Ex parte Seeds

Board of Patent Appeals and Interferences

Mar 8, 2000

08691193 (B.P.A.I. Mar. 8, 2000)

THIS OPINION WAS NOT WRITTEN FOR PUBLICATION

The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HAROLD W. SEEDS
____________
Appeal No. 1999-1489
Application No. 08/691,193
____________
ON BRIEF
____________
Before CALVERT, MCQUADE, and BAHR, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
This is an appeal from the final rejection of claims 1 to
13, all the claims in the application.
The claims on appeal are drawn to a method of dynamically
balancing a driveshaft assembly (claims 1 to 10) and a
dynamically balanced driveshaft assembly (claims 11 to 13), and
are reproduced in the appendix of appellant’s brief.
Appeal No. 1999-1489
Application No. 08/691,193
1Our understanding of this reference is based on a
translation prepared by the PTO, a copy of which is forwarded
herewith to appellant. References in this decision to Kosik
by page and line are to this translation.
2In the final rejection and examiner’s answer, the
examiner stated that claims “1-10, 11 and 12" were rejected on
this ground, but it is evident from her subsequent discussion
(e.g., on page 4 of the final rejection) that claims 1 to 10,
12 and 13 were intended, and appellant has included claim 13
in his argument of the rejection.
2
The reference applied in the final rejection is:
Kosik (German Application) 3140368 Jan. 5, 19831
A prior art publication cited herein is:
Welding Handbook, Sec. 3A, pp. 50.3 to 50.6, 50.11 to 50.14 and
50.30 to 50.33 (Am. Welding Socy. 1970) TS227.A5h
The appealed claims stand finally rejected as follows:
(1) Claim 7, unpatentable for failure to comply with 35 U.S.C.
§ 112, second paragraph;
(2) Claim 11, anticipated by Kosik, under 35 U.S.C. § 102(b);
(3) Claims 1 to 10, 12 and 13, unpatentable over Kosik, under 35
U.S.C. § 103(a).2
Rejection (1)
Claim 7 reads:
7. The method as defined in claim 5 wherein the plate is
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made of steel or aluminum.
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The examiner finds this to be indefinite because (answer,
page 3):
On line 2, the use of the alternative “or” is
improper. If appellant wishes to claim alternatives
they must be art recognized equivalents and in Markush
form.
We will not sustain this rejection. The test for
compliance with the second paragraph of § 112 is “whether a
claim reasonably apprises those of skill in the art of its
scope.” In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d 1754,
1759 (Fed. Cir. 1994). We have no doubt that one of ordinary
skill would know precisely what the scope of claim 7 is.
We should add that use of the word “or” in a claim does not
automatically render the claim indefinite, as the examiner seems
to assume. See MPEP § 2173.05(h), part II (July
1998)(“Alternative expressions using ‘or’ are acceptable, such
as ‘wherein R is A,B,C, or D.’”)
Accordingly, rejection (1) will not be sustained.
Rejection (2)
Before considering the merits of this rejection, we note
that at pages 5 and 6 of the brief appellant argues that the
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Application No. 08/691,193
5
rejections of the claims over Kosik were not in compliance with
35 U.S.C.
§ 132 because appellant was not furnished with an English
translation of Kosik’s German text, and thus could not judge the
propriety of continuing prosecution of the application.
Under 35 U.S.C. § 7(b), this Board’s jurisdiction with
respect to ex parte appeals under 35 U.S.C. § 134 is limited to
reviewing adverse decisions of examiners which relate, at least
indirectly, to matters involving the rejection of claims, i.e.,
to reviewing actions of examiners which in fact amount to a
rejection of claims. See In re Haas, 486 F.2d 1053, 1056, 179
USPQ 623, 624-26 (CCPA 1973). In the present case, appellant’s
argument does not concern a matter which was the basis for the
rejection of any claims, but rather questions the propriety of
the PTO’s long-established practice of not routinely providing a
translation of a cited foreign-language reference. This is a
procedural matter which we have no jurisdiction to consider;
instead, it should properly be raised by way of a petition to
the Commissioner under 37 CFR 1.181. Appellant’s argument can
therefore be given no consideration by us.
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Turning to the merits of rejection (2), Kosik discloses a
balanced driveshaft comprising a tubular metal driveshaft
(propeller shaft) 1, a plate 3 engaging the exterior of the
driveshaft with a hole 4 through the plate and a metal stud 5 in
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the hole. The only limitation of claim 11 not expressly
disclosed by Kosik is that the stud is “friction welded” to the
exterior of the driveshaft; rather, Kosik discloses that the
stud (pin) is welded to the exterior of the shaft by “fusion
welding” (page 4, line 8), an especially suitable welding method
being “the MIG [gas shielded arc] welding method” (page 3, lines
6 and 7).
From the argument on page 7 of the brief, appellant seems
to be of the opinion that Kosik’s non-disclosure of friction
welding is dispositive of the § 102(b) rejection. However,
implicit in the examiner’s rejection of claim 11 is a finding
that, notwithstanding the fact that Kosik does not disclose
friction welding, the structure defined by claim 11 would not
differ from that disclosed by Kosik. Since claim 11 is not
drawn to a process which includes friction welding, but rather
to the product of such a process, the claim is anticipated if
the product defined therein is the same as the prior art
product, even though made by a different process. In re Thorpe,
777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985). Since
the Kosik apparatus is similar to that recited in claim 11 in
that stud 5 is welded to the exterior of driveshaft 1, a prima
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facie case of anticipation has been made out, and the burden
