Ex Parte Trotter et al

Board of Patent Appeals and Interferences

Mar 21, 2011

11038699 (B.P.A.I. Mar. 21, 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.
11/038,699 01/20/2005 Jason K. Trotter itwo-0015-1Yod/swa 7495
7590 03/21/2011
Patrick S. Yoder
FLETCHER YODER
P.O. Box 692289
Houston, TX 77269-2289
EXAMINER
MACARTHUR, VICTOR L
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
03/21/2011 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 JASON K. TROTTER and ROBERT K. DUTZI
________________

Appeal 2009-015425
Application 11/038,699
Technology Center 3600
________________

Before RICHARD E. SCHAFER, SALLY C. MEDLEY and
MICHAEL P. TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal No. 2009-015425
Application No. 11/038,699

A. STATEMENT OF THE CASE
This is a decision on appeal by the real party in interest, Illinois Tool
Works, Inc. [hereinafter “Appellant”], under 35 U.S.C. § 134(a), from a final
rejection of claims 35, 54, 56, 57, 64-71 and 73-83, the claims on appeal.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

References Relied on by the Examiner
Dorr U.S. 5,876,149 Mar. 2, 1999
Seiji JP2000081025 Mar. 21, 2000

The Invention
This invention pertains to a ball joint system comprising a socket, a
ball joint and an intermediate molded-in-place bearing (Spec. 1:5-9).
Independent claim 35 is reproduced below:
35. A joint system, comprising:
a joint support structure comprising a socket disposed between
opposite open ends;
a metallic stud coupled to a plastic ball joint disposed within the
socket, wherein the plastic ball joint is sized smaller than the socket;
and
a one-piece bearing comprising plastic molded in-place
between and in contact with the socket and the plastic ball joint,
wherein the one-piece bearing comprises an exterior conformed and
fixedly adhered to the socket and an interior conformed to but
movable relative to the plastic ball joint, wherein the one-piece
bearing retains the plastic ball joint within the socket.
(App. Br. Claims App’x 19).

The Rejection on Appeal
Claims 35, 54, 56, 57, 64-71 and 73-83 are rejected as being obvious
under 35 U.S.C. § 103(a) over Dorr in view of Seiji (Ans. 3).
Appeal No. 2009-015425
Application No. 11/038,699

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B. ISSUES
Would one of ordinary skill in the art have had reason to form a ball
joint system containing a socket, a ball and a bearing between the two when
it was known to form ball joint assemblies having an intermediate bearing?

C. FINDINGS OF FACT
1. Appellant’s Specification does not specifically define the terms
“conformed” and “adhered”.
2. “Conform” is commonly defined as “to give the same shape, outline,
or contour to”, “to be similar or identical” (Webster’s New Collegiate
Dictionary 235 (1979)).2
3. “Adhere” is commonly defined as “to hold fast or stick by as if by
gluing, suction, grasping or fusing” (Webster’s New Collegiate Dictionary
14 (1979)).
4. Dorr (below) discloses a support structure 3 having a socket bore 3b
with opposite open ends (Dorr 2:1-4 and Fig. 1).

Dorr’s Figure 1 discloses bearing 2 between ball 1A and socket opening 3b.

2 A copy of this definition, as well as that for ‘adhere” is attached to this
decision, and is entered into the record.
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5. Dorr’s bearing 2 is one-piece and extends outside socket opening 3b
(Dorr 1:55-59 and Fig. 1).
6. Seiji discloses a metal stud coupled to a plastic ball (Seiji ¶¶ [0013]
and [0041]-[0042]).

D. PRINCIPLES OF LAW
A product that is defined, at least in part, in terms of the method or
process by which it is made represents a product-by-process claim. Bonito
Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 158 n. (1989). In
construing a product-by-process claim, the Federal Circuit has held that “[i]f
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.” In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985).

E. ANALYSIS
Appellant presents separate arguments for each of its three
independent claims, i.e., claims 35, 65 and 70 (App. Br. 10, 14 and 15;
Reply Br. 2, 5 and 7). Appellant also presents separate arguments for six
dependent claims, i.e., claims 68, 75, 76, 79, 80 and 83 (App. Br. 15-17).
Appellant’s contentions are discussed below.

1. Independent Claims 35 and 65 Require Plastic that is “Molded
In-Place”

Each independent claim 35 and 65 requires a bearing made of plastic
that is “molded in-place” between the inner ball and the outer socket.
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Appellant acknowledges that this “molded-in-place” claim element “recites
a product-by-process limitation” but contends that the bearing “should be
read in light of the ‘molded in-place’ limitation” (App. Br. 11, 14; Reply Br.
2-3). In re Thorpe addresses the analysis of product-by-process claims and
provides instruction that the “determination of patentability is based on the
product itself” and not “its method of production.” In re Thorpe, 777 F.2d
695, 697 (Fed. Cir. 1985).
Appellant contends that its molded bearing is patentably distinct based
on characteristics that are defined by the claims themselves, i.e., an exterior
that is “conformed and fixedly adhered to the socket” (App. Br. 11, 14;
Reply Br. 3). The Examiner and the Appellant disagree as to the
construction of the terms “conformed” and “adhered.”

