Ex Parte 6508393 et al

Board of Patent Appeals and Interferences

Feb 6, 2008

95000030 (B.P.A.I. Feb. 6, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________
WATSON & CHALIN MANUFACTURING, INC.
(United States Patent 6,508,393),
Patent Owner-Appellant,
v.
HENDRICKSON USA, L.L.C.,
Third-Party Requester-Respondent.
___________
Appeal 2007-2782
Inter Partes Reexamination Control 95/000,030
Technology Center 3900
___________
DECIDED: February 6, 2008
___________

Before JOHN C. MARTIN, LEE E. BARRETT, and MARK NAGUMO,
Administrative Patent Judges.
BARRETT, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. §§ 134(b) and 315(a) by
the Patent Owner after a Right of Appeal Notice finally rejecting claims 1-6
and 8-48. Claim 7 has been canceled.
We affirm-in-part and enter new grounds of rejection.
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INTER PARTES REEXAMINATION
A request was filed on December 3, 2003, by Third-Party Requester
The Boler Company ("Requester"), for inter partes reexamination of U.S.
Patent 6,508,393 (the '393 patent) issued January 21, 2003, to inventor
Thomas N. Chalin, based on Application 09/814,535, filed March 22, 2001,
entitled "Suspension System Including Arm Having Zero Clearance Axle
Connection," and assigned to real party in interest Watson & Chalin
Manufacturing, Inc. ("Patent Owner"). The rights of the original Requester
real party in interest, The Boler Company, have been assumed by the new
real party in interest, Hendrickson USA, L.L.C.

BACKGROUND
The invention relates to an axle/suspension system for trucks and
tractor-trailers. Figure 1 of the '393 patent is reproduced below:

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Figure 1 shows an axle/suspension system 10. The suspension
system 10 includes a hanger bracket 12, an air spring 14 for supporting a
vehicle frame 16 above the suspension system, a pivot arm assembly 18
pivotally attached to the hanger 12 by bushing 20, a shock absorber 22 to
dampen movement of the pivot arm assembly 18, and an axle 24 ('393
patent, col. 2, ll. 30-44). In particular, the invention relates to a method for
mounting the axle 24 to the pivot arm assembly 18. The structure for
connecting the axle 18 to the pivot arm is called an "axle connector."
The '393 patent explains that in one prior art suspension system, an
axle connector is made up of multiple pieces, the multiple pieces are then
assembled and clamped to the axle using a separate clamp, and the multiple
pieces are welded to the axle. This has the disadvantages of requiring
multiple axle connector pieces and requiring a clamp to clamp the axle to the
axle connector before welding. See col. 1, ll. 18-27.
The '393 patent also explains that in another prior art suspension
system, the axle connector is pressed onto an end of the axle. This has the
disadvantages of requiring a special press in order to accommodate the
length of an axle and requiring machining to precise tolerances to achieve an
interference fit between the parts. See col. 1, ll. 28-33.
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Figure 3 of the '393 patent is reproduced below.

Figure 3 depicts the pivot arm assembly 18 having a bushing tube 26,
a pivot arm 28, a rear support plate 34, and an axle connector 36 for
attaching to the axle (col. 2, ll. 47-49).
The solution to the prior art problems described in the '393 patent is a
single-member axle connector 36 configured so that it extends more than
halfway around the axle 24, without completely encircling the axle (col. 2,
ll. 54-65). The axle connector 36 has an inner radius Rc which is less than
an outer radius Ra of the axle 24 (col. 3, ll. 3-5). The axle is laterally
inserted into the axle connector, which spreads apart the ends 40 of the axle
connector and elastically deforms the axle connector. Once the ends are past
the diameter of the axle, the axle connector springs back and grips onto the
outer diameter of the axle (col. 2, l. 66 to col. 3, l. 9). The benefits of this
attachment method are said to be: the single-piece axle connector eliminates
extra pieces, thereby reducing the number of pieces that must be inventoried
and assembled; the spring force caused by deformation of the axle connector
clamps the axle connector to the axle, which eliminates the need for separate
clamps during welding; no special press is required because the axle is
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inserted laterally instead of from the end; and close tolerance machining for
the axle connector radius Rc and the axle 24 radius Ra is not required
because the elastic grip of the axle connector will compensate for a
relatively wide range of the radii Rc and Ra and eliminate clearance between
the axle connector and the axle (col. 3, ll. 10-24).
The '393 patent describes three ways to order the steps of assembling
the axle to the axle connector: (1) attaching the axle connector to the axle,
welding the axle connector to the axle, and then welding the axle connector
to the pivot arm; (2) attaching the axle connector to the axle, welding the
axle connector to the pivot arm assembly, and then welding the axle
connector to the axle; and (3) welding the axle connector to the pivot arm
assembly, and then attaching the axle connector to the axle (and, implicitly,
then welding the axle connector to the axle). See col. 3, ll. 34-41.
Not all of the described features appear in every claim.
Claim 1 is reproduced below (the addition to the original patent
claim 1 is underlined, see 37 C.F.R. §§ 1.941 and 1.530(f)).

1. A method of manufacturing a vehicle suspension system, the
method comprising the steps of:

welding an axle connector to an axle, without first pressing the
axle connector onto the axle from an end of the axle, and without
using a clamp to hold the axle connector in contact with the axle; and

then welding the axle connector to a pivot arm.

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REFERENCES

Pierce (Pierce PCT) WO 00/01548 Jan. 13, 2000

Pierce (Pierce US) US 6,508,482 B2 Jan. 21, 2003
(filed Dec. 15, 2000)

The Examiner also refers to the following evidence submitted by the
Requester:

Affidavit of Phil Pierce dated May 19, 2004 (Pierce Affidavit).

Hendrickson drawings, Figures 1 and 2.

Stress Engineering Services, Inc., Final Report For Press Fit Analysis
of Suspension Beam, November 24, 1998 (Stress Report), pp. 1 and
4-6.

REJECTIONS
Claims 1-6, 8-17, 19-26, 28-41, and 43-48 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Pierce PCT.
Claims 1-6, 8-17, 19-26, 28-41, and 43-48 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Pierce US.
Claims 18, 27, and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pierce PCT.
Claims 18, 27, and 42 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Pierce US.

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DISCUSSION
Pierce references
Pierce US includes essentially the same disclosure as Pierce PCT, but
includes additional disclosure related to a third embodiment in new
Figures 15-22. For simplicity, we cite mainly just to Pierce PCT because it
is a statutory bar reference under 35 U.S.C. § 102(b). All rejections affirmed
over Pierce PCT will also be affirmed over Pierce US because of the
common disclosure. However, some rejections based on Pierce PCT are
reversed but are affirmed based on Pierce US due to the added disclosure of
the third embodiment. The references are referred to as "Pierce" unless it is
necessary to distinguish Pierce PCT from Pierce US.

Arguments not raised are waived
Arguments not raised are deemed to have been waived. See 37 C.F.R.
§ 41.67(c)(1)(vii) ("Any arguments or authorities not included in the brief
. . . will be refused consideration by the Board, unless good cause is
shown."); In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004) ("Just as it is
important that the PTO in general be barred from raising new arguments on
appeal to justify or support a decision of the Board, it is important that the
applicant challenging a decision not be permitted to raise arguments on
appeal that were not presented to the Board." (Footnote omitted.)).
Where claims are argued as a group by Patent Owner, only a single
claim in the group needs to be addressed. See 37 C.F.R. § 41.67(c)(1)(vii)
("Notwithstanding any other provision of this paragraph, the failure of
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appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.").

Claim interpretation
Proper claim interpretation necessarily precedes a determination of
patentability. See Gechter v. Davidson, 116 F.3d 1454, 1457 (Fed. Cir.
1997) ("Implicit in our review of the Board's anticipation analysis is that the
claim must first have been correctly construed to define the scope and
meaning of each contested limitation.").
Although neither Patent Owner nor the Examiner argue about claim
interpretation, the meanings of the terms "elastically deforming" and
"permitting the axle connector to spring back" are important in deciding the
anticipation rejection.

Elastic deformation
One dictionary definition of "deform" is "to change the shape of (a
body) by the action of forces." Webster's Third New International
Dictionary (Unabridged) 593 (G.&C. Merriam Co. 1971). This is consistent
with the meaning in the engineering art, as defined in the undergraduate
textbook by Edward F. Byars and Robert D. Snyder, Engineering Mechanics
of Deformable Bodies 3 (Int'l Textbook Co. 1967):

The primary reason for the existence of an engineering material,
member, or structure is to resist loads. Occasionally, other factors
such as appearance are important. As far as this study of deformable
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bodies is concerned, however, the main function of an engineering
member is to resist loads. Engineering mechanics of deformable
bodies deals with the relationships between the loads applied to the
bodies and the resulting internal effects and dimension changes of the
body. . . . Generally, the internal-force intensities are known as
stresses and the dimension changes are called deformations.

Engineering Mechanics 25 further states:

As stated earlier, mechanics of deformable bodies concerns the
relationships between external loads and the resulting internal force
intensities and dimension changes. Chapter 1 dealt with the internal
force intensities, which were defined as stresses. This chapter will be
a similar treatment of dimension changes.