shifts
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to appellant to prove that the fusion welded product of Kosik
does not necessarily or inherently possess the characteristics
of his claimed friction welded product. Id. No such proof has
been presented.
Rejection (2) will therefore be affirmed.
Rejection (3)
We will first consider claims 12 and 13:
12. The dynamically balanced driveshaft assembly as
defined in claim 11 wherein the tubular driveshaft and the stud
are aluminum.
13. The dynamically balanced driveshaft assembly as
defined in claim 12 wherein the metal plate is steel.
Kosik discloses the limitations recited in these claims, i.e.,
an aluminum driveshaft (page 4, line 4) and stud (page 3, line
5), and steel plates (page 4, line 5). Accordingly, as
discussed above, Kosik prima facie meets all the limitations of
claims 12 and 13, and rejection (3) will be sustained as to
them. While this is tantamount to a holding that claims 12 and
13 are anticipated, sustaining of the § 103 rejection is proper
since “The complete disclosure of an invention in the prior art
is the ultimate or epitome of obviousness.” In re Avery, 518
F.2d 1228, 1234, 186 USPQ 161, 166 (CCPA 1975).
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As for claim 1, the examiner states the basis of the
rejection as follows (answer, pages 4 and 5):
[F]riction welding is the creation of friction
between two elements until pieces are heated to a
point that allows plastic flow of the metals and then
the pieces are pressed together so as to plastically
deform the metals. Friction welding is recognized as
being a simple and highly efficient method of
attaching similar and nonsimular [sic] metals. The
“melting” welding of Kosik is not specific as to which
type of welding is used to join the drive shaft and
stud. Using friction welding would be efficient since
it is well recognized as a simple and highly efficient
method of attaching similar and nonsimular [sic]
metals. It would have been obvious for one of
ordinary skill at the time the invention was made to
attach the stud of Kosik to the drive shaft by
friction welding since friction welding is well
recognized as a simple and highly efficient method of
attaching similar and nonsimular [sic] metals.
It is fundamental that “The mere fact that the prior art
may be modified in the manner suggested by the Examiner does not
make the modification obvious unless the prior art suggested the
desirability of the modification.” In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). A rejection
based on § 103 must rest on a factual basis, which the PTO has
the duty of supplying, and these facts must be interpreted
without hindsight reconstruction of the invention from the prior
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art. In re GPAC, Inc., 57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123
(Fed. Cir. 1995). In the present case, the examiner asserts
that friction
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welding is recognized as being a highly efficient method of
attaching metals, but has adduced no evidence of such
recognition by those of ordinary skill in the art. Cf. In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999). As appellant succinctly states on page 8 of the brief:
The mere fact that a particular welding step, per
se is known, does not make every method that includes
that particular welding step obvious.
Although friction welding is of course known, the record is
devoid of any evidence of a suggestion, teaching or motivation
which would have led one of ordinary skill to use friction
welding instead of fusion welding (particularly MIG welding)in
Kosik’s disclosed process. Absent such evidence, it appears
that any such modification of Kosik would be based on improper
hindsight gleaned from appellant’s own disclosure.
We, therefore, will not sustain the rejection of claim 1,
nor of independent claim 8, as to which the applied prior art is
similarly deficient. The rejection of dependent claims 2 to 7,
9 and 10 will likewise not be sustained. Moreover, the
rejection of claims 4 and 5, which call for insertion of the
stud into the hole in the plate after the stud is welded to the
driveshaft, will not
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be sustained for the additional reason that we do not find any
disclosure or teaching of such a process in Kosik.
Remand to the Examiner
As discussed above, we have not sustained the § 103
rejection of claims 1 to 10 because the examiner presented no
evidence of a suggestion, teaching or motivation to use friction
welding. However, it appears that such evidence may be
available in the prior art. For example, on page 50.3 of the
Welding Handbook, the last paragraph lists some advantages of
friction welding in relation to other welding processes. Also,
on several pages there is a disclosure of the use of friction
welding to join aluminum parts, and Table 50.2 (page 50.13) even
mentions aluminum 6061 alloy. Accordingly, the application is
remanded to the examiner pursuant to 37 CFR 1.196(e) to
determine whether at least claims 1 to 3 and 6 to 10 should be
rejected under 35 U.S.C. § 103 as unpatentable over Kosik in
view of the Welding Handbook and/or other prior art which may
provide the evidence we have found to be lacking in this case.
Conclusion
The examiner’s decision to reject claim 7 under 35 U.S.C.
§ 112, second paragraph, is reversed; to reject claim 11 under
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35 U.S.C. § 102(b)is affirmed; and to reject claims 1 to 10, 12
and 13 under 35 U.S.C. § 103 is reversed as to claims 1 to 10
and affirmed as to claims 12 and 13. The application is
remanded to the examiner pursuant to 37 CFR 1.196(e).
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. MCQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-1489
Application No. 08/691,193
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Francis J. Fodale
Reising, Ethington, Learman
& McCulloch
P.O. Box 4390
Troy, MI 48099
IAC/wgb