Ex Parte Hammer et al

Patent Trial and Appeal Board

Feb 13, 2017

13656133 (P.T.A.B. Feb. 13, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/656,133 10/19/2012 Maik Hammer 080437.64892US 7533
23911 7590 02/15/2017
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
LAROSE, RENEE MARIE
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
02/15/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
edocket @ crowell. com
tche @ crowell. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAIK HAMMER, JOHANN VAN NIEKERK, and
THOMAS HERZINGER
Appeal 2015-003270
Application 13/656,133
Technology Center 3700
Before JOHN C. KERINS, AMANDA F. WIEKER, and
ARTHUR M. PESLAK, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Maik Hammer et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—3, 5, 6, and 8—26.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants submit the real party in interest is Bayerische Motoren Werke
Aktiengesellschaft. Br. 1.
Appeal 2015-003270
Application 13/656,133
THE CLAIMED SUBJECT MATTER
Claim 1, the only independent claim is reproduced below.
1. A method for connecting a first connection component
to a second connection component, the method comprising the
acts of:
placing the first and second connection components
against each other;
pre-fixing the first and second connection components
together, wherein the connection components are attached and
non-movably connected to each other at at least one first
connection point via a first detachable component connection,
and are attached and connected to each other so as to be
movable relative to each other in a sliding direction at at least
one second connection point via a second detachable
component connection; and
rigidly connecting the pre-fixed first and second
connection components together,
wherein at least one of the two components connections
is produced by:
insertion of a male fixing element into a female fixing
element in an insertion direction, wherein:
the male fixing element is spaced apart from one of the
two connection components and has a sphere or sphere-like
shape, the male fixing element being a separate part from the
connection components and being connected to said one of the
two connection
components in a material-locking manner, and
the female fixing element is included on the other one of
the two connection components and receives the male fixing
element, a clamp connection of the fixing elements being
produced by the inserting of the male fixing element into the
female fixing element in
the insertion direction,
wherein the second component connection is operatively
configured such that heat stress occurring during the rigid
connection is compensated in the sliding direction.
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Appeal 2015-003270
Application 13/656,133
REJECTIONS2
1) Claims 1—3, 6, 8—10, and 14—22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Van Niekerk (EP 2154054 Al,
published Feb. 17, 2010)3, Meyer ‘672 (US 2008/0210672 Al,
published Sept. 4, 2008), and Sweeney (US 3,188,731, issued June
15, 1965).
2) Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
EP ‘054, Meyer ‘672, Sweeney, andNishio (US 5,451,742, issued
Sept. 19, 1995).
3) Claims 11—13 and 23—26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over EP ‘054, Meyer ‘672, Sweeney, and Hall (US
2,275,900, issued March 10, 1942).
DISCUSSION
Rejection 1
The Examiner finds that EP ‘054 discloses most of the limitations of
claim 1 except it “does not specifically teach the male fixing element being a
separate part from the connection components and being connected to said
one of the two connection components in a material-locking manner,” nor
the “inserting of the male fixing element into the female fixing element in
the insertion direction,” nor the second component connection “operatively
configured such that heat stress occurring during the rigid connecting is
2 In the Answer, the Examiner withdrew an indefmiteness rejection of
claim 1 under 35 U.S.C. § 112, second paragraph. Ans. 7; Final Act. 2.
3 Hereinafter “EP ‘054” for consistency with the Final Action and Appeal
Brief.
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Appeal 2015-003270
Application 13/656,133
compensated in the sliding direction.” Final Act. 3 (citing EP ‘054, Figs. 2—
4). The Examiner finds that Meyer ‘672 teaches a method for connecting
two or more components with a weld seam provided as close as possible to a
rivet connection point and applying a small amount of heat during welding
“so that scarcely any distortion between the two components occurs.” Id. at
