Ex Parte Maev et al

Patent Trial and Appeal BoardApr 4, 2013

11221545 (P.T.A.B. Apr. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ROMAN GR. MAEV, ANDRIY M. CHERTOV, JOHN M. PAILLE, and FRANK J. EWASYSHYN ____________________ Appeal 2011-002652 Application 11/221,545 Technology Center 3700 ____________________ Before STEFAN STAICOVICI, MICHELLE R. OSINSKI, and HYUN J. JUNG, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002652 Application 11/221,545 2 STATEMENT OF THE CASE Appellants1 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 18-33. Claims 1-17 have been cancelled. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claimed subject matter relates to a “method of using acoustic waves to directly measure the dynamics of formation of weld and critical parameters which define the weld quality.” Spec. 2, para. [0008]. Claim 33 is the sole independent claim on appeal and is reproduced below: 33. In a resistance welder having a first electrode and a second electrode positioned on opposite sides of a weld subject, a method of monitoring welding of the weld subject with the resistance welder, the method comprising: generating an input burst of acoustic energy with an ultrasonic probe disposed in the first electrode, the input burst being directed toward the weld subject: generating an output signal with the ultrasonic probe in response to receipt of acoustic energy reflected from the weld subject in response to the input burst; determining whether the output signal includes a first acoustic wave having a first phase and a second succeeding acoustic wave having a second phase substantially inverted from the first phase; identifying an interface between a liquid zone and a solid portion of the weld subject proximal to the first electrode by existence of the second succeeding acoustic wave having inverted phase; and determining a characteristic of the liquid zone based on the second succeeding acoustic wave having inverted phase. 1 Appellants identify the real party in interest as Chrysler Group LLC. App. Br. 1. Appeal 2011-002652 Application 11/221,545 3 REJECTIONS Appellants seek review of the following rejections: (1) the rejection of claims 18-25 and 33 under 35 U.S.C. § 102(b) as anticipated by Nied (US 4,449,029, iss. May 15, 1984), as evidenced by Oravecz (US 2003/0023393 A1, pub. Jan. 30, 2003) (Ans. 4-8); (2) the rejection of claims 26-31 under 35 U.S.C. § 103(a) as unpatentable over Nied, as evidenced by Oravecz, and Bilge (US 4,711,984, iss. Dec. 8, 1987) (Ans. 9-11); (3) the rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable over Nied, as evidenced by Oravecz, and Okuda (US 4,099,045, iss. Jul. 4, 1978) (Ans. 11-12); (4) the rejection of claims 18-25 and 33 under 35 U.S.C. § 103(a) as unpatentable over Nied and Oravecz (Ans. 13-17); (5) the rejection of claims 26-31 under 35 U.S.C. § 103(a) as unpatentable over Nied, Oravecz, and Bilge (Ans. 17-19); and (6) the rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable over Nied, Oravecz, and Okuda (Ans. 20). ANALYSIS Rejection of claims 18-25 and 33 as anticipated by Nied The Examiner found that Nied discloses all of the limitations of independent claim 33. Ans. 4-8. More particularly, the Examiner found that Nied discloses “a solid/solid interface wave reflection . . . reflected in the waves ‘A’ and ‘C’ (see Figures 3a-6b)” and “a liquid/solid interface wave reflection . . . reflected in the waves ‘B’ and ‘B´’.” Ans. 5 and 21. The Examiner further found that “[w]hile Nied is silent [as] to the exact phase of Appeal 2011-002652 Application 11/221,545 4 the reflected waves, the waves are still based on the characteristics of the material/material interface [from] which they originate, [and] therefore, would be phase inverted if the material/material interface provides such a reflection.” Id. at 21. In summary, the Examiner determined that: [S]ince Nied discloses the determination and identification of the interfaces between the various solid/solid and liquid/solid interfaces and such wave propagation would inherently have first and second wave characteristics with the second wave inherently having a phase reversal due to the lower impedance of the liquid as to that of the solid, . . . the analysis performed by Nied would inherently include the determination of a characteristic of the liquid zone based on the inherent phase reversal acoustical wave signal and identification thereof. Hence, Nied . . . fully meets “determining whether the output signal includes a first acoustic wave having a first phase and a second succeeding acoustic wave having a second phase substantially inverted from the first phase; identifying an interface between a liquid zone and a solid portion of the weld subject proximal to the first electrode by existence of the second succeeding acoustic wave having inverted phase . . . ” given its broadest reasonable interpretation . . . . Id. at 22 (emphasis added). Appellants contend that “[t]he fact that phase reversal is inherent at an interface does not make use of that phase reversal in analyzing the weld nugget inherent.” Reply Br. 4. Although we appreciate the Examiner’s position that