Ford Global Technologies, LLC

Patent Trials and Appeals Board

Dec 2, 2021

2021004416 (P.T.A.B. Dec. 2, 2021)

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.
15/994,717 05/31/2018 Andrey Ilinich 83893523 9611
143671 7590 12/02/2021
FGTL
Burris Law, PLLC
300 River Place Drive, Suite 1775
Detroit, MI 48207
EXAMINER
POLLOCK, AUSTIN M
ART UNIT PAPER NUMBER
1738
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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):
docketing@burrisiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ANDREY ILINICH,
NIA HARRISON,
and S. GEORGE LUCKEY JR.
__________

Appeal 2021-004416
Application 15/994,717
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
N. WHITNEY WILSON, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1–20. A hearing was held on November 8, 2021.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant
identifies the real party in interest as Ford Global Technologies, LLC. Appeal
Brief dated February 16, 2021 (“Appeal Br.”), at 3.
Appeal 2021-004416
Application 15/994,717

2

Representative claims 1 and 11 are reproduced below from the Claims
Appendix to the Appeal Brief. The limitations at issue are italicized.
1. A method of forming an aluminum alloy part comprising the
steps of:
providing a 7xxx series aluminum alloy blank;
heating the blank to at least its solvus temperature;
performing an intermediate quench of the blank to a
temperature between about 200°C to about 440°C at a rate between
about 100°C/s to about 500°C/s;
transferring the blank to a stamping die; and
simultaneously performing a secondary quench on the blank
and forming the blank into a part,
wherein the steps of transferring the blank to the stamping die and
performing the secondary quench and forming are completed within
ten seconds or less.
Appeal Br. 18.2
11. A method of forming a part comprising:
heating a 7xxx series aluminum alloy blank;
performing an intermediate quench of the blank to a
temperature between about 200°C to about 440°C;
transferring the blank to a stamping die; and
performing a secondary quench and forming the blank into a
part.
Appeal Br. 19–20.

2 During the hearing, counsel for the Appellant stated that claims 1 and 17 require
an intermediate quench of less than ten seconds. See Transcript of November 8,
2021 hearing. Claims 1 and 17 both recite that the steps of transferring the blank
to a stamping die, performing a secondary quench on the blank, and forming the
blank into a part, not the intermediate quench, “are completed within ten seconds
or less.” Appeal Br. 18, 20–21.
Appeal 2021-004416
Application 15/994,717

3

The Examiner maintains the following grounds of rejection on appeal:
(1) claims 11, 13, and 15 under 35 U.S.C. § 102(a)(1) as anticipated by
Mohanty;3
(2) claims 1, 3–10, and 17–20 under 35 U.S.C. § 103 as unpatentable over
Mohanty in view of Harrison4 and Foster;5
(3) claim 2 under 35 U.S.C. § 103 as unpatentable over Mohanty in view
of Harrison and Foster, further in view of Luckey;6
(4) claim 12 under 35 U.S.C. § 103 as unpatentable over Mohanty in view
of Harrison;
(5) claims 13 and 14 under 35 U.S.C. § 103 as unpatentable over
Mohanty; and
(6) claim 16 under 35 U.S.C. § 103 as unpatentable over Mohanty in view
of Foster.
B. DISCUSSION
1. Rejection (1)
The Examiner finds Mohanty discloses a method of hot forming an
aluminum component including heating an aluminum alloy blank, cooling the
blank to a desired forming temperature (i.e., an intermediate quench), deforming
the blank using a die (i.e., die stamping), and quenching the alloy (i.e., a secondary
quench). Final Act. 3.7

3 US 2017/0101705 A1, to Mohanty et al., published April 13, 2017 (“Mohanty”).
4 US 2015/0101718 A1, to Harrison et al., published April 16, 2015 (“Harrison”).
5 US 2012/0152416 A1, to Foster et al., published June 21, 2012 (“Foster”).
6 US 2012/0073347 A1, to Luckey et al., published March 29, 2012 (“Luckey”).
7 Final Office Action dated September 16, 2020.
Appeal 2021-004416
Application 15/994,717

