Ex Parte Bernard et al

Board of Patent Appeals and Interferences

Nov 5, 2008

10979826 (B.P.A.I. Nov. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEREMY R. BERNARD,
DONALD R. VAN DER MOERE, and
JOHN L. CAGNEY
____________

Appeal 2008-2609
Application 10/979,826
Technology Center 3700
____________

Decided: November 5, 2008
____________

Before HUBERT C. LORIN, DAVID B. WALKER, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Jeremy R. Bernard, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-12. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
The “invention relates to powertrains of motor vehicles and is
particularly concerned with the use of self-tapping fasteners to create certain
critical joints in certain parts.” Specification [0001]. In particular, the
claimed invention is directed to fastening components at critical joints in a
motor vehicle powertrain with helically threaded screws having multi-lobed
leads capable of starting the screws in unthreaded holes.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for fastening components together at
critical joints in a motor vehicle powertrain
through which power flows from an engine to
driven wheels, the method comprising:
providing an unthreaded hole in a first component
part, providing a clearance hole in a second
component part, passing a helically threaded screw
that has a multi-lobed lead capable of starting
the screw in an unthreaded hole in the first
component part through the clearance hole in the
second component part to engage the multi-lobed
lead with the unthreaded hole in the first
component part and turning the screw, with an
axial force applied, to start the screw in the
unthreaded hole, and continuing to turn the screw
to cause threads that are distal to the lead to

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Jun. 26, 2007) and Reply Brief (“Reply Br.,” filed Oct. 11, 2007),
and the Examiner’s Answer (“Answer,” mailed Aug. 13, 2007).
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create a desired helical thread in the unthreaded
hole, wherein the final thread engagement is at
least 1.5 times the diameter of the screw thread.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Muenchinger US 3,877,339 Apr. 15, 1975

Research Engineering & Manufacturing Inc., “TAPTITE 2000®
Thread Rolling Fasteners,” 2001, pp. 1-9.

Applicant’s Admitted Prior Art as set forth in the Specification at p. 2,
[0004].

The following rejections are before us for review:
1. Claims 1-8 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Muenchinger and TAPTITE 2000®.
2. Claims 1-12 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Applicant’s Admitted Prior Art, Muenchinger, and
TAPTITE 2000®.

ISSUE
The issue is whether it would have been obvious to use known
helically threaded screws with multi-lobed leads to fasten components
together at critical joints in a motor vehicle powertrain.

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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).

Claim construction
1. The preamble of claim 1 calls for “fastening components together
at critical joints in a motor vehicle powertrain through which
power flows from an engine to driven wheels.”
2. The body of claim 1 describes the method as comprising providing
an unthreaded hole in a first component, providing a clearance hole
in a second component, and “passing a helically threaded screw
that has a multi-lobed lead capable of starting the crew in an
unthreaded hole in the first component part through the clearance
hole in the second component part.”
3. The Specification defines a critical joint in the powertrain as
follows: “A joint connecting parts in a motor vehicle powertrain is
a critical joint if failure of the joint would damage the powertrain
in a way that would render the powertrain incapable of propelling
the vehicle.” Specification [0004].
4. The Specification describes using screws at the joint of a
connecting rod and crankshaft throw. Spec. [0004].