The primary function of an engineering member is to resist
loads. When loads of any type are applied to a member, the member
will always undergo dimension changes. In other words, the loads
alter the size and/or the shape of the body. Such dimension changes
may or may not be visible to the naked eye depending on the degree to
which the loads alter the body.
A dimension change is called a deformation and will be
denoted by the letter e.

One definition of "elastic," as applied to solids, is "capable of
recovering size and shape after deformation." Webster's at 730. "Elastic
deformation" is contrasted with "plastic deformation" in Engineering
Mechanics 60-62:

Elastic action. Elastic is an adjective meaning "capable of
recovering size and shape after deformation." If a material is
subjected to load, deformation will result. If, upon release of the load,
the material returns to its original size and shape, it has undergone
elastic action or elastic deformation. The stress was an elastic stress
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within the elastic range. Elastic limit is the maximum uniaxial stress
that can be applied to a material without causing any permanent
deformation.

. . .

Plastic action. Plastic deformation, or permanent set, is any
deformation that remains in the material after the load has been
removed. All deformation is composed of plastic and elastic
deformation. However, when the plastic deformation is negligible
compared to the elastic deformation, the material is said to be elastic,
and vice versa.

Therefore, we understand "elastic deformation" to mean "capable of
recovering size and shape after a dimension change due to a force or load."
The elastic deformation of the axle connector is critical to the
inventions described in the '393 patent. According to the '393 patent, "[t]he
axle connector is uniquely configured and is an important aspect of the
method of manufacturing the suspension system 10" (col. 2, ll. 55-57). The
'393 patent discloses that "the axle connector 36 is configured so that it
extends more than halfway about the axle 24, without completely encircling
the axle" (col. 2, ll. 59-61; Figure 3). The '393 patent further discloses:

In the method of manufacturing the suspension system 10, the
axle connector 36 is attached to the axle 24 by elastically deforming
the axle connector, so that it fits over the outer diameter of the axle.
The axle connector 36 then springs back and grips onto the outer
diameter of the axle. Thus, when the axle connector 36 is formed, it
has an inner radius Rc which is less than an outer radius Ra of the
axle 24. The axle connector 36 is elastically spread, so that its ends
40 fit over the outer diameter of the axle 24 (which also causes its
radius Rc to become greater than the axle radius Ra), and then the axle
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connector is allowed to spring back onto the outer diameter of the
axle.

(Col. 2, l. 66 to col. 3, l. 9.) Therefore, elastic deformation in the axle
connector described by the '393 patent is produced by two different
geometrical relationships:
(1) The axle connector has an inner radius Rc which is less than the
outer radius Ra of the axle, so that when the axle is inserted into the smaller
recess the axle connector must be expanded (deformed) to fit around the
axle. The axle connector holds the axle in “an elastic grip” (col. 3, l. 17),
i.e., "without using a clamp to hold the axle connector in contact with the
axle" (claim 1), because the axle connector tries to return to its original
shape due to being elastically deformed.
(2) The axle connector wraps more than halfway around the axle,
causing the ends 40 to be “elastically spread” (col. 3, l. 6) apart (deformed)
while the axle is being forced between the ends. The axle connector
“spring[s] back” (col. 3, l. 9) after the ends pass over the center of the axle
because the axle connector was being elastically deformed (as opposed to
plastically deformed, where there would be no tendency to return to its
original shape). Of course, it is necessary for the axle connector to have an
inner radius less than the outer radius of the axle, as described in (1), in
order for the axle connector to grip the axle once it inserted; if the axle had a
smaller diameter than the axle connector it would fit loosely.

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Permitting the axle connector to "spring back"
Dependent claim 16 recites "the steps of elastically deforming the axle
connector over the axle, and then permitting the axle connector to spring
back, thereby holding the axle connector in contact with the axle."
Dependent claim 22 recites "permitting the axle connector to spring back
after the enlarging step." An issue regarding claim 16 is whether "permitting
the axle connector to spring back" requires actual movement or just the
capability of movement due to elastic deformation of the axle connector.
Some definitions of the verb "spring" are "(1): to undergo a sudden or
violent change in place or position . . . (2): to have or display resiliency :
move or be capable of moving by elastic force ." Webster's 2209. One definition of "back"
is "to or toward a former condition : to or toward a former or original state
(as of activity, consciousness, or productivity." Id. at 157.
As explained above, in the '393 patent the axle connector extends
more than halfway about the axle surface (col. 2, ll. 56-60), and the ends of
the axle connector are elastically spread apart during insertion of the axle, so
the ends of the axle connector will "spring back," i.e., actually move back
towards one another, once the ends are forced past the center of the axle
(col. 2, l. 66 to col. 3, l. 9). The '393 patent also explains that if the axle
connector has a smaller diameter recess than the axle, and the axle connector
is elastically deformed by the axle, the axle connector will "spring back"
onto the axle (col. 3, ll. 3-9). However, this description is based on the
preceding paragraph where the axle connector is described as extending
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more than halfway around the axle (col. 2, ll. 58-60). If the axle connector
did not extend more than halfway around the outside surface of the axle, the
axle connector would be elastically deformed by the axle due to its larger
diameter and thus would exert compressive force on the axle after it is
deformed, but it would not move back towards its original position as it is
prevented from doing so by the axle.
We interpret "permitting the axle connector to spring back," consistent
with the Specification, to require actual movement in a direction back
towards (although it need not reach) an original position, not just a tendency
to move towards the original position. This interpretation is also consistent
with the fact that "permitting the axle connector to spring back" in the
claims is recited as a separate method step which occurs after the step of
elastically deforming the axle connector. Our interpretation of "permitting
the axle connector to spring back" implies axle connector structure which
moves after the step of elastically deforming, such as an axle connector
extending more than 180° about the axle outer surface as in claim 6, 12, and
39, where the ends are free to move back towards their original position after
the axle is inserted (these claims do not need to recite the step of "permitting
the axle connector to spring back," because springing back is inherent in the
recited structure).

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Principles of law
Absent claim language requiring the steps of a method claim to be
performed in a specific order, it is improper to require the steps to be
performed in the order listed. Interactive Gift Express, Inc. v. Compuserve
Inc., 256 F.3d 1323, 1342-43 (Fed. Cir. 2001).
All the disclosures in a reference must be evaluated, including
nonpreferred embodiments. See In re Inland Steel Co., 265 F.3d 1354, 1361
(Fed. Cir. 1354).
"Anticipation is established only when a single prior art reference
discloses, expressly or under principles of inherency, each and every
element of a claimed invention." RCA Corp. v. Applied Digital Data
Sys., Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984).
"Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
circumstance is not sufficient." In re Oelrich, 666 F.2d 578, 581 (quoting
Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939)).
Extrinsic evidence may be considered to demonstrate that missing
descriptive matter is necessarily present (inherent). See Scripps Clinic &
Research Foundation v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed. Cir.
1991) ("The role of extrinsic evidence is to educate the decision-maker to
what the reference meant to persons of ordinary skill in the field of the
invention, not to fill gaps in the reference.").

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Pierce
The Pierce references are "directed to a trailing arm rigid beam-type
axle/suspension system for trucks and tractor-trailers in which the axle is
securely and efficiently mounted directly to the beams without any
additional mounting hardware such as bolts, brackets and the like"
(p. 1, ll. 10-141).
Pierce explains in the Background of the Invention that U.S. Patent
5,375,871 (Mitchell) describes a prior art axle/suspension system wherein
"[t]he upper portion of the axle is seated in a discrete shell member having a
curved configuration which is complementary to the curvature of the axle"
(p. 3, ll. 21-33). Figure 1 of Mitchell is reproduced below:

Figure 1 depicts an axle suspension system wherein an axle (shown as
a shaded circle) is attached to a semicylindrical shell 32.

1 For simplicity, all cites are to Pierce PCT.
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According to Pierce, the problem with the mounting arrangement in
Mitchell is that the loose seating of the axle in the shell 32 causes increased
stresses:

The relatively loose seating of the axle in the shell, whereby areas of
clearance exist between the outer surface of the upper portion of the axle
and the lower surface of the shell, intensifies the stress placed on the
welds by the various loads. More particularly, especially during
conditions of trailer lean which causes the aforementioned torsional loads,
the horizontal welds are subjected to a cycling range of tensile and
compressive loads, and areas of clearance between the axle and beam
mount widen this cycling range thus placing increased stress on the welds.

(P. 4, ll. 6-14.)
Pierce solves these problems in a preferred embodiment by creating a
tight fit between the axle and the axle mounting plate:

These problems have been solved by the present invention through the
use of a pre-assembled rigid or spring beam having an axle mounting
plate formed with a recess which is slightly smaller than or the same
size as the smallest axle which will be seated therein, and by seating
the axle in the recess under force sufficient to deform a round axle
into a generally oval or elliptical shape at the area of axle mounting to
the beam. Such a tight fit eliminates clearance and creates intimate
contact between the axle and the axle mounting plate of the beam so
that a preload or compression occurs at the interface between the outer
surface of the axle and the axle contacting surface of the axle
mounting plate. This intimate contact strengthens the axle against
loads and resulting stresses encountered during operation of the
vehicle and eliminates the need for an unusually robust beam and
significant accessory hardware for supporting the axle.

(P. 4, l. 30 to p. 5, l. 12.)
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Pierce discloses that "beam 24 preferably is preassembled prior to
mounting axle 28 thereon" (p. 12, ll. 3-4).
Figure 1 of Pierce is reproduced below.

