Ex parte BUHL et al.

Board of Patent Appeals and Interferences

Oct 28, 1999

08383251 (B.P.A.I. Oct. 28, 1999)

Application for patent filed February 3, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte REINHARD BUHL and WILFRIED LUSTIG
__________
Appeal No. 1998-0328
Application 08/383,2511
__________
HEARD: Oct. 6, 1999
__________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
and GONZALES, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 5 and 7 through 14. No other
claims are pending in the application.
Appeal No. 1998-0328
Application No. 08/383,251
Translation attached.2
2
The subject matter here claimed is a “[m]etallic ball pin
of a universal joint for motor vehicles” (claim 1, line 1).
The ball pin comprises a machined joint ball (2) and a pin
stump (1). The pin stump is formed with a fastening pin (4)
received in a hole or bore (5) formed through the ball. The
ball is non-rotatably mounted on the fastening pin and is also
confined against axial movement on the fastening pin. All of
the independent claims on appeal, namely claims 1 and 14,
recite that the fastening pin is “formed by cold forming in a
direction of a longitudinal axis of said pin stump.”
A copy of the appealed claims is appended to
appellants’ brief.
The following references are relied upon by the
examiner as evidence of obviousness in support of his
rejections under 35 U.S.C. § 103:
Mitchell et al. 535,813 Jan. 15, 1957
(Mitchell) (Canadian)
Latzen (German) 928,987 Jun. 27, 19572
Lemforder (British) 1,020,671 Feb. 23,
1966
Appeal No. 1998-0328
Application No. 08/383,251
3
The examiner has additionally cited the following
references on page 3 of the answer to show that corrosion
protection of ball joints is known in the art:
Bokros 4,131,957 Jan. 2, 1979
Harris et al. 5,560,103 Oct. 1, 1996
(Harris) (filed effective August 26, 1992)
The examiner has also cited the following references on
page 3 of the answer “[a]s concerns the process of ‘cold
forming/cold working’ members of a ball joint”:
Crook, Jr. (Crook) 3,825,356 Jul. 23, 1974
Theobald 4,463,590 Aug. 7, 1984
Theobald 4,543,812 Oct. 1, 1985
Gallagher, Jr. 5,453,139 Sep. 26,
1995
(Gallagher) (filed Jul. 15, 1994)

Claims 1 through 5 and 7 through 11 stand rejected under
35 U.S.C. § 103 as being unpatentable over the Canadian
Mitchell reference in view of the German Latzen reference, and
claims 12 through 14 stand rejected under 35 U.S.C. § 103 as
being unpatentable over British Lemforder reference in view of
the Mitchell reference. Reference is made to the examiner’s
answer for details of these rejections.
We cannot sustain any of these rejections. Both of the
independent claims on appeal recite that “said pin stump [is]
non-rotatably joined to said machined joint ball by
Appeal No. 1998-0328
Application No. 08/383,251
Although not illustrated in the application drawings,3
this limitation is recited verbatim in original claim 1 as
filed. Therefore, there is support for this limitation to
satisfy the description requirement in the first paragraph of
35 U.S.C.
§ 112. See In re Anderson, 471 F.2d 1237, 1238-1239, 176 USPQ
331, 332 (CCPA 1973), Ex parte Porter, 25 USPQ2d 1144, 1146
(Bd. Pat. App. & Int. 1992) and the Manual of Patent Examining
Procedure § 608.01 (7 Ed. July, 1998).th
4
deformation of a portion of said fastening pin” (emphasis
added). Contrary to our understanding of the interpretation3
proposed by appellants’ counsel at oral hearing, the plain
unambiguous language of this claim limitation provides that
the deformation of claimed portion of the fastening pin non-
rotatably attaches or, to use appellants’ words, non-rotatably
joins the pin stump to the ball. This structure is not taught
or suggested by any of the applied references.
In the Mitchell reference, the pin member (25), which
corresponds to appellants’ pin stump, is non-rotatably
attached to the ball (12) by engagement of the non-circular
pin section (29) with the mating aperture in the upper end of
the ball as seen from Figures 7 and 8 of the Mitchell
drawings. Thus, Mitchell’s pin member is not non-rotatably
attached to the ball by deformation of any part of the pin
member.
Appeal No. 1998-0328
Application No. 08/383,251
5
In the British reference, the pivot pin (6), which
corresponds to appellants’ pin stump, is non-rotatably
attached to the ball (2) by engagement of tapered or
frustoconical surfaces on the end (5) of the pin and the bore
(4) in the ball. Thus, the non-rotatable attachment of the
pin to the ball is not accomplished by deformation of any part
of the pin.
Furthermore, according to the evidence presented by
appellants (see page 672 in volume 12 of the Encyclopedia
Britannica), cold working alters the grain structure of the
metal to produce a finer grained metal. Thus, there is
unchallenged evidence that cold working structurally alters
the pin stump to distinguish the resulting product from the
prior art. The method limitation of cold forming the pin
stump must therefore be given weight in determining the
patentability of the appealed claims under the holding in In
re Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981).
None of the applied references, namely the Mitchell,
German and British references, teaches or suggests the concept
of cold forming a pin stump as called for in the appealed
claims. The Mitchell reference does state that the pin member
Appeal No. 1998-0328
Application No. 08/383,251
6
is forged (see column 3, line 46 of the Mitchell
specification), but does not indicate whether the pin member
is hot forged or cold forged.
We are not unmindful of the citation of the Crook,
Theobald and Gallagher references for the first time in the
examiner’s answer to support his position that cold forming is
“well known” in the ball and socket joint art as set forth in
the paragraph bridging pages 6 and 7 of the answer. Apart
from the fact that this appears to be a new position presented
for the first time in the answer and apart from the fact that
the examiner has failed to specifically refer to the Theobald
and Gallagher references, the examiner should have included
these additional references in the statements of the
rejections if he intended to rely upon them in support of his
position of obviousness. See In re Hoch, 428 F.2d 1341, 1342
n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). For our review of the
standing rejections we shall therefore confine ourselves to
the prior art set forth in the statements of the rejections.
Appeal No. 1998-0328
Application No. 08/383,251
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For the foregoing reasons, the examiner’s decision
rejecting appealed claims 1 through 5 and 7 through 14 is
reversed.
REVERSED
Harrison E. McCandlish, Senior )
Administrative Patent Judge )
)
)
)
Neal E. Abrams ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
John F. Gonzales )
Administrative Patent Judge )
tdl
Appeal No. 1998-0328
Application No. 08/383,251
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Mcglew and Tuttle
Scarborough Station
Scarborough, NY 10510-0827