Ex parte ITO et al.

Board of Patent Appeals and Interferences

Jun 23, 1998

08192270 (B.P.A.I. Jun. 23, 1998)

Application for patent filed February 7, 1994. According to appell-1
ants, this application is a division of application Serial No. 07/987,186,
filed December 8, 1992.
This panel of the board acknowledges appellants’ request for an oral2
hearing dated August 12, 1996. However, in accordance with 37 CFR 1.196(c),
as amended effective December 1, 1997, we consider a hearing in this case to
be unnecessary in light of the hearing that took place on June 11, 1998 in a
related appeal in parent application 08/987,186 (Appeal No. 96-1651); this
parent application being discussed by appellants on page 5 of the main brief
(Paper No. 19). This appeal, therefore, will be decided on brief.
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not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MASAYA ITO, SEIJI MORI and TAKAYA YOSHIKAWA
_____________
Appeal No. 97-1156
Application 08/192,270 1
______________
ON BRIEF 2
_______________
Before CALVERT, COHEN and ABRAMS, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-1156
Application 08/192,270
2
This is an appeal from the final rejection of claims 30
through 48. These claims constitute all of the claims
remaining in the application.
The invention on appeal relates to a ceramic-metal
composite assembly. An understanding thereof can be derived
from a reading of exemplary claim 30, a copy of which appears
in “APPENDIX A” to the main brief (Paper No. 19).
As evidence, the examiner has relied upon the references
listed below:
Ito et al. 4,557,704 Dec. 10,
1985
(Ito ‘704)
Ito et al. 5,073,085 Dec. 17,
1991
(Ito ‘085)
Yoshikawa et al. 5,129,784 Jul. 14,
1992
(Yoshikawa)
Oda et al. 250,118 Dec. 23,
1987
(Oda)
(published European Patent Application)
The following rejections of the examiner are before us
for review.
Appeal No. 97-1156
Application 08/192,270
3
Claims 30 through 48 stand rejected under 35 U.S.C. §
112, second paragraph, as being indefinite.
Claims 30, 31, 35 through 39, 42, and 45 through 48, as
best understood, stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Oda.
Claims 30 through 34 and 37 through 48, as best
understood, stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Ito ‘085.
Claims 30 through 34 and 37 through 48, as best
understood, stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ito ‘085.
Claims 30, 31, 35 through 37, 42, and 45 through 48, as
best understood, stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Yoshikawa.
Appeal No. 97-1156
Application 08/192,270
We are informed by Paper No. 19 (page 5) and Paper No. 20 (page 3) as3
to an appeal in application Serial No. 07/987,186, the parent application of
the present divisional application before us.
4
Claims 30 through 32 and 37 through 48, as best
understood, stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Ito ‘704.
The full text of the examiner's rejections and response
to the argument presented by appellants can be found in the
main and supplemental answers (Paper Nos. 20 and 22) , while3
the complete statement of appellants’ argument can be found in
the main and reply briefs (Paper Nos. 19 and 21).
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
Appeal No. 97-1156
Application 08/192,270
The claims on appeal, drawn to a ceramic-metal composite assembly, are4
claims of Group I, consistent with a restriction requirement in parent
application Serial No. 07/987,186. These claims have also been indicated to be
for the elected species of Figures 1A and 1B (Paper No. 5), in accordance with
an election of species requirement (Paper No. 4).
In our evaluation of the applied teachings, we have considered all of5
the disclosure of each teaching for what it would have fairly taught one of
ordinary skill in the art. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507,
510 (CCPA 1966). Additionally, this panel of the board has taken into account
not only the specific teachings, but also the inferences which one skilled in
the art would reasonably have been expected to draw from the disclosure. See
In re Preda 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
5
appellants’ specification and claims , the applied teachings ,4 5
and the respective viewpoints of appellants and the examiner.
As a consequence of our review, we make the determinations
which follow.
The indefiniteness issue
We reverse the examiner’s rejection of claims 30 through
48 under 35 U.S.C. 112, second paragraph, as being indefinite.
The examiner is uncertain as to whether a product per se
or a process of making a product is being claimed, and
specifically points to clauses (D) and (E) of claim 31, as
well as claims 40 and 41 (Paper No. 20, page 4).
Appeal No. 97-1156
Application 08/192,270
6
At the outset, an understanding of certain language in
independent claims 30, 31 and 38 is in order.
With respect to the language “being metallurgically
joined” and “being mechanically joined” in the context used in
claim 30, we note the propriety of functionally claiming
something, i.e., a structure, by what it does rather than by
what it is. See In re Hallman, 655 F.2d 212, 210 USPQ 609,
611 (CCPA 1981). Thus, we comprehend the aforementioned
language in claim 30 as denoting the presence of metallurgical
joining structure and mechanical joining structure,
respectively.
Claims 31 and 38 include sixth paragraph (35 U.S.C. §
112) means plus function recitations. These recitations are
construed to cover the corresponding structure described in
the specifi-cation and equivalents thereof. Read in light of
the underlying disclosure (specification, page 3), we
understand these recitations as follows.
Appeal No. 97-1156
Application 08/192,270
7
With respect to “metallurgical joining means”, it is
clear to us that this recitation denotes a joining structure
effected by metallurgical (chemical) interaction between the
claimed intermediate member and ceramic member. The
specification informs us (page 3) that this joining structure
can be effected by brazing, diffusion joining or welding,
joining by the use of oxide, friction welding, hot pressing,
and hot isostatic pressing.