Figure 1 depicts one suspension assembly 21 of an axle/suspension
system 20. A hanger 22 is mounted to longitudinally extending rails 31 that
are attached to vehicle frame 30. A trailing arm rigid beam 24 is pivotally
attached to the hanger 22 by bushing assembly 23. An axle 28 is welded to a
recess 46 in an axle mounting plate of the beam 24. An air spring extends
between the rear end of the beam 24 and frame rail 31. A shock absorber 26
extends between the hanger 22 and the beam 24. See P. 9, l. 2 to p. 10, l. 7.
The assembled beam 24 shown in Figures 1-3 includes: an inverted
U-shaped top channel 40 having a pair of spaced-apart sidewalls 42 with
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semi-circular shaped cutouts 45 (p. 10. ll. 13-19; p. 11, ll. 3-6); a bushing
assembly 23 including a beam mounting tube 32, into which is press fitted a
pivot bushing 34 surrounding a metal sleeve 38 (p. 9, ll. 16-24); an inverted
U-shaped beam insert 55 disposed inside the beam top channel 40 (p. 11,
ll. 20-26); an axle mounting plate 43 including a front portion 44 and a rear
portion 36, with the rear portion 36 having a semi-circular shaped recess 46
(p. 10, l. 20 to p. 11, l. 10); an angle-shaped plate 47 having a vertical front
portion 49 and a horizontal rear portion 50 for mounting and supporting the
air spring 25 (p. 11, ll. 11-16); and a U-shaped rib 51 (p. 11, ll. 16-19).
"Preassembly" of the beam 24 includes at least welding the axle
mounting plate 43 to the beam sidewalls 42. Pierce states that "when
beam 24 is preassembled the axle mounting plate rear portion seats in
sidewall cutouts 45" (p. 11, ll. 9-10) and is welded to the sidewalls 42:

It is important to note that during preassembly of beam 24, a single
continuous weld 58 is utilized to securely interconnect each beam
sidewall 42 to its respective insert sidewall 57 and axle mounting
plate 43, thereby eliminating the need for subassembly of each
component.

(P. 11, ll. 26-30.)
Pierce states that "beam 24 preferably is preassembled prior to
mounting axle 28 thereon" (p. 12, ll. 3-4), which indicates that while it is
preferred, the beam does not have to be preassembled prior to mounting the
axle thereon. Pierce also explains that "it is understood that beam 24 can be
incorporated into suspension assembly 21 without preassembly of the beam,
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and the concept of the present invention will be unaffected." (P. 10,
ll. 10-13.)
Pierce discloses that the recess in the axle mounting plate can have a
smaller diameter than the axle and that the axle is forced into the recess:

As best shown in FIG. 11, axle mounting plate rear portion 36
defines semicircular recess 46 having a diameter D1 which is equal to
or slightly smaller than an outside diameter D2 of the smallest axle
which will be mounted on beam 24. . . . Axle 28 is force fit into
recess 46 by the application of an appropriate amount of force using
any suitable means such as a hydraulic press (not shown).

(P. 12, ll. 10-17.)2
Pierce discloses that forcing the axle into the recess creates generally
uninterrupted contact with the recess 46 in the axle mounting plate 43:

More specifically, merely force fitting axle 28 into beam recess 46
only would serve to create generally uninterrupted contact and
possibly areas of clearance within the recess between the outer surface
of the upper portion of the axle and the bottom surface of axle
mounting plate 43.

(P. 12, ll. 24-28.)
In the preferred embodiment, "[t]he appropriate force or load is
applied to axle mounting plate rear portion 36 not only to force fit axle 28
into recess 46, but also to intentionally deform the axle in the axle mount

2 Although Pierce explains that the recess diameter can be equal to or
slightly smaller than the axle diameter, the asserted advantages of the
disclosed suspension system, addressed infra, appear to stem from having
the recess diameter be smaller than the axle diameter.
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area from its generally round cross-sectional shape to a generally oval or
elliptical shape, as best shown in FIG. 12" (p. 12, ll. 20-24).
The purpose of the force fit is to eliminate any clearance between the
outer surface of the upper portion of the axle and the bottom surface of the
axle mounting plate and to create a constant preload or compression
condition between the contacting surfaces:

However, the present invention goes well beyond a simple force or
press fit, such that the application of an appropriate amount of force to
axle mounting plate 43 bearing on axle 28, eliminates any clearance
between the outer surface of the upper portion of the axle and the
bottom surface of the axle mounting plate. Such lack of clearance
effects intimate contact between the outer surface of the upper portion
of axle 28 and the bottom surface of axle mounting plate 43 in the
area of recess 46, resulting in a preload or compression condition
between the contacting surfaces.

(P. 12, l. 28 to p. 13, l. 6; see also p. 5, ll. 5-9.)
Pierce recognizes that deformation of the axle is not necessarily
required to eliminate clearance between the axle and the mounting plate:

It is believed that such a preload or compression condition can exist
without actual deformation of axle 28, as long as lack of clearance
between the axle and the axle mounting plate exists.

(P. 13, ll. 6-8.)
Another important feature of Pierce is the manner of welding the
preassembled beam 24 to the axle. Pierce discloses that a cutout 60 is
formed in the front portion 49 of plate 47 to provide access to a window 61
in the axle mounting plate rear portion 36 (see Figure 8) and, similarly, a
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cutout 62 is formed in the axle mounting plate front portion 44 to provide
access to a window 63 formed in axle mounting plate rear portion 36 (see
Figure 9) (p. 13, ll. 17-24). Cutouts 60, 62 provide access for placing
continuous welds 71, 73 in windows 61, 63, respectively (p. 13, ll. 24-27).
As shown in Figure 8, continuous weld 71 is used to weld the peripheral
edge of window 61 in mounting plate 43 to axle 28.
Pierce states:
Without cutouts 60, 62, preassembly of beam 24 and subsequent
welding in windows 61, 63 would be impossible, resulting in the
requirement that beam 24 be built-up around axle 28 and adding
unwanted and costly assembly steps to the manufacturing process of
axle/suspension system 20.

(P. 13, l. 27 to p. 14, l. 1.) Thus, Pierce teaches that without cutouts 60, 62
for access for welding in windows 61, 63, the beam has to be built up around
the axle, which we understand would necessarily require welding the axle
mounting plate 43 to the axle 28 (e.g., by using continuous weld 71 in
window 61) prior to welding the axle mounting plate 43 to the U-shaped
channel 40.

Pierce Affidavit, Figures 1 and 2, and Stress Report
With the "Comments by Third Party Requester Under 37 CFR § 1.947
to Patent Owner's April 23, 2004, Response," filed June 24, 2004
(“Comments”), Requester submitted the Pierce Affidavit (Pierce is the first-
named inventor on the Pierce references), to which are attached
two drawings labeled Figure 1 and Figure 2 dated December 3, 1997, and an
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incomplete copy of the November 24, 1998, Stress Report.3 Requester
explains that this evidence is cited "in order to rebut the patent owner’s
Response" (Comments at 3).
The Examiner relies on the affidavit, the drawings, and the report in
the discussion of the anticipation rejection (Rgt. of Appeal Notice 25-27;
Ans. 31, 35).
The only mention of this evidence in Patent Owner's brief is in the
discussion of the rejection of claims 18, 27, and 42, wherein Patent Owner
criticizes the Examiner’s reliance (e.g., Rgt. of Appeal Notice 24) on "a
clearly biased statement provided by the third party requester" (Owner’s
Br. 22), presumably referring to the Pierce Affidavit. It is therefore
necessary to consider whether Patent Owner had any obligation to address
these documents and, if so, how to treat Patent Owner’s failure to address
them. Rejections in inter partes reexamination, like those in ex parte
reexamination, are limited to prior art consisting of patents or printed
publications. See 35 U.S.C. §§ 311(a) & 301; 37 C.F.R. § 1.906(a). The
Pierce Affidavit is clearly not prior art or a printed publication because it
was prepared during the reexamination. Figures 1 and 2 and the Stress
Report have not been shown to be publicly available so as to qualify as prior
art "publications."

3 Pages 2 and 3 are missing. Also, of the numerous figures
mentioned in pages 4-6 (i.e., Figures A1-A6, B1-B11, C1-C23, and D1-
D18), only Figures B-2 and C-3 were provided.
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In any case, because the rejection of most of the claims is based on
inherency, the above evidence can be useful if it qualifies as admissible
extrinsic evidence used to demonstrate inherency in the Pierce references.

To serve as an anticipation when the reference is silent about the
asserted inherent characteristic, such gap in the reference may be
filled with recourse to extrinsic evidence. Such evidence must make
clear that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so recognized by
persons of ordinary skill.

Metabolite Laboratories, Inc. v. Laboratory Corp. of America Holdings,
370 F.3d 1354, 1368 (Fed. Cir. 2004) (quoting Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991)). However, such
evidence must be submitted in accordance with the rules governing inter
partes reexaminations. Requester asserts that these documents are provided
"in order to rebut the patent owner’s Response" (Comments 3), presumably
to show compliance with 37 C.F.R. § 1.948(a)(2).4

4 Section 1.948 provides:

§ 1.948 Limitations on submission of prior art by third party
requester following the order for inter partes reexamination.