2. “Conformed” Does Not Require the Absence of Gaps

The Examiner holds that “conformed” encompasses structures with
gaps between adjacent surfaces (Ans. 5, 16). In contrast, Appellant contends
conforming one surface to another requires that the two surfaces must be
“strictly comparable” and “not differing in shape” and thus no gaps are
permitted (App. Br. 11-13; Reply Br. 3-4).
During examination, claims are to be given their broadest reasonable
interpretation consistent with the specification (In re Am. Acad. Of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)). Appellant’s Specification states
that “gaps” may occur during the molding process adjacent the bearing and
the socket3 (Spec. 3:18-20, 9:19-21, 10:24-25 and Fig. 4). Accordingly, we

3 The claims also require the bearing to be “conformed” to the ball. The
Specification states that steps are taken to prevent “the mold material from
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Application No. 11/038,699

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hold that “conformed” does not require the absence of gaps or complete
contact between all surfaces.
Dorr Figure 1 discloses a gap between the bearing and the socket
(Ans. 16; App. Br. 11; Reply Br. 3). Based upon the construction provided
above, we hold that Dorr’s bearing is “conformed” to the socket, even
though there is a gap between the two surfaces.

3. “Adhered” Means to Hold Fast or Stick By or as if by Gluing,
Suction, Grasping, or Fusing

The Examiner determined that the claim term “adhered” means “to
hold fast by grasping” (Ans. 4 and 16-17). Appellant disagrees and states
that “adhered” means “to hold fast or stick by or as if by…fusing” (App. Br.
13).
The dictionary definition of “adhere” is “to hold fast or stick by or as
if by gluing, suction, grasping or fusing” (Webster’s New Collegiate
Dictionary 14 (1979)). This dictionary definition is consistent with the
Specification’s description of the inter-relationship between the bearing and
the socket (Spec. 9:3 to 10:14).
The Examiner and Appellant dispute whether Dorr’s bearing is
“adhered” to the socket (Ans. 4-5 and 16-17; App. Br. 13; Reply Br. 4-5).
Dorr specifies that the bearing is “held in” and form-fitted to the socket
(Dorr 1:42-43, 1:47-49, and 2:28-29). We find that Dorr’s bearing is
“adhered” to the socket as it is held fast by the socket.

shrinking onto and sticking to the surface of the ball joint” (Spec. 7:23-24,
10:3-4). Again, space between “conformed” surfaces is permitted.
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Appellant also disputes whether Dorr’s bearing is “fixedly” adhered to
the socket (App. Br. 13; Reply Br. 4-5). Dorr states that the bearing has a
shoulder that “fixes” the bearing in the socket (Dorr 1:58-59 and 2:28-29).
There is also no indication in Dorr that once the bearing and socket are
joined, the two can separate. We find that Dorr discloses a bearing that is
“fixedly” adhered to the socket.

4. Independent Claim 35 is Obvious in View of Dorr and Seiji
Appellant has failed to demonstrate that its “molded-in-place” bearing
has unique characteristics (i.e., an exterior that is “conformed and fixedly
adhered to the socket”) that distinguish the claimed invention from the prior
art. Specifically, we find that Appellant’s bearing is not patentably distinct
from that of Dorr.
Claim 35 also requires “a metallic stud coupled to a plastic ball joint.”
The Examiner relies on Seiji for disclosing a “two-piece stud to ball joint
construction” where a plastic ball is molded onto a metal stud (Ans. 3-4).
The Examiner determined that one skilled in the art would modify Dorr’s
one-piece ball to Seiji’s two-piece ball for weight savings, simplicity and
better quality (Ans. 4, 18-19). Appellant does not dispute Seiji’s two-piece
ball construction but instead contends that Seiji does not disclose a “bearing
molded in-place” (App. Br. 13-14; Reply Br. 2). As discussed above,
Appellant’s “molded in-place” product-by-process limitation does not
distinguish the claimed bearing from Dorr’s bearing.
Seiji teaches that a plastic ball/metal stud assembly is preferable over
a one-piece metal assembly for weight savings, simplified construction and
for spherical quality control (Seiji ¶¶ [0042]-[0044]). One skilled in the art
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Application No. 11/038,699

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would have recognized the benefit of utilizing Seiji’s two-piece construction
in order to make Dorr’s ball joint assembly more efficient. We hold that
claim 35 is directed to the combination of known elements (a ball joint
assembly and a two-piece plastic ball/metal stud construction) for their
known purpose (simplified construction and enhanced quality) to achieve a
predictable result (a two-piece ball/stud joint assembly). We affirm the
Examiner’s rejection of independent claim 35 and dependent claims 54, 56,
57, 64, 74 and 77 as obvious in view of Dorr and Seiji.

