Ex Parte Urbach

Board of Patent Appeals and Interferences

Mar 24, 2008

10047534 (B.P.A.I. Mar. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN A. URBACH
____________

Appeal 2007-4210
Application 10/047,534
Technology Center 3600
____________

Decided: March 24, 2008
____________

Before HUBERT C. LORIN, JENNIFER D. BAHR, and
DAVID B. WALKER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
David A. Urbach (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-12. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

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The Invention
Appellant’s claimed invention is directed to a ball joint that supports a
first suspension member for movement relative to a second suspension
member (Specification 1:4-6). Claim 1 is illustrative of the invention and
reads as follows:
1. Apparatus comprising:
a first suspension member [12];
a second suspension member [14] having
opposite first and second side surfaces and a
through hole [24] that extends between the first
and second side surfaces, a first frustoconical
surface [32] defining a first end of said through
hole and a second frustoconical surface [36]
defining a second end of said through hole, said
first frustoconical surface being angled so that
imaginary lines extending from diametrically
opposite portions of said first frustoconical surface
intersect at a first location within said through hole
and between said first and second side surfaces,
said second frustoconical surface being angled so
that imaginary lines extending from diametrically
opposite portions of said second frustoconical
surface intersect a second location within said
through hole and between said first and second
side surfaces, a cylindrical surface [28] interposed
between and connecting said first and second
frustoconical surfaces, said cylindrical surface
defining a central portion of said through hole;
a socket [40] connected with said first
suspension member;
a one-piece stud [50] having a first end
portion and a second end portion;
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said socket supporting said first end portion
of said stud in said socket for pivotal movement
relative to said socket;
said second end portion of said stud
projecting from said socket and completely
through said through hole in said second
suspension member, said second end portion of
said stud having a third frustoconical surface [66]
in engagement with said first frustoconical surface
of said second suspension member, said third
frustoconical surface being angled so that, when in
engagement with said first frustoconical surface,
imaginary lines extending from diametrically
opposite portions of said third frustoconical
surface intersect at a third location within said
through hole of said second suspension member
and between said first and second side surfaces;
and
a fastener [nut 90] secured to said second
end portion of said stud, said fastener having a
fourth frustoconical surface [96] in engagement
with said second frustoconical surface of said
second suspension member, said fourth
frustoconical surface being angled so that, when in
engagement with said second frustoconical
surface, imaginary lines extending from
diametrically opposite portions of said fourth
frustoconical surface intersect at a fourth location
within said through hole of said second suspension
member and between said first and second side
surfaces, said second end portion of said stud
extending completely through said fastener and
said fastener causing said first and third
frustoconical surfaces to be pressed together and
causing said second and fourth frustoconical
surfaces to be pressed together to secure said
second suspension member relative to said second
end portion of said stud;
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said socket and said stud supporting said
first suspension member for movement relative to
said second suspension member.

The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
Sommerer US 5,062,655 Nov. 5, 1991
Stroh US 6,257,795 B1 Jul. 10, 2001
Greubel US 6,416,135 B1 Jul. 9, 2002
(filed Jun. 30, 2000)
Pazdirek US 6,505,989 B1 Jan. 14, 2003
(filed Feb. 15, 2001)

The following rejections are before us for review:
(1) Claims 1 and 5-121 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(2) Claims 1-8 and 10-12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Stroh in view of Sommerer and Greubel.

1 In the Final Rejection (mailed November 15, 2004), the Examiner lists
claims 1-8 as the claims subject to this rejection (Final Rejection 2), but it is
apparent from the Examiner’s explanation of the rejection that claim 1 and
claims 5-12, which depend from claim 1, are subject to this rejection (Final
Rejection 2-3). On page 3 of the Answer, the Examiner identifies claims 1-
12 as being subject to this rejection, but only provides an explanation as to
why claim 1, and implicitly claims 5-12 depending from claim 1, lacks
written description support. The limitations of claim 1 identified by the
Examiner as lacking written description support are not recited in claims 2-
4, and the Examiner does not give any explanation as to why claims 2-4 lack
written description support. We thus understand this rejection to apply to
claims 1 and 5-12.
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(3) Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Stroh in view of Sommerer and Greubel, and further in view of Pazdirek.
The Examiner provides reasoning in support of the rejections in the
Answer (mailed March 22, 2006). Appellant presents opposing arguments
in the Appeal Brief (filed December 27, 2005) and Reply Brief (filed May 3,
2006).