(a) After the inter partes reexamination order, the third party
requester may only cite additional prior art as defined under Sec.
1.501 if it is filed as part of a comments submission under Sec. 1.947
or Sec. 1.951(b) and is limited to prior art:
(1) which is necessary to rebut a finding of fact by the examiner;
(2) which is necessary to rebut a response of the patent owner; or
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Figures 1 and 2
The Pierce Affidavit states that "FIGS. 1 and 2 further show that The
Boler Company [the Third-Party Requester] contemplated attaching/welding
the axle mounting plate (axle connector) to the axle before
attachment/welding to the other portions of the suspension beam (pivot
arm)" (Pierce Affidavit ¶ 6). Although we have no reason to doubt that this
is true, the figures are being offered as independent evidence of anticipation
of claim 1 (albeit based on a document that is neither a patent nor a printed
publication and thus cannot serve as the basis for a rejection during
reexamination) rather than as extrinsic evidence of inherency in the Pierce
references or evidence tending to rebut the response by Patent Owner, as
asserted in the Comments. Therefore, the figures are not entitled to
consideration. 37 C.F.R. § 1.948. For the same reasons, we will give no
consideration to Mr. Pierce’s testimony about these figures (Pierce Aff. ¶ 6).

(3) which for the first time became known or available to the third
party requester after the filing of the request for inter partes
reexamination proceeding. Prior art submitted under paragraph
(a)(3)of this section must be accompanied by a statement as to when
the prior art first became known or available to the third party
requester and must include a discussion of the pertinency of each
reference to the patentability of at least one claim.
(b) [Reserved].

37 C.F.R. § 1.948 (2003).

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Stress Report
Most of the remainder of Mr. Pierce’s testimony is based on the Stress
Report.
Mr. Pierce’s affidavit, executed May 19, 2004, indicates that he is
employed as a Director of Engineering at Hendrickson Trailer Suspension
Systems, a position he has held for approximately twelve years (Pierce Aff.
¶ 1). However, Mr. Pierce does not claim to be, nor is he characterized by
Requester as, an expert in materials science, as is necessary for him to offer
any helpful independent insights into some of the inherency issues before us,
such as whether the axle connector undergoes elastic deformation.
However, his experience qualifies him to address some other matters before
us, such as whether the axle connector is repositionable on the axle before
being welded thereto. Also, he testifies that the Stress Report “was directed
to an axle/suspension system which is the subject of the [the Pierce
references]” (Pierce Aff. ¶ 4).
The Stress Report describes the objectives and background of the
report as follows:

1.0 Objective/Background

A stress analysis of a developmental axle/suspension beam
assembly was performed. The objectives of the analysis were
to: 1) calculate the force required to assemble the axle into the
suspension beam, and 2) perform an overall assessment of the
axle press fit including determining residual stresses in the axle
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and half wrap[5], yielding in the axle and suspension beam
caused by pressing the axle into the beam, and contact forces
(pressures) between the axle and half wrap.

Hendrickson is in the process of developing a trailer suspension
that incorporates a tubular axle that is press fit into a fabricated
suspension beam. . . . The press fitting operation has as one of
its functions to generate compressive stresses in the axle. The
compressive stresses are intended to improve the fatigue life of
the weld between the axle and beam. . . . The analysis
described in this report has as its goal to evaluate how the press
fit affects stresses in the axle, particularly to the stresses in the
weld window region of the axle.

Stress Report 4.
Testing was conducted using "a finite element model of one
suspension beam plus a portion of the axle that fits into the beam" (id.).
The finite element model "consists of one half of the suspension beam and
axle, taking advantage of the symmetry of the beam. The axle was extended
3 inches beyond the edge of the suspension beam, to include stiffening
effects of the long axle." (Id.) The beam structure depicted in Figures B-2
and C-3 of the Stress Report appears to be identical to the beam structure
depicted in Figures 1-3 and 8 of Pierce.
The Stress Report (at 5-6) describes two types of load conditions:
(a) "Load Case 1 – Interference Fit"; and "Load Case 2 – Press Fit."
The discussion of Load Case 1 explains that "[d]eformations of the axle and

5 The "half wrap" is the axle connector (Pierce Aff. ¶ 8).
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beam are shown in Figures B1 and B2" (of which Figure B2 has been
provided) and that

[a]s a consequence of the larger diameter axle fitting into the
smaller diameter cutout of the suspension beam, the axle has
ovalized to fit into the cutout while forcing the suspension
beam to 'arch' slightly to accommodate the axle. The
suspension beam 'opens up' by approximately 0.1 inches at
either end in the assembled position.

Stress Report 5. Furthermore, the half wrap thus deformed applies
compressive force to the axle: "The maximum compressive principal stresses
(SP1) occur at the pinch points in the axle, which are below the weld
windows, see Figures B8 and B9. The peak compressive principal stresses
in these areas are 80-100 ksi." Id. The contact pressures at the pinch points
are "10,000 psi and greater" (id. at 6, § 3.2).
The discussion of "Load Case 2 – Press Fit" indicates that "[t]he
overall deformation and stress response of the beam and axle for the press fit
is nearly identical to the interference fit." Id. at 6.
Mr. Pierce testified:

The Stress Report unequivocally shows that when the axle is
forced into the axle mounting plate (axle connector) recess, . . . then
elastic deformation of the axle mounting plate occurs, as well as a
preload or compression between the axle mounting plate and the axle
that occurs when the axle mounting plate "springs back" after fitting
of the axle into the axle mounting plate.

(Pierce Affidavit ¶ 7.) This characterization of the Stress Report is only
partly correct. The above-discussed parts of the Stress Report disclose that
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insertion of the axle results in elastic deformation of the axle mounting plate
(i.e., axle connector), as recited in claim 2, because the beam deforms.6
However, the Stress Report does not describe the axle mounting plate as
moving back toward its undeformed position, as we have determined is
required by the term "spring back" in claim 16. Mr. Pierce’s testimony
appears to use the term "springs back" to mean having a tendency to move
back toward the undeformed position, which we have held does not satisfy
the claims.
Mr. Pierce further testified that "if an axle is first pressed into an axle
mounting plate (axle connector) before the axle mounting plate is connected
to the other components of the suspension beam, elastic deformation of the
axle mounting plate still would occur" (Pierce Affidavit ¶ 7). This testimony
is apparently directed at dependent claim 2, which specifies that elastic
deformation of the axle connector holds it in contact with the axle before the
axle connector is welded to the pivot arm. This testimony is persuasive. It
necessarily follows that a half wrap which elastically deforms when an axle
is inserted after the half wrap has been welded to the pivot arm will
elastically deform if the axle is inserted into the half wrap before it is welded
to the pivot arm.
Mr. Pierce also states that "[t]he axle mounting plate can be
repositioned in a number of ways on the axle, such as by tapping it with a
mallet or the like, prior to welding the axle mounting plate to the axle"

6 As already noted, Patent Owner does not challenge this or any other
aspect of Mr. Pierce’s testimony.
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(Pierce Affidavit ¶ 9). This statement is relevant to claims 18, 27, and 42.
We give weight to Mr. Pierce's testimony to the extent it is offered to
establish that the axle mounting plate is capable of being repositioned on the
axle. Since the axle connector is held onto the axle by a compressive force,
only friction prevents the axle connector from being repositioned on the axle
and this friction can be overcome by mechanical force. Although Patent
Owner considers the statement to be biased (Owner’s Br. 22), Patent Owner
provides no explanation of why the statement is erroneous.

Other testimony in the Pierce Affidavit

Mr. Pierce still further states:

The Stress Report discusses yielding of the axle and suspension beam,
and also plastic strain that occurs due to this yielding. In further
developments of the axle/suspension system that was the subject of
the Stress Report and that resulted in a commercial embodiment
axle/suspension system sold by Boler, the yield strength of the axle
mounting plate (axle connector) and the axle were increased, so that
all of the strains as a result of the assembly process are elastic.
Therefore, there is no plastic strain or yielding during assembly of the
commercial embodiment axle/suspension system, rather only elastic
deformation occurs.

(Pierce Affidavit ¶ 7.) The commercial embodiment referred to in this
statement is not disclosed in either the Stress Report or the Pierce references
and thus is not entitled to any weight for establishing inherency.

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Anticipation - Claims 1-6, 16, 17, and 19-24
Claims 1, 4-6, and 24
Claim 1 is reproduced below (without underlining):

1. A method of manufacturing a vehicle suspension system, the
method comprising the steps of:

welding an axle connector to an axle, without first pressing the
axle connector onto the axle from an end of the axle, and without
using a clamp to hold the axle connector in contact with the axle; and

then welding the axle connector to a pivot arm.

Patent Owner argues that Pierce describes the opposite order of
assembly from claim 1, wherein the beam 24 (corresponding to the claimed
"pivot arm"), including the axle mounting plate 43 (corresponding to the
claimed "axle connector"), is preassembled by welding before attaching and
welding the axle 28 to the beam 24 (Owner's Br. 6).
The Examiner agrees that that is described as the preferred method of
assembly but finds that other teachings in Pierce disclose the order of
assembly in claim 1.
The issue is whether Pierce describes the order of assembly of
claim 1.
The Examiner first relies on this statement in Pierce (p. 10, ll. 8-13):

In accordance with one of the key features of the present
invention, rigid beam 24 preferably is preassembled prior to its
incorporation into suspension assembly 21. However, it is
understood that beam 24 can be incorporated into suspension
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assembly 21 without preassembly of the beam, and the concept of
the present invention will be unaffected. [Emphasis added.]

