Ex Parte GhiranDownload PDFBoard of Patent Appeals and InterferencesOct 27, 200911167998 (B.P.A.I. Oct. 27, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte MIRCEA M. GHIRAN ____________ Appeal 2009-001533 Application 11/167,998 Technology Center 3700 ____________ Decided: October 27, 2009 ____________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEFAN STAICOVICI, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-001533 Application 11/167,998 2 STATEMENT OF THE CASE Mircea M. Ghiran (Appellant) appeals under 35 U.S.C. § 134 (2002) from the Examiner’s decision rejecting claims 13-16. Claims 1-12 have been cancelled, and the Examiner has withdrawn claims 17-21 from consideration. No other claims are pending in the application. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002). The Invention Appellant’s claimed invention is directed to a method for attaching a fastener nut to a hydroformed part. Spec. 1, para. [0001]. Claim 13, reproduced below, is representative of the claimed subject matter. 13. A method for attaching a nut to the wall of a tubular part formed within a die cavity of a hydroforming die comprising: providing a nut having a nut body including a cylindrical body portion with a punch face at one end and an integral flange portion extending radially outward from the other end, positioning the nut within the die with the punch face engaging with the wall of the tubular part; extending an output shaft to drive the nut into the die cavity so that the punch face of the nut pierces a hole through the wall of tubular part to form a sleeve surrounding the cylindrical body portion and the flange portion of the nut forms a depressed wall portion in the wall to seat the flange portion upon the wall; after extending the output shaft to pierce the hole and form the sleeve and the depressed wall Appeal 2009-001533 Application 11/167,998 3 portion, then rotating the output shaft at speed and duration to cause heat buildup between the nut and the wall to weld the nut to the wall; after rotating the output shaft to weld the nut to the wall, then retracting the output shaft; and removing the tubular part from the die cavity. The Rejection Appellant seeks review of the Examiner’s rejection of claims 13-16 under 35 U.S.C. § 103(a) as being unpatentable over Mason (US 6,442,820 B1, issued Sep. 3, 2002) and Stevenson (US 6,729,531 B2, issued May 4, 2004). SUMMARY OF DECISION We REVERSE. DISCUSSION The Examiner correctly found that Mason teaches a method of attaching a nut (collar 50) to the wall of a tubular member 40 within a die cavity of a hydroforming die, and that Mason further teaches forming a weld 74 to secure the nut in place. Ans. 3; Mason, col. 3, l. 46 to col. 4, l. 5, fig. 8. The Examiner further correctly found that Mason describes an embodiment of the collar 50 provided with a flange. Ans. 3; Mason, fig. 11. The Examiner found, however, that Mason does not describe the flange portion of the nut forming a depressed wall portion in the wall to seat the flange or a step of rotating the output shaft (punch) to cause heat buildup between the nut and the wall to weld the nut to the wall. Ans. 3-4. The Appeal 2009-001533 Application 11/167,998 4 Examiner concluded that it would have been obvious to apply the friction welding technique of Stevenson to the method of Mason to form the weld, because “friction welding requires minimal if any consumables as opposed to traditional welding.” Ans. 4. The Examiner further concluded that a person of ordinary skill in the art would have been motivated to drive Mason’s collar into the tubular member such that the flange portion is flush with the outer wall of the tubular member, thus inherently creating a depressed wall portion, and to rotate the collar to friction weld it to the tubular member, because this would result in a weld over a greater surface area, and thus a stronger weld. Ans. 4. As pointed out by Appellant, Mason does not teach attaching the collar to the tubular member so that the flange forms a depression in the wall of the tube (see fig. 11), and Stevenson’s welding technique is directed to attaching together two metal members, a sheet 10 and a substrate 12, to one another (Stevenson, col. 2, ll. 21-26), rather than a nut to a hydroformed tubular member. See App. Br. 7 and 11. Appellant argues that the differences between the end purposes of the methods of Mason and Stevenson are such that there is insufficient basis to combine Mason and Stevenson. App. Br. 11. Rejections on obviousness grounds must be supported by “some articulated reasoning with some rational underpinning” to combine the known elements in the manner required in the claim at issue. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The issue presented in this appeal is whether the Examiner’s articulated reason for combining the welding technique of Stevenson with the collar attachment method of Mason in a manner to arrive at the invention set forth in claim 13, namely by extending Appeal 2009-001533 Application 11/167,998 5 Mason’s punch so that the flange portion of the collar forms a depressed wall portion in the wall and then, after forming the depressed wall portion, rotating the punch so as to cause heat buildup between the collar and the wall of the tubular member to weld the collar to the wall, is supported by rational underpinning. As illustrated in figure 3, Stevenson describes a friction stir welding process in which a cladded fastener 14 provided with a flange (cap portion 22) is driven through a sheet 10 and into a substrate 12 by a rotary driving apparatus 16. Stevenson, col. 2, ll. 23-26, 28-30, and 45-46. Moreover, the rotation of the fastener 14 as it is driven through the sheet 10 and into the substrate 12 causes melting and softening of the cladding on the fastener, and portions of the sheet 10 and substrate 12, which ultimately re-solidify to attach, or weld, the fastener 14, sheet 10, and substrate 12 together. Stevenson, col. 3, l. 58 to col. 4, l. 6. Stevenson certainly evidences that the use of rotary friction welding to attach elements was known in the art at the time of Appellant’s invention. There is an important distinction, however, between the end purpose of the attachment technique of Mason and that of Stevenson. Specifically, Mason is directed to a method of attaching a fastener to a hollow tubular member. Stevenson, on the other hand, is directed to a method of attaching a metal sheet to an underlying substrate of substantial thickness. In Stevenson’s method, the fastener is driven and rotated such that the flange is driven not only into, but through, the sheet, and into the substrate. Thus, Stevenson’s method results in a depressed portion of the substrate 12, but does not result in a depressed portion of sheet 10. The fastener in Stevenson’s method is Appeal 2009-001533 Application 11/167,998 6 driven to such an extent so as to penetrate into the substrate to which the sheet is to be attached. There is no such substrate in Mason’s method. If one were to drive Mason’s collar into the tubular member such that the flange portion (see fig. 11) is flush with the outer wall of the tubular member, as proposed by the Examiner, this would not result in a depressed wall portion of the tubular member, as called for in claim 13. Rather, this would result in an opening through the wall of the tubular member corresponding in diameter to the flange diameter. Moreover, doing so seemingly would defeat the purpose of the flange. Accordingly, it is not apparent why a person of ordinary skill in the art would have been prompted to make such a modification of Mason’s method. CONCLUSION The Examiner’s articulated reason for combining the welding technique of Stevenson with the collar attachment method of Mason in a manner to arrive at the invention set forth in claim 13 is not supported by rational underpinning. The Examiner, therefore, has not established a prima facie case that the subject matter of claim 13, and claims 14-16, which depend from claim 13, would have been obvious to a person of ordinary skill in the art at the time of Appellant’s invention. DECISION The Examiner’s decision is reversed. REVERSED Appeal 2009-001533 Application 11/167,998 7 hh GENERAL MOTORS COMPANY LEGAL STAFF MAIL CODE 482-C23-B21 P O BOX 300 DETROIT, MI 48265-3000 Copy with citationCopy as parenthetical citation