As to the “mechanical joining means”, we understand this
recitation as denoting a joining structure effected by
mechanical interaction between the claimed intermediate member
and the metallic member. The specification (page 3) instructs
us that this joining structure can be effected by press
fitting, shrink fitting and fastening with bolts or screws.
In light of the above claim analysis, we understand the
content of each of independent claims 30, 31 (with clauses (D)
Appeal No. 97-1156
Application 08/192,270
8
and (E) therein), and 38 to be clearly drawn to a product,
i.e., a ceramic-metal composite assembly. The noted claims
are therefore viewed as definite in meaning.
Turning now to the examiner’s concern regarding claims 40
and 41, we are cognizant that the metallurgical joining means
and the mechanical joining means are further defined therein
as comprising “heating” and “press fitting”, respectively.
Simply stated, we understand this process language in the
context of the product being claimed as denoting the resulting
structure, i.e., a heated joining structure (claim 40) and a
press fit joining structure (claim 41). See In re Thorpe, 777
F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). Thus,
dependent claims 40 and 41 are understood as setting forth
further structural limitations and are definite in meaning.
The anticipation rejection based upon Oda
We reverse this rejection of appellants’ claims under 35
U.S.C. § 102(b).
The examiner considers independent claims 30, 31, and 38,
Appeal No. 97-1156
Application 08/192,270
9
addressed to a ceramic-metal composite assembly, to be antici-
pated by the assembly shown in Figure 6 of Oda (main answer,
pages 5 and 6).
We disagree with this conclusion. As we see it, the
engine piston of Figure 6 of Oda clearly includes two
mechanical joining structures, not the specific metallurgical
joining structure and the mechanical joining structure
encompassed by the claims. Under the present circumstances, it
is evident to us that one versed in this art would not have
fairly understood the term “press fitting” as inherently
teaching a metallurgical joining process, as asserted by the
examiner. In other words, the teaching of “press fitting”
does makes certain, without question, that a metallurgical
joining process is, in fact, an inherent characteristic of the
Oda engine piston.
The rejections based upon Ito ‘085
under 35 U.S.C. §§ 102(e) and 103
We reverse the respective rejections of claims 30 through
34 and 37 through 48 under 35 U.S.C. § 102(e) as being
Appeal No. 97-1156
Application 08/192,270
10
anticipated
by, and under 35 U.S.C. § 103 as being unpatentable over, Ito
‘085.
As to the anticipation issue, we find that the Ito ‘085
patent, addressed to a ceramic turbocharger rotor, relies
exclusively upon soldering or brazing (metallurgical joining
means) for assembling the rotor parts together. Thus, Ito
‘085 lacks, at the least, mechanical joining means for joining
an intermediate member to a metallic member, as required by
independent claims 30, 31, and 38. It follows that Ito ‘085
is not an anticipatory reference within the meaning of 35
U.S.C.
§ 102(e). Further, in the matter of the obviousness issue, it
is clear to us that the Ito‘085 teaching of exclusive reliance
upon soldering or brazing would not have been suggestive of
any mechanical joining means, as claimed. Accordingly, the
claimed invention would not have been rendered obvious under
35 U.S.C.
Appeal No. 97-1156
Application 08/192,270
11
§ 103 by the teaching of Ito ‘085.
