Ex Parte Boni et al

Board of Patent Appeals and Interferences

Feb 17, 2009

09999191 (B.P.A.I. Feb. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte: DAVID K. PLATNER
____________

Appeal 2008-4544
Application 10/056,945
Technology Center 3600

____________

Decided:1 February 17, 2009
____________

Before: LINDA E. HORNER, JOHN C. KERINS and,
STEFAN STAICOVICI Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-4544
Application 10/056,945

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STATEMENT OF THE CASE
David Platner (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1, 4, and 20-23. Claims 2, 3, and 6 have been
withdrawn, and claims 5, 7-19, and 24 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention is a method of forming a complete axle
from a singular tubular member. Spec. 1, para. 2. Claim 1, reproduced
below, is representative of the subject matter on appeal.
1. A method of forming an axle assembly comprising the
steps of:
a) providing a cylindrical hollow member having an end
portion;
b) forming the end portion to provide a first generally
circular end in cross-section,
c) forming a section of the cylindrical hollow member
into a polygonal cross-section section; and
d) welding a preformed kingpin boss to the generally
circular end.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Moses US 6,122,948 Sep. 26, 2000
Dickson, Jr. (“Dickson”) US 6,247,346 B1 Jun. 19, 2001
The Appellant seeks our review of the following rejections:
1. The Examiner rejected claims 1, 21, and 23 under 35 U.S.C.
§ 102(a) as anticipated by Moses.
2. The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
being unpatentable in view of Moses.2
3. The Examiner rejected claims 4 and 20 under 35 U.S.C.
§ 103(a) as being unpatentable over Moses in view of Dickson.

ISSUES
The Examiner rejected claims 1, 21, and 23 under 35 U.S.C. § 102(a)
as anticipated by Moses. Ans. 3-4. Appellant contends Moses does not
disclose a hollow member having a polygonal cross-section section, and that
hydroforming cannot operate on materials with a thickness of greater than
1/8 inch. App. Br. 5-6.
The first issue before us is:
Has Appellant shown that Moses does not disclose each element of
the claim because it does not disclose a hollow member with a polygonal

2 While the heading in the rejection says it is under 35 U.S.C. § 102(a), the
body of the rejection makes it clear it is under 35 U.S.C. § 103(a) (Ans. 4),
and the Appellant responded as if it was a 35 U.S.C. § 103(a) rejection (App.
Br. 6-7).
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cross-section section or because the hydroforming process of Moses cannot
operate on materials with a thickness of greater than 1/8 inch?
The Examiner rejected claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Moses. Ans. 4-5. Appellant contends that Moses does
not disclose a rectangle with a height to width ratio of 1.2, and that the
hydroforming process of Moses cannot produce a substantially rectangular
cross-section section in the hollow member. App. Br. 7.
The second issue before us is:
Has Appellant shown the Examiner erred in the rejection of claim 22
because either Moses does not disclose a rectangle with a height to width
ratio of 1.2, or because the hydroforming process of Moses cannot produce a
substantially rectangular cross-section section in the hollow member?
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Moses and Dickson. Ans. 5-6. Appellant contends there
is no reason to modify Moses in view of Dickson because the hyrdoforming
process of Moses could create the frustoconical shape, so that there is no
motivation to use the swaging of Dickson to create the frustoconical shape.
App. Br. 7-8.
The third issue before us is:
Has Appellant shown the Examiner erred in the rejection of claim 4
because there is no reason to modify Moses in view of Dickson because the
hyrdoforming process of Moses could create the frustoconical shape, so that
there is no motivation to use the swaging of Dickson to create the
frustoconical shape?
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The Examiner rejected claim 20 under 35 U.S.C. § 103(a) as
unpatentable over Moses and Dickson. Ans. 5-6. Appellant contends that
there is no reason to combine Moses with Dickson because neither Moses
nor Dickson discloses providing a preformed hollow member with multi-
wall thickness. App. Br. 7-9.
The fourth issue before us is:
Has Appellant shown the Examiner erred in the rejection of claim 20
because there is no reason to combine Moses with Dickson because neither
Moses nor Dickson discloses providing a preformed hollow member with
multi-wall thickness?

