UNITED TECHNOLOGIES CORPORATION

Patent Trials and Appeals BoardMar 23, 2021

2020002204 (P.T.A.B. Mar. 23, 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. 15/851,765 12/22/2017 Mario P. Bochiechio 62399US03; 67097-2461US2 4826 54549 7590 03/23/2021 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 West Maple Road Suite 350 Birmingham, MI 48009 EXAMINER YUEN, JACKY ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 03/23/2021 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): ptodocket@cgolaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MARIO P. BOCHIECHIO, YEE LING KWAN, and CARL R. VERNER Appeal 2020-002204 Application 15/851,765 Technology Center 1700 ____________ Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and N. WHITNEY WILSON, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 6, 7, 12, 14, and 15. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Raytheon Technologies Corporation, formerly United Technologies Corporation. See Update to Real Party in Interest, filed Apr. 23, 2020. Appeal 2020-002204 Application 15/851,765 2 Appellant’s invention is directed to a shot tube for injecting molten metal into a die cast mold (Spec. ¶ 2). Claim 1 is representative of the subject matter on appeal: 1. A shot tube comprising: an inner bore for delivering molten material into a die- cast mold, said shot tube having an outer peripheral surface with at least one surface for receiving a locking member to lock the shot tube into a fixed mold portion and an alignment structure for properly aligning the shot tube in the fixed mold portion; and an opening for receiving molten material into the inner bore; said surface includes a pair of surfaces formed at an outer periphery of the shot tube, and said pair of surfaces are flats; and said alignment structure includes a notch at a forwardmost end of said shot tube and the flats spaced in a rearward direction relative to said notch, and toward said opening relative to said notch. Appellant appeals the following rejections: 1. Claims 1, 4, 6, 7, 12, 14, and 15 are rejected under 35 U.S.C. § 112, ¶ 2 as being indefinite. 2. Claims 1, 4, 6, and 14 are rejected under 35 U.S.C. § 102(e) as anticipated by Donahue (US 9,114,455 B1, Aug. 25, 2015). 3. Claims 1, 4, 6, and 14 are rejected under 35 U.S.C. § 103 as unpatentable over Shimmell (US 5,730,204, Mar. 24, 1998) in view of Donahue and Hammerer (US 4,899,804, Feb. 13, 1990). Appeal 2020-002204 Application 15/851,765 3 4. Claims 7, 12, and 15 are rejected under 35 U.S.C. § 103 as unpatentable over Shimmell in view of Donahue, Hammerer, and Nishi (JP H08243711 A, Sept. 24, 1996 (as translated)). FINDINGS OF FACT & ANALYSIS Rejection (1): § 112, ¶ 2 The Examiner finds that claim 1 recites “at least one surface” in line 3 and the claim also recites “said surface includes a pair of surfaces” in line 7 which is a narrower statement of the range/limitation (Final Act. 5). The Examiner explains that a claim that recites a broad range or limitation together with a narrow range or limitation that falls within the broad range in the same claim is considered indefinite (Final Act. 5). Appellant argues that a person of ordinary skill in the art would understand that the later limitation merely limits the initial limitation (Appeal Br. 2). Claim 1 recites: “A shot tube comprising: an inner bore for delivering molten material . . . said shot tube having an outer peripheral surface with at least one surface for receiving a locking member . . . said surface includes a pair of surfaces formed at an outer periphery of the shot tube . . . .” We interpret the recitation of said surface includes a pair of surfaces as further limiting the “at least one surface” recited earlier in the claim. Appellant’s Figure 3 shows that a peripheral surface can have a pair of (i.e., two) flat surfaces 108 (Spec. ¶ 43). In other words, the claim is limited to the “at least one surface” including two flat surfaces. We do not find the claim to be indefinite. Appeal 2020-002204 Application 15/851,765 4 We reverse the Examiner’s § 112, ¶ 2 rejection. Rejection (2): Anticipation Appellant’s arguments focus on the subject matter of claims 1 and 4 (Appeal Br. 3–4). Claims 6 will stand or fall with claim 4 and claim 14 will stand or fall with claim 1. Claim 1 The Examiner finds that Donahue anticipates the subject matter of claim 1 (Final Act. 6–7). The Examiner find that Donahue teaches a shot tube having the same structure as recited in claim 1 (Final Act. 6–7). Shown below is an Examiner annotated figure of Donahue’s Figure 17. Appellant argues Donahue does not disclose the purpose of the flat portions on the shot tube (Appeal Br. 3). Appellant argues the flat portions in claim 1 are spaced into the axial length of the cylindrical outer periphery Appeal 2020-002204 Application 15/851,765 5 to permit the locking members to engage with the flat portions and lock the tube in place (Appeal Br. 3). Appellant contends Donahue’s flat portions would not be capable of locking the shot tube in place (Appeal Br. 3). Appellant further argues the notch in claim 1 is for aligning the shot tube, however, Donahue does not disclose the purpose of the notch at the end of the shot tube (Appeal Br. 3). Claim 1 functionally recites “at least one surface for receiving a locking member to lock the shot tube into a fixed mold portion” and “an alignment structure for properly aligning the shot tube in the fixed mold portion.” The at least one surface is functionally described in its relationship to the locking member. Claim 1 further recites that the surface includes a pair of flat surfaces at the outer periphery of the shot tube. Claim 1 does not recite the structure of the surfaces other than to recite that the surfaces are flat and receive a locking member. The Specification describes that plungers 104 (e.g., locking member) are biased into the flats 108 (Spec. ¶ 39). The Specification discloses that other shaped surfaces may be used to receiving a locking member, such as plungers (Spec. ¶ 41). Claim 1 does not