phase reversal occurs at a liquid/solid interface, nonetheless, the Examiner has not pointed to any express language in Nied (as evidenced by Oravecz) and/or technical reasoning to support that Nied’s analysis necessarily requires identifying an interface between a liquid zone and a solid portion of the weld subject by existence of the second succeeding acoustic wave having inverted phase as required by the claims as Nied’s Appeal 2011-002652 Application 11/221,545 5 invention is strictly “based on pulse time discrimination.” See id. (quoting Nied, col. 3, ll. 9-11). “To establish inherency, the extrinsic evidence ‘must make clear that the missing descriptive matter is necessarily present in the thing described in the reference.” See In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citation omitted)). We thus agree with Appellants that even if a second acoustic wave in Nied necessarily has a second phase substantially inverted from the first phase, Nied does not necessarily identify an interface between a liquid zone and solid portion of the weld subject by the existence of such a second wave having inverted phase. See Reply Br. 4. For the foregoing reasons, we find that the Examiner erred in finding that Nied (as evidenced by Oravecz) disclosed all of the limitations of independent claim 33, and we do not sustain the rejection of claims 18-25 and 33 under 35 U.S.C. § 102(b) as anticipated by Nied as evidenced by Oravecz. Rejection of claims 26-31 as unpatentable over Nied and Bilge The Examiner articulates no persuasive reason why the teachings of Bilge might have remedied the deficiencies of Nied as applied to parent claim 33 and as discussed hereinabove. For the foregoing reason, we find that the Examiner erred in concluding that the subject matter of claims 26-31 would have been obvious from the combination of Nied, as evidenced by Oravecz, and Bilge; and we do not sustain the rejection of claims 26-31 under 35 U.S.C. § 103(a) as unpatentable over Nied, as evidenced by Oravecz, and Bilge. Appeal 2011-002652 Application 11/221,545 6 Rejection of claim 32 as unpatentable over Nied and Okuda The Examiner articulates no persuasive reason why the teachings of Okuda might have remedied the deficiencies of Nied as applied to parent claim 33 and as discussed hereinabove. For the foregoing reason, we find that the Examiner erred in concluding that the subject matter of claim 32 would have been obvious from the combination of Nied, as evidenced by Oravecz, and Okuda; and we do not sustain the rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable over Nied, as evidenced by Oravecz, and Okuda. Rejection of claims 18-25 and 33 as unpatentable over Nied and Oravecz Appellants argue claims 18-25 and 33 as a group. App. Br. 7; Reply Br. 5-6. We select claim 33 as the representative claim, and claims 18-25 stand or fall with claim 33. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner alternatively found that Nied discloses all of the limitations of independent claim 33, “except for specifically calling for the output signal including a first acoustic wave having a first phase and a second succeeding acoustic wave having a second phase substantially inverted from the first phase and utilizing the second phase substantially inverted from the first phase to characterize a material zone.” Ans. 15-16. The Examiner also found that output signals with acoustic waves having a second phase substantially inverted from a first phase and utilizing the second phase to characterize a material zone is known in the art as exemplified by Oravecz, for example. Id. at 16 (citing Oravecz, paras. [0006], [0012], [0014], [0103]-[0107], figs. 2, 2A, 20). The Examiner then concluded that “[i]t would have been obvious . . . to modify the output signal Appeal 2011-002652 Application 11/221,545 7 of Nied with the output signal including a . . . second succeeding acoustic wave having a second phase substantially inverted from the first phase and utilizing the second phase substantially inverted from the first phase to characterize a material zone of Oravecz in order to provide high contrast changes between background and distinguishable features, thereby increasing the operational sensitivity of the acoustic measurement.” Id. The Examiner also determined that “it would have been recognized by one of ordinary skill in the art that applying the known technique taught by Oravecz to the method of monitoring welding of a weld subject with a resistance welder of Nied would have yielded predictable results and resulted in an improved system . . . . ” Id. at 17. Appellants contend that “Nied uses a different type of analysis--time discrimination of reflected signals regardless of their polarity” (App. Br. 7) and that “Nied teaches away from the use of wave form analysis or detection of phase reversal” (Reply Br. 5 (quoting Nied, col. 3, ll. 9-11) (“‘This invention is based on pulse time discrimination and not waveform analysis, signature analysis, signal shape, amplitude or return pulse time.’”)). However, teaching away requires a prior art reference to criticize, discredit, or otherwise discourage the claimed