Ex Parte Ribeiro et al

Board of Patent Appeals and Interferences

Aug 19, 2008

10898878 (B.P.A.I. Aug. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CARMO RIBEIRO,
THOMAS EGERER, and
RANDALL GAISER
____________

Appeal 2008-2411
Application 10/898,878
Technology Center 2800
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Decided: August 19, 2008
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Before TERRY J. OWENS, THOMAS A. WALTZ, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants appeal from a rejection of claims 1-11, which are all
of the pending claims.
THE INVENTION
The Appellants claim a piston having upper and lower portions joined
by an induction weld. Claim 1 is illustrative:
Appeal 2008-2411
Application 10/898,878

1. A piston, comprising:

an upper piston portion having mating surfaces;

a lower piston portion having mating surfaces; and

an induction weld joint uniting said mating surfaces.

THE REFERENCES
Brolin US 4,734,552 Mar. 29, 1988
Jarrett US 6,112,642 Sep. 5, 2000
Rey US 6,289,790 B1 Sep. 18, 2001

THE REJECTIONS
The claims stand rejected as follows: claims 1-11 under
35 U.S.C. § 102(b) over Jarrett; claims 1-11 under 35 U.S.C. § 103 over
Jarrett in view of Brolin; and claims 1 and 6 under 35 U.S.C. § 102(b) over
Rey.
OPINION
We affirm the rejection under 35 U.S.C. § 102(b) over Jarrett, reverse
the rejection under 35 U.S.C. § 103, and reverse the rejection under
35 U.S.C. § 102(b) over Rey.1
Rejection under 35 U.S.C. § 102(b) over Jarrett
The Appellants do not separately argue any claim (Br. 3). We
therefore limit our discussion to the sole independent claim, i.e., claim 1.
See 37 C.F.R. § 41.37(c)(1)(vii) (2007).

1 A rejection of claims 1-11 under the judicially created doctrine of
obviousness-type double patenting over claims 1-4, 14-20, 23-25, 27, and
28 of US 6,825,450 is withdrawn in the Examiner’s Answer (Ans. 4-5).
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Application 10/898,878

Jarrett discloses a piston comprising upper (42) and lower (44) piston
portions having mating surfaces (fig. 4). The mating surfaces are welded
together by a weld such as a diffusion bonding weld, a brazing weld, an
electron beam weld and a laser weld (col. 5, l. 59 – col. 6, l. 1).
The Examiner argues that Jarrett “discloses a product or a joint
formed by ‘friction welding’ which reasonably appears to be either identical
with or only slightly different than the product or ‘joint’ claimed in a
product-by-process claim (i.e. ‘induction weld joint’) of the instant
application” (Ans. 10-11).
The Appellants focus (Br. 3) on the Examiner’s statement that “since
the claimed invention as a whole was directed to the claimed article or
piston, such induction welding method of forming the weld joint is not
germane to the issue of patentability of the weld joint itself” (Ans. 7). The
Appellants argue (Br. 3):
This is not the test for patentability and the induction
weld joint limitation cannot be simply ignored by the
examiner or dismissed as a product-by-process
limitation or as not being “germane” to the issue of
patentability. It is noted that the examiner gives no
support for the “germane” test of patentability.

The Appellants do not dispute the Examiner’s finding that Jarrett
discloses a friction weld joint that is either identical to or only slightly
different than the Appellants’ induction weld joint. Hence, the Appellants
have not convinced us of reversible error in the Examiner’s rejection under
35 U.S.C. § 102(b) over Jarrett.

