FORD MOTOR COMPANY

Patent Trials and Appeals BoardJan 22, 2021

2020001602 (P.T.A.B. Jan. 22, 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. 14/928,111 10/30/2015 David Alan STEPHENSON 83591589 8022 28395 7590 01/22/2021 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER VITALE, MICHAEL J ART UNIT PAPER NUMBER 3722 NOTIFICATION DATE DELIVERY MODE 01/22/2021 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@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte DAVID ALAN STEPHENSON and DAVID ALAN OZOG ____________ Appeal 2020-001602 Application 14/928,111 Technology Center 3700 ____________ Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 seeks our review under 35 U.S.C. § 134(a) of the rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and designate our affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Ford Global Technologies, LLC as the real party in interest. Appeal Br. 1. Appeal 2020-001602 Application 14/928,111 2 THE INVENTION Appellant’s invention relates to “a milling process, for example, an engine bore milling process.” Spec. ¶ 1. Claims 1, 11, and 16 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal, with disputed claim terms italicized for emphasis. 1. A method comprising: inserting a milling tool having a plurality of cutting edges along a longitudinal axis into an engine bore; rotating the milling tool about the longitudinal axis and moving the milling tool around a constant z-direction perimeter of the engine bore to remove material from the engine bore and form a tapered bore; and rough honing the tapered bore to increase a minimum diameter of the tapered bore by at least 60 μm. THE REJECTIONS2 The Examiner relies upon the following as evidence in support of the rejections: NAME REFERENCE DATE Woodruff US 8,256,092 B1 Sept. 4, 2012 Carmichael US 5,311,755 July 26, 1994 Stump US 3,073,290 Jan. 15, 1963 Michel DE 102009024227 B4 July 4, 2013 Oberg 26th Edition Machinery’s Handbook, § Honing Process 2 The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 112(b) as being indefinite has been withdrawn. Ans. 3. Appeal 2020-001602 Application 14/928,111 3 The following rejections are before us for review: I. Claims 1–4 and 7–15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Woodruff, Michel,3 and Oberg.4 II. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Woodruff, Michel, Oberg, and Stump. III. Claims 16–18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Woodruff and Carmichael. IV. Claims 19 and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Woodruff, Carmichael, and Oberg. OPINION Rejection I Regarding independent claim 1, the Examiner finds that Woodruff discloses bore 50 formed in workpiece 40 by casting and having a constant z-direction perimeter, as claimed, which may undergo further rough, semi, and/or finishing boring and honing by interpolated milling passes. Final Act. 3–4 (citing, e.g., Woodruff 23:25–31, Fig. 3; see also Woodruff 24:9– 13 (“tool (20) is used in a helical interpolation process to produce, form, hone, or otherwise work on a substantially cylindrical bore (50) (e.g., a bore (50) having a substantially straight bore surface (52) that uniformly runs 3 We rely on the machine translation of Michel, as provided in the record. 4 Although claim 6 is omitted from the heading of Rejection II, claim 6 is specifically addressed in the body of this rejection. See Final Act. 8–11. Appeal 2020-001602 Application 14/928,111 4 substantially parallel to tool axis (24)”). The Examiner relies on Woodruff’s Figure 3 for depicting tool 20 being inserted into bore 50 in z-direction 300. Final Act. 4.5 Appellant argues that Woodruff discloses helical interpolation to perform finish boring, but not “circular interpolative milling” wherein “‘a constant z-direction interpolated milling pass’ embraces circular movement of a tool.” Appeal Br. 4–5 (emphasis added). Appellant submits that a constant z-direction perimeter of the engine bore means a circular revolution. Reply Br. 3, 4. The Examiner responds that Appellant’s claims neither recite circular interpolation nor preclude helical interpolation. Ans. 35, 40. Regarding the claimed constant z-direction engine bore perimeter movement of the tool, the Specification discloses that the milling tool body 22 may be inserted into the engine bore 10 (e.g., in a “z” direction) such that the body 22 and cutting inserts 24 [of milling tool 20] extend or span the entire height of the engine bore 10. The body 22 may be rotated about its longitudinal axis 26 and then moved around the perimeter of the engine bore wall 12 to remove material therefrom. In one embodiment, the body 22 may be held constant or substantially constant in the z-direction during the interpolated milling process (e.g., the body 22 is not moved up and down relative to the engine bore 10). The body 22 may be moved in the x-y plane to move in a predetermined path and increase the size of the engine bore 10. The body 22 may be moved in a circular path 5 The Examiner relies on Michel for disclosing a tapered bore, as required by claim 1, and on Oberg for disclosing rough honing a bore to increase the minimum diameter by at least 60 μm, as claimed; the