Ex Parte Ghiran

Board of Patent Appeals and Interferences

Oct 27, 2009

11167998 (B.P.A.I. Oct. 27, 2009)

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
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Decided: October 27, 2009
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Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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Application 11/167,998

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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been cancelled, and the Examiner has withdrawn claims 17-21 from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
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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
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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
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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
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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

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Application 11/167,998

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