solution. Appellants’ argument is unconvincing because Appellants have not identified any particular disclosure in Nied that actually criticizes, discredits, or discourages utilization of a second phase substantially inverted from the first phase to characterize a material zone in order to teach away. See DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)) (“A reference does not teach away, however, if it merely expresses a general Appeal 2011-002652 Application 11/221,545 8 preference for an alternative invention but does not ‘criticize, discredit, or otherwise discourage’ investigation into the invention claimed.”). In response to the rejection under 35 U.S.C. § 102(b) discussed above, Appellants contend that “[c]ombining Oravecz with Nied would be a step taken without motivation because Nied makes no use of phase inverted reflections.” App. Br. 4. Because such an argument is relevant to a rejection under 35 U.S.C. § 103(a), we presume Appellants assert it against the obviousness rejection. However, this contention is unpersuasive since the Court rejects the rigid requirement of demonstrating a teaching, suggestion, or motivation to combine references in order to show obviousness. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). Rather, rejections based on obviousness must be supported by “some articulated reasoning with some rational underpinning.” Id. at 418 (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s rejection includes reasoning based on factual findings. Ans. 17; see also KSR, 550 U.S. at 417 (mere application of a known technique to a piece of prior art ready for the improvement indicates obviousness). Appellants do not persuasively address the Examiner’s stated reasoning for supporting the conclusion of obviousness based on the application of a known technique to improve similar methods in the same way. App. Br., passim and Reply Br., passim. Appellants also in response to the rejection under 35 U.S.C. § 102(b) discussed above contend that “Oravecz discusses phase reversal only with respect to air voids, not with respect to liquid/solid interfaces.” App. Br. 5. We again presume the argument is asserted against the rejection under 35 U.S.C. § 103(a) because it is relevant to an obviousness analysis. However, Appeal 2011-002652 Application 11/221,545 9 this argument is unconvincing as the combination of references used in the Examiner’s rejection relates to liquid/solid interfaces. The Examiner finds that Nied, with which Oravecz is combined, “discloses the determination and identification of the interfaces between the various solid/solid and liquid/solid interfaces.” Ans. 22. For the foregoing reasons, we find that the Examiner did not err in concluding that the subject matter of claims 18-25 and 33 would have been obvious from the combination of Nied and Oravecz; and we sustain the rejection of claims 18-25 and 33 under 35 U.S.C. § 103(a) as unpatentable over Nied and Oravecz. Rejection of claims 26-31 as unpatentable over Nied, Oravecz, and Bilge Claims 26-31 depend from claim 33. Appellants’ arguments in support of the patentability of claims 26-31 solely relate to the perceived deficiencies in the combined teachings of Nied and Oravecz. App. Br. 7; Reply Br. 5-6. Since we have found no such deficiencies in the combination of Nied and Oravecz, we find that the Examiner did not err in concluding that the subject matter of claims 26-31 would have been obvious from the combination of Nied, Oravecz, and Bilge; and we sustain the rejection of claims 26-31 under 35 U.S.C. § 103(a) as unpatentable over Nied, Oravecz, and Bilge. Rejection of claim 32 as unpatentable over Nied, Oravecz, and Okuda Claim 32 depends from claim 33. Appellants’ arguments in support of the patentability of claim 32 solely relate to the perceived deficiencies in the combined teachings of Nied and Oravecz. App. Br. 7; Reply Br. 5-6. Appeal 2011-002652 Application 11/221,545 10 Since we have found no such deficiencies in the combination of Nied and Oravecz, we find that the Examiner did not err in concluding that the subject matter of claim 32 would have been obvious from the combination of Nied, Oravecz, and Okuda; and we sustain the rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable over Nied, Oravecz, and Okuda. DECISION The Examiner’s rejection of claims 18-25 and 33 under 35 U.S.C. § 102(b) as anticipated by Nied, as evidenced by Oravecz, is REVERSED. The Examiner’s rejection of claims 26-31 under 35 U.S.C. § 103(a) as unpatentable over Nied, as evidenced by Oravecz, and Bilge is REVERSED. The Examiner’s rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable over Nied, as evidenced by Oravecz, and Okuda is REVERSED. The Examiner’s rejection of claims 18-25 and 33 under 35 U.S.C. § 103(a) as unpatentable over Nied and Oravecz is AFFIRMED. The Examiner’s rejection of claims 26-31 under 35 U.S.C. § 103(a) as unpatentable over Nied, Oravecz, and Bilge is AFFIRMED. The Examiner’s rejection of claim 32 under 35 U.S.C. § 103(a) as unpatentable over Nied, Oravecz, and Okuda 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)(iv). AFFIRMED Appeal 2011-002652 Application 11/221,545 11 hh