FINDINGS OF FACT
We find that the following enumerated facts 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).
1. Appellant discloses a process that is initiated with a hollow
member that may be hydroformed into cylindrical tubular
member 12 (step 20) or polygonal member 18 (step 30).
Preferably, the hollow member 12 is
preferably [sic] a cylindrical tubular member
12 as indicated at step 20, but may also be a
polygonal member as indicated in step 30.
It is understood that hydroforming,
stamping, rolling or other method may be
used to form the hollow member 12.
Spec. 3, para. 11; see also Fig. 1
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2. In one embodiment (path 10) frustoconical (or generally
circular) end 42 may be formed by swaging after tubular
member 12 is formed into polygonal member 18, and in an
alternate embodiment (path 10A) frustoconical end 42 is
formed prior to tubular member 12 being formed into polygonal
member 18 (step 30A). Spec. 4, para. 15; Spec. 4, para. 19,
respectively.
3. Unless specified otherwise in the claim, the Appellant’s process
may be performed in any sequence. Spec. 5, paras. 21-22.
4. Appellant’s Specification does not provide a lexicographic
definition for “polygonal,” or for “rectangular.” Spec., passim.
5. The ordinary and customary meaning of the term
“polygonal” is “having many sides.” Webster’s
Third New International Dictionary, Unabridged
(1961).
6. The ordinary and customary meaning of the term
“rectangle” is “a parallelogram all of whose angles
are right angles.” Webster’s Third New
International Dictionary, Unabridged (1961).
7. Moses discloses a method of manufacturing rigid
axle beams such as for use in a vehicle suspension
system. Moses, col. 1, ll. 10-14.
8. Moses discloses an embodiment where the method
includes providing a cylindrical (tubular) hollow
member, such as hollow front axle beam 60 with
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end portion 61 that has a generally circular cross-
section. Moses, col. 6, ll. 34-43; Fig. 10; Fig. 11;
see also col. 2, ll. 21-22 (“initially a tubular blank
is provided”).
9. Moses discloses a section of the hollow member
may be hydroformed into “any desired cross
sectional shape” and discloses embodiments with
cross-sections that are: circular, triangular,
I-shaped, and oval. Moses, col. 2, ll. 32-34 (any
shape, including circular, triangular, I-shaped, and
oval); col. 5, ll. 9-61 (hydroforming); col. 4, ll. 56-
59 (circular beam 40); col. 6, ll. 12-15 (triangular
beam 50); col. 6, ll. 38-41 (I-shaped beam 60); col.
6, ll. 64-67 (oval beam 70).
10. Moses discloses conventional bending of the
hollow front axle beam to attain the general
desired shape prior to the hydroforming process.
Moses, col. 5, l. 62 to col. 6, l. 5.
11. Dickson discloses a method of forming vehicle
drive shafts. Dickson, col. 1, ll. 11-14.
12. Dickson discloses a process that includes
providing a hollow elongate tube where the tube
has at least a section with a wall thickness different
from the remaining section (multi-wall thickness)
that is created by drawing. Dickson, claim 10
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(depending from claim 1); col. 6, ll. 33-64 (in
particular note US 4,788,841, to Calhoun, Dec. 6,
1988, Fig. 2; col. 1, ll. 6-10, incorporated by
reference).
PRINCIPLES OF LAW
Anticipation Burden
After the PTO establishes a prima facie case of anticipation the
burden shifts to the appellant to prove that the subject matter
shown to be in the prior art does not possess the characteristics of the
claimed invention. See In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986); In
re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
§103 Burden
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to appellant.
Id. at 1445. See also Piasecki, 745 F.2d at 1472. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445; Piasecki,
745 F.2d at 1472.
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ANALYSIS
Rejection of claims 1, 21, and 23 under 35 U.S.C. § 102(a) as anticipated by
Moses.
Appellant argues claims 1, 21, and 23 as a group. App. Br. 5-6. As
such, we select claim 1 as the representative claim, and claims 21 and 23
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
First, Appellant argues Moses does not anticipate the claim because
Moses fails to disclose a hollow member with a polygonal cross-section.
App. Br. 5-6. More specifically, Appellant contends the hydroforming
processes, like that used by Moses, can only produce “relatively soft-edged
cross-sections which may not be properly interpreted as a polygonal cross-
section.” Id. Our analysis begins with the claim.
The step at issue is step c) of claim 1: “forming a section of the
cylindrical hollow member into a polygonal cross-section section.” “It is the
[Appellant’s] burden to precisely define the invention, not the PTO’s.” In re
Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997). Here the claim does not
contain further clarification of the limitation “polygonal cross-section,” nor
add the limitation that the polygon may not have soft-edges. In addition, the
Specification does not provide further clarification, nor provide a definition
(Fact 4). Given this, we turn to the ordinary meaning of the term.
“Polygonal” means “having many sides” (Fact 5). We give the claim its
broadest reasonable interpretation in light of that definition. In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415
F.2d 1393, 1404-05 (CCPA 1969). As such, we adopt the ordinary meaning
of the term “polygonal” for our interpretation of the claimed “polygonal
cross-section,” and we decline to construe narrowly the term to require hard
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or sharp edges. The proper focus then is whether Moses discloses what is
claimed, namely, forming a section of the cylindrical hollow member into a
cross-section that has many sides.
Moses discloses the hollow member may be formed into “any desired
cross sectional shape,” and discloses an embodiment with a triangular cross
section (Facts 7-9). Further, Appellant’s own Specification states the hollow
member may hydroformed to have a section with a polygonal cross-section
(Fact 1), a direct contradiction of Appellant’s argument here. While we
considered Appellant’s argument that hydroforming can only produce soft
non-polygonal shapes, Appellant’s arguments do not take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). We conclude,
by a preponderance of the evidence, that the hydroforming process of Moses
can and does produce a hollow member with a section that has a polygonal
cross-section that meets the requirements of claim 1.
Next, Appellant maintains that hydroforming is “limited to relatively
thin wall materials such as that of 1/8 inch or less.” App. Br. 6. Even if
true, this argument is unconvincing. Appellant’s claim is not limited to
materials with a wall thickness of greater than 1/8 inch because such
limitation is not in the claim. If Moses discloses a process that meets the
claim, even if the material used in Moses has a thickness less than 1/8 inch,
each element of the claim is taught, and Moses still anticipates Appellant’s
claim.
Appellant has failed to demonstrate the Examiner erred in the
rejection of claim 1. The rejection of claims 21 and 23 likewise will be
sustained.