DISCUSSION
Rejection (1)
35 U.S.C. § 112, first paragraph, requires a
“written description of the invention” which is
separate and distinct from the enablement
requirement. The purpose of the "written
description" requirement is broader than to merely
explain how to “make and use”; the applicant must
also convey with reasonable clarity to those skilled
in the art that, as of the filing date sought, he or she
was in possession of the invention. The invention
is, for purposes of the “written description”
inquiry, whatever is now claimed.
. . . drawings alone may be sufficient to provide the
"written description of the invention" required by §
112, first paragraph.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
The question of whether a modification is an obvious variant of that
which is originally disclosed is irrelevant insofar as the written description
requirement is concerned. See, e.g., Lockwood v. American Airlines Inc.,
107 F.3d 1565, 1571-72 (Fed. Cir. 1997).
The Examiner contends that the application as originally filed does
not provide support for the limitations that the frustoconical surfaces are
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angled so that imaginary lines extending from diametrically opposite
portions of said frustoconical surface intersect at a location within said
through hole and between said first and second side surfaces, as recited in
claim 1 (Answer 4). Appellant argues that support for these limitations is
found in the drawings, particularly Figure 2, of the application as originally
filed (Appeal Br. 12).
Citing Hockerson-Halbertstadt, Inc. v. Avia Group Int'l, 222 F.3d
951, 956 (Fed. Cir. 2000), the Examiner contends that since there is no
indication in the original disclosure that the drawing figures are drawn to
scale, Appellant cannot rely on the drawings to show particular sizes if the
specification is completely silent on the issue (Answer 13-14). Appellant,
on the other hand, argues that Manual of Patent Examining Procedure
§ 2125, in which Hockerson-Halbertstadt is cited, deals with reliance on
drawings of a prior art patent where the drawings were in conflict with the
written description and does not address the issue of written description
support (Appeal Br. 11). Be that as it may, Hockerson-Halbertstadt, holding
that where a patent was devoid of any indication that the drawings were to
scale, the drawings could not be relied upon to construe whether the term
“central longitudinal groove” required that the width of the groove be less
than the combined width of the fins, unequivocally states that “it is well
established that patent drawings do not define the precise proportions of the
elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.” Id. at 956. “Ordinarily
drawings which accompany an application for a patent are merely
illustrative of the principles embodied in the alleged invention claimed
therein and do not define the precise proportions of elements relied upon to
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endow the claims with patentability.” In re Olson, 212 F.2d 590, 592
(CCPA 1954).
Appellant’s Specification is silent as to whether imaginary lines
extending from diametrically opposite portions of the frustoconical surfaces
would intersect within the through hole. The Specification merely states, on
pages 4 and 5, that the first chamfer 32 and second chamfer 36 extend at a
45 degree angle to the axis 26 and could be different in different
embodiments. The description is similar with respect to the other
frustoconical surfaces 66, 96 (Specification 6 and 7-8). Appellant cannot
rely on the drawings to support these limitations, as there is no indication in
the application as originally filed that they have been drawn to scale and that
the thickness of the second suspension member 14, for example, has not
been exaggerated to facilitate illustration of the invention. Appellant
submits, in the Evidence Appendix to the Appeal Brief, a mechanical
drawing to show that Figures 1 and 2 of the original application are drawn to
scale (Appeal Br. 13), but that drawing is of no relevance, as it does not
form part of the original disclosure.
In light of the above, Appellant’s arguments fail to persuade us that
the Examiner erred in determining that the present application, as originally
filed, does not convey with reasonable clarity to those skilled in the art that,
as of the filing date of the application, Appellant was in possession of the
invention claimed in independent claim 1, and hence claims 5-12 dependent
on claim 1. The rejection is sustained.
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Rejection (2)
Claim 1
There does not appear to be any dispute that Stroh teaches all of the
limitations of claim 1, with the exception of frustoconical surfaces. Rather,
Appellant argues that “the record in this case is totally devoid of a teaching
or suggestion of frustoconical surfaces having the features recited in claim
1” (Appeal Br. 15). Further, Appellant argues that there is no teaching or
suggestion in the applied references to modify the embodiment of Stroh’s
Figure 3 to include frustoconical surfaces (Appeal Br. 18).
The surfaces of recesses 13 and 14 of Stroh’s tie rod linkage 2
corresponding to the first and second frustoconical surfaces of Appellant’s
claim 1 are round or spherical (fig. 3). According to Stroh, when the
connection is in place, shoulder portion 12 of stud 6 sits in the recess 13, so
as to precisely establish the relative positions of the tie rod linkage 2 (second
suspension member) and steering knuckle arm 1 (first suspension member)
and provide a tight and secure fit between the mounting stud and the tie rod
linkage (col. 2, ll. 51-56). Likewise, shoulder portion 15 of nut 11 (fastener)
fits snugly in recess 14 (col. 2, ll. 56-59).
Sommerer shows a similar ball joint arrangement supporting a first
element (upper control arm 4) for movement relative to a second element
(wheel carrier 2), wherein the ring 10 of wheel carrier 2 has tapered recesses
for receiving the tapered neck 11 of the ball joint (stud) 8 (fig. 2). Sommerer
thus evidences that tapered recesses for receipt of a ball joint stud were
known in the art at the time of Appellant’s invention.
Greubel teaches the interchangeability of cone seating mounting nuts
having a frustoconical surface with nuts having a spherical radius (col. 3, l.
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61-65). Greubel also teaches that the nut and the hole, or recess, into which
the nut is received, should have matching configurations; for example, if the
nut has a spherical radius, the disc hole will likewise have a spherical radius
(col. 4, ll. 2-4).
Moreover, Appellant admits that “[o]ne of ordinary skill in the art will
recognize frustoconical surfaces as being superior to spherical surfaces for
aligning adjoining parts” (Appeal Br. 19). An appellant's admissions may be
considered “prior art” for any purpose, including use as evidence of
obviousness. In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975).
In light of the evidence that (1) both round, or spherical, and
frustoconical seating recesses were known in the art at the time of
Appellant’s invention for seating a ball stud and a fastening nut in a
suspension member in a ball joint arrangement (Stroh and Sommerer), (2)
frustoconical and spherical seating recesses, with corresponding mounting
nut configurations, were recognized as interchangeable at the time of
Appellant’s invention (Greubel), and (3) the recognition in the art that
frustoconical surfaces are superior to spherical surfaces for aligning
adjoining parts, it would have been obvious to a person of ordinary skill in
the art to modify the surfaces of Stroh’s recesses 13 and 14 to be
frustoconical, rather than spherical, to achieve a superior configuration for
aligning the ball stud 6 and nut 11 with the tie rod linkage 2. It would
further have been obvious, both as a matter of ordinary creativity2 and
common sense, to provide configurations on the ball stud 6 and nut 11 of

