Ex Parte Bayer et al

Board of Patent Appeals and Interferences

Mar 24, 2011

10538519 (B.P.A.I. Mar. 24, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ERWIN BAYER, BORIS GROHMANN,
FRANK HERMLE and PETER JAENKER
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Appeal 2010-003285
Application 10/538,519
Technology Center 1700
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Before TERRY J. OWENS, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 10-15, 20 and 21. Claims 1-9 have been canceled,
claims 16 and 18 have been allowed and claims 17 and 19 have been
withdrawn from consideration by the Examiner. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention

Appeal 2010-003285
Application 10/538,519

The Appellants claim a friction-welding device. Claim 10 is
illustrative:
10. A friction-welding device for integrally joining components, each
component including a welding surface, comprising:
an oscillator adapted to generate a defined periodic movement of one
of the components and the welding surface of the one of the components
relative to another one of the components that is held statically during
welding and to the welding surface of the another one of the components,
the period movement including directions of movement parallel to the
welding surfaces;
a compression device adapted to press the welding surfaces of the one
of the components and the another one of the components against each other
at a defined force; and
a cartridge adapted to accommodate the one of the components
outside of a welding zone;
wherein the oscillator includes an even number of piezoactuators
arranged in pairs at least approximately on a line of application, the
piezoactuators prestressable with respect to the cartridge under pressure
generation from opposite sides by piezoelectric liner [sic, linear]
deformation, the piezoactuators displaceable with the cartridge and the one
of the components synchronously oscillatingly at cartridge-side ends.

The References
Tsujino 6,299,051 B1 Oct. 9, 2001
Mattes 6,326,717 B1 Dec. 4, 2001
Culpepper 2003/0086748 A1 May 8, 2003
Stoecklein 6,617,766 B1 Sep. 9, 2003

The Rejections
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Appeal 2010-003285
Application 10/538,519

The claims stand rejected under 35 U.S.C. § 103 as follows: claims
10-12, 14, 15, 20 and 21 over Tsujino in view of Mattes, and claim 13 over
Tsujino in view of Mattes, Stoecklein and Culpepper.
OPINION
We reverse the rejections.
Issue
Have the Appellants indicated reversible error in the Examiner’s
determination that Tsujino would have rendered prima facie obvious, to one
of ordinary skill in the art, 1) a cartridge or 2) piezoactuators arranged in
pairs at least approximately on a line of application?1
Findings of Fact
Tsujino discloses a bonding head (4) (which the Examiner relies upon
as corresponding to the Appellants’ cartridge (Ans. 3)) which is placed on
the upper surface (1b) of a sealing cap (1) (which is one of the components
to be welded using ultrasonic coupling oscillation generated via horns (5, 6)
by piezoelectric transducers (7, 8) coupled with the horns (5, 6)) (col. 3,
ll. 41, 42, 55-63). The horns (5, 6) “are in an orthogonal direction to the
welding head 4 in a plane and are coupled with the bonding head 4, mutually
forming place angles of 90 degrees” (col. 3, ll. 37-40; Fig. 1).
Analysis
The Appellants argue that Tsujino’s bonding head (4) is not a
cartridge accommodating a component but, rather, merely applies
compressive force on the upper surface (1b) of the sealing cap (1) (Br. 4).

1 The Examiner does not rely upon Mattes, Stoecklein or Culpepper for any
disclosure that remedies the deficiency in Tsujino as to this issue (Ans. 4-5).
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Application 10/538,519

The Appellants point out that the Examiner stated that “a cartridge is defined
as ‘a case or container for holding a substrate’ (advisory action mailed
February 25, 2009, p. 2), and the Appellants argue that Tsujino’s bonding
head (4) is not a case or a container but, rather, “merely presents a flat
surface that contacts upper face 1b of sealing cap 1” (Br. 4).
The Examiner argues that “[t]aken in its broadest reasonable
interpretation, the bonding head of Tsujino is considered a cartridge because
it contains the component by holding down and preventing movement of the
component during welding” (Ans. 6).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” In re Translogic
Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt, 211
F.3d 1367, 1372 (Fed. Cir. 2000).
The Examiner has not carried the burden of establishing that the
Examiner’s interpretation of the Appellants’ claim term “cartridge” is
consistent with the Appellants’ Specification. The Appellants’ Specification
states that “blade 3 is virtually completely encased in a mechanically sturdy
cartridge 11” (Spec. 5:9-11; Fig. 1). The Examiner does not address that
disclosure and explain why, in view of the Appellants’ exemplification of
the cartridge as virtually completely encasing the component, the broadest
reasonable interpretation of the Appellants’ claim term “cartridge”
consistent with the Specification encompasses Tsujino’s bonding head (4)
which merely presses against the component without encasing it.
The Appellants argue that Tsujino’s “piezoelectric transducers 7, 8 are
situated orthogonal to each other, and not in pairs approximately on a line of
application” (Br. 4).
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Application 10/538,519

The Examiner provides a figure showing a line through piezoelectric
transducer 7 in Tsujino’s Figure 1 (Ans. 7) and argues that “the
piezoactuators/elements 7, 8 of Tsujino are arranged in pairs (next to each
other in an orgthogonal [sic] arrangement) approximately on a line of
application” (Ans. 6).
The Appellants’ Specification indicates that the line of application in
the Appellants’ claim phrase “piezoactuators arranged in pairs at least
approximately on a line of application” is the line along which both of the
transducers in the pair apply their force (Spec. 5:24-27; Fig. 2). The line
added by the Examiner to Tsujino’s Figure 1 is the line along which
piezoelectric transducer 7 applies its force, but is not the line along which
the other piezoelectric transducer in the pair (piezoelectric transducer 8)
applies its force, which is orthogonal to piezoelectric transducer 7’s line of
force application (col. 3, ll. 38-40; Fig. 1).
Conclusion of Law
The Appellants have indicated reversible error in the Examiner’s
determination that Tsujino would have rendered prima facie obvious, to one
of ordinary skill in the art, 1) a cartridge and 2) piezoactuators arranged in
pairs at least approximately on a line of application.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 10-12, 14, 15, 20 and
21 over Tsujino in view of Mattes, and claim 13 over Tsujino in view of
Mattes, Stoecklein and Culpepper are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

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Appeal 2010-003285
Application 10/538,519

tc
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