Ex Parte Paduano

Board of Patent Appeals and Interferences

Jan 23, 2006

10012518 (B.P.A.I. Jan. 23, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ENZO PADUANO
____________

Appeal No. 2006-0026
Application No. 10/012,518
____________

ON BRIEF
____________

Before McQUADE, CRAWFORD and BAHR, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.

DECISION ON APPEAL

Enzo Paduano originally took this appeal from the final
rejection of claims 1-6. As the appellant has since canceled
claims 2, 4 and 6 and amended claims 1 and 3, the appeal now
involves claims 1, 3 and 5, all of the claims currently pending in
the application.

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Application No. 10/012,518

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THE INVENTION
The invention relates to a ball joint having an angular
movement restriction arrangement. Representative claim 1 reads as
follows:
1. Ball joint with angular movement restriction system
comprising:

a ball type pin member having a ball portion that is disposed
between an upper bearing and a lower bearing;

a box at least partially enclosing the upper bearing and lower
bearing, said box including an oblong opening;

a cover member enclosing one end of said box;

a spring disposed between said upper bearing and said cover;

said ball type pin member having a pin portion projecting from
said box through said oblong opening and an extension member
extending in a direction substantially opposite said pin portion,
said pin portion adapted for attachment to a connecting rod;

wherein said cover member is formed to restrict movement of
said extension member to thereby restrict movement of said ball
type pin member, and

wherein an orientation of said oblong portion is aligned with
an orientation of said oblong opening to restrict movement of said
extension member.

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THE PRIOR ART
The items relied on by the examiner to support the final
rejection are:
Bellamy et al. 4,613,251 Sep. 23, 1986
(Bellamy)
Schmidt et al. 6,413,003 Jul. 02, 2002
(Schmidt)

The admission on page 2 of the appellant’s specification
that
the state of the art utilizes the oblong opening of the
joint box, common in this type of construction where it
is projected to the body of the ball type pin, in such a
way that the narrowest side of the opening; namely, the
side that allows smaller angularity in the movement of
the ball type pin, becomes coincident with the pin to
restrict the movement of the ball type pin. This
arrangement prevents the bar from spinning around its
longitudinal axle [the admitted prior art].

THE REJECTION
Claims 1, 3 and 5 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bellamy in view of Schmidt and the admitted
prior art.
Attention is directed to the main and reply briefs (filed
October 27, 2003 and April 12, 2004) and the final rejection and
main and supplemental answers (mailed March 26, 2003, February 10,
2004, May 27, 2004 and July 25, 2004) for the respective positions
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of the appellant and examiner regarding the merits of this
rejection.
DISCUSSION
I. New rejection
The following new rejection is entered pursuant to 37 CFR
§ 41.50(b).
Claims 1, 3 and 5 are rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
claim the subject matter the appellant regards as the invention.
The reference to “said oblong portion” in the last clause of
claim 1 lacks any antecedent basis. This discrepancy renders the
scope of claim 1, and dependent claims 3 and 5, unclear due to the
attendant failure of the claims to define, with a reasonable degree
of precision and particularity, the relationship between the oblong
portion and the other elements of the claimed ball joint.
The problem here presumably arose when claim 1 was amended,
apparently inaccurately and inadvertently, to incorporate the
subject matter set forth in now canceled claim 2 which had recited
that “said cover [member] is formed with an oblong portion to
restrict movement of said extension member.” Should claim 1 be
amended during the course of further prosecution to include such
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language, this rejection shall be overcome. See 37 CFR § 41.50(c).
II. The examiner’s rejection
Normally, we would not consider the merits of a prior art
rejection of an indefinite claim since to do so would call for
speculative assumption as to the meaning of the claim. See In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962). In
order to expedite prosecution in this case, however, we shall
proceed to review the examiner’s 35 U.S.C. § 103(a) rejection of
claims 1, 3 and 5 under the assumption that the appellant intended
claim 1 to include the limitation which had been recited in
canceled claim 2, to wit: that the oblong portion is formed in the
cover member to restrict movement of said extension member. As
indicated above, the inclusion of such language in claim 1 would
obviate the indefiniteness problem.
Turning now to the merits of the § 103(a) rejection, Bellamy
discloses a ball joint for use in the steering system of an
automobile. As shown in Figure 2, the ball joint comprises a
socket 12 mounted on a steering system track rod 6, an aperture 14
at one end of the socket 12, a ball pin having (1) a spherical head
17 disposed within the socket 12, (2) a mating part 15 extending
from the spherical head 17 through the aperture 14 for connection
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to a control arm 4 of the steering system, and (3) a cylindrical
extension 18 projecting from the spherical head 17 opposite the
mating part 15, a nylon liner 16 in the socket 12 providing a
bearing surface for the spherical head 17, a metal slug 19 of
square outer cross section having a circular aperture fitted over
the cylindrical extension 18 in a freely rotatable and slidable
manner, and a plug 22 closing the end of the socket 12 opposite the
aperture 14 and having a elongated rectangular aperture 21
receiving the extension 18 and surrounding slug 19. Of particular
interest is the relationship between the slug 19 and the plug
aperture 21:
[a]s shown in FIG. 3, the aperture 21 in the plug 22
is of rectangular cross section with rounded corners.
The greater dimension of this rectangular cross section
is in a direction axially of the track rod 6 and the
lesser dimension has only a slightly greater dimension
than the dimension of the sides of the square slug 19 so
that there is a minimal clearance, e.g. 0.127mm, between
two opposite side walls of the slug 19 and the longer
walls of the aperture 21. This leaves spaces 25 between
the other sides of the slug and the shorter end walls of
the aperture 21 [column 3, lines 29-39].
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According to Bellamy, the foregoing arrangement eliminates
ball joint fatigue caused by the neck of the ball pin striking the