Patent Owner argues that this portion of Pierce merely teaches that it
is not necessary to preassemble the beam 24, but does not teach the specific
manufacturing method recited in claim 1 (Owner's Br. 7).
The Examiner responds:

The use of the word "understood" is a clear and unequivocal
signal that one of ordinary skill in the axle/suspension system art
understands that the axle connector/axle mounting plate 43 could be
attached to axle 28 prior to incorporation of the axle mounting plate
into the other portions of the beam. It is clear from this quotation that
the axle can be mounted prior to forming the beam preassembly.

(Ans. 30, adopting the Requester's contention at Requester's Br. 7.)
We agree with Patent Owner that the statement that "beam 24 can be
incorporated into suspension assembly 21 without preassembly of the beam"
does not, in isolation, teach the order of assembly in claim 1. The Examiner
apparently interprets the statement as broadly teaching assembly of the
suspension components in any order, and that since there are only a limited
number of ways of assembling the beam, axle mounting plate, and axle,
Pierce necessarily teaches them all. For example, the Examiner explains the
three possible ways to assemble the axle and beam (Ans. 37-41) and states:
"Pierce must have tried all three of the sequential variations in order to
decide which possibility was preferred. Pierce inherently had to recognize
the other two sequential possibilities to arrive at a preferred method."
(Ans. 41.) While this reasoning may be persuasive in an obviousness
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rejection, where one can combine the teachings in a reference with the
knowledge of one of ordinary skill in the art, anticipation requires that the
reference describe the claimed subject matter, expressly or inherently. This
portion of Pierce does not describe the order of assembly.
However, the Examiner additionally relies on Pierce's statements that
it "is important to note that during preassembly of beam 24, a single
continuous weld 58 is utilized to securely interconnect each beam
sidewall 42 to its respective insert sidewall 57 and axle mounting plate 43,
thereby eliminating the need for subassembly of each component" (emphasis
added) (p. 11, ll 26-30) and "beam 24 preferably is preassembled prior to
mounting axle 28 thereon" (emphasis added) (p. 12, ll. 3-4). The Examiner
finds that these statements teach that the axle mounting plate 43 can be
welded to the axle 28 before the axle mounting plate 43 is welded to the
other components of beam 24 (Rgt. of Appeal Notice 15; Ans. 35-37).
Patent Owner does not address these teachings of Pierce.
We agree with the Examiner that Pierce teaches that "preassembly"
involves, at least, welding the axle mounting plate 43 to the sidewall 42 of
the beam 24. This statement clarifies that "preassembly" in the prior
statement that "beam 24 can be incorporated into suspension assembly 21
without preassembly of the beam, and the concept of the present invention
will be unaffected" (p. 10, ll. 11-13) means welding at least the axle
mounting plate 43 to the beam 24. That "beam 24 preferably is
preassembled prior to mounting axle 28 thereon" teaches that a nonpreferred
method of assembly is to mount axle 28 before preassembling the beam 24,
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i.e., to weld the axle mounting plate 43 to the axle 28 before welding the
axle mounting plate 43 to the other components of beam 24. This is
confirmed by a later teaching of Pierce, addressed infra, not noted by the
Examiner or Requester.
Pierce discloses that a cutout 60 is formed in the front portion 49 of
plate 47 to provide access to a window 61 in the axle mounting plate rear
portion 36 (see Figure 8) and, similarly, a cutout 62 is formed in the axle
mounting plate front portion 44 to provide access to a window 63 formed in
axle mounting plate rear portion 36 (see Figure 9) (p. 13, ll. 17-24).
Cutouts 60, 62 provide access for placing continuous welds 71, 73 in
windows 61, 63, respectively (p. 13, ll. 24-27). Pierce states:

Without cutouts 60, 62, preassembly of beam 24 and subsequent
welding in windows 61, 63 would be impossible, resulting in the
requirement that beam 24 be built-up around axle 28 and adding
unwanted and costly assembly steps to the manufacturing process of
axle/suspension system 20.

(P. 13, l. 27 to p. 14, l. 1.) This teaches that without cutouts 60, 62 for
access for welding in windows 61, 63, the beam would have to be built up
around the axle, which necessarily requires welding the axle mounting
plate 43 to the axle 28 prior to welding the axle mounting plate 43 to the
beam 24. Although this is not a preferred method of assembly due to
"adding unwanted and costly assembly steps to the manufacturing process,"
it is an additional teaching of the order of assembly in claim 1.
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Therefore, we find that Pierce describes the order of assembly of
claim 1. The rejections of claims 1, 4-6, and 24 over Pierce PCT and
Pierce US are affirmed.

Claim 2
Claim 2 recites:

2. The method according to Claim 1, wherein in the step of
welding the axle connector to axle, the axle connector is held in
contact with the axle by elastically deforming the axle connector.

The Examiner refers to page 12, line 15 to page 13, line 16 of
Pierce PCT, which discloses forcing an axle of diameter D2 into a recess of
diameter D1, where D1 is smaller than D2, resulting in a preload or
compression between the contacting surfaces. The Examiner finds:

The axle connector will [inherently] expand upon insertion of the
axle, while elastically holding the axle in the axle connector. The
process of Pierce et al. which force fits the axle into the axle
connector (axle mounting plate) would [inherently] elastically deform
the axle connector. The elastic deformation of the axle connector
specified in claim 2 merely is another way to describe the preload or
compression between the axle mounting plate and the axle taught in
Pierce et al.

(Rgt. of Appeal Notice 6; Ans. 9.) The Examiner also made this finding of
inherency at page 4 of the February 24, 2004, Office Action.
Patent Owner notes that Pierce only describes deforming the axle 28
from its generally round cross-sectional shape to a generally oval or
elliptical shape when it is pressed into the recess 46 and does not describe
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"deforming" or "elastically deforming" the axle mounting plate 43 (axle
connector) (Owner's Br. 8). It is argued that preload or compression
between the axle mounting plate 43 and the axle 28 does not inherently
produce elastic deformation of the mounting plate as alleged by the
Examiner because "[t]he Pierce references themselves state that the preload
or compression on the axle 28 can be produced without deformation of the
axle" (Owner's Br. 9). It is argued: "Perhaps the sidewalls 42 provide the
rigidity which allows the axle 28 to be deformed when it is extruded into the
recess 46. Perhaps the axle 28 is provided with the preload or compression
without deformation of the axle (as suggested by Pierce)." (Owner's Br. 9.)
The issue is whether Pierce describes, expressly or inherently, that
"the axle connector is held in contact with the axle by elastically deforming
the axle connector."
Patent Owner's arguments are not persuasive. It is true that Pierce
does not expressly describe "elastically deforming" the axle mounting
plate 43 (axle connector) when the axle is inserted, i.e., Pierce does not
mention the words "elastically deforming." However, the anticipation
rejection is based on inherency and Patent Owner fails to address the
relevant teachings of Pierce noted by the Examiner.
We found in the analysis of claim 1 that Pierce discloses that the axle
mounting plate 43 can be welded to the axle 28 before welding the mounting
plate 43 to the beam 24, although this is not a preferred method of assembly
due to it "resulting in the requirement that beam 24 be built-up around
axle 28 and adding unwanted and costly assembly steps to the manufacturing
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process of axle/suspension system 20" (p. 13, l. 29 to p. 14, l. 1). The axle
mounting plate 43 has recess 46 with a diameter D1 that is smaller than the
diameter D2 of the axle 28 and the axle is forced into the recess 46 (p. 12,
ll. 10-17). Although the axle is deformed in the preferred embodiment,
Pierce teaches that the preload or compression condition can exist without
deformation of the axle 28 (p. 13, ll. 6-8), as noted by Patent Owner, and it is
this teaching that we rely on for simplicity of explanation. When the axle is
forced into the smaller diameter recess, it is inherent that the axle mounting
plate has to be deformed (undergo a dimensional change by being expanded)
to accommodate the axle when the axle itself is not deformed. Since the
insertion of an axle into an axle connector having a smaller diameter than the
axle is one of the two mechanisms for "elastically deforming the axle
connector" disclosed in the '393 patent (the other being spreading apart the
ends of an axle connector extending more than 180° about the axle) ('393
patent, col. 2, l. 66 to col. 3, l. 9), it is inherent that the axle mounting
connector in the Pierce references is deformed just as in the '393 patent. In
addition, as discussed in connection with the Stress Report, the Stress Report
demonstrates that the axle connector is deformed when the axle is inserted
into the axle connector after it is welded to the pivot arm and we agree with
Mr. Pierce's testimony that the axle connector would necessarily deform if
the axle is inserted into axle connector before it it is welded to the pivot arm.
The fact that there is a "compression condition between the contacting
surfaces" (p. 13, ll. 5-6) of the axle mounting plate and the axle teaches that
the axle mounting plate has been elastically deformed, i.e., after it is
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deformed, the axle mounting plate tries to return to its original shape and
exerts compressive force on the axle. There would be no compressive force
if the axle mounting plate were not elastically deformed, i.e., if it were
permanently (plastically) deformed. To meet claim 2, the compressive force
only needs to be enough to hold the axle mounting plate in contact with the
axle.
Patent Owner's argument that compression between the axle mounting
plate 43 and the axle 28 does not inherently imply elastic deformation of the
mounting plate is unpersuasive. "Compression" requires that that the axle
mounting plate 43 exerts a force against the axle 28, which must be due to
the axle mounting plate trying to return to its original shape after being
elastically deformed by the larger diameter axle, just as in the '393 patent.
For the foregoing reasons, we hold that the Examiner was correct to
find that Pierce establishes a prima facie case of anticipation by inherency
even without consideration of the Stress Report and Pierce Affidavit.
The burden of proof therefore shifted to Patent Owner to produce
evidence showing that the axle mounting plate will not inherently undergo
elastic deformation when a larger-diameter axle is pressed into it. See In re
Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997) (“The examiner . . .
correctly found that Harz established a prima facie case of anticipation. At
that point, the burden shifted to Schreiber to show that the prior art structure
did not inherently possess the functionally defined limitations of his claimed
apparatus.”). Patent Owner has provided no such evidence. Furthermore,
the Stress Report, which Patent Owner has not addressed, supports the
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Examiner’s finding that insertion of the axle into the axle connector will
inherently cause the axle connector to undergo elastic deformation.
For the reasons stated above, we agree with the Examiner's finding
that Pierce inherently discloses that "the axle connector is held in contact
with the axle by elastically deforming the axle connector." Accordingly, the
rejections of claim 2 over Pierce PCT and Pierce US are affirmed.