2 “A person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR Int’l. Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82
USPQ2d 1385, 1397 (2007).
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Stroh matching those of the recesses 13 and 14, especially in view of the
teaching by Greubel to match the configuration of the mounting nut to the
seating recess.
Appellant may be correct that none of applied references explicitly
shows a seating recess having a frustoconical surface angled so that
imaginary lines extending from diametrically opposite portions of said
frustoconical surface intersect at a location within said through hole and
between said first and second side surfaces, as recited in claim 1.
Nevertheless, while there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness, “the
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 127 S.Ct. at 1741.
When there is a design need or market pressure to
solve a problem and there are a finite number of
identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known
options within his or her technical grasp. If this
leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and
common sense. In that instance the fact that a
combination was obvious to try might show that it
was obvious under § 103.
Id. at 1742.
In this instance, there are a finite number of identified, predictable
possibilities with regard to the angles of the frustoconical recesses and
matching ball stud and nut surfaces relative to the length of the through hole
in Stroh’s tie rod linkage. These surfaces can be either so steep relative to
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the length of the through-hole that imaginary lines extending from
diametrically opposite portions thereof do not intersect within the hole or so
shallow that such imaginary lines intersect within the hole. Under these
circumstances, the selection of either of these options is more likely the
product of ordinary skill and common sense than of innovation. Moreover,
Appellants do not allege, much less show, that frustoconical surfaces angled
as recited in claim 1 yield unexpected results compared with frustoconical
surfaces angled so that imaginary lines extending from diametrically
opposite portions thereof intersect outside the through hole. To the contrary,
as discussed above, Appellant’s Specification, at pages 4, 5, 6, and 7-8,
states that the first and second chamfers 32, 36 and frustoconical surfaces
66, 96 are illustrated at a 45 degree angle to axis 26 but could be different in
different embodiments. Accordingly, frustoconical surfaces on recesses 13,
14 and on the ball stud 6 and nut 11 angled as recited in claim 1 would have
been obvious.
For the foregoing reasons, Appellant’s arguments do not persuade us
of reversible error in the Examiner’s rejection of claim 1 as unpatentable
over Stroh in view of Sommerer and Greubel. The rejection is sustained.
Claim 5
Appellant argues that the record lacks a stud having a threaded end
portion that extends to a shoulder forming a frustoconical surface of the stud
(Appeal Br. 22-23). Referring to the annotated Figure 3 of Stroh included in
the Answer, at page 21, the Examiner points out where Stroh discloses this
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feature (Answer 17).3 Appellant does not point out any error in the
Examiner’s finding, and thus fails to persuade us the Examiner erred in
rejecting claim 5 as unpatentable over Stroh in view of Sommerer and
Greubel. The rejection is sustained.
Claim 6
Appellant argues that “[t]he record in this case is devoid of a teaching
or suggestion of a stud having a threaded end portion that extends to a
shoulder forming an end of a frustoconical surface of the stud” (Appeal Br.
23-24). Claim 6 does not recite “a stud having a threaded end portion that
extends to a shoulder forming an end of a frustoconical surface of the stud,”
as Appellant’s argument implies. It is well established that limitations not
appearing in the claims cannot be relied upon for patentability. In re Self,
671 F.2d 1344, 1348 (CCPA 1982). In any event, referring to the annotated
Figure 3 of Stroh included in the Answer, at page 21, the Examiner points
out where Stroh discloses this feature (Answer 17). Appellant does not point
out any error in the Examiner’s finding. Appellant’s argument thus cannot
demonstrate reversible error in the Examiner’s rejection of claim 6. The
rejection of claim 6 as unpatentable over Stroh in view of Sommerer and
Greubel is sustained.
Claim 7
Appellant argues that the record is devoid of a teaching or suggestion
of the frustoconical surface of the stud and a frustoconical surface of the
fastener extending at the same angle relative to the central axis of the stud