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Rejection of claim 22 under 35 U.S.C. § 103(a) as being unpatentable in
view of Moses.
Claim 22 depends from claim 1, and adds the limitation to step c) that
the polygonal cross section must be substantially rectangular with a height-
to-width ratio of approximately 1.2.
First, Appellant comments that Moses does not disclose such a ratio.
App. Br. 7. The Examiner conceded as much in the rejection, which was
based on the reasoning that it would have been obvious for a person of
ordinary skill in the art to modify Moses’s method to include the claimed
ratio. Ans. 4.
Next, Appellant argues that the process disclosed in the Moses patent
cannot create a cross-section with a height-to-width ratio of 1.2 because the
hydroforming process can only produce “relatively soft non-polygonal
(defined by a height to width) shapes” that are not “conducive to such a ratio
definition.” App. Br. 7. Our analysis of this contention begins with the
claim.
The step at issue is step a) of claim 22 that requires: “forming the
polygonal cross-section section into a substantially rectangular cross-section
section.” While the claim specifies that the polygonal cross-section must be
“substantially rectangular,” the claim does not include the limitation that the
polygon may not have soft-edges. In addition, the Specification does not
provide a definition for “rectangular” (Fact 4). Given this, we turn to the
common meaning of the word “rectangular,” which is “a parallelogram all of
whose angles are right angles” (Fact 6). Based on this common meaning, a
“substantially rectangular” cross section is a shape that is generally like a
parallelogram with all right angles. The proper focus then is whether it
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would have been obvious in view of the disclosure in Moses to hydroform a
cross-section of the cylindrical hollow member that is generally a
parallelogram with all right angles.
Quite similar to the argument used against claim 1, analyzed supra,
Appellant’s argument that hydroforming can only produce non-polygonal
cross-sections is unconvincing. Moses discloses hydroforming can produce
any desired shape, to include examples of circular, triangular, I-shaped, and
oval cross-sections (Fact 9). Further, Appellant’s own Specification
describes the claimed process as beginning with a hollow member that has a
rectangular shape that may be created by hydroforming (Fact 1). While we
considered Appellant’s argument that hydroforming can only produce soft
non-polygonal shapes, Appellant’s arguments do not take the place of
evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). We conclude
Appellant’s contention that hydroforming cannot produce a substantially
rectangular cross-section as required by claim 22 is incorrect.
Appellant has failed to demonstrate the Examiner erred in the
rejection of claim 22.