The rejection based upon Yoshikawa
We reverse this rejection of claims 30, 31, 35 through
37, 42, and 45 through 48 under 35 U.S.C. § 102(e).
Simply stated, the feature of a mechanical joining of an
intermediate member and a metallic member in a ceramic-metal
composite assembly (independent claims 30 and 31), in
particular, is not taught by Yoshikawa. Thus, the content of
the rejected claims is not anticipated by the Yoshikawa
disclosure.
The rejection based upon Ito ‘704
We reverse this rejection of claims 30 through 32 and 37
through 48 under 35 U.S.C. § 102(b).
The Ito ‘704 document may fairly be said to teach the
joining of a ceramic turbine rotor shaft to a metal shaft
either by the brazing of an intermediate buffer layer
therebetween, as seen in Figure 2(b), or by end to end butt-
Appeal No. 97-1156
Application 08/192,270
12
welding, as shown in Figure 3(a). Ito ‘904 simply fails to
teach a mechanical joining of an intermediate member and a
metallic member, a limitation of each of independent claims
30, 31, and 38. Thus, appellants’ claims are not anticipated
by the Ito ‘704 reference.
NEW GROUND OF REJECTION
Under the authority of 37 CFR 1.196(b), this panel of the
board introduces the following new ground of rejection.
Claim 43 is rejected under 35 U.S.C. § 112, first and
second paragraphs, as lacking descriptive support in the
underlying specification and as being indefinite.
The specification (page 3) makes it clear that brazing by
the use of specified materials and heating by the use of
certain oxides are separate and distinct metallurgical joining
means.
With the above in mind, the content of claim 42 appears
to inappropriately encompass certain oxides for brazing which
were originally disclosed only for heating. Thus, the
language of claim 43 lacks descriptive support (35 U.S.C. 112,
Appeal No. 97-1156
Application 08/192,270
13
first paragraph).
Further, claim 43 is ambiguous in meaning. Is the
“mixture” a component of the group from which a selection is
made, or is the “mixture” an addition to the metal selected
from the group? This ambiguity renders the claim indefinite
(35 U.S.C. 112, second paragraph).
In summary, this panel of the board has:
reversed the rejection of claims 30 through 48 under 35
U.S.C. § 112, second paragraph, as being indefinite;
reversed the rejection of claims 30, 31, 35 through 39,
42, and 45 through 48 under 35 U.S.C. § 102(b) as being
anticipated by Oda;
reversed the rejection of claims 30 through 34 and 37
through 48 under 35 U.S.C. § 102(e) as being anticipated by
Ito ‘085;
reversed the rejection of claims 30 through 34 and 37
through 48 under 35 U.S.C. § 103 as being unpatentable over
Appeal No. 97-1156
Application 08/192,270
14
Ito ‘085;
reversed the rejection of claims 30, 31, 35 through 37,
42, and 45 through 48 under 35 U.S.C. § 102(e) as being
anticipated by Yoshikawa; and
reversed the rejection of claims 30 through 32 and 37
through 48 under 35 U.S.C. § 102(b) as being anticipated by
Ito
‘704.
Additionally, we have introduced a new ground of
rejection pursuant to 37 CFR 1.196(b).
The decision of the examiner is reversed.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
Appeal No. 97-1156
Application 08/192,270
15
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR 1.196(b)
Appeal No. 97-1156
Application 08/192,270
16
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
NEAL E. ABRAMS )
Administrative Patent Judge )
Appeal No. 97-1156
Application 08/192,270
17
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