3 We note that claim 5 merely requires that the threaded portion, not the
threads themselves, extend to a shoulder forming an end of the frustoconical
surface.
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(Appeal Br. 24). Furthermore, according to Appellant, combining the
teachings of the applied references to meet this feature “only seems plausible
using hindsight after having the benefit of [Appellant’s] disclosure.” Id. We
do not agree with Appellant.
First, to have the third frustoconical surface (that of the stud) extend at
the same angle as that of the first frustoconical surface is a simple matter of
common sense, since the third frustoconical surface engages the first
frustoconical surface. Moreover, as discussed above, Greubel teaches
having the recess contour correspond to that of the nut, that is, the structure
that engages the recess (col. 4, ll. 2-4). To have the fourth frustoconical
surface extend at the same angle as that of the second frustoconical surface,
with which it engages, is likewise a simple matter of common sense. Having
the fourth frustoconical surface (that of the fastener or nut) extending at the
same angle as the third frustoconical surface appears to be a predictable
variation of Stroh’s arrangement, as there are a finite number, namely, three,
of predictable possibilities of the relationship between these two
frustoconical surfaces. The fourth frustoconical surface must be at the same
angle, a steeper angle, or a shallower angle as compared to the third
frustoconical surface. Accordingly, the selection of any of these possibilities
would have been obvious, especially in the absence of any evidence that
equal angles yields any unexpected results. In fact, to provide the third and
fourth frustoconical surfaces at equal angles would appear to be the most
readily envisaged option, in the absence of any reason to make them
different.
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Appellant’s argument does not persuade us of reversible error in the
Examiner’s rejection of claim 7 as unpatentable over Stroh in view of
Sommerer and Greubel. The rejection is sustained.
Claims 8 and 10-12
Although the Appeal Brief purports to present separate arguments for each
of these claims under separate sub-headings (Appeal Br. 25-27), this portion
of the Appeal Brief merely points out the limitations of clams 8 and 10-12
and baldly argues that none of the applied references teaches or suggests the
features of these claims, without specifically pointing out the deficiencies in
the Examiner’s articulated position (Answer 8-9 and 18) with regard to the
limitations of these claims. “A statement which merely points out what a
claim recites will not be considered an argument for the separate
patentability of the claims.” 37 C.F.R. § 41.37(c)(1)(vii).
Appellant fails to persuade us of reversible error in the Examiner’s
rejection of these claims as unpatentable over Stroh in view of Sommerer
and Greubel. The rejection of claims 8 and 10-12 is sustained.
Claim 2
Appellant argues that claim 2 patentably defines over the combination
of Stroh, Sommerer and Greubel “for reasons similar to those set forth above
with regard to claim 1” (Appeal Br. 27). The arguments advanced by
Appellant with regard to claim 1 are unpersuasive of error in the Examiner’s
rejection of claim 2 for the reasons discussed above with regard to claim 1,
and for the additional reason that the limitations of claim 1 with regard to the
frustoconical surfaces being angled so that imaginary lines extending from
diametrically opposite portions of said frustoconical surfaces intersect at
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locations within said through hole and between said first and second side
surfaces are not recited in claim 2.
Appellant additionally argues that the record lacks a teaching or
suggestion of a frustoconical surface of the stud and two frustoconical
surfaces of a suspension member extending at the same angle relative to the
central axis of the stud (Appeal Br. 28). This argument is unpersuasive for
