Hamilton Sundstrand Corporation

Patent Trials and Appeals Board

Mar 29, 2022

2021001453 (P.T.A.B. Mar. 29, 2022)

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. 15/410,135 01/19/2017 Kris H. Campbell 1510801.697US1 5145 61654 7590 03/29/2022 Locke Lord LLP P.O. BOX 55874 BOSTON, MA 02205 EXAMINER STONER, KILEY SHAWN ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 03/29/2022 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): patent@lockelord.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KRIS H. CAMPBELL, MARK W. METZLER, ERIC A. CARTER, ANTHONY L. BIERMANN, JOHN HOROWY, ERIC KARLEN, and DEBABRATA PAL Appeal 2021-001453 Application 15/410,135 Technology Center 1700 ____________ Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1-15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 In this Decision, we refer to the Specification filed Jan. 19, 2017 (“Spec.”), the Final Office Action dated Oct. 29, 2019 (“Final Act.”), the Appeal Brief filed Aug. 24, 2020 (“Appeal Br.”), the Examiner’s Answer dated Oct. 22, 2020 (“Ans.”), and the Reply Brief filed Dec. 21, 2020. 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. HAMILTON SUNDSTRAND CORPORATION is identified as the real party in interest. Appeal Br. 3. Appeal 2021-001453 Application 15/410,135 2 STATEMENT OF THE CASE The invention relates to joining components with friction stir welding. Spec. 1:5-6. The Specification describes the abutting faces of a channel cover and a channel body being angled obliquely relative to the main surface of the channel body and friction stir welding the channel cover to the channel body to form a friction stir weld joint along the abutting faces. Id. at 8:3-5. According to the Specification, “[f]orming the friction stir welds along oblique abutting surfaces . . . reduces the amount of shoulder needed compared to traditional techniques, to allow for more compact components.” Id. at 8:6-8. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A friction stir welded component comprising: a channel body having a main surface and an elongated channel formed in the main surface, the elongated channel having a first depth portion that is longitudinally spanned by shoulders having a second depth, the second depth being shallower than the first depth, the body further having an abutting face that connects the main surface with one of the shoulders at an oblique angle relative to the main surface; a channel cover with an abutting face seated against the abutting face of the channel body; and a friction stir weld joint joining the channel cover to the channel body, wherein the friction stir weld joint includes a blowout feature that is defined along abutting faces of the channel body and channel cover that follows the oblique angle relative to the main surface. Appeal Br. 15 (Claims Appendix) (disputed limitation italicized). Claim 8, the other independent claim pending in this Appeal, is directed to a method of friction stir welding and similarly recites Appeal 2021-001453 Application 15/410,135 3 “wherein the friction stir weld joint includes a blowout feature that is defined along abutting faces of the channel cover and channel body, wherein the abutting faces are angled obliquely with respect to the main surface of channel body.” Appeal Br. 17 (Claims Appendix). ANALYSIS We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the argued claims in light of the case law presented in this Appeal and each of Appellant’s arguments, we are not persuaded of reversible error in the appealed rejections. The Examiner rejects claims 1-15 as follows. Final Act. 2-14. Appeal 2021-001453 Application 15/410,135 4 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 2, 4, 6, 8, 9, 11, 13, 15 103 Hori,3 Kim,4 Nagano5 1, 2, 4, 6-9, 11, 13-15 103 Seo,6 Kim, Nagano 3, 10 103 Hori, Kim, Nagano, JP ’0467 3, 10 103 Seo, Kim, Nagano, JP ’046 5, 12 103 Hori, Kim, Nagano, Ishikawa8 5, 12 103 Seo, Kim, Nagano, JP ’046 Appellant does not separately argue the patentability of claims 1-15; Appellant argues the rejection over Hori, Kim, and Nagano and relies on those same arguments for the remaining claims and rejections. Appeal Br. 11-14. In accordance with 37 C.F.R. § 41.37(c)(1)(iv), and based upon the lack of arguments directed to the subsidiary rejections, claims 2-15 will stand or fall together with independent claim 1, which we select as representative. 3 US 2015/0273637 A1, pub. Oct. 1, 2015. 4 US 2015/0345540 A1, pub. Dec. 3, 2015. 5 US 2009/0072007 A1, pub. Mar. 19, 2009. 6 JP 2010-194545, pub. Sept. 9, 2010 (citations herein are to the English language translation of the Abstract in the record). 7 JP 52-85046, pub. July 15, 1977 (citations herein are to the English language translation of the Abstract in the record). 