recite that the surfaces are recessed or formed as a slot or channel in the shot tube. Claim 1 also does not limit the locking member to a plunger. Stated differently, claim 1 does not exclude other forms of locking member and flat surface engagement. Similarly, the alignment structure in claim 1 is functionally described as properly aligning the shot tube. The only structural limitations for the alignment structure are that the structure is a notch at a forwardmost end of the shot tube with the flats spaced rearwardly from the notch and toward the opening for receiving molten material relative to the notch (claim 1). Appeal 2020-002204 Application 15/851,765 6 With this claim construction in mind, we are unpersuaded by Appellant’s arguments. Although Donahue does not disclose the function of the flat surfaces or notch in the shot tube shown in Figure 16, Donahue’s shot tube nonetheless has a structure that meets the limitations of claim 1. Specifically, Donahue’s shot tube has a pair of flat surfaces and a notch at the forward most end of the shot tube as found by the Examiner (Final Act. 6–7). Donahue’s structure is identical to the structure required by claim 1. The Examiner has established, based on identity of structure, that Donahue’s structure would have been capable of performing the recited functions (Final Act. 6). See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997). Upon the Examiner establishing identity of structure, the burden shifts to Appellant to show that the prior art structure does not inherently possess the functionally defined limitations of the claimed apparatus. Id. Appellant’s mere argument that the flat surfaces in Donahue do not act to receive a locking member due to their structure is insufficient to meet that burden (Appeal Br. 3). Rather, the Examiner finds that Donahue’s flat surfaces are capable of receiving a locking member such as plungers or clamps which would lock the shot tube by preventing rotation or movement (Ans. 4). Appellant argues the Examiner’s finding that Donahue’s flat surfaces could receive clamps or plungers to hold the shot tube is speculative and hindsight driven (Reply Br. 2). Claim 1 is directed to the shot tube alone. The Examiner has established identity of structure as recited in claim 1. Appellant has not dispensed with the burden to show that Donahue’s shot tube structure with the flat surfaces is incapable of receiving a locking member. Schreiber, 128 F.3d at 1478. The Examiner correctly finds that Appellant has proffered no evidence to support the argument that Donahue’s Appeal 2020-002204 Application 15/851,765 7 flat surfaces would not lock the shot tube when engaged with a locking member (Ans. 4). Claim 4 Claim 4 depends from claim 1 and recites “wherein said shot tube outer periphery is cylindrical other than at the flats.” The Examiner finds that Donahue shows in Figures 16 to 20 that the shot tube is cylindrical other than at areas where the flats are located (Final Act. 7). The Examiner finds that the main body of Donahue’s shot tube is cylindrical with the collared portion of the shot tube also cylindrical except for the flat surfaces (Ans. 5). Appellant argues Donahue’s enlarged collar with the flat portions is not cylindrical when taken with the remainder of the shot tube (Appeal Br. 4). Appellant contends Donahue’s shot tube contains a cylindrical portion with an enlarged collar (Appeal Br. 4). Appellant’s arguments are not persuasive because as shown in Donahue’s Figures 16 to 20, the shot tube 2 is generally cylindrical except at the those areas where the flat portions are located. On this record, we affirm the Examiner’s § 102(e) rejection of claims 1, 4, 6, and 14. Rejections (3) and (4): § 103 Appellant argues claims 1 and 4 (Appeal Br. 4–5). With regard to claim 4, Appellant relies on the same unpersuasive arguments made with regard to the § 102(e) rejection over Donahue (Appeal Br. 5). We are unpersuaded by these arguments for the same reasons discussed above. Appeal 2020-002204 Application 15/851,765 8 Appellant’s arguments regarding rejection (4) amount to Nishi not curing the argued deficiencies in Shimmell, Donahue, and Hammerer (Appeal Br. 5). Therefore, claims 7, 12, and 15 will stand or fall with our analysis of the § 103 rejection of claim 1. With regard to claim 1, Appellant argues that there is no reason to modify Shimmell based on the unnumbered flat structure in Donahue (Appeal Br. 4). Appellant contends Donahue’s flat structures could be performing any number of functions besides preventing rotation (Appeal Br. 4). Appellant argues that the Examiner has not shown that Shimmell would benefit from rotation prevention (Appeal Br. 4). The Examiner finds that the reason to include Donahue’s flat surfaces on Shimmell’s collar is that each of the elements is known, and the advantage of flat surfaces to prevent rotation between parts is known (Ans. 6). The Examiner determines that a person skilled in the art would be able to fit the teachings of Shimmell, Donahue, and Hammerer together like pieces of a puzzle (Ans. 6). Specifically, in light of Donahue’s teaching to use flat surfaces and Hammerer’s teaching that flat surfaces prevent rotation, a person skilled in the art would have modified Shimmell’s flange to include flat portions to prevent rotation between parts (Final Act. 8–9). We agree with the Examiner’s findings and conclusions on page 6 of the Answer and pages 8–9 of the Final Action. On this record, we affirm the Examiner’s § 103 rejection over Shimmell in view of Donahue and Hammerer, and the § 103 rejection over Shimmell in view of Donahue, Hammerer, and Nishi. Appeal 2020-002204 Application 15/851,765 9 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 6, 7, 12, 14, 15 112, ¶ 2 Indefiniteness 1, 4, 6, 7, 12, 14, 15 1, 4, 6, 14 102(e) Donahue 1, 4, 6, 14 1, 4, 6, 14 103 Shimmell, Donahue, Hammerer 1, 4, 6, 14 7, 12, 15 103 Shimmell, Donahue, Hammerer, Nishi 7, 12, 15 Overall Outcome 1, 4, 6, 7, 12, 14, 15 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED