Ex Parte Behre et alDownload PDFPatent Trial and Appeal BoardNov 26, 201312161051 (P.T.A.B. Nov. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/161,051 07/16/2008 Matthias Behre 72997 7858 23872 7590 11/26/2013 MCGLEW & TUTTLE, PC P.O. BOX 9227 SCARBOROUGH STATION SCARBOROUGH, NY 10510-9227 EXAMINER KENNEDY, JOSHUA T ART UNIT PAPER NUMBER 3679 MAIL DATE DELIVERY MODE 11/26/2013 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MATTHIAS BEHRE, CHRISTIAN MAASSMANN, JENS BACH, DIRK ADAMCZYK, REINHARD STÖTERAU, JEAN-PAUL CASTANET, and MARC ROCHIGNEUX ____________ Appeal 2011-011844 Application 12/161,051 Technology Center 3600 ____________ Before MICHAEL L. HOELTER, SCOTT A. DANIELS, and JILL D. HILL, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-011844 Application 12/161,051 2 STATEMENT OF THE CASE Matthias Behre et al. (Appellants) appeal under 35 U.S.C. § 134 from a final rejection of claims 7-10 and 13-28. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. CLAIMED SUBJECT MATTER The claimed subject matter relates to “a ball and socket joint, for example, for an axle system, for a wheel suspension or for a rocker pendulum on a motor vehicle.” Spec., para. [0002]. Claim 7 illustrates the subject matter on appeal and is reproduced below. 7. A ball and socket joint, for one of a rocker pendulum and an axle system of a motor vehicle, the ball and socket joint comprising: an essentially annular joint housing defining an essentially cylindrical interior ball shell space with an inner jacket surface; a ball shell; and a ball of a ball pivot accommodated in said ball shell in a slidingly movable manner, said ball shell being positioned in said cylindrical interior ball shell space, said joint housing having elevations and/or depressions arranged in an area of said inner jacket surface for engagement with a surface of said ball shell, said inner jacket surface of said joint housing being split, in the axial direction of the joint housing, into at least two separate functional sections wherein said inner jacket surface of said joint housing has a smooth cylindrical surface in the area of a housing cover-side functional section and said elevations and/or said depressions are arranged in the area of a ball pivot- side functional section of said inner jacket surface of said joint housing, wherein said elevations and/or said depressions are not Appeal 2011-011844 Application 12/161,051 3 provided in said housing cover-side functional section of said inner jacket surface of said joint housing. EVIDENCE The Examiner relies on the following evidence: Abe US 4,256,413 Mar. 17, 1981 REJECTIONS Claims 8 and 15 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite1. Ans. 4. Claims 7-10 and 13-28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Abe. Ans. 5. ANALYSIS Rejection under 35 U.S.C. § 112, Second Paragraph Dependent claims 8 and 15 recite the inner jacket surface of the joint housing having “an essentially prismatic design, the axis of said joint housing coinciding with the height of a prism.” The Examiner states that “[i]t is unclear how an axis of the joint housing (presumably an infinite line extending through the center of the annular joint housing) coincides with a height of the ball pivot-like functional section . . . . ” Ans. 4. The Examiner states that he is unsure whether Appellants intend to claim that the axes coincide or are co-linear. Id. The Examiner also takes issue with reference to the claim language “the 1 Although the final Office Action of October 29, 2010 rejects claims 8-10 and 15-17 under 35 U.S.C. § 112, second paragraph, the Examiner’s Answer limits the rejection to claim 8 and 15. Appeal 2011-011844 Application 12/161,051 4 height of a prism” following reference to the joint housing having “an essentially prismatic design.” Id. Appellants argue that claims 8 and 15 “clearly set[] forth the scope of the subject matter which Appellant[s] regard[] as the invention,” and that “[t]his does not necessarily require that the axis be an infinite line that extends through the center of the joint housing as assumed in the final rejection, but can be any line that is used [as] a fixed reference with respect to the joint housing.” App. Br. 12-13, 14-15. The Examiner responds that it is unclear how an axis (i.e., a location) can “coincide with” a height (i.e., length measurement), particularly when the recited axis and the prism