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The scope and content of the prior art
5. According to the Examiner, Muenchinger discloses fastening
components at joints with helically threaded screws having multi-
lobed leads in the manner claimed. Answer 3.
6. The Appellants do not challenge the Examiner’s characterization
of the scope and content of Muenchinger. Rather, the Appellants
have argued that Muenchinger does not disclose or suggest
applying Muenchinger’s fastening technique to critical joints of
components of a vehicle powertrain.
7. According to the Examiner, TAPTITE 2000® shows a screw with
a final thread engagement of at least two times the diameter of the
screw thread. Answer 5.
8. The Appellants do not challenge the Examiner’s characterization
of the scope and content of TAPTITE 2000®.
9. The Appellants admit that the screw used in the claimed invention
is not new. “The screw that is used in practice of the present
invention is admittedly not new.” App. Br. 6.
10. The Specification admits that critical joints of components of a
vehicle powertrain are known and are known to be connected via
screws. According to the Specification, “[t]he various components
through which power flows from the engine cylinders to the driven
wheels are connected in succession from the pistons to the driven
wheels. Certain connections use threaded fasteners, such as screws,
to form the joint that connects one component to the next.” [0004].
11. According to the Specification, “[w]here screws are used in
creating such joints, the historical practice has been to drill, ream,
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and then tap each hole into which a screw is to be threaded.
Drilling and tapping are separate devoted operations in the
manufacturing process. Such tapping of a hole that is used to
joining parts at a critical joint has been accepted as necessary in
order to assure integrity of the joint over its design life.” [0005].
12. The Specification makes the following statements: “One example
of a self-tapping screw that is suitable for purposes of the invention
incorporates technology licensed under the trade name TAPTITE®
or the trade name TAPTITE 2000®” ([0008]); “The screws are
effective to roll threads in unthreaded holes as the screws are being
turned into the holes” ([0009]; and “The screw thread is multi-
lobular, such as the tri-lobular threads of screws incorporating
TAPTITE® or TAPTITE 2000® technology” ([0022]).
Any differences between the claimed subject matter and the prior art
13. The claimed invention combines elements separately disclosed in
Appellants’ Admitted Prior Art, Muenchinger, and TAPTITE
2000®.
The level of skill in the art
14. Neither the Examiner nor the Appellants has addressed the level of
ordinary skill in the pertinent art of joining critical powertrain
components. We will therefore consider the cited prior art as
representative of the level of ordinary skill in the art. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
absence of specific findings on the level of skill in the art does not
give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not
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shown’”).(Quoting Litton Indus. Prods., Inc. v. Solid State Sys.
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)).
15. One of ordinary skill in the art would understand that failure of the
connection between a connecting rod and crankshaft throw will
damage the powertrain in a way that would render the powertrain
incapable of propelling the vehicle.
Secondary considerations
16. There is no evidence on record of secondary considerations of non-
obviousness for our consideration. However, the Appellants
contend that using the TAPTITE® screws to “fasten[ ] components
together at critical joints in a motor vehicle powertrain through
which power flows from an engine to driven wheels” (claim 1)
produces cost efficiencies. See App. Br. 7.

PRINCIPLES OF LAW
Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence
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of these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”) The Court in Graham
further noted that evidence of secondary considerations “might be utilized to
give light to the circumstances surrounding the origin of the subject matter
sought to be patented.” 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 1-8 under 35 U.S.C. §103(a) as being unpatentable
over Muenchinger and TAPTITE 2000®.
The Appellants argued claims 1-8 as a group (App. Br. 5-7). We
select claim 1 as the representative claim for this group, and the remaining
claims 2-8 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner finds that Muenchinger discloses fastening components
at critical joints with helically threaded screws having multi-lobed leads in
the manner claimed. Answer 3. The Examiner states that “[t]he joint made
by the assembly of Muenchinger can be considered a critical joint applicable
to a vehicle powertrain.” Answer 4 [citing Muenchinger, col. 3, l. 5-col. 4, l.
29, and Figs. 1-5]. TAPTITE 2000® shows the claimed screw and is not in
dispute. FF 7 and 11.
The Appellants do not dispute the Examiner’s characterization of the
manner in which Muenchinger uses its screws to fasten components. FF 5.
Rather, the Appellants argue that Muenchinger does not show the critical
joints applicable to a vehicle powertrain which the claimed invention fastens
with TAPTITE 2000® screws. App. Br. 6.
We agree with the Appellants. Neither a powertrain nor critical joints
is disclosed or suggested in Muenchinger, let alone critical joints applicable
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to a vehicle powertrain. Without the prior art disclosing or suggesting this
essential limitation of the claims, we are unable to find that one of ordinary
skill in the art would be lead from the prior art combination to the claimed
use of the TAPTITE 2000® screws to fasten components together at critical
joints in a motor vehicle powertrain. Accordingly, we will reverse the
rejection because we find a prima facie case of obviousness has not been
established.
We note that the Examiner had responded to the Appellants’ argument
by stating that the claimed limitation “critical joints in a motor vehicle
powertrain through which power flows from an engine to driven wheels”
appeared in the preamble of the claim and thus “has not been given
patentable weight because the recitation occurs in the preamble.” Answer
10. The Appellants have taken issue with that construction of the claim. See
Reply Br. 2. We do likewise.
All limitations in a claim, whether they appear in a preamble or in the
body of the claim, must be considered. The patentably consequential weight
to be given limitations appearing in a preamble depends on whether, after
careful consideration of the whole claim, the preamble limits the claim. “In
considering whether a preamble limits a claim, the preamble is analyzed to
ascertain whether it states a necessary and defining aspect of the invention,
or is simply an introduction to the general field of the claim. In Kropa v.
Robie, 187 F.2d 150, 152 (CCPA 1951), the court aptly described the
inquiry as whether the preamble is ‘necessary to give life, meaning and
vitality to the claims or counts.’” On Demand Machine Corp. v. Ingram
Industries, Inc., 442 F.3d 1331, 1343 (Fed. Cir. 2006). When claim 1 is
considered as a whole, it becomes evident that the preamble is not simply an
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introduction to the general field of the claim. In the body of the claim, the
term “component” is used. The antecedent basis for “component” is in the
preamble, and thus one is lead to the preamble to understand the context
within which “component” is to be read. When read in light of the preamble,
it becomes clear that the claimed method as a whole is referring to a
component that forms part of a critical joint in a motor vehicle powertrain
and that it is to this critical joint that the screws are to be used to fasten the
components. Here, the preamble is “necessary to give life, meaning and
vitality to the claims” and must not only be considered but must also be
viewed as limiting the scope of the claim.