4

The Appellant argues that the cooling step described in Mohanty does not
correspond to the claimed intermediate quench as found by the Examiner because
Mohanty distinguishes between “cooling” and “quenching.” Appeal Br. 7. To
illustrate, the Appellant directs our attention to paragraph 47 of Mohanty which
discloses that
a method of hot forming an aluminum alloy component (e.g.,
component 50) may include removing the component 50 from a
supply of alloy blanks 104, heating the component 50 in a heating
furnace 103 to a solutionizing temperature Y, cooling the component
50 to a desired forming temperature TF, deforming the component 50
into a desired shape in a forming device 102 while the component 50
is at the desired forming temperature TF, quenching the component 50
to a low temperature below a solvus temperature X, and artificially
aging the component 50. [Emphasis added.]
See also Appeal Br. 7–8 (contending that Mohanty claim 1 recites separate cooling
and quenching steps).
In response, the Examiner directs our attention to paragraph 61 of Mohanty
which states that “[t]he cooling or quench rate may be between approximately
50° C./second and approximately 500° C./second” (emphasis added).8 Final Act.
16. The Examiner finds that “the disclosure in [0061] of Mohanty appears to not
distinguish between cooling and quenching, but instead suggests that the terms
‘cooling’ and ‘quenching’ are used interchangeably with respect to their rates of
temperature change given that they are grouped together as ‘the cooling or quench
rate’.” Final Act. 16; see also id. (finding that Mohanty paragraphs 19 and 27
describe the rate of quenching as the “cooling rate”).

8 The Appellant’s claim 11 does not recite a quench rate. However, the “cooling or
quench rate” disclosed in Mohanty encompasses the intermediate quench rate
recited in Appellant’s claims 1 and 17 (i.e., “between about 100°C/s to about
500°C/s”). Appeal Br. 18, 21.
Appeal 2021-004416
Application 15/994,717

5

The Appellant argues that paragraph 61 of Mohanty is directed to quenching
a part after it has been formed (i.e., the Appellant’s claimed secondary quench), not
an intermediate quench between heating and stamping a blank as claimed. Appeal
Br. 10; see also id. (arguing that Mohanty paragraphs 19 and 27 describe
quenching a part after it has been formed). However, the Appellant’s argument
does not directly address the Examiner’s finding that Mohanty uses the terms
“cooling” and “quenching” interchangeably in its disclosure.
The Examiner finds that “quenching is a known form of cooling.” Ans. 4.9
In response, the Appellant does not direct us to a definition of “quenching” in the
Appellant’s Specification that distinguishes the claimed “quenching” step from the
“cooling” step disclosed in Mohanty. Rather, the Appellant argues that the
“quench rate” disclosed in the Appellant’s Specification (i.e., “between about
100°C/s to about 500°C/s”) distinguishes the claimed intermediate quench from
other forms of cooling.10 Reply Br. 2 (citing Spec. ¶ 30).
The Examiner correctly concludes that “the intermediate quench is not
limited to any specific rate of temperature change” in claim 11. Ans. 4; see also In
re Self, 671 F.2d 1344, 1348 (CCPA 1982) (appellant’s arguments fail because
“they are not based on limitations appearing in the claims”). Moreover, the

9 Examiner’s Answer dated May 4, 2021.
10 The Appellant also argues that “the present application teaches one skilled in the
art that the ‘intermediate quench quickly cools a blank to an improved forming
temperature between about 200° C. and about 440° C.” Reply Brief dated July 6,
2021 (“Reply Br.”), at 2. Mohanty discloses cooling to a range of “approximately
380° C. to approximately 470 °C.,” which overlaps the Appellant’s range.
Mohanty ¶ 56.
Appeal 2021-004416
Application 15/994,717

6

Examiner finds, and the Appellant does not dispute, that Figure 2.20 of Liščić11
shows quench rates that are well below the Appellant’s quench rates. Ans. 5.
The Examiner also finds that Mohanty Figure 2 “provides evidence that
intermediate and final cooling steps of Mohanty are similar in cooling rates.” Final
Act. 16. The Appellant, however, argues that Mohanty does not expressly state
that Figure 2 is drawn to scale. Appeal Br. 9. For that reason, the Appellant
argues that the Examiner’s reliance on Mohanty Figure 2 to show that Mohanty
describes an intermediate quench as claimed is erroneous. Appeal Br. 9 (citing
MPEP § 2125(II)).12
Mohanty Figure 2 is reproduced below.

