Ex Parte Salutzki

Board of Patent Appeals and Interferences

Feb 25, 2010

10518702 (B.P.A.I. Feb. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS SALUTZKI
____________

Appeal 2009-004939
Application 10/518,702
Technology Center 3600
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Decided: February 26, 2010
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Before: JENNIFER D. BAHR, LINDA E. HORNER, and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Thomas Salutzki (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 9, 10, and 12-16. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
Appellant’s claimed invention is a drive device for opening or closing
the leaf of a door or window. Spec. 1, para. 0001. Claim 9, reproduced
below, is representative of the subject matter on appeal.
9. Apparatus for opening and closing a door leaf, the
apparatus comprising:
a housing made of polyoxymethylene plastic, the housing
having a recess;
a piston made of polyoxymethylene plastic, the piston
having a toothed rack and being arranged for movement in the
recess;
a closing shaft comprising a pinion which engages the
rack to drive the piston in the recess; and
a closing spring arranged in the recess acting on the
piston oppositely to the closing shaft,
wherein the toothed rack is made of metal and is
embedded in the piston by molding the polyoxymethylene
plastic around the rack so that the rack and the piston form a
one-piece element.

THE EVIDENCE
The Examiner relies upon the following evidence:
Lieberman
Yahiro
Ginzel (Ginzel ‘899)
Ginzel (Ginzel ‘255)
US 4,019,220
US 6,077,908
US 6,618,899 B1
WO 00/36255 A2
Apr. 26, 1977
Jun. 20, 2000
Sep. 16, 2003
Jun. 22, 2000

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THE REJECTIONS
Appellant seeks review of the following rejections by the Examiner:
1. Rejection of claims 9, 10, and 12-16 under 35 U.S.C. § 102(e) as
anticipated by Ginzel ‘899.
2. Rejection of claims 9, 10, and 12-16 under 35 U.S.C. § 103(a) as
unpatentable over Ginzel ‘255 and Yahiro.

ISSUES
The Examiner found that Ginzel ‘899 and Ginzel ‘255 each disclose a
toothed rack made of metal and embedded in a piston to form a one-piece
element as recited in independent claim 9. Ans. 4-5. The Examiner
determined Ginzel ‘899 anticipates claims 9, 10, and 12-16, and alternatively
concluded claims 9, 10, and 12-16 are unpatentable over Ginzel ‘255 and
Yahiro. Ans. 3-6.
For each ground of rejection, Appellant argues claims 9, 10, 12, 14,
and 16 as a group. App. Br. 4-8. We select claim 9 as the representative
claim for each ground of rejection, and claims 10, 12, 14, and 16 stand or
fall with claim 9. 37 C.F.R. § 41.37(c)(1)(vii) (2009). Appellant contends
that neither Ginzel ‘899 nor Ginzel ‘255 discloses molding a plastic piston
around a metal rack so that the metal rack is embedded in the piston as
required by claim 9. App. Br. 5-7; Reply Br. 1-2.
Appellant also contends that neither Ginzel ‘899 nor Ginzel ‘255
discloses the bearing shells being press fit into the housing of the piston as
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required by claim 13, and the end plugs being pressed into the housing as
required by claim 15. App. Br. 7-8.1
The issues before us are:
Does Ginzel ‘899 or Ginzel ‘255 fail to disclose the toothed rack and
piston of claim 9 because the references do not disclose molding a plastic
piston around a metal rack so that the metal rack is embedded in the piston
as required by claim 9?
Does Ginzel ‘899 or Ginzel ‘255 disclose bearing shells press fit into
the housing of the piston as recited in claim 13?
Does Ginzel ‘899 or Ginzel ‘255 disclose end plugs pressed into the
housing of the piston as recited in claim 15?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Ginzel ‘899 discloses, “[a] piston that consists of external gearing
in the form of an inserted toothed rack or toothed rod which is
made of metal or plastic is described in U.S. Pat. No. 4,019,220
[Lieberman], hereby incorporated by reference as if set forth in its
entirety herein.” Ginzel ‘899, col. 2, ll. 47-50.
2. Appellant admits Ginzel ‘899 incorporates Lieberman. App. Br. 6.