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Application 10/898,878

Rejection under 35 U.S.C. § 103
Brolin joins two tubing members used in the construction of booms of
the lattice type for cranes or the like by placing one or two induction coils
between the tubing members’ ends, applying current to the coils to
simultaneously raise the temperatures of the ends to the weld temperature,
and then removing the coil(s) and pressing the heated ends together with
sufficient force to form a strong weld (col. 1, l. 6-25; col. 5, ll. 17-58).
The Appellants argue that “the examiner does not explain how one
skilled in the art would contend with the [Jarrett’s] overlapping positioning
features 90, 149 [Fig. 4] of the upper and lower piston parts since they
would have to be positioned apart from one another to accommodate the
insertion of the induction coil and it is not clear that the design could tolerate
such a gap and still impart sufficient heating to the surfaces 70, 160 which
would be spaced even further from one another and from the induction coil
to achieve a suitable induction weld joint” (Br. 4).
The Examiner argues that “the object to be subjected to induction
welding by the coil in Brolin is also a cylindrical shaped tube which is the
similar shape of the piston in Jarrett reference” (Ans. 15).
The Examiner is incorrect. Unlike Brolin’s tube ends which are flat
and, therefore, are adjacent to the induction coils at all points at which the
tube ends are to be heated (Fig. 8), Jarrett’s head member 42 surface 70 to be
heated would be separated from an induction coil placed between head
member 42 and skirt member 44 by a gap caused by the step in Jarrett’s
stepped mating portion 149 of head member 42 (Fig. 4).
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Appeal 2008-2411
Application 10/898,878

The Examiner argues that “it is not necessary to insert the induction
coil of Brolin reference between the mating surfaces of the parts in Jarrett
reference since the coil can be positioned adjacent or near the matting [sic]
surfaces in order to induce eddy current to such surfaces to heat and melt
thereby forming the induction weld joint” (Ans. 15).
The Examiner has not provided evidence that Brolin would have led
one of ordinary skill in the art to modify the induction coil such that it can be
placed around the parts to be joined instead of between them. The record
indicates that the Examiner’s reason for that modification, rather than
coming from the applied prior art, is based upon impermissible hindsight in
view of the Appellant’s Specification. See W.L. Gore & Associates v.
Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984); In re Rothermel, 276 F.2d 393, 396 (CCPA 1960).
Accordingly, we conclude that the Examiner has not established a
prima facie case of obviousness of the Appellants’ claimed invention over
the combined disclosures of Jarrett and Brolin.
Rejection under 35 U.S.C. § 102(b) over Rey
Rey discloses a hydraulic control device for a motor vehicle clutch
including at least one control cylinder comprising a substantially tubular
cylinder (17) in which a piston (21) slides axially (col. 1, ll. 12-21). A
skirt (54) is fastened sealingly within the cylinder body by ultrasonic
welding (col. 9, ll. 46-51; col. 10, ll. 1-5).
The Examiner argues that “the piston as a whole is shown in Figure 9
of Rey, where the upper piston portion or skirt 54 having mating surfaces, a
lower piston portion 17 having mating surfaces, and a sealed fastening
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Appeal 2008-2411
Application 10/898,878

weld 58 uniting the mating surfaces are at least considered or interpreted
ad [sic] parts of the piston assembly as a whole” (Ans. 17).
Rey’s cylinder 17 is not a lower piston portion but, rather, is the
cylinder in which piston 21 slides (col. 3, ll. 33-35). Skirt 54, which is fixed
to cylinder 17 (col. 9, ll. 50-51), also is not a piston portion. The Examiner’s
interpretation of the Appellants’ claim term “piston” as including Rey’s
cylinder and skirt is not a reasonable interpretation in view of the Appellants'
Specification which lacks any indication that a cylinder in which the
disclosed piston is to slide, and a skirt fixed to that cylinder, are to be
considered part of the piston.
Hence, the Examiner has not established a prima facie case of
anticipation of the Appellants’ claimed invention by Rey.
DECISION
The rejection of claims 1-11 under 35 U.S.C. § 102(b) over Jarrett is
affirmed. The rejections of claims 1-11 under 35 U.S.C. § 103 over Jarrett
in view of Brolin, and claims 1 and 6 under 35 U.S.C. § 102(b) over Rey are
reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

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Appeal 2008-2411
Application 10/898,878

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