Ex Parte Schwenk

Board of Patent Appeals and Interferences

Mar 28, 2011

10853391 (B.P.A.I. Mar. 28, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/853,391 05/25/2004 Wilfried Schwenk 588.1029 4670
23280 7590 03/28/2011
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
EKIERT, TERESA M
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
03/28/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILFRIED SCHWENK
____________________

Appeal 2009-011826
Application 10/853,391
Technology Center 3700
____________________

Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-011826
Application 10/853,391
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 2,
4-9 and 33-35. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.

The claims are directed to a punching method. Claim 33, reproduced
below, is illustrative of the claimed subject matter:
33. A method for shaping a sheet metal using a die, the sheet
metal after shaping having at least a minor structure, and a
basically rotational symmetrically main structure, the method
comprising:
stamping a minor structure into a flat sheet metal
defining a first plane in a minor structure stamp direction; and
stamping a main structure in a main structure stamp
direction after the stamping of the minor structure, so that at
least part of the minor structure is moved out of the first plane
so as to form a torque converter part,
at least a portion of the sheet metal not currently being
shaped being clamped by at least part of the die during shaping
of another portion.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Paull
Birk
US 413,374
US 6,386,981
Oct. 22, 1889
May 14, 2002

REJECTIONS
Claims 2, 4-9, and 33 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellant regards as the invention.
Ans. 3.
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3
Claims 2, 4, 5, and 33-35 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Paull. Ans. 4.
Claims 2, 4-9, and 33 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Birk and Paull. Ans. 4.
Claims 2, 4, 5, and 33-35 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Paull. Ans. 5.

OPINION
We have carefully reviewed the rejections on appeal in light of the
arguments of the Appellant and the Examiner. As a result of this review, we
have determined that the applied prior art establishes the lack of novelty and
obviousness of claims 2, 4, 5, and 33-35 based on Paull when considered
alone. The applied prior art of Paull and Birk does not establish the
obviousness of claims 2, 4-9, and 33-35. An indefiniteness rejection of
claims 2, 4-9, and 33 is also not affirmed. Our reasons follow.
Turning first to the Examiner’s rejection of claims 2, 4-9, and 33
under 35 U.S.C. § 112, second paragraph, we do not affirm this rejection.
We agree with Appellants arguments on page 2 of the Reply Brief that
Figures 2-4 of the present Specification clearly show the minor structure,
i.e., the embossed slots 5, in a different plane than the stamping of the main
structure. Therefore, independent claim 33 is not indefinite within the
purview of 35 U.S.C. § 112, second paragraph.
With respect to the 35 U.S.C. § 112, second paragraph, rejection of
claim 6, we agree with the Appellant that the recitation of “a shaping die” in
the third line of claim 6 is clearly directed to a different die than the die first
recited in claim 33. App. Br. 3-4. Therefore, claim 6 is not indefinite within
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Application 10/853,391
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the purview of the statute. All rejections under 35 U.S.C. § 112, second
paragraph, are consequentially reversed.
Turning to the art rejections on appeal, the arguments of the Appellant
and the Examiner are directed to determining the correct construction of the
claims. Appellant argues that the recitation of “a torque converter part” in
line 8 of claim 33 limits the claimed process to a process for manufacturing
only torque converters. App. Br. 4-5. On the other hand, the Examiner has
more broadly construed the method and is of the view that any prior art that
recites the method steps anticipates the claimed subject matter. In this
instance, we agree with the Examiner. Ans. 4. We view the recitation of a
“torque converter part” as it appears in line 8 of the claim to refer to a
nominal use of the method, much the way a preambular limitation would set
out a field of inventive endeavor. Such preambular recitations are not
accorded patentable weight when they state a purpose or intended use for the
invention. In this instance, the method steps recited in the claim are all steps
of general utility that can be used to make a myriad of products. There is
nothing specific to a torque converter or indeed a pump shell or a turbine
shell recited in the steps of Appellant’s claimed subject matter. The recited
“minor structure” is broadly claimed and has no specificity or particularity
with respect to any structure of a torque converter. The disclosed structure
for mounting the torque converter vanes, such as Appellant’s disclosed slots,
is not specified in the claim. Therefore, on balance, we believe the
Examiner’s claim construction to be the proper claim construction for the
application of prior art.
With the proper claim construction in mind, it is our finding that Paull
anticipates the subject matter of claims 2, 4, 5, and 33-35. Appellant has not
argued that the steps of Paull are not the same as Appellant’s recited
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stamping steps. Therefore, the subject matter of claims 2, 4, 5, and 33-35
lacks novelty over the Paull reference. Inasmuch as we have affirmed the
§ 102 rejection of claims 2, 4, 5, and 33-35, we also affirm the § 103
rejections of these claims, anticipation being the epitome of obviousness. In
re McDaniel, 293 F3d. 1379, 1385 (Fed. Cir. 2002)(quoting Connell v. Sears
Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983)).
Turning to the obviousness rejection based on Paull and Birk, it is our
conclusion that the Examiner has not articulated reasoning with rational
underpinnings that would support the combination of Paull and Birk. We
note that Paull is directed to stamping decorative or ornamental patterns into
household objects such as decorative lamps, lanterns, cups and the like.
Paull, p. 2, ll. 57-59. Since the stampings of Paull appear to be mainly
ornamental or decorative, it is unclear to us why one of ordinary skill would
look to the Paull patent when stamping the functional features found in the
Birk transmission part. Therefore the rejection of claims 2, 4-9, and 33 under
35 U.S.C. § 103 is reversed.

DECISION
The rejections of claims 2, 4-9, and 33 under 35 U.S.C. § 112, second
paragraph, are reversed.
The rejection of claims 2, 4, 5, and 33-35 under 35 U.S.C. § 102 as
anticipated by Paull is affirmed. The rejection of claims 2, 4, 5, and 33-35
under 35 U.S.C. § 103 as unpatentable over Paull is also affirmed.
The rejection of claims 2, 4-9, and 33 under 35 U.S.C. § 103 as
unpatentable over Paull and Birk is reversed.

Appeal 2009-011826
Application 10/853,391
6
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-IN-PART

nlk