Ex Parte Schroeder

Patent Trial and Appeal Board

Feb 18, 2014

11697532 (P.T.A.B. Feb. 18, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte JONATHAN R. SCHROEDER
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Appeal 2012-003321
Application 11/697,532
Technology Center 3600
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Before MICHAEL W. KIM, MICHAEL L. HOELTER, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Jonathan R. Schroeder (“Appellant”) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1-11, 21, and 22. We have
jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claim 1 is the sole independent claim on appeal. Claim 1 is
representative of the claimed subject matter and is reproduced below.
1. A roller-guided track apparatus, comprising:
a support member; and
a track roller arrangement operatively mounted on the
support member, with the track roller arrangement including an
axle fixedly attached to and extending from the support member
and a roller installed and permanently retained on the axle
between the support member and an orbitally deformed head of
the axle opposite the support member;
the roller defining inner side of the roller and an outer
side of the roller, and having an aperture formed therethrough
configured for receiving the axle;
the track roller arrangement further being of a
construction susceptible to being operatively damaged by
conventional impact heading operations performed on the axle;
the axle having first and second axial ends thereof, with
the first axial end of the axle being fixedly permanently
attached to the support member prior to installation of the roller
on the axle in such a manner that the second axial end of the
axle forms a distal end of the axle projecting away from the
support member;
the axle passing through the aperture of the roller such
that the roller is rotatable about the axle, with the inner side of
the roller facing the support member, and the distal end of the
axle extending beyond the outer side of the roller;
the roller being permanently rotatably retained on the
axle between the support member and the orbitally deformed
head by deforming the distal end of the axle to form the
orbitally deformed head after installation of the roller onto the
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axle in such a manner that the roller is not damaged by
formation of the head.
App. Br. 16, Claims App’x.
References
The Examiner relies upon the following prior art references:
Lautenschläger US 4,979,262 Dec. 25, 1990
Donovan US 5,690,459 Nov. 25, 1997
Schroeder US 6,450,687 B1 Sep. 17, 2002
Fournier US 2006/0140519 A1 Jun. 29, 2006
Rejections
Appellant seeks review of the following rejections:
I. Claims 1-3, 5-11, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Schroeder and Donovan;
II. Claim 4 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Schroeder, Donovan, and
Lautenschläger; and
III. Claim 22 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Schroeder, Donovan, and Fournier.
SUMMARY OF DECISION
We AFFIRM.
OPINION
Rejection I
The Examiner concluded that the combination of Schroeder and
Donovan would have rendered obvious the subject matter of claims 1-3,
5-11, and 21 to one of ordinary skill in the art at the time of invention.
Ans. 4-7. The Examiner found that Schroeder discloses the elements of the
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claims except that Schroeder “does not disclose the axle being orbitally
deformed for retaining roller upon axle.” Id. at 5-6. The Examiner found
that Donovan discloses “orbitally deforming an axle.” Id. at 6 (citing
Donovan, col. 4, ll. 54-67; col. 5, ll. 1-4). The Examiner concluded that it
would have been obvious to one of ordinary skill in the art to “provide an
orbitally deformed axle disclosed in Schroeder . . . in view of the teaching of
Donovan . . . . for less stress loads caused by [a] high . . . axial load.” Id.
Appellant raises several arguments in response to this rejection.1 We
address each.
Appellant’s first and second arguments are related and so we address
them together. First, Appellant contends that the Examiner erred by
focus[ing] solely upon whether or not the orbital riveting
process required by the claims in parts [sic] unique structural
capabilities to the head of the rivet itself, and has steadfastly
refused to consider the claimed invention as a whole and the
structural and functional benefits obtained through the orbital
riveting limitation.
App. Br. 6; see Reply Br. 6. Second, Appellant asserts that the Examiner
erred by
insist[ing] that the limitation relating to orbitally deforming the
head of the axle in all claims on appeal to be [sic] solely a
product-by-process limitation, despite clearly articulated text in
the MPEP and associated case law to the contrary, stating that