Examiner provides reasoning for modifying the milling of Woodruff’s bore 50 to form a tapered bore to increase the minimum diameter by at least 60 μm, as claimed. Final Act. 5–7 (citations omitted). Appellant does not dispute the Examiner’s findings or reasoning with respect to Michel and Oberg. Appeal Br. 4–5. Appeal 2020-001602 Application 14/928,111 5 having a radius or diameter that is larger than the current engine bore diameter to increase the radius/diameter of the engine bore. Spec. ¶ 33 (emphasis added); see Reply Br. 3 (citing Spec. ¶ 33). Thus, in view of the Specification, the claim language “moving the milling tool around a constant z-direction perimeter of the engine bore” means moving the milling tool along a perimeter of the engine bore while maintaining the milling tool in a constant position along the z-direction (or z-axis) of the engine bore. Such milling tool movement results in each of the cutting edges of the milling tool producing a circular cut in the engine bore.6 Although Woodruff discloses, as argued by Appellant supra, many examples involving helical interpolation, wherein tool 20 may be advanced or retracted from workpiece 40 along the z-direction axis of the engine bore (i.e., in a changing position along the z-direction axis of the engine bore), while milling to remove material, Woodruff nonetheless discloses that “[o]peration can also be just circular, if desired.” Woodruff 4:65–5:6. 6 Cf. Final Act. 4 (wherein, with reference to independent claim 1, the Examiner interprets the word “constant” in the claim term “constant z- direction perimeter” to apply to the two-dimensional perimeters (or diameters (Dw)) that successively delineate the inner surface of the bore, such that the Examiner construes claim 1 to require constant (unchanging), cross-sectional perimeters along the length of the bore, resulting in a cylindrical bore or “constant z-direction perimeter”); id. (citing Woodruff’s examples of a tool working on “a substantially cylindrical bore (50)”); id. at 15, 22 (wherein, with reference to independent claims 11 and 16, the Examiner interprets the word “constant” in the claim term “constant z- direction perimeter” to mean that the z-direction is linear, or unchanging in direction, for example, Woodruff’s Figure 3 depicts that z-direction 300 extends in a straight line or constant direction); see also Ans. 4–5, 15–16, 23, 30, 32, 36. Appeal 2020-001602 Application 14/928,111 6 Specifically, with reference to the “length of engagement” variable (“LoE”), Woodruff discloses that [LoE] or circumferential/arcuate distance that a blade member (22) engages the bore surface (52) (e.g., time in cut). If blade member (22) simply moves in a circular path, then there would be no axial component to the LoE. However, if blade member (22) moves in a helical path, LoE would have an axial component in addition to having a circumferential component. Id. (col. 7, Table 1, “LoE”) (emphasis added). In other words, in Woodruff, when there is no axial component, the tool is being maintained in a constant position with respect to the z-direction, as claimed. Thus, a preponderance of the evidence supports a finding that Woodruff discloses moving the milling tool around a constant z-direction perimeter of the engine bore to remove material, as required by claim 1. Accordingly, we sustain the Examiner’s rejection of independent claim 1. Appellant chose not to present arguments for claims 2–4 and 6–15 apart from the argument presented for independent claim 1 supra, and therefore, we also sustain the Examiner’s rejection of claims 2–4 and 6–15 for essentially the same reasons as stated supra. To the extent the Examiner’s claim interpretation is different from our own, or to the extent we relied on passages from Woodruff other than passages from Woodruff relied on by the Examiner, we designate our affirmance as a new ground of rejection to provide Appellant with a full and fair opportunity to respond. Rejections II, III, and IV Appellant chose not to present arguments for claims 5, 16–18, 19, and 20 apart from the argument presented for independent claim 1 supra, as applied to similar claim language, and therefore, we also sustain the Examiner’s rejection of claims 5, 16–18, 19, and 20 for essentially the same Appeal 2020-001602 Application 14/928,111 7 reasons as stated supra. Again, to the extent the Examiner’s claim interpretation is different from our own, or to the extent we relied on passages from Woodruff other than passages from Woodruff relied on by the Examiner, we designate our affirmance as a new ground of rejection to provide Appellant with a full and fair opportunity to respond. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s) Affirmed and designated NEW GROUND OF REJECTION Reversed 1–4, 6–15 103(a) Woodruff, Michel, Oberg 1–4, 6–15 5 103(a) Woodruff, Michel, Oberg, Stump 5 16–18 103(a) Woodruff, Carmichael 16–18 19, 20 103(a) Woodruff, Carmichael, Oberg 19, 20 Overall Outcome 1–20 TIME PERIOD FOR RESPONSE This Decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of Appeal 2020-001602 Application 14/928,111 8 the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. AFFIRMED 37 C.F.R. § 41.50(b)