the same reasons discussed above with regard to claim 7.
The rejection of claim 2 as unpatentable over Stroh in view of
Sommerer and Greubel is sustained.
Claim 3
Appellant argues that the record lacks a teaching or suggestion of a
frustoconical surface of the fastener extending at the same angle relative to
the axis of the stud as the frustoconical surface of the stud and two
frustoconical surfaces of the suspension member (Appeal Br. 28). This
argument is unpersuasive for the reasons discussed above with regard to
claim 7. The rejection of claim 3 as unpatentable over Stroh in view of
Sommerer and Greubel is sustained.
Claim 4
Appellant argues that none of the applied references teaches or
suggests the third frustoconical surface extending at a 45 degree angle to the
axis (Appeal Br. 29). Where the difference between the claimed invention
and the prior art is some range or other variable within the claims, the
applicant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Moreover, even when an applicant's modification results in great
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improvement and utility over the prior art, it may still not be patentable if the
modification was within the capabilities of one skilled in the art, unless the
claimed ranges “produce a new and unexpected result which is different in
kind and not merely in degree from the results of the prior art.” In re
Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). Appellant has not alleged,
much less shown, that the particular angle of 45 degrees achieves
unexpected results relative to the angles taught in the prior art. To the
contrary, as discussed above, Appellant’s Specification, at pages 4, 5, 6, and
7-8, states that the first and second chamfers 32, 36 and frustoconical
surfaces 66, 96 are illustrated at a 45 degree angle to axis 26 but could be
different in different embodiments.
In light of the above, Appellant’s argument does not persuade us of
reversible error in the Examiner’s rejection of claim 4 as unpatentable over
Stroh in view of Sommerer and Greubel. The rejection is sustained.
Rejection (3)
In rejecting claim 9 as unpatentable over Stroh in view of Sommerer
and Greubel, and further in view of Pazdirek, the Examiner finds that Stroh
fails to disclose the terminal end of the stud having a hexagonal
configuration (Answer 10). The Examiner finds that Pazdirek teaches a
terminal end of a ball stud having a hexagonal configuration (fig. 1). Id.
The Examiner determines that it would have been obvious to one of ordinary
skill in the art at the time of Appellant’s invention to provide the terminal
end of Stroh’s stud 6 with a hexagonal configuration to prevent the stud
from slipping (i.e., rotating) in the through hole when the fastener is fastened
to the stud. Id.
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Appellant argues that claim 9 patentably defines over the combination
of Stroh, Sommerer, Greubel, and Pazdirek “for reasons similar to those set
forth above with regard to claim 1” (Appeal Br. 29). The arguments
advanced by Appellant with regard to claim 1 are unpersuasive of error in
the Examiner’s rejection of claim 9 for the reasons discussed above with
regard to claim 1.
In addition, Appellant merely repeats the limitations of claim 9 and
argues that none of the applied references teaches or suggests the features of
claim 9 (Appeal Br. 29-30), without pointing out the deficiency in the
Examiner’s findings and position. Appellant’s argument thus fails to
demonstrate error in the Examiner’s rejection of claim 9 as unpatentable
over Stroh in view of Sommerer and Greubel, and further in view of
Pazdirek. The rejection is sustained.

CONCLUSION
All of the Examiner’s rejections are sustained. The decision of the
Examiner to reject claims 1-12 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

vsh

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TAROLLI, SUNDHEIM, COVELL & TUMMINO L.L.P.
1300 EAST NINTH STREET, SUITE 1700
CLEVEVLAND, OH 44114