5. Independent Claim 65 is Obvious in View of Dorr and Seiji
Claim 65 is similar to claim 35 and further requires “a one-piece
plastic bearing molded in-place between the plastic ball joint and the
oversized receptacle to completely fill the semispherical space.” Appellant’s
Specification states that “[t]he mold material is injected into the mold cavity
until the entire cavity is full. . .” (Spec. 9:16-17). We hold that the term
“completely fill” is a product-by-process limitation as it further defines the
manner in which the plastic bearing is molded-in-place.
The Examiner finds Dorr describes the bearing recited in Appellant
claim 65 (Ans. 7-10 and 17-18). Appellant disagrees and contends that Dorr
has gaps between the bearing and the socket and, as such, Dorr’s bearing
does not “completely fill” this cavity (App. Br. 14-15; Reply Br. 6-7). As
discussed above, Appellant’s Specification states that “gaps” may occur
during the molding process adjacent the bearing and the socket (Spec. 3:18-
20, 9:19-21, 10:24-25 and Fig. 4). We find that Appellant has failed to
establish an unobvious difference between Dorr’s bearing and the claimed
product-by-process plastic bearing that is “molded in-place.” We affirm the
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Application No. 11/038,699

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Examiner’s rejection of independent claim 65 as well as dependent claims
66, 67, 69, 78 and 81, as these dependent claims were not separately argued.

6. Independent Claim 70 is Obvious in View of Dorr and Seiji
Claim 70 is similar to claim 35 and requires the bearing to have
“opposite retention portions” outside the joint support structure to fixedly
secure the bearing and the support structure together. The Examiner finds
that Dorr’s Figure 1 shows the bearing with portions that extend exterior the
support structure and that sandwich or “pinch” the structure there-between
(Ans. 11, 18 and marked-up Dorr Fig. 1). Appellant instead reiterates that
neither Seiji nor Dorr discloses a bearing that is “conformed and fixedly
adhered to a socket” (App. Br. 15; Reply Br. 7-8).
Dorr discloses that the bearing has an “extension” and is “provided
with a shoulder” that “fixes” the bearing and the socket together (Dorr 1:22-
26, 1:55-59 and 2:37-38). Further, Dorr’s Figure 1 depicts this shoulder and
opposite bearing projections for fixing the bearing to the socket. We affirm
the Examiner’s rejection of independent claim 70 as well as dependent
claims 71, 73 and 82 as these dependent claims were not separately argued.

7. Dependent Claims 68, 75, 79 and 83 are Obvious in View of
Dorr and Seiji

Each of these dependent claims further requires the bearing extend
beyond both open ends of the socket. The Examiner finds that the
combination of Dorr and Seiji shows a bearing that extends through both
socket openings to retain the socket within the bearing (Ans. 11, 13-15, 18
and marked-up Dorr Fig. 1). Appellant contends that the Examiner
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misinterprets Dorr and that Dorr’s “written description” indicates a means of
retention other than Dorr’s bearing extending outwardly (App. Br. 15-16).
For the reasons set forth above regarding Dorr’s “shoulder” and Figure 1
illustration, we affirm the Examiner’s rejection of dependent claims 68, 75,
79 and 83.

8. Dependent Claims 76 and 80 are Obvious in View of Dorr and
Seiji
Both claims 76 and 80 further require the bearing to include an
“exterior channel” in which the support structure is captured. The Examiner
finds that the combination of Dorr and Seiji suggests “sandwiching” or
pinching the support structure in an “exterior channel” (Ans. 14 and 18).
Appellant contends the Examiner’s “interpretation of the Dorr reference is
erroneous” and that Dorr does not disclose such a channel (App. Br. 17).
For the reasons set forth above regarding Dorr’s “shoulder” and Figure 1
illustration, we affirm the Examiner’s rejection of dependent claims 76
and 80.

F. CONCLUSION OF LAW
One of ordinary skill in the art would have had reason to form a ball
joint system containing a socket, a ball and a bearing between the two when
it was known to form ball joint assemblies having an intermediate bearing.

G. ORDER
The rejection of claims 35, 54, 56, 57, 64-71 and 73-83 as being
obvious under 35 U.S.C. § 103(a) over Dorr in view of Seiji is affirmed.
Appeal No. 2009-015425
Application No. 11/038,699

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

bim

cc:
PATRICK S. YODER
FLETCHER YODER
P.O. BOX 692289
HOUSTON, TX 77269-2289