3^4 (citing Meyer ‘672 ]f]f 11—13). The Examiner reasons it would have
been obvious to modify EP ‘054 to include a low distortion weld connection
because “[compensating for heat stress during connection of two
components suppresses distortion.” Id. at 4.
The Examiner further finds that Sweeney discloses a method of
assembling automobile parts where a male fixing element is “a separate part
from the connection components . . . and being connected to said one of the
two connection components in a material-locking manner.” Id. (citing
Sweeney, Figs. 6—9). The Examiner concludes that in light of Sweeney, it
would have been obvious to adapt EP ‘054 “to include the male fixing
element being a separate part from the connection components and being
connected ... in a material-locking manner because as taught by Sweeney,
having the male element bonded to the component eliminates the corrosion
areas.” Id.
Appellants contend that Meyer ‘672 does not disclose a second
component connection “operatively configured such that heat stress
occurring during the rigid connection is compensated in the sliding
direction.” Br. 10. Appellants argue that Meyer fails to “disclose or suggest
any sliding connection, and only seeks to create a weld very close to a fixing
point to minimize heat stress.” Id. at 10—11. Appellants also argue that
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Appeal 2015-003270
Application 13/656,133
Meyer ‘672 is directed to the process of how the weld is formed, and not to
the configuration of the second component connection. Id. at 13.
The Examiner responds that Meyer ‘672 teaches “a method of
connecting two or more components having a weld seam in the immediate
vicinity of connection points” with the weld seam formed as close as
possible to the connection point so that minimal heat is introduced and
“scarcely any distortion between the two components occurs.” Ans. 6. The
Examiner submits that it is not necessary to show a sliding direction in
Meyer ‘672 but only that its teaching can be applied to EP ‘054’s
components mating in a sliding direction. Id. For the following reasons, we
do not sustain the rejection of claim 1.
Meyer ‘672 discloses a method for joining two components 1 and 2.
Meyer ‘672, Abstract, 110. Components 1 and 2 are initially fixed to each
other by means of rivets 3a. Id. at Fig. 1,110. Meyer ‘672 discloses that
a laser welding seam 4 is drawn in the immediate vicinity of
each rivet 3a, that is to say as near as possible to the rivet 3a.
Owing to these approximately punctiform laser welding seams
4, only a little heat is introduced into the components 1 and 2 to
be connected, so that scarcely any distortion occurs.
Id. 111. Although we appreciate the Examiner’s reference to Meyer ‘672,
Meyer ‘672 is directed to placing a welding seam as close as possible to
rivet connection points thus allowing for the application of a minimal
amount of heat in the welding process, which results in minimal thermal
distortion. Claim 1 requires that the second component connection be
configured to compensate for heat stress in the sliding direction regardless of
the amount of thermal distortion generated during the welding process. The
Examiner has not directed us to any disclosure in Meyer ‘672 of configuring
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Appeal 2015-003270
Application 13/656,133
a second component connection “such that heat stress occurring during the
rigid connection is compensated in the sliding direction,” as recited in claim
1. Nor has the Examiner explained how the disclosure in Meyer ‘672 would
be applied to element 3' and slot 4' as illustrated in Figure 2 of EP ‘054.
Therefore, we do not sustain the rejection of claim 1. Claims 2, 3, 6, 8—10,
and 14—22 all depend ultimately from claim 1. Claims App. A-l—A-4. We
do not sustain the rejection of claims 2, 3, 6, 8—10, and 14—22 for the same
reasons as for claim 1.
Rejections 2 and 3
Claims 5, 11—13, and 23—26 all depend ultimately from claim 1.
Claims App. A-2—A-5. The Examiner rejects these claims based on various
combinations of EP ‘054, Meyer ‘672, Sweeney, Nishio, and Hill. Final
Act. 7—9. The Examiner does not rely on Nishio or Hill to cure the
deficiencies in the combination of EP ‘054, Meyer ‘672, and Sweeney
discussed above for claim 1. Id. Therefore, we do not sustain the rejections
of claims 5, 11—13, and 23—26 for the same reasons stated above for claim 1.
DECISION
The Examiner’s decision rejecting claims 1—3, 5, 6, and 8—26 is
reversed.
REVERSED
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