1 While Appellant makes the arguments for the patentability of claims 13
and 15 only against the rejection based on Ginzel ‘255 and Yahiro, because
Appellant makes reference to Ginzel ‘899 in those arguments, in fairness to
Appellant, we apply the arguments to both grounds of rejection.
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3. Ginzel ‘899 discloses a door closer that includes output shaft 3
mounted within output shaft bearings 16 and 17 inside housing 2.
Ginzel ‘899, col. 4, ll. 63-67; fig. 1. Ginzel ‘899 discloses output
shaft bearings 16 and 17 and housing 2 may be made of plastic,
and that parts made out of plastic may be “positively and non-
positively connected without any subsequent finishing or
machining by gluing, ultrasonic welding, laser welding or similar
methods.” Ginzel ‘899, col. 5, ll. 2-3; col. 6, ll. 32-35.
4. Ginzel ‘899 discloses the ends of housing 2 are closed by caps 18
and 19, which are “connected positively and non-positively with
the housing 2 either by gluing, ultrasonic welding, laser welding or
similar methods.” Ginzel ‘899, col. 5, ll. 10-13; figs. 3, 4.
5. The Examiner found that Ginzel ‘255 incorporates Lieberman by
reference in its entirety. Ans. 5. Appellant does not contest this
finding. App. Br. passim; Reply Br. passim. See also Ginzel ‘255,
4:3-4.
6. Ginzel ‘255 discloses a door closer with a piston 10 having teeth
11 mated to the pinion 12 of driven axle 3. Ginzel ‘255, 8:3-5;
figs. 3, 4.
7. Ginzel ‘255 discloses another embodiment of a door closer that
includes driven axle 3 mounted within driven axle bearings 16 and
17 inside housing 2 of piston 10. Ginzel ‘255, 6:18-22; figs. 1, 2.
Ginzel ‘255 discloses driven axle bearings 16 and 17 and housing
2 may be made of plastic, and that plastic parts are “connected to
each other with a non-positive or positive fit without later
additional processing through adhesion, ultrasonic fusing, laser
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fusing, or the like.” Ginzel ‘255, 6:21-22; 9:8-11.
8. Ginzel ‘255 discloses the lateral ends of housing 2 having closures
18 and 19 which are “connected with a non-positive and/or
positive fit to the housing 2 either through adhesion, ultrasonic
welding, laser fusing, or the like.” Ginzel, 7:4-6; figs. 1, 2.

ANALYSIS
Claim Construction
Independent claim 9 is directed to an apparatus for opening and
closing a door leaf including a piston made of polyoxymethylene plastic
having a metal toothed rack embedded in the piston by molding the piston
around the rack to form a one-piece element.
The limitation of “embedded in the piston by molding the
polyoxymethylene plastic around the rack so that the rack and the piston
form a one-piece element” is a product-by-process limitation. Thus, claim 9
is not limited to any particular process for embedding the toothed rack in the
piston.

