11908716 (P.T.A.B. Feb. 25, 2014)

Ex Parte Shirai et al

Patent Trial and Appeal BoardFeb 25, 2014

11908716 (P.T.A.B. Feb. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte TAKEKI SHIRAI, TAKASHI SAKAE, TAKAMASA MITSUGI, and TETSUHIRO NISHIDE ____________ Appeal 2012-001837 Application 11/908,716 Technology Center 3600 ____________ Before: PATRICK R. SCANLON, WILLIAM A. CAPP and BEVERLY M. BUNTING, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the rejection of claims 1-5 as unpatentable under 35 U.S.C. § 103(a) over Lomnick (US 5,538,275, iss. Jul. 23, 1996) and Fukukawa (US 5,601,378, iss. Feb. 11, 1997). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-001837 Application 11/908,716 - 2 - THE INVENTION Appellants’ invention relates to ball joints. Spec. 1. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A ball joint, comprising: a ball shank and a holder connected swingably and rotatably with each other; and a boot seal mounted between the holder and the ball shank, wherein the ball shank has a protruding collar portion integrally formed on a shaft portion of the ball shank, used to fix another object to the ball shank, the collar portion having an abutment surface and a tapered surface formed between the abutment surface and an outer peripheral surface of the collar portion, the tapered surface being inclined with respect to the abutment surface and inclined with respect to an axial direction of the ball shank, wherein the boot seal includes: an annular fixation portion fixed to the holder; an annular seal portion tightening the shaft portion of the ball shank and held in press contact with the collar portion; and a seal main body portion connecting the annular fixation portion and the annular seal portion to form a retaining space for lubricant, and wherein the annular seal portion includes a portion that is pressed in an axial direction of the ball shank against the abutment surface and a side lip portion corresponding to the tapered surface of the collar portion and protruding so as to diverge obliquely, the side lip portion being provided near a comer portion in an outer periphery of the seal portion and held in press contact with the tapered surface without covering an outer peripheral surface of the collar portion when the seal portion is attached to the shaft portion of the ball shank. Appeal 2012-001837 Application 11/908,716 - 3 - OPINION Appellants argue claims 1-5 as a group. App. Br. 5. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). The Examiner finds, and Appellants do not dispute, that Fukukawa discloses all of the elements of claim 1 except for tapered surfaces at oblique angles on the corresponding contact surfaces of the ball shank flange (or collar) and seal lip. Ans. 4-5. The Examiner relies on Lomnick as disclosing tapered, oblique angled, contact surfaces. Ans. 5-6, citing Lomnick, Fig. 4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was made to modify Fukukawa’s ball joint with a tapered flange and side lip as taught by Lomnick. Ans. 6. According to the Examiner, a person of ordinary skill in the art would have done this to provide for radial compression of the boot seal against the collar portion, providing for more secure sealing of the boot seal against the collar portion at large pivot angles. Id. Appellants traverse the Examiner’s rejection by first arguing that Fukukawa lacks tapered, obliquely angled contact surfaces, a fact already conceded by the Examiner. App. Br. 6. This argument is unpersuasive as the Examiner’s rejection was over a combination of references and the Examiner relied on Lomnick for the tapered surfaces. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Next, Appellants argue that Lomnick fails to disclose a collar portion formed with a stud as one body. App. Br. 6. In response, the Examiner Appeal 2012-001837 Application 11/908,716 - 4 - reiterates that Lomnick was relied on only to teach tapered surfaces. Ans. 8. Again, Appellants’ argument amounts to an attack on an individual reference where the claimed element is found in another of the applied references in a combination rejection. Merck, supra, Keller, supra. Here, Appellants do not challenge the Examiner’s finding that Fukukawa discloses the entire invention except for the tapered surfaces. Appellants next speculate that the tapered surfaces shown in Lomnick are not directly in contact and, therefore, do not provide a reliable seal. App. Br. 7-8.1 This speculative argument fails to demonstrate error by the Examiner. As persons of scientific competence in the fields in which they work, Examiners are responsible for making findings, informed by their scientific knowledge, as to the meaning of prior art references to persons of ordinary skill in the art and the motivation those references would provide to such persons. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003). Absent legal error or contrary factual evidence, those findings can establish a prima facie case of obviousness. Id. Appellants’ argument that Lomnick does not provide a reliable seal is nothing more than unsubstantiated attorney argument. Invitrogen Corp. v. Clontech Labs, Inc., 429 F.3d 1052, 1068 (Fed. Cir. 2005) (unsubstantiated attorney argument is no substitute for competent evidence). First of all, Lomnick aside, Appellants fail to show that Fukukawa does not provide a reliable seal. Second, Appellants have failed to persuade us, with either 1 “[I]t may be that the flared-out rubber flange 48 is in contact with the surface of the outer peripheral portion of the collar portion (stud boss 12) and is not in contact with a tapered surface that is ‘formed between the abutment surface and an outer peripheral surface of the collar portion.’” App. Br. 7-8. Similarly, “the contact between the flared-out rubber flange 48 and the stud boss 12 is unstable.” Ans. 9. Appeal 2012-001837 Application 11/908,716 - 5 - evidence or technical reasoning, that modifying Fukukawa’s flange 14 with a tapered edge and extending Fukukawa’s dust cover lip 34 at an oblique angle corresponding to such a tapered, flange surface would detract from the security of Fukukawa’s seal. Thus, we are not persuaded that modifying Fukukawa with Lomnick’s oblique angles will result in an unreliable seal. Appellants have thus failed to rebut the Examiner’s prima facie case of obviousness with persuasive evidence or argument demonstrating error in the Examiner’s interpretation of the applied art. We agree with the Examiner that Fukukawa discloses the entire invention except for the tapered surfaces and that Lomnick suggests that it would have been obvious to modify the contact surfaces between the ball shank flange and seal so as to be tapered as claimed. In sum, we believe that the Examiner’s findings of fact are supported by a preponderance of the evidence and that the Examiner's legal conclusion of unpatentability is well founded. Accordingly, we sustain the Examiner’s unpatentability rejection of claims 1-5. DECISION The decision of the Examiner to reject claims 1-5 is AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh