supra. Accordingly, we are not persuaded the Examiner has presented articulated reasoning with rational underpinning to support the legal conclusion of obviousness. We reverse the Examiner's rejection of independent claims 17 and 23, and dependent claims 18-22 and 24--29, as being obvious over Wise baker and Hayes. 4 However, Appellant is correct that Hayes only discloses applying lubricant "onto a die press" rather than a workpiece. App. Br. 11 (citing Hayes 2:23- 25); see also Hayes Abstract, 1:16-19. We make the above presumption for emphasis only, with no implication whether or not Hayes actually discloses applying lubricant to a workpiece. 6 Appeal 2018-004676 Application 14/457 ,426 DECISION The Examiner's rejection of claims 21, 22, and 24--29 as being indefinite is reversed. The Examiner's art rejections of claims 16-32 are reversed. REVERSED 7