Rejection of claims 9, 10, and 12-16 under 35 U.S.C. § 102(b) as anticipated
by Ginzel ‘899; and rejection of claims 9, 10, and 12-16 under 35 U.S.C.
§ 103(a) as unpatentable over Ginzel ‘255 and Yahiro
Claims 9, 10, 12, 14, and 16
In both rejections, the Examiner specifically finds that the only
difference between the piston and toothed rack of claim 9 and that of the
prior art Ginzel references is the process by which the structure is achieved.
Ans. 7. In response, Appellant has not adequately pointed out a structural
difference between the piston and toothed rack of claim 9 and that of the
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prior art that would render the claimed structure patentable over the prior art.
See SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1315 (Fed.
Cir. 2006) (“Once a product is fully disclosed in the art, future claims to that
same product are precluded, even if that product is claimed as made by a
new process”); In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the
product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.”) (citations omitted).
Rather than pointing out a structural difference between claim 9 and
the prior art, Appellant’s argument that the prior art does not disclose
molding a plastic piston around a metal rack so that the metal rack is
embedded in the piston, is based on the process that makes the product.
App. Br. 5-6, 7 (emphasis Appellant’s); Reply Br. 1-2. Appellant’s own
argument refers to “molding” as a process. App. Br. 5-6. This argument is
unconvincing because “[t]he patentability of a product does not depend on
its method of production.” SmithKline, 439 F.3d at 1317.
Appellant has failed to demonstrate error in the rejection of claim 9.
Claims 10, 12, 14 and 16 fall with claim 9.
Claim 13
Claim 13 depends indirectly from claim 9, and adds the limitation that
the bearing shells are “press fit into the housing.”
Ginzel ‘899 discloses bearing shells “positively and non-positively
connected without any subsequent finishing or machining by gluing,
ultrasonic welding, laser welding or similar methods” to the housing
(Fact 3). Similarly, Ginzel ‘255 discloses bearing shells connected to the
housing “with a non-positive or positive fit without later additional
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processing through adhesion, ultrasonic fusing, laser fusing, or the like.”
(Fact 7).
In both rejections, the Examiner has failed to adequately show how
this disclosed connection results in bearing shells that are press fit into the
housing as claimed. As such, we cannot sustain the rejection of claim 13 as
anticipated by Ginzel ‘899. Further, because Ginzel ‘255 does not disclose
each limitation of claim 13, we also cannot sustain the rejection of claim 13
as obvious in view of Ginzel ‘255 and Yahiro. See CFMT, Inc. v. Yieldup
Int'l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.
2d 981, 985 ( CCPA 1974)) (“[O]bviousness requires a suggestion of all
limitations in a claim.”).
Claim 15
Claim 15 depends indirectly from claim 9 and adds the limitation that
the end plug is pressed into the housing.
Ginzel ‘899 discloses end plugs “connected positively and non-
positively with the housing 2 either by gluing, ultrasonic welding, laser
welding or similar methods” (Fact 3). Similarly, Ginzel ‘255 discloses end
plugs “connected with a non-positive and/or positive fit to the housing 2
either through adhesion, ultrasonic welding, laser fusing, or the like.”
(Fact 8).
The Examiner has failed to adequately show how this disclosed
connection results in end plugs that are pressed into the housing as claimed.
As such, we cannot sustain the rejection of claim 15 as anticipated by Ginzel
‘899. Further, because Ginzel ‘255 does not disclose each limitation of
claim 15, we also cannot sustain the rejection of claim 15 as obvious in view
of Ginzel ‘255 and Yahiro.
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CONCLUSIONS
Ginzel ‘899 discloses the toothed rack and piston as recited in claim 9.
Ginzel ‘899 does not disclose bearing shells press fit into the housing
of the piston as recited in claim 13.
Ginzel ‘899 does not disclose end plugs pressed into the housing of
the piston as recited in claim 15.
Ginzel ‘255 discloses the toothed rack and piston as recited in claim 9.
Ginzel ‘255 does not disclose bearing shells that are press fit into the
housing of the piston as recited in claim 13.
Ginzel ‘255 does not disclose end plugs pressed into the housing of
the piston as recited in claim 15.

DECISION
We AFFIRM the Examiner’s decision to reject claims 9, 10, 12, 14,
and 16 as anticipated by Ginzel ‘899.
We REVERSE the Examiner’s decision to reject claims 13 and 15 as
anticipated by Ginzel ‘899.
We AFFIRM the Examiner’s decision to reject claims 9, 10, 12, 14,
and 16 as unpatentable over Ginzel ‘255 and Yahiro.
We REVERSE the Examiner’s decision to reject claims 13 and 15 as
unpatentable over Ginzel ‘255 and Yahiro.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

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AFFIRMED-IN-PART

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