1 Appellant does not separately argue claims 1-3, 5-11, and 21. See
App. Br. 6-8, 9-15; Reply Br. 2-15. We select claim 1 as representative.
Accordingly, claims 2, 3, 5-11, and 21 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii) (2011); see also In re Lovin, 652 F.3d 1349, 1351
(Fed. Cir. 2011).
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functional language may indeed be utilized to describe a
structural limitation in a patent claim.
App. Br. 6; see Reply Br. 6.
When a product is “defined at least in part in terms of the method or
process by which it [was] made,” we consider that claim as written in
product-by-process form. See Greenliant Sys., Inc. v. Xicor LLC, 692 F.3d
1261, 1267-68 (Fed. Cir. 2012) (quoting Bonito Boats, Inc. v. Thunder Craft
Boats, Inc., 489 U.S. 141, 158, n. * (1989) (quoting Donald S. Chisum,
Chisum on Patents § 8.05 (1988))). Some process limitations are “capable
of construction as structural . . . limitations.” In re Garnero, 412 F.2d 276,
279 (CCPA 1969). Thus, when determining patentability, we consider the
process in which a product is formed if that process imparts distinctive
structural characteristics:
The structure implied by the process steps should be considered
when assessing the patentability of product-by-process claims
over the prior art, especially where the product can only be
defined by the process steps by which the product is made, or
where the manufacturing process steps would be expected to
impart distinctive structural characteristics to the final product.
Greenliant, 692 F.3d at 1268 (quoting Manual of Patent Examining
Procedure § 2113 (8th ed. Rev. 8 July 2010)).
Claim 1 reflects at least two limitations drafted in product-by-process
format. First, the phrase “orbitally deformed head of the axle” is a product-
by-process limitation because it describes the deformed head of the axle (a
structural element) by the process in which it is made—orbital deformation.
Second, the phrase “the roller being permanently rotatably retained on the
axle between the support member and the orbitally deformed head by
deforming the distal end of the axle to form the orbitally deformed head after
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installation of the roller onto the axle” is a product-by-process limitation
because it describes the permanent retention of the roller on the axle (a
structural relationship) by the process in which the permanent retention is
achieved—by deforming the distal end of the axle to form the orbitally
deformed head after installation of the roller onto the axle.
With respect to the first phrase, the Examiner correctly determined
that the process of orbital deformation imparts a distinctive structural
characteristic to the final product and hence relied upon Donovan as
teaching the process of orbital deformation. See Ans. 4-6, 10 (“It should be
noted that the actual step of orbital deforming itself was given weight in the
product claim, hence the addition of . . . Donovan which teaches suc[h] as a
well[-]known process of attachment.”).
With respect to the second phrase, the Examiner correctly determined
that Appellant had not shown that the process of deforming the distal end of
the axle after installation of the roller onto the axle imparted distinctive
structural characteristics. See, e.g., Ans. 10. In other words, the “order of
steps” does not impart distinctive structural characteristics. See id.
We agree with these findings and conclusions by the Examiner.
Deforming the distal end of the axle after installation of the roller onto the
axle would not appear to impart a distinctive structural difference as
compared to whether the deformation of the distal end of the axle occurred
prior to installation of the roller. In other words, were the axle head
deformed, the roller then installed on the axle, and afterwards the other end
of the axle (i.e., the first axial end of the axle) fixedly permanently attached
to the support member, the manufactured roller-guided track apparatus
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would not appear to be structurally distinct from a roller-guided track
apparatus manufactured in the process order recited in the claim.2
In this situation, and in light of the similarities of Schroeder to claim
1, the Examiner’s reliance upon Donovan as disclosing orbital deformation,
and the Examiner’s reason with rational underpinnings for the proposed
combination of the teachings of the references, the Examiner established a
prima facie case of obviousness. See In re Fessmann, 489 F.2d 742, 744
(CCPA 1974) (“the Patent Office bears a lesser burden of proof in making
out a case of prima facie obviousness for product-by-process claims because
of their peculiar nature than would be the case when a product is claimed in
the more conventional fashion”). As such, the burden shifted to Appellant to
come forward with evidence establishing an unobvious difference between
the claimed product and the prior art teachings as combined by the
Examiner. See In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (“Where a
product-by-process claim is rejected over a prior art product that appears to
be identical, although produced by a different process, the burden is upon
the applicants to come forward with evidence establishing an unobvious
difference between the claimed product and the prior art product.” (citing
In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Brown, 459 F.2d 531,
535 (CCPA 1972))).