surrounding edges of the socket aperture through which it extends
(see column 1, lines 15-32). As described in the reference,
[i]n operation the ball pin is free to rotate
through 360° by rotation of its spherical head 17 within
its lubricating bearing 16 and rotation of the extension
18 within the slug 19.

The close fit of the sides of the slug 19 to the
longer side walls of the aperture 21 ensure that the
joint is prevented from angular movement about a second
axis extending along the length of the track rod 6 and
thereby resists twisting due to any torsion in the track
rod tending to twist the joint about the axis of the
track rod. The clearance 25 between the slug 19 and the
ends of the aperture 21 permit a total angular movement
of, for example 8°, of the ball pin axially relative to
the track rod thereby permitting some joint movement
about a third axis which is horizontal and perpendicular
to said second axis along the length of the track rod.

By this arrangement movement of the joint to
accommodate operation of the vehicle suspension is
permitted and forces exerted by the track rod on the
joint can be accommodated while reducing the tendency for
the mating part 15 of the ball pins to strike the edge of
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the apertures 14 in the track rod sockets 12 [column 3,
line 55, through column 4, line 9].
The examiner (see page 3 in the final rejection and page 5 in
the answer) concedes that Bellamy does not respond to the
limitations in claim 1 requiring (1) the box to include an oblong
opening through which the pin portion projects and (2) the
orientation of the oblong portion to be aligned with the

orientation of the oblong opening to restrict movement of the
extension member. Although Bellamy’s box (socket 13) includes an
opening (aperture 14) through which a portion (mating part 15) of
the ball pin projects, Bellamy does not describe the opening as
having any particular shape, let alone an oblong shape which is
aligned with the oblong portion (aperture 21) in the cover member
(plug 22). The examiner’s reliance on the admitted prior art to
overcome this deficiency in Bellamy is unsound.
According to the examiner, it would have been obvious in view
of the admitted prior art to provide an oblong opening as recited
in the appealed claims to the ball joint box/socket disclosed by
Bellamy “since this arrangement will provide a double safe
arrangement where both the oblong opening and the oblong portion
will ensure proper angular movement of the ball joint along a
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predetermine[d] orientation where one system will function as a
backup if the other system breaks during operation” (answer, page
6). Reasonably construed, however, the combined teachings of
Bellamy and the admitted prior art portray the oblong portion of
Bellamy and the oblong opening of the admitted prior art as
alternative angular movement restriction means rather than
redundant backups. Indeed, Bellamy clearly teaches away from the
use of an oblong opening as in the admitted prior art because it
results in premature ball joint fatigue. Considered in this light,
the only suggestion for combining Bellamy and the admitted prior
art in the manner advanced by the examiner stems from hindsight
knowledge impermissibly derived from the appellant’s disclosure.
Moreover, this flaw in the proposed combination of Bellamy and the
admitted prior art finds no cure in the examiner’s application of
Schmidt for its disclosure of a ball joint having a pre-loading
bearing spring.
Thus, the evidence advanced by the examiner does not justify a
conclusion that the differences between the subject matter recited
in claim 1 and the prior art are such that the subject matter as a
whole would have been obvious at the time the invention was made to
a person having ordinary skill in the art. Accordingly, we shall
not sustain the standing 35 U.S.C. § 103(a) rejection of
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independent claim 1, and dependent claims 3 and 5, as being
unpatentable over Bellamy in view of Schmidt and the admitted prior
art.

SUMMARY
The decision of the examiner to reject claims 1, 3 and 5 under
35 U.S.C. § 103(a) is reversed, and a new rejection of these claims
under 35 U.S.C. § 112, second paragraph, is entered pursuant to 37
CFR § 41.50(b) with a recommendation under 37 CFR § 41.50(c) as to
how the new rejection can be overcome.
This decision contains a new ground of rejection pursuant to
37 CFR § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7,
2004)). 37 CFR § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for
judicial review."
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37 CFR § 41.50(b) also provides that the appellant, 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 the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding
be reheard under § 41.52 by the Board 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)(1)(iv).
REVERSED; 37 CFR §§ 41.50(b) and 41.50(c)

JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
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Application No. 10/012,518

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) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

JPM/ki
Appeal No. 2006-0026
Application No. 10/012,518

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Liniak, Berenato, Longacre & White
Ste. 240
6550 Rock Spring Drive
Bethesda, MD 20817
Comment [jvn1]: Type address