The rejection of claims 1-12 under 35 U.S.C. §103(a) as being unpatentable
over Applicant’s Admitted Prior Art, Muenchinger, and TAPTITE 2000®.
Although the Appellants have grouped claims 9-12 separately from
claims 1-8, the argument made with respect to them is the same as that made
in challenging the rejection of claims 1-8. Claims 9-12 refer to specific joints
in a vehicle powertrain but the Appellants have conceded these joints are
known. App. Br. 8. The Appellants do not concede that these joints are
“critical,” the same point raised in arguing against the rejection of claims 1-
8. Accordingly, we will treat claims 1-12 together, using claim 1 as
representative of the group..
This rejection differs from the previous one in that the Examiner has
added Applicant’s Admitted Prior Art as a prior art reference. The Examiner
cites the Applicants’ Admitted Prior Art for its disclosure that fastening
components together at critical joints in a motor vehicle powertrain is
known. In combining the Applicants’ Admitted Prior Art with Muenchinger
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and TAPTITE 2000®, the Examiner fills the gap in the evidence supporting
the previous rejection due to the failure of the evidence to show components
at critical joints in a motor vehicle powertrain.
It is now established that fastening of components of a powertrain
with screws is known. FF 9. It has been established supra that the particular
screws used in the claimed process are known. And finally the Examiner’s
characterization of Muenchinger as describing connecting components with
the claimed screws by the steps claimed has not been challenged.
Accordingly, the cited prior art shows all the claimed limitations. The only
issue is whether it would have been obvious to one of ordinary skill in the art
to use the known screws to fasten the components together at “critical”
joints in a motor vehicle powertrain.
The Appellants do not argue that components in a motor vehicle
powertrain are known. This is admitted to be known. App. Br. 7. The
Appellants argue instead that fastening at “critical” joints for the
components of the vehicle powertrain are not known. App. Br. 8. See also
Reply Br. 2-4. We do not find this argument persuasive.
The Specification defines “critical” joints as follows: “A joint
connecting parts in a motor vehicle powertrain is a critical joint if failure of
the joint would damage the powertrain in a way that would render the
powertrain incapable of propelling the vehicle.” FF 3. But such a joint is
known, as is fastening components at such a joint. The Specification
describes using screws at the joint of a connecting rod and crankshaft throw.
FF 4. This is necessarily a “critical” joint. One of ordinary skill in the art
would understand that failure of the connection between a connecting rod
and crankshaft throw will damage the powertrain in a way that would render
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the powertrain incapable of propelling the vehicle. FF 15. Accordingly, the
joint of a connecting rod and crankshaft throw represents a known “critical
joint” and the fact that it was known to use fastening screws at that critical
joint refutes the Appellants’ argument that fastening components at “critical”
joints of a vehicle powertrain was not known.
Given that the references describe each and every limitation, the
question now becomes whether it would have been obvious to substitute the
claimed known screws (e.g., TAPTITE 2000®) for the screws normally used
to fasten components at critical joints of a vehicle powertrain (Applicant’s
Admitted Prior Art) in the manner Muenchinger describes. The evidence
leads us to the conclusion that it would be.
The claimed combination appears to do no more than combine known
elements for their known functions to yield, predictably, a mechanical
assembly of the components at critical joints of a vehicle powertrain. One