Claim 3
Claim 3 recites:

3. The method according to Claim 2, wherein the elastically
deforming step further comprises enlarging an inner dimension of the
axle connector, so that the axle connector inner dimension is larger
than an outer dimension of the axle at a location in which the axle
connector is held in contact with the axle during the step of welding
the axle connector to the axle.

The Examiner refers to page 12, line 10 to page 13, line 16 of
Pierce PCT, which discloses forcing an axle of diameter D2 into a recess of
diameter D1, where D1 is smaller than D2, resulting in a compression
between the contacting surfaces. The Examiner finds that "[f]orcing a larger
diameter axle into a smaller size mounting plate will inherently enlarge the
diameter of the plate recess" (Rgt. of Appeal Notice 7; Ans. 9).
Patent Owner argues that Pierce does not describe enlarging an inner
dimension of an axle connector (Owner's Br. 10). Patent Owner finds that
Pierce shows that the inner diameter D1 of the recess 46 is the same
pre-insertion (Figure 11) and post-insertion (Figure 12) of the axle 28, so the
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mounting plate 43 has not been "deformed" and the inner radius of the
mounting plate 43 has not been enlarged (Owner's Br. 9-10), i.e., only the
axle has deformed (Owner's Br. 9-10).
The issue is whether Pierce expressly or inherently discloses
"enlarging an inner dimension of the axle connector."
Patent Owner does not address the Examiner's inherency reasoning.
Manifestly, when the axle is not deformed, an option we have found to be
described by Pierce, forcing the axle into the recess of the axle mounting
plate, where the axle has a larger diameter than the recess, will inherently
cause the diameter of the recess to expand, just as disclosed in the '393
patent at column 3, lines 4-8. The inner diameter of the axle connector
recess inherently will be larger than the outer dimension of the axle because
it would be physically impossible for the axle connector to be inside the
axle. Thus, we find that Pierce inherently discloses "enlarging an inner
dimension of the axle connector" although it does not use those words. The
rejections of claim 3 over each of Pierce PCT and Pierce US are affirmed.
Patent Owner's argument that the axle mounting plate is not deformed
because the inner diameter D1 of the recess is the same before and after
insertion of the axle, as shown in Figures 11 and 12, is not persuasive. First,
we rely on the situation where the axle is not deformed, in which case the
axle mounting plate must be deformed. Second, even in the preferred
embodiment of Figures 11 and 12, one of ordinary skill in the art would
appreciate that Figure 12 shows the same diameter D1 after insertion of the
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axle as before insertion in Figure 11 because the deformation of the axle
mounting plate is small compared to deformation of the axle, not because
there is no deformation. As stated in Engineering Mechanics 25:

When loads of any type are applied to a member, the member will
always undergo dimension changes. In other words, the loads alter
the size and/or the shape of the body. Such dimension changes may
or may not be visible to the naked eye depending on the degree to
which the loads alter the body.

Claim 16
Claim 16 recites:

16. The method of claim 1, further comprising the steps of
elastically deforming the axle connector over the axle, and then
permitting the axle connector to spring back, thereby holding the axle
connector in contact with the axle.
The Examiner finds that "[p]reload or compression of the axle means
that the axle connector is elastically compressing inwardly so [sic, so as] to
'spring back' around the axle" (Ans. 45 ¶ 26 with respect to claim 2), that
"[e]nlarging the axle connector and then allowing it to form compressive
forces on the axle is representative of 'spring back'" (Ans. 47 ¶ 28 with
respect to claim 3), and with respect to claim 16:

[I]t is inherent that during the process of Pierce et al. the axle
connector elastically deforms over the axle, then permitting the axle
connector to spring back, thereby holding the axle connector in
contact with the axle. This phenomenon occurs when the axle is
forced into the axle mounting plate (axle connector), resulting in a
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preload or compression (elastic deformation) between the axle and the
mounting plate.

(Ans. 24.)
Patent Owner argues that Pierce describes deforming the axle 28 and
describes that the inner dimension D1 of the axle mounting plate 43 does not
change when the axle 28 is inserted into the recess, as discussed in relation
to the rejection of claims 2, 3, and 8 (Owner's Br. 11). "Thus, Pierce does
not describe deformation of the mounting plate 43, does not describe elastic
deformation of the mounting plate, and does not describe any spring back of
the mounting plate to hold the axle connector in contact with the axle."
(Owner's Br. 11.)
The first issue is whether Pierce expressly or inherently discloses
"elastically deforming the axle connector over the axle." We find that Pierce
inherently discloses "elastically deforming the axle connector" for the
reasons discussed in connection with claims 2 and 3.
The second issue is whether Pierce PCT or Pierce US expressly or
inherently discloses "permitting the axle connector to spring back."
As discussed in the Claim Interpretation section, we interpret
"permitting the axle connector to spring back" to require actual movement
back towards an original position as a separate method step after the step of
elastically deforming. We disagree with the Examiner's interpretation that
the limitation is met by producing a compressive force on the axle due to
elastic deformation of the axle mounting plate because this does not account
for the description in the Specification or the fact that "permitting the axle
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42
connector to spring back" is a separate method step after the step of
elastically deforming. The U-shaped recess in the axle mounting plate in
Figure 11 of Pierce PCT and Pierce US is spread apart and elastically
deformed by the axle, because the axle has a larger diameter than the recess,
but the axle mounting plate is prevented from "springing back" by the axle.
"Permitting the axle connector to spring back" after elastic deformation can
only occur by temporarily forcing the axle connector to open up more than is
necessary to receive the axle, such as by using the axle connector in the '393
patent which extends more than halfway about the outer surface of the axle.
Thus, Figure 11 of Pierce PCT and Pierce US does not expressly or
inherently describe "permitting the axle connector to spring back." The
rejections of claim 16 over Pierce PCT and Pierce US are reversed.

Claim 17
Because we have reversed the anticipation rejections of claim 16 over
Pierce PCT and Pierce US, the rejections of claim 17 over Pierce PCT and
Pierce US are reversed.

Claims 19 and 21
Claim 19 recites:

19. The method of claim 1, further comprising the steps of
providing the axle connector having an inner radius less than an outer
radius of the axle, then enlarging the inner radius.

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We find that the Pierce references disclose the limitations of claim 19
for the reasons discussed in connection with claims 2 and 3. The rejections
of claim 19 over Pierce PCT and Pierce US are affirmed. Claim 21 is not
separately argued, so the rejections of claim 21 over Pierce PCT and
Pierce US are affirmed.

Claim 20
Claim 20 recites:

20. The method of claim 19, wherein the enlarging step further
comprises enlarging the inner radius to be greater than the outer
radius.

We find that the Pierce references disclose the limitations of claim 20
for the reasons discussed in connection with claims 2 and 3. The rejections
of claim 20 over Pierce PCT and Pierce US are affirmed.

Claims 22 and 23
Claim 22 recites:

22. The method of claim 19, further comprising the step of
permitting the axle connector to spring back after the enlarging step.

Patent Owner argues that Pierce does not describe enlarging the inner
dimension D1 of the mounting plate 43 and does not describe any springing
back of the mounting plate (Owner's Br. 13).
We find that the welded embodiment of Figure 11 of Pierce PCT and
Pierce US does not allow "permitting the axle connector to spring back" as
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discussed in connection with claim 16. The rejections of claim 22 and
dependent claim 23 over Pierce PCT and Pierce US are reversed.

Anticipation - Claims 8-15, 25, 26, and 28-33
Claims 8, 9, 11-15, and 33
Independent claim 8 recites:

8. A method of manufacturing a vehicle suspension system, the
method comprising the step of:

attaching an axle connector to an axle by elastically deforming
the axle connector, the axle connector extending less than completely
about the axle when the axle connector is attached to the axle.

We find that Pierce inherently discloses "attaching an axle connector
to an axle by elastically deforming the axle connector" for the reasons
discussed in the analysis of claims 2 and 3. Accordingly, the rejections of
claims 8, 9, 11-15, and 33 over Pierce PCT and Pierce US are affirmed.