Mohanty Figure 2 is a temperature plot of Mohanty’s method.

11 Quenching Theory and Technology (Božidar Liščić et al. eds., 2nd ed. 2010).
12 MPEP § 2125(II) states, “When [a] reference does not disclose that the drawings
are to scale and is silent as to dimensions, arguments based on measurement of the
drawing features are of little value.”
Appeal 2021-004416
Application 15/994,717

7

According to Mohanty’s method, component 50 is inserted into a heating
furnace and “the temperature increases (see 201 in FIG. 2) above the solvus
temperature X.” Mohanty ¶ 53. “Once the component 50 reaches the target
solutionizing temperature Y, the component 50 is maintained at the solutionizing
temperature Y for a predetermined time 202.” Mohanty ¶ 53. Mohanty discloses
that component 50 is “intentionally cooled (see 203 in FIG. 2) to a desired forming
temperature TF (see 204 in FIG. 2)” after the solution heating is complete.
Mohanty ¶ 54 (emphasis added). Subsequently, “the forming process 204 (FIG. 2)
occurs in the forming device.” Mohanty ¶ 56. Thereafter, component 50 is said to
be quenched to a low temperature at 205 in Figure 2. Mohanty ¶ 61.
Mohanty Figure 2 is “a temperature plot” of the method described above,
wherein the x-axis is identified as “TIME” and the y-axis is identified as
“TEMPERATURE.” Mohanty ¶ 31. Thus, we find the purpose of the graph in
Mohanty Figure 2 is to show the relative change in temperature of component 50
over time. Mohanty ¶ 53 (disclosing that “FIG. 2 illustrates the changes in
temperature of the component 50”); see also In re Aslanian, 590 F.2d 911, 914
(CCPA 1979) (drawings may be evaluated for what they reasonably disclose to one
of ordinary skill in the art).
We find the graph shows rapid cooling at 203 to a desired forming
temperature TF and rapid cooling again at 205, wherein the slopes of the lines
representing “cooling” step 203 and “quenching” step 205 are similar. Therefore,
we find the graph in Mohanty Figure 2 shows that the “cooling” rate in step 203
Appeal 2021-004416
Application 15/994,717

8

and the “quenching” rate in step 205 are similar, further supporting the Examiner’s
finding that Mohanty uses the terms “cooling” and “quenching” interchangeably.13
Based on the foregoing, we find that a preponderance of the evidence of
record supports the Examiner’s finding that Mohanty’s cooling step 203
corresponds to the intermediate quench recited in claim 11.14
The Appellant also argues that Mohanty “fails to disclose quenching and
forming a blank into a part in one step as recited in Claim 11.” Appeal Br. 10
(original emphasis omitted). The Examiner, however, correctly concludes that
“[w]hile the steps of quenching and forming are disclosed in one singular line in
claim 11, this does not require that both quenching and forming are performed ‘in
one step’.” Ans. 6; see also Final Act. 17 (concluding that the language of claim
11 “does not require that the quenching and forming a [sic, are] performed in one
step (unlike the claim language of claims 1 and 17)”); cf. Appeal Br. 18 (reciting in
claim 1, the step of “simultaneously performing a secondary quench on the blank
and forming the blank into a part” (emphasis added)).

13 Even if the terms “cooling” and “quenching” are distinguishable, we find
Mohanty teaches that the rates for “cooling” and “quenching” may be the same
(i.e., “between approximately 50° C./second and approximately 500° C./second”).
Mohanty ¶ 61; see also Reply Br. 2 (arguing that the quench rate distinguishes the
claimed intermediate quench from other forms of cooling).
14 During the hearing, the Appellant’s counsel argued for the first time on appeal
that the cooling rate of cooling step 203 is at best 11°C/sec. See Transcript of
November 8, 2021 hearing. We understand that argument to be based on the
solutionizing temperature Y disclosed in Mohanty paragraph 53, the forming
temperature TF disclosed in Mohanty paragraph 56, and the time needed to transfer
component 50 from the heating furnace to the forming device disclosed in
Mohanty paragraph 55. See Mohanty ¶ 55 (“In some examples, the cooling step
203 occurs during the transfer from the heating furnace 103 to the forming device”
(emphasis added).). We will not consider the Appellant’s untimely argument on
appeal. 37 C.F.R. § 41.47(e)(1) (2021).
Appeal 2021-004416
Application 15/994,717