are spaced from each other. Ans. 8. The Examiner also responds that the claims do not make clear that the claimed “prismatic design” comprises at least a prism, or whether the prism that the axis coincides with is a separate portion of the joint or even a separate entity altogether. Id. The Examiner states that, assuming that Appellants’ structure 10 in Figure 10 creates a prism having the claimed “height,” Figure 7 “clearly shows that the axis of joint housing is longer that the height of [such a] prism[, because] the axis of the joint spans segments 13 and 14 and the height of the prism only spans segment 13.” Id. We agree with the Examiner. It is unclear how an axis (i.e., a location) can “coincide with” a height (i.e., a length measurement), and it is also unclear what the meets and bounds of “a prism” are to thereby define its height. Further, the term “coinciding with” is not defined in Appellants’ Specification in a manner that would allow one skilled in the art to Appeal 2011-011844 Application 12/161,051 5 determine its meaning as used in claims 8 and 15. We therefore sustain the rejection of claims 8 and 15 under 35 U.S.C. § 112, second paragraph. Rejection under 35 U.S.C. § 103(a) Regarding claims 7, 13, 14, 22, and 23, the Examiner finds that Abe discloses a ball and socket joint comprising a joint housing 15 defining an interior ball shell space and an inner jacket surface, and a ball shell 11, the inner jacket surface of the joint housing 15 having elevations and/or depressions (created by knurled portion 13, as described in Abe, col. 4, ll. 3- 6) for engaging a surface of said ball shell and including two separate functional sections - a cover-side (first) functional section 21 including a smooth surface and a ball pivot-side (second) functional section 15 including elevations and/or depressions, the elevations and/or depressions not being provided in the cover-side functional section 21 of the inner jacket surface. Ans. 5. Appellants argue that a critical feature of their invention is the inner jacket surface of the joint housing being split into a cover-side functional section having a smooth cylindrical surface with no elevations/depressions and a ball pivot-side functional section having elevations/depressions, which solves “a much different problem than that of Abe” because it prevents water, dirt, and other contaminants from finding a way into a gap between the joint housing and the bearing shell, providing an improved seal of the joint housing by the ball shell by eliminating any gaps between the joint housing and the ball shell. App. Br. 17-18. Appellants argue that Abe does not teach or suggest an inner jacket surface being split into a ball pivot-side functional section having elevations Appeal 2011-011844 Application 12/161,051 6 and/or depressions and a cover-side functional section having a smooth surface without elevations and/or depressions. App. Br. 18-19; Reply Br. 3. We agree with Appellants. The Examiner finds that Abe teaches an inner jacket surface having a cover-side (first) functional section 21 including a smooth surface without elevations or depressions, and a ball pivot-side (second) functional section 15 including elevations and/or depressions. Ans. 5. However, we disagree that Abe teaches at least a joint housing inner jacket cover-side (first) functional section 21 including a smooth surface without elevations or depressions. Even if element 15 of Abe is considered to be a joint housing and is contoured by the knurled portion 13 of housing 11, there is no teaching of another functional section that is smooth/not contoured by knurled portion 13 of housing 11. The Examiner fails to explain why he finds that Abe’s upper edge 21 would not be contoured by knurled portion 13 of housing 11. We therefore do not sustain the rejection of claims 7, 13, 14, 22, and 23. The remaining pending claims depend directly or indirectly from independent claims 7, 13, or 22, and we therefore do not sustain the rejection of claims 7-10 and 13-28 as unpatentable under 35 U.S.C. § 103(a) over Abe. DECISION We AFFIRM the rejection of claims 8 and 15 under 35 U.S.C. § 112, second paragraph. We REVERSE the rejection of claims 7-10 and 13-28 under 35 U.S.C. § 103(a) as unpatentable over Abe. Appeal 2011-011844 Application 12/161,051 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART hh Copy with citationCopy as parenthetical citation