Ex Parte Prater

Board of Patent Appeals and Interferences

Jan 26, 2007

10226387 (B.P.A.I. Jan. 26, 2007)

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for publication and is not binding precedent of the Board.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 RONALD E. PRATER
____________

Appeal 2006-2880
Application 10/226,387
Technology Center 3600
____________

Decided: January 26, 2007
____________

Before TERRY J. OWENS, JENNIFER D. BAHR, and LINDA E. HORNER,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 USC § 134(a) from the Examiner's
final rejection of claims 23-28 and 30. Claims 31-34 and 36 are allowed. Claim
29 is objected to as being dependent upon a rejected independent claim. Claims 1-
22 and 35 have been canceled.
We REVERSE.
Appeal 2006-2880
Application 10/226,387

2
BACKGROUND
The Appellant's invention relates to a clutch housing assembly
(Specification 1). Claim 23, reproduced below, is representative of the subject
matter on appeal. A copy of all of the claims can be found in the appendix to the
Appellant’s Brief.
23. A housing for use as a vehicle driveline component,
comprising:

a sidewall establishing an open end of the housing, the
sidewall having a plurality of spaced splines and a
strengthening member near the open end that is formed of the
sidewall material having a folded over portion that is at least
partially aligned with and adjacent the sidewall, an inner
surface of the sidewall near the open end extending
continuously and uninterrupted onto the strengthening member
and establishing at least one surface of the strengthening
member.

The Examiner relies upon the following as evidence of unpatentability:
Maruki US 5,934,126 Aug. 10, 1999
The Appellant seeks our review of the Examiner’s rejection of claims 23-28
and 30 under 35 USC § 102(b) as anticipated by Maruki.
Rather than reiterate in detail the conflicting viewpoints advanced by the
Examiner and the Appellant regarding this appeal, we make reference to the
Examiner's Answer (mailed April 7, 2006) for the Examiner's complete reasoning
in support of the rejection and to the Appellant's Brief (filed August 18, 2005) and
Reply Brief (filed January 3, 2006) for the Appellant's arguments.

Appeal 2006-2880
Application 10/226,387

3
OPINION
In reaching our decision in this appeal, we have carefully considered the
Appellant’s specification and claims, the applied prior art, and the respective
positions articulated by the Appellant and the Examiner. As a consequence of our
review, we make the determinations that follow.
In the rejection of independent claim 23, the Examiner determined that
Maruki discloses a housing (20, 36), where the housing has a folded
reinforced/strengthening portion contiguous with the surfaces defining splines and
spaces (31a, 31b) (Answer 3).
We disagree with the Examiner’s application of Maruki to the claims. Claim
23 requires that a housing include a sidewall, where the sidewall has “a plurality of
spaced splines” and a strengthening member “formed of the sidewall material
having a folded over portion.” The clutch depicted in Figure 2 of Maruki has a
cylindrical member (36) welded to the outer side of a drum (20) (Maruki, col. 2, ll.
46-47). The sidewall of the drum (20) contains grooves (31) (Maruki, col. 1, ll.
36-39). The Examiner has taken the position that the grooves (31) are the “spaced
splines” of claim 23 (Answer 3). The sidewall of the drum (20) does not, however,
also have a folded-over portion that forms the strengthening member. Rather, the
strengthening member is formed by the folded-over sidewall of the cylindrical
member (36). We agree with the Appellant that Maruki fails to disclose a sidewall
that contains both a folded-over portion that forms a strengthening member and a
plurality of spaced splines as recited in claim 23 (Reply Brief 1). The Examiner
argues that the weld near the open end of the housing that joins the cylindrical
Appeal 2006-2880
Application 10/226,387

4
member (36) to the drum (20) yields integrally-formed elements resulting in a
single monolithic or uniform whole (Answer 4). Even if we were to adopt this
position of the Examiner, the limitations of claim 23 would still not be met because
the inner surface of the sidewall near the open end would not extend continuously
and uninterrupted onto the strengthening member. Using the Examiner’s
interpretation, the inner surface of the single monolithic sidewall of Maruki would
be the inner surface of the wall of drum (20). Maruki does not show this wall
extending continuously and uninterrupted onto the folded over portion of the
cylindrical member (36). As such, we find that Maruki does not anticipate the
invention of claim 23, because it does not disclose a sidewall having “a plurality of
spaced splines” and “a strengthening member near the open end that is formed of
the sidewall material having a folded over portion” and it does not show “an inner
surface of the sidewall near the open end extending continuously and uninterrupted
onto the strengthening member and establishing at least one surface of the
strengthening member.” Accordingly, we do not sustain the rejection of claim 23
and claims 24-28 and 30, which depend from claim 23, under 35 USC § 102(b) as
being anticipated by Maruki.

Appeal 2006-2880
Application 10/226,387

5
CONCLUSION
To summarize, the decision of the Examiner to reject claims 23-28 and 30 is
reversed.
REVERSED

)
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal 2006-2880
Application 10/226,387

6
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009

LEH/ki