2 We recognize that claim 1 recites at least one other product-by-process
limitation—“the first axial end of the axle being fixedly permanently
attached to the support member prior to installation of the roller on the axle,”
but we similarly conclude that this limitation does not impart distinctive
structural characteristics.
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Here, the entirety of Appellant’s evidence is directed to the
differences between orbital deformation and other known riveting processes.
App. Br. 7 (“As discussed in the present application, the present invention
imparts distinctive structural characteristics to the final product, by allowing
the roller to be installed upon and permanently attached to an axle extending
from and permanently affixed to a support structure by an orbitally deformed
head, which substantially reduces negative affects known in prior riveting
processes, such as brinelling or other damage to the components being
worked upon.” (citing Spec., paras. [0003], [0032]-[0034], [0038]));
see Reply Br. 7. The benefits of orbital deformation as compared to other
known riveting processes, however, does not distinguish over the
combination proposed by the Examiner because the combination includes
Donovan’s orbital deformation process. Thus, Appellant does not satisfy his
burden of establishing an unobvious difference between the claimed product
and the prior art teachings as combined by the Examiner.
Accordingly, Appellant’s arguments based on these limitations of the
claim are not persuasive.
Additionally, Appellant argues that Donovan does not disclose
orbitally deforming the distal end of an axle and rather “teaches away from
the present invention” because Donovan also discloses blow riveting as a
process for deforming, which could potentially damage the roller track
arrangement of claim 1. App. Br. 8; see Reply Br. 8.
Neither of these arguments is persuasive. First, the Examiner relied
upon Donovan for the process of orbitally deforming, not whether Donovan
discloses an axle or which end is deformed. See Ans. 10. The Examiner
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relied upon Schroeder as disclosing the axle element of claim 1, including
which end of the axle is deformed. See id. at 4-5.
Second, Donovan discloses orbital riveting, radial riveting, and
standard types of riveting, such as blow riveting. See Donovan, col. 5,
ll. 2-14. Donovan’s disclosure of blow riveting would not, in and of itself,
discourage or lead one of ordinary skill in the art in a direction divergent
from orbital riveting, which Donovan also discloses. See In re Haruna,
249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A reference may be said to teach
away when a person of ordinary skill, upon reading the reference, . . . would
be led in a direction divergent from the path that was taken by the
applicant.” (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353,
1360 (Fed. Cir. 1999)).
Accordingly, Appellant’s arguments are not persuasive.
Rejection II
The Examiner concluded that the combination of Schroeder,
Donovan, and Lautenschläger would have rendered obvious the subject
matter of claim 4 to one of ordinary skill in the art. Ans. 7-8.
Appellant raises two arguments in response to this rejection. First,
Appellant asserts that this rejection is erroneous for the reasons stated with
respect to Rejection I. App. Br. 8-9; see Reply Br. 8-9.
For the reasons we explained in the context of Rejection I, Appellant’s
argument is not persuasive.
Second, Appellant contends that it would not have been an obvious
matter of design choice to deform the axle a predetermined amount.
App. Br. 8-9; see Reply Br. 9.
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Claim 4 does not recite deforming the axle a predetermined amount
and thus Appellant’s argument is not commensurate in scope with the claim.
Accordingly, Appellant’s argument is not persuasive.
Rejection III
Appellant asserts that Rejection III is erroneous for the same reasons
provided with respect to Rejection I and that Fournier does not cure the
deficiencies of the combination of Schroeder and Donovan. See App. Br. 9;
Reply Br. 9. For the reasons we explained in the context of Rejection I, we
do not agree that Schroeder and Donovan are deficient. Accordingly,
Appellant’s argument is not persuasive.
Appellant’s Additional Arguments
Appellant reasserts or recasts arguments at the end of the Appeal and
Reply Briefs that we either addressed above or that are in response to
positions taken by the Examiner that we’ve addressed above. See
App. Br. 9-15; Reply Br. 9-15. Accordingly, for the reasons previously
provided, these arguments are not persuasive.
Additionally, Appellant asserts that the Examiner failed to consider
Appellant’s “asserted advantages and new and useful results” and that
“[s]uch advantages and new and useful results are clearly indicia of non-
obviousness.” App. Br. 12; see Reply Br. 12.
We reiterate that what Appellant labels as “asserted advantages and
new and useful results” are taught in the Specification as the result of using
the orbital deforming process rather than impact forming. See, e.g., Spec.,
paras. [0032]-[0034] (generally discussing the benefits of the lower axial
load required to orbital form as compared to the higher load required for
impact forming). These benefits flow from the orbital forming process and
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Appellant does not provide any evidence that suggests such results are
unexpected. In re Baxter-Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991) (“[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.”), cited in Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1370 (Fed. Cir.
2007).
Accordingly, having fully considered and weighed the evidence
presented, we conclude that the Examiner’s evidence of obviousness
outweighs the evidence of non-obviousness provided by Appellant, and thus
sustain Rejections I-III.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1-11, 21, and
22.
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).

AFFIRMED

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