Claim 10
Claims 9 and 10 recite:

9. The method according to Claim 8, further comprising the
steps of welding the axle connector to the axle, and welding the axle
connector to a pivot arm.

10. The method according to Claim 9, wherein the axle
connector is welded to the axle prior to the step of welding the axle
connector to the pivot arm.

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We observe that claim 9 does not expressly or impliedly recite the
order of welding the axle, axle connector, and the pivot arm. See Interactive
Gift Express, Inc. v. Compuserve Inc., 256 F.3d at 1342-43 (absent claim
language requiring the steps of a method claim to be performed in a specific
order, it is improper to require the steps to be performed in the order listed).
Thus, claim 9 reads on welding the axle connector to the axle before welding
the axle connector to the pivot arm, as recited in dependent claim 10, and on
welding the axle connector to the pivot arm before welding the axle
connector to the axle, as recited in independent claim 34.
We find that Pierce inherently discloses "the axle connector is welded
to the axle prior to the step of welding the axle connector to the pivot arm,"
as recited in claim 10, for the reasons discussed in the analysis of claim 1.
The rejections of claim 10 over Pierce PCT and Pierce US are affirmed.

Claims 25, 26, and 28-32
The subject matter of claims 25, 26, and 28-32 corresponds to
claims 16, 17, and 19-23, respectively.
The rejections of claim 25 over Pierce PCT and Pierce US are
reversed for the reasons stated with regard to claim 16. Consequently, the
rejections of dependent claim 26 over Pierce PCT and Pierce US are also
reversed.
The rejections of claims 28 and 29 over Pierce PCT and Pierce US are
affirmed for the reasons stated with regard to claims 19 and 20, respectively.
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The rejections of claim 30 over Pierce PCT and Pierce US are affirmed
because claim 30 has not been separately argued.
The rejections of claim 31 over Pierce PCT and Pierce US are
reversed for the reasons stated with regard to claim 22. Consequently, the
rejections of dependent claim 32 over Pierce PCT and Pierce US are also
reversed.

Anticipation - Claims 34-41 and 43-48
Claim 34 recites:

34. A method of manufacturing a vehicle suspension system,
the method comprising the steps of:

attaching an axle connector to an axle;

then welding the axle connector to a pivot arm; and

then welding the axle connector to the axle, without first
pressing the axle connector onto the axle from an end of the axle, and
without using a clamp to hold the axle connector in contact with the
axle.

The Examiner essentially relies on the same reasoning as applied to
the rejection of claim 1 (Ans. 8; Ans. 19).
Patent Owner argues that Pierce does not describe the order of
assembly in claim 34 (Owner's Br. 16-17).
The issue is whether Pierce discloses, expressly or inherently, the
order of assembly in claim 34.
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Pierce describes welding the axle connector to the pivot arm before
assembling and welding the axle connector to the axle (the preferred
embodiment). Pierce also describes welding the axle connector to the axle
before welding the axle connector to the pivot arm (a nonpreferred method
of assembly requiring the beam to be built up around the axle which is
undesirable because it adds unwanted and costly assembly steps), as
discussed in connection with claim 1. However, Pierce does not expressly
or inherently describe the assembly steps of claim 34 in which the axle is
attached (but not welded) to the axle connector, the axle connector is welded
to the pivot arm, and then the axle connector is welded to the axle. The
Examiner's finding that Pierce discloses all methods of assembly because
Pierce states that "beam 24 can be incorporated into suspension assembly 21
without preassembly of the beam, and the concept of the present invention
will be unaffected" (Pierce PCT, p. 10, ll. 11-13) is incorrect for an
anticipation rejection, as noted in connection with claim 1. The anticipation
rejections of claim 34 and its dependent claims 35-41 and 43-48 over
Pierce PCT and Pierce US are reversed.
A new ground of rejection for obviousness is added, infra.

Obviousness – Claims 18, 27, and 42
Claims 18, 27, and 42 recite the step of "repositioning the axle
connector on the axle prior to the step of welding the axle connector to the
axle." The '393 patent discloses that "[p]rior to welding, the axle
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connector 36 may be relatively easily repositioned on the axle 24 for
alignment purposes, etc." (col. 3, ll. 26-28).
The Examiner concludes that the repositioning step would have been
obvious "so that the components can be properly aligned prior to being
permanently joined in place by welding" (Rgt. of Appeal Notice 24;
Ans. 27). The Examiner notes that the Pierce Affidavit states that relocation
could be accomplished in many ways, such as by tapping with a mallet or
the like (Pierce Affidavit ¶ 9).
Patent Owner argues that the only foundation provided by the
Examiner for the assertion that the claimed invention would have been
obvious "is a clearly biased statement provided by the third party requester
in the reexamination proceeding" (Owner's Br. 22), i.e., the Pierce Affidavit,
and that this is not a proper basis for a prima facie showing of obviousness.
The Examiner responds that relocation of parts is done before welding
to ensure that the parts are in proper alignment prior to welding (Ans. 69).
The issue is whether it would have been obvious to reposition the axle
mounting plate on the axle prior to welding.
Obviousness is determined from the perspective of one of ordinary
skill in the art to which the subject matter pertains. 35 U.S.C. § 103(a). A
person of ordinary skill in the art would have recognized the problem that
the axle mounting plate may wind up out of alignment axially or angularly
on the axle when the axle is forced into the recess of the axle mounting plate
by the hydraulic press in Pierce PCT or Pierce US due to friction, uneven
pressing force, etc. One of ordinary skill in art would have recognized that
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the obvious solution is either to remove the axle mounting plate and to try to
press it on again in the correct position or to reposition the axle connector
while it is still on the axle. See KSR Int'l Co. v. Teleflex Inc.,
127 S. Ct. 1727, 1742 (2007) ("One of the ways in which a patent's subject
matter can be proved obvious is by noting that there existed at the time of
invention a known problem for which there was an obvious solution
encompassed by the patent's claims."). Such problems and solutions are
known from common, everyday experience, e.g., when aligning two pieces
of paper before stapling them together one can either separate the papers and
put them together again or can reposition the papers to put them in
alignment. One skilled in the art, and, indeed, one with ordinary common
knowledge, would have appreciated that small differences from the desired
position are easily achieved by repositioning.
Mr. Pierce testified that the axle mounting plate is capable of being
repositioned, and we do not think this is reasonably in question since the
axle mounting plate is held onto the axle only by compressive force and
friction. Even if the axle was deformed to prevent repositioning of the axle
mounting plate angularly on the axle, the axle mounting plate could still be
repositioned axially. Accordingly, we conclude that one of ordinary skill in
the art would have been motivated to reposition the axle mounting plate on
the axle prior to welding to ensure proper alignment of the axle mounting
plates on the axle and with respect to each other as stated by the Examiner.
Patent Owner has not shown reversible error in the Examiner's reasoning.
The rejection of claim 18 over Pierce PCT and Pierce US is affirmed.
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Claim 27 depends on claim 26 which depends on claim 25, and the
rejections of claims 25 and 26 over Pierce PCT and Pierce US have been
reversed. The obviousness rationale does not cure the deficiency with
respect to claim 25. Thus, the rejections of claim 27 over Pierce PCT and
Pierce US are reversed.
Claim 42 depends on claim 34. The anticipation rejection of claim 34
over Pierce PCT and Pierce US has been reversed. However, we conclude
that Pierce PCT and Pierce US renders obvious the subject matter of
claim 34, as discussed in the new ground of rejection. Therefore, we affirm
the obviousness rejections of claim 42 over Pierce PCT and Pierce US.