Rejection of claims 4 and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Moses in view of Dickson.
Claim 4
Claim 4 modifies claim 1 by adding a step to swage the polygonal
cross-section into a frustoconical shape after step (c) (“forming a section of
the cylindrical hollow member into a polygonal cross-section section”).
The Examiner found the swaging process of Dickson could be used to
form the frustoconical shape after the hydroforming process of Moses. The
reason to combine put forth by the Examiner is that “swaging is a
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notoriously old and well known technique used throughout the art of metal
working/forming for shaping a tubular member into a desirable shape and/or
form.” Ans. 5, 8.
Appellant contends there is no reason to modify Moses in view of
Dickson because the hyrdoforming process of Moses could create the
frustoconical shape, so that there is not motivation to use the swaging of
Dickson. App. Br. 8.
Assuming, arguendo, that swaging is a notoriously old and well
known technique in metalworking, that makes it an available technique, but
this is not a sufficient reason to use the swaging technique in the process of
Moses. Given the absence of a sufficient reason to combine, Appellant has
demonstrated error in the Examiner’s rejection of claim 4.

Claim 20
Claim 20 modifies the method of claim 1 by adding that step a)
further comprises providing the cylindrical hollow member with a preformed
multi-wall thickness section.
Appellant asserts that the hydroforming process of Moses cannot
create multi-wall thickness, that hydroforming process is inapplicable to the
multi-wall thickness materials, and that this is particularly the case with
materials greater than 1/8 inch in wall thickness. App. Br. 8-9. Appellant
further contends that the hydroforming process of Moses must be performed
first, because performing “machining, drawing, or other operations” of
Dickson first would create stress areas that could rupture during
hydroforming. App. Br. 9.
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Appellant’s argument that Moses cannot create a multi-wall thickness
section is irrelevant because Dickson teaches this aspect of the claim.
Dickson discloses providing a pre-formed hollow cylindrical member with a
multi-wall thickness section (Facts 11-12).
Appellant’s contention that hydroforming must be performed before
“machining, drawing, or other operations” is also unconvincing. Contrary to
what Appellant argues here, Appellant’s Specification states swaging may
be performed prior to hydroforming (Fact 2). Further, Moses discloses
bending of the hollow member to attain the generally desired shape prior to
hydroforming (Fact 10). While we considered Appellant’s argument that
hydroforming must be performed before “machining, drawing, or other
operations,” Appellant’s arguments do not take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974). We conclude, by a
preponderance of the evidence, that the hydroforming process of Moses can
be performed on the preformed hollow cylindrical member provided by the
process of Dickson.
CONCLUSION
Appellant has failed to show the Examiner erred in the rejection of
claim 1 because Moses does disclose a hollow member with a polygonal
cross-section section, and because the claimed process is not limited to use
on materials with a thickness of greater than 1/8 inch.
Appellant has failed to show the Examiner erred in the rejection of
claim 20 because it would have been obvious in view of the teaching of
Moses to form a substantially rectangular cross-section section with a height
to width ratio of 1.2.
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Appellant has demonstrated error in the rejection of claim 4 because
the Examiner failed to provide a sufficient reason to combine the teachings
of Dickson and Moses.
Appellant has failed to show the Examiner erred in the rejection of
claim 20 because Dickson discloses providing a pre-formed hollow member
with multi-wall thickness.

DECISION
We affirm the Examiner's rejection of claims 1 and 20-23, and we
reverse the rejection of claim 4.
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) (2007).

AFFIRMED-IN-PART

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