anticipated advantage, as the Examiner pointed out (Answer 8), would be an
“excellent” mechanical assembly (see TAPTITE 2000®, p. 2). Accordingly,
the Examiner has articulated an apparent reason with logical underpinning
for the conclusion of obviousness. We find that the Examiner has established
a prima facie case of obviousness. For the foregoing reasons, we are not
persuaded as to error in the Examiner’s rejection. In general, when old
elements, each performing the same function it had been known to perform,
are combined and the combination yields no more than what one would
expect, the combination is obvious. See KSR at 1740 (“Finally, in Sakraida
v. Ag Pro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784 (1976), the
Court derived from the precedents the conclusion that when a patent “simply
arranges old elements with each performing the same function it had been
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known to perform” and yields no more than one would expect from such an
arrangement, the combination is obvious. Id., at 282, 96 S.Ct. 1532.”)
We note that the Appellants have argued secondary considerations;
that is, cost efficiencies from fastening components at critical joints of a
vehicle powertrain in the manner claimed. App. 6-7. A prima facie case of
obviousness may be overcome by a showing of unexpected results. See KSR
at 1739-1740 (“In United States v. Adams, 383 U.S. 39, 40, 86 S.Ct. 708, 15
L.Ed.2d 572 (1966), a companion case to Graham, the Court considered the
obviousness of a “wet battery” that varied from prior designs in two ways: It
contained water, rather than the acids conventionally employed in storage
batteries; and its electrodes were magnesium and cuprous chloride, rather
than zinc and silver chloride. The Court recognized that when a patent
claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result. 383 U.S., at 50-51, 86 S.Ct.
708. It nevertheless rejected the Government's claim that Adams's battery
was obvious. … . The fact that the elements worked together in an
unexpected and fruitful manner supported the conclusion that Adams's
design was not obvious to those skilled in the art.”) However, here, the
showing of unexpected results, i.e., cost efficiencies from employing the
claimed process as opposed to the prior art process, is simply the attorney’s
argument. There is no independent corroboration for this argument. We find
no evidence supporting appellants’ contentions elsewhere in the record. See
In re Glass, 474 F.2d 1015, 1019 (CCPA 1973) (“Appellant has not shown
that the corresponding elements in Childs do not actually possess the same
characteristics as his apparatus and since he has failed to do so, we are
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required to affirm the rejection. In re Ludtke, 441 F.2d 660, 58 CCPA 1159
(1971).”. “It is well settled that unexpected results must be established by
factual evidence. Mere argument or conclusory statements …[do] not
suffice.” In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover,
cost efficiencies appear to be the very result one would expect if the cited
prior art were read as a whole. TAPTITE 2000® states that using its
“fasteners afford end-users with enhanced opportunities to reduce the overall
Cost of Assembly” (p. 2). Accordingly, we do not find the alleged cost
savings to be sufficient evidence to overcome the prima facie case of
obviousness.
We will therefore affirm the rejection.

CONCLUSIONS OF LAW
We conclude that the Appellants have shown that the Examiner erred
in rejecting claims 1-8 under 35 U.S.C. §103(a) as being unpatentable over
Muenchinger and TAPTITE 2000® but have not shown that the Examiner
erred in rejecting claims 1-12 under 35 U.S.C. §103(a) as being unpatentable
over Applicant’s Admitted Prior Art, Muenchinger, and TAPTITE 2000®.

DECISION
The decision of the Examiner to reject claims 1-12 is affirmed.

AFFIRMED

vsh
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