NEW GROUNDS OF REJECTION UNDER 37 C.F.R. § 41.77(b)
1.
Claims 34-38, 43, 44, 47, and 48 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pierce PCT and Pierce US.
We found in connection with the anticipation rejection of claim 34
that Pierce PCT and Pierce US do not expressly or inherently disclose the
assembly steps in which the axle is attached (but not welded) to the axle
connector, the axle connector is welded to the pivot arm, and then the axle
connector is welded to the axle. However, we agree with the Examiner's
finding (Ans. 37-41) that there are only three ways to assemble and weld the
three parts of an axle connector, an axle, and a pivot arm: (1) weld the axle
connector to the pivot arm and then weld the axle connector to the axle (the
preferred embodiment of Pierce); (2) assemble the axle connector to the
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axle, then weld the axle connector to the axle, and then weld the axle
connector to the pivot arm (recited in claim 1, the nonpreferred embodiment
in Pierce); or (3) assemble the axle connector to the axle, then weld the axle
connector to the pivot arm, and then weld the axle connector to the axle,
(recited in claim 34). We find that one of ordinary mechanical skill in the
art of welding together assemblies would have known that the order of
assembling pieces can be varied for many reasons, such as convenience,
simplifying assembly, reducing distortion caused by welding, etc. We
conclude that one of ordinary skill in the art would have been motivated to
use any known method of assembly, including the method in claim 34,
because it one of a limited number of options and because the order of
assembly has not been shown to be important in Patent Owner's design.
We discourage examiners from relying on "design choice" because it
is generally a mere conclusion, which is no substitute for obviousness
reasoning based on factual evidence. However, "design choice" is
appropriate where the applicant fails to set forth any reasons why the
differences between the claimed invention and the prior art would result in a
different function or give unexpected result. See In re Chu, 66 F.3d 292,
298-99 (Fed. Cir. 1995). "Design choice" has been used where the claims
recite one of many possible alternatives that would have been apparent to a
person of ordinary skill in the art. See In re Dailey, 357 F.2d 669, 672-73
(CCPA 1966) ("Appellants have presented no argument which convinces us
that the particular configuration of their container is significant or is
anything more than one of numerous configurations a person of ordinary
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skill in the art would find obvious for the purpose of providing mating
surfaces in the collapsed container of Matzen."). In this case, Patent Owner
provides no reason why the order of assembly is anything more than a
design choice. The order of assembly of claim 34 would have been obvious
variation of the two disclosed orders of assembly in Pierce PCT and
Pierce US.
Claims 35, 36, 43, and 44 are rejected over Pierce PCT or Pierce US
for the reasons discussed with respect to claims 2, 3, 19, and 20,
respectively.
Claim 37 is rejected because Pierce PCT and Pierce US disclose that
in the step of welding the axle connector to the axle, no clearance exists
between the axle connector and the axle. See, e.g., Pierce PCT, p. 5, ll. 5-9.
Claim 38 recites that "the axle connector is a single structure which
extends greater than halfway about the axle." As a matter of claim
interpretation, claim 38 does not recite that the axle connector extends more
than halfway about the axle "outer surface"; compare claim 39. Figures 11
and 12 of Pierce show short distinct straight sections between the
semicircular portion of recess 46 and the lowermost edges 81, 83. These
straight sections are evidently intended to support the axle when it is
deformed and elongated in the U-shaped recess, as shown in Figure 12, and
to prevent the axle from popping out of the recess as it might if the recess
only extended halfway around the axle. Nevertheless, the teaching applies
even if the axle is not deformed. The axle mounting plate extends more than
halfway about the axle because the short straight sections extend past the
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largest diameter of the axle. In addition, Figure 1 shows the axle mounting
plate extending greater than halfway about the axle.
Claim 47 recites "attaching the axle connector to the axle from a
lateral direction relative to the axle." There is no question that the axle is
inserted from the side in the Pierce references, as seen in Figures 11 and 12.
Claim 48 recites "holding the axle connector in contact with the axle,
prior to the step of welding the axle connector to the pivot arm." The axle
connector is held in contact with the axle in the Pierce references by
compressive force of the axle connector on the axle due to the axle being
inserted into a recess with a smaller diameter. This does not change if the
axle connector is welded to pivot arm before it is welded to the axle. The
step of holding is inherently performed before the step of welding.
We note that the original rejection of claim 42 under § 103(a) over
Pierce PCT and Pierce US was affirmed.
2.
Claims 39-41, 45, and 46 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Pierce US.
Claim 39 recites that "the axle connector extends greater than 180°
about the axle outer surface." This limitation requires that the axle
connector extends about the "axle outer surface," i.e., in contact with the
axle surface over more than 180°, and not just about the "axle" as in
claim 38. The Examiner finds that in "Figure 1 [of Pierce] it is clear that the
connector plate extends at least 180 degrees around the 360 degree axle"
(Ans. 10). The claim language is "greater than 180°," not "at least 180
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degrees." This is significant because "at least 180 degrees" is met by 180°
whereas "greater than 180°" requires that the axle connector extends more
than halfway around the axle surface as disclosed in the '393 patent.
The first embodiment of Figure 1 of Pierce PCT and Pierce US does
not show the axle mounting plate wrapping more than 180° about the outer
surface of the axle. However, the third embodiment in Figures 20 and 21 of
Pierce US shows an axle mounting plate extending more than 180° around
the axle outer surface.
An annotated version of Figure 20 of Pierce US is reproduced below:

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Figure 20 illustrates the cross-section of an axle mounting plate
having a semicircular recess 46" with a diameter D1" at the top of the figure
and the cross-section of a round axle 28" with a diameter D2" at the bottom
of the figure, i.e., before the axle is inserted into the recess. Holes 92 in the
axle mounting plate are intended to align with holes 94 in the axle when the
axle is inserted into the recess to receive bolts (col. 10, ll. 51-54). A dashed
line has been added to the cross-section of the axle mounting plate to show
where the centerline of the axle will be when the axle is inserted. One
hole 94 in the axle is aligned along the horizontal axis of the axle and is
intended to align with the left hole 92 in the axle mounting plate. The axle
mounting plate extends around past the left hole 92 and, so, Figure 20
discloses an axle mounting plate which "extends greater than 180° about the
axle outer surface" as recited in claim 39. when the axle is inserted.
The only significant difference between the first and third
embodiments is that the first embodiment uses welds to attach the axle
connector to the axle, while the third embodiment uses bolts (col. 10,
ll. 40-47). Pierce US teaches one skilled in the art that the axle mounting
plate can have the configuration of Figures 11 and 12 or the configuration of
Figures 20 and 21. Since Pierce US does not expressly disclose that the axle
mounting plate of the bolted embodiment of Figure 20 can be used in the
welded embodiment of Figure 11, it does not anticipate. See Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383, 58 USPQ2d 1286, 1291
(Fed. Cir. 2001) (For anticipation: "The invention must have been known to
the art in the detail of the claim; that is, all of the elements and limitations of
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the claim must be shown in a single prior reference, arranged as in the
claim."). Nevertheless, it would have been obvious to one of ordinary skill
in the art to use the axle mounting plate of Figure 20 for the welded
embodiment because it is expressly taught as an alternative way to construct
the axle mounting plate.
Substitution of the axle mounting plate of the bolted embodiment of
Figure 20 for the welded embodiment of Figure 11 of Pierce US meets the
limitation that the axle mounting plate "extends greater than 180° about the
axle outer surface" as recited in claim 39. when the axle is inserted
Claim 40 recites "permitting the axle connector to spring back" after
the step of elastically deforming the axle connector. Claim 45 recites
"permitting the axle connector to spring back" after the step of enlarging the
inner radius. Substitution of the axle mounting plate in Figure 20 in the
welded embodiment of Figure 11 of Pierce US inherently permits the axle
mounting plate to spring back after the axle is inserted because the axle
mounting plate extends more than 180° around the axle outer surface, just as
described in the '393 patent at column 2, line 55 to column 3, line 10.
With regard to claim 41, the step of permitting the axle connector to
spring back is inherently performed prior to the step of welding the axle
connector to the axle because the permitting step occurs during assembly of
the axle to the axle mounting plate.
The step of permitting the axle connector to spring back inherently
"comprises decreasing the inner radius," as recited in claim 46. The axle
mounting plate extends more than halfway around the outer surface of the
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axle in Figure 20 of Pierce US, just as in the '393 patent. The diameter D1"
of the axle mounting plate recess 46" in Figure 20 is enlarged when the axle
is inserted (because the ends 81" and 83" are spread apart) and the diameter
is decreased once the ends of the axle mounting plate are past the center of
the axle, just as in the '393 patent.
3.
Claims 16, 17, 22, 23, 25-27, 31, and 32 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Pierce US.
Claims 16, 17, 22, and 23 are rejected as unpatentable over Pierce US
for the reasons stated with respect to claims 40, 41, 45, and 46, respectively.
Also, claims 25, 26, 31, and 32 are rejected as unpatentable over Pierce US
for the reasons stated with respect to claims 40, 41, 45, and 46, respectively.
Claim 27 is rejected as unpatentable over Pierce US for the reasons
stated with respect to claim 18 in the original rejection.

CONCLUSION
The rejections of claims 1-6, 8-15, 19-21, 24, 28-30, and 33 under
35 U.S.C. § 102(b) over Pierce PCT and Pierce US are affirmed.
The rejections of claims 16, 17, 22, 23, 25, 26, 31, 32, 34-41, and
43-48 under § 102(b) over Pierce PCT and Pierce US are reversed.
The rejections of claims 18 and 42 under § 103(a) over Pierce PCT
and Pierce US are affirmed.
The rejections of claim 27 under § 103(a) over Pierce PCT and
Pierce US are reversed.
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New grounds of rejection are entered as to claims 16, 17, 22, 23,
25-27, 31, 32, 34-41, and 43-48 pursuant to 37 C.F.R. § 41.77(b). 37 C.F.R.
§ 41.77(b) provides that "[a]ny decision which includes a new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.77(b) also provides that the patent owner, within
ONE MONTH from the date of the decision, must exercise one of 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. The owner may file a response
requesting reopening of prosecution before the examiner. Such a
response must be either an amendment of the claims so rejected or
new evidence relating to the claims so rejected or both.
(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the same
record. The request for rehearing must address any new ground of
rejection and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of rejection
and also state all other grounds upon which rehearing is sought.
The time period for response may not be extended.
AFFIRMED-IN-PART – 37 C.F.R. § 41.77(b)

Attachment:
Edward F. Byars and Robert D. Snyder, Engineering Mechanics of
Deformable Bodies 3, 25, 60-62 (Int'l Textbook Co. 1967)

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SMITH IP SERVICES, P.C. For Patent Owner
P.O. Box 997
Rockwall, TX 75087

David P. Dureska For Third-Party Requester
Buckingham, Doolittle & Burroughs, LLP
4518 Fulton Drive, N.W.
P.O. Box 35548
Canton, OH 44735-5548