8 US 2008/0245517 A1, pub. Oct. 9, 2008. Appeal 2021-001453 Application 15/410,135 5 The Examiner rejects claim 1 over the combination of Hori, Kim, and Nagano, finding Hori teaching a friction stir welded component comprising a channel body having an elongated channel that is longitudinally spanned by shoulders, a channel cover with an abutting face seated against the abutting face of the channel body, and a friction stir weld joint defined along abutting faces of the channel body and channel cover. Final Act. 2-4. The Examiner finds the further claim limitations are disclosed by (1) Kim, which teaches an abutted oblique angle joint design for a friction welding process, and (2) Nagano, which teaches that a blowout feature is defined along the abutting faces of a channel body and channel cover that follows the interface relative to the main surface. Id. at 3. The Examiner determines it would have been obvious to modify Hori with Kim’s abutted oblique angle joint design to increase surface area of the interface and with Nagano’s friction stir welding tool to form a joint with excellent welding quality. Id. Appellant contends the Examiner’s rejection is in error because the Examiner states in the Advisory Action dated Feb. 3, 2020, that the Specification does not disclose the friction weld tool angle has to match the chamfer along the butting surface to form the claimed blowout feature. Appeal Br. 11. Appellant directs us to the Specification’s pages 6 and 7 as disclosing “the weld joints are angled along angle theta, such that the blowout feature matches the oblique angle of the abutting faces.” Appeal Br. 11-12. Appellant contends blowout feature 118 and weld joint 114 are separate features that the Examiner conflates and annotates the Specification’s Figure 2 below for identification. Appeal 2021-001453 Application 15/410,135 6 Annotated Figure 2 (above left) colors in blowout feature 118 as a solid black parallelogram labelled “Q” and is shown side by side with originally filed Figure 2 (above right). Id. Appellant distinguishes Hori, Kim, and Nagano as having weld joints perpendicular to the main surface created by plunging a tool directly perpendicular to the main surface regardless of whether a channel cover has angled faces. Id. at 12. According to Appellant, none of the weld joints disclosed in the references would be able to produce a stir weld joint that includes a blowout feature that is defined along abutting faces of the channel body and channel cover that follows the oblique angle relative to the main surface, as recited in the independent claims. Id. Appellant’s arguments do not persuade us that the Examiner reversibly erred in rejecting claim 1 over the cited prior art references. We agree with the Examiner that the Specification does not indicate that the welding tool must be plunged at an oblique angle relative to the main surface to form a friction stir welded component comprising a blowout feature that is defined along abutting faces of the channel body and channel cover that Appeal 2021-001453 Application 15/410,135 7 follows the oblique angle relative to the main surface. Ans. 7. As the Examiner points out, Appellant does not provide any details why the friction stir welding tool must be plunged at an oblique angle. Id. Appellant’s mere arguments in the Appeal Brief and conclusory statements that the recited blowout implies a particular tooling method that is neither recited in claim 1 nor disclosed in the Specification cannot take the place of objective evidence. See, e.g., In re De Blauwe, 736 F.2d at 705; In re Lindner, 457 F.2d 506, 508 (CCPA 1972). As such, Appellant’s arguments distinguishing the cited prior art references are based on a limitation not recited in the claim. Limitations not appearing in the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In the Reply Brief, Appellant asserts “[i]t is known in the art, and would be appreciated by those skilled in the art, that the ‘microstructure of the weld also changes significantly by varying the tilt angle.’” Reply Br. 3. Appellant parenthetically states “See, for example, Dialami et al. ‘Effect of the Tool Tilt Angle on the Heat Generation and the Material Flow in Friction Stir Welding,’ Metals, December 2018,” but does not indicate this evidence was previously presented. Appellant’s argument that the claimed blowout feature has the changed microstructure evidence of an angled tool based on this new evidence was not presented in the Appeal Brief, and Appellant has not proffered a showing of good cause explaining why the argument could not have been presented in the Appeal Brief. Therefore, we will not consider this new and untimely argument in our assessment of the Examiner's § 103 rejection. See 37 C.F.R. §§ 41.37, 41.41. Appellant also argues in the Reply Brief that the blowout produced by Nagano’s angled tool would not produce the claimed blowout. Reply Br. 5. Appeal 2021-001453 Application 15/410,135 8 This argument is not persuasive of error because the rejection is based on the combination of Nagano with Hori and Kim. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellant’s further assertion that the claimed blowout has features depicted in Appellant’s Figures with respect to a centerline (Reply Br. 3-4) is not persuasive of error because it would require reading limitations into the claim from the Specification. See In re American Academy Of Science Tech Center, 367 F.3d 1359, 1369 (Fed. Cir. 2004) (cautioning against reading limitations from a specification into a claim). Accordingly, we affirm the Examiner’s rejection of claim 1 under 35 U.S.C. § 103. CONCLUSION For these reasons, we sustain the Examiner’s rejections of claims 1- 15 under 35 U.S.C. § 103. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4, 6, 8, 9, 11, 13, 15 103 Hori, Kim, Nagano 1, 2, 4, 6, 8, 9, 11, 13, 15 1, 2, 4, 6-9, 11, 13-15 103 Seo, Kim, Nagano 1, 2, 4, 6-9, 11, 13-15 3, 10 103 Hori, Kim, Nagano, JP ’046 3, 10 Appeal 2021-001453 Application 15/410,135 9 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 3, 10 103 Seo, Kim, Nagano, JP ’046 3, 10 5, 12 103 Hori, Kim, Nagano, Ishikawa 5, 12 5, 12 103 Seo, Kim, Nagano, JP ’046 5, 12 Overall Outcome 1-15 TIME PERIOD FOR RESPONSE 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