9

For the reasons discussed above, the anticipation rejection of claim 11 is
sustained. The Appellant does not present arguments in support of the separate
patentability of claims 13 and/or 15. Appeal Br. 10–11. Therefore, the
anticipation rejection of claims 13 and 15 also is sustained.
2. Rejections (2)–(6)
The Appellant argues:
Similar to the deficiencies of Mohanty noted above with respect
to Claim 11, Mohanty fails to disclose: (1) performing an
intermediate quench of the blank between heating the blank and
stamping the blank; and (2) simultaneously performing a secondary
quench and forming the blank into a part, as recited in Claim 1.
Appeal Br. 11 (emphasis omitted). Similarly, the Appellant argues that the
obviousness rejection of independent claim 17 should be reversed because the
combination of Mohanty, Harrison, and Foster does not disclose “‘an intermediate
quench’” and “‘simultaneously performing a secondary quench on the blank and
forming the blank into a part.’” Appeal Br. 16.
The Appellant’s arguments are not persuasive of reversible error. For the
reasons discussed above, a preponderance of the evidence supports the Examiner’s
finding that cooling step 203 in Mohanty, which occurs between heating the blank
and stamping the blank, corresponds to the claimed intermediate quench.15
The Examiner finds Mohanty does not disclose that “stamping/forming and
second quench are performed simultaneously.” Final Act. 5. The Examiner,

15 In the obviousness rejection of claim 1, the Examiner also proposes modifying
the “cooling” step (i.e., the intermediate quench) of Mohanty with the quenching
rate disclosed in Harrison. Final Act. 5–6. The Appellant generally contends that
Harrison fails to disclose an intermediate quench. Appeal Br. 12, 13. That
contention alone, however, does not demonstrate reversible error in the Examiner’s
proposed modification of Mohanty.
Appeal 2021-004416
Application 15/994,717

10

however, finds “Foster teaches that cold dies are used such that the stamped blank
is cooled to below 200°C or less in order to ensure that the microstructure is
maintained after removal from the dies (i.e. stamping and secondary quenching are
performed simultaneously).” Final Act. 6 (citing Foster ¶¶ 18, 24). The Appellant
does not direct us to any error in the Examiner’s finding. See Appeal Br. 12
(arguing that Foster does not teach an intermediate quench).
The Examiner concludes:
[I]t would have been obvious to one of ordinary skill in the art to have
replaced the stamping and subsequent quenching [i.e., secondary
quench] as taught by Mohanty with the simultaneous cold die
stamping/quenching as taught by Foster. This would ensure that the
stamped aluminum alloy temperature was sufficiently low prior to
removing from the dies such that the microstructure is maintained, as
taught by Foster.
Final Act. 7. The Appellant does not direct us to any error in the Examiner’s
reason for combining Mohanty and Foster. See Appeal Br. 14
Thus, for the reasons discussed above, the obviousness rejection of claims 1
and 17 is sustained.
The Appellant does not present arguments in support of the separate
patentability of any of claims 2–10, 12–14, and 16–20. See Appeal Br. 14–16.
Therefore, the obviousness rejections of claims 2–10, 12–14, 16, and 18–20 also
are sustained.
C. CONCLUSION
The Examiner’s decision is affirmed.

Appeal 2021-004416
Application 15/994,717

11

In summary:

Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11, 13, 15 102(a)(1) Mohanty 11, 13, 15
1, 3–10, 17–
20
103 Mohanty,
Harrison, Foster
1, 3–10, 17–
20

2 103 Mohanty,
Harrison, Foster,
Luckey
2
12 103 Mohanty, Harrison 12
13, 14 103 Mohanty 13, 14
16 103 Mohanty, Foster 16
Overall
Outcome
1–20

No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1136(a)(1)(iv).

AFFIRMED