Ex Parte Wagner et alDownload PDFPatent Trial and Appeal BoardDec 21, 201613239592 (P.T.A.B. Dec. 21, 2016) Copy Citation 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. 13/239,592 09/22/2011 David Anthony Wagner 83205041 7114 28395 7590 12/23/2016 RROOKS KTTSHMAN P C /FfTET EXAMINER 1000 TOWN CENTER BLACK, MELISSA ANN 22ND FLOOR SOUTHFIELD, MI 48075-1238 ART UNIT PAPER NUMBER 3612 NOTIFICATION DATE DELIVERY MODE 12/23/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing @brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID ANTHONY WAGNER, MICHAEL M. AZZOUZ, ARI GARO CALISKAN, SUNIL K. KASARAGOD, XIAOMING CHEN, JOHN EDWARD HUBER, YUKSEL GUR, PARAMESWARARAO POTHURAJU, JEFFERY WALLACE, JOHN MARTIN KNITTEL, ERIC WILLIAM BARRETT, SANJAY MEHTA, and MARK WLOTKOWSKI Appeal 2015-001686 Application 13/239,592 Technology Center 3600 Before JOHN C. KERINS, WILLIAM A. CAPP, and MICHAEL L. WOODS, 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 final rejection of claims 1, 3—10, and 21—31 as unpatentable under 35 U.S.C. § 103(a) over Kiehl (US 7,127,816 B2, iss. Oct. 31, 2006), Kokubo (US 2010/0289300 Al, pub. Nov. 18, 2010), and Stol (US 2009/0188206 Al, pub. July 30, 2009). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2015-001686 Application 13/239,592 THE INVENTION Appellants’ invention relates to vehicle support frames. Spec. 12. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method of manufacturing a vehicle cross-member assembly, comprising: journaling an interconnecting member composed of a first material onto a first rail composed of a second material; welding the interconnecting member to a second rail composed of a different material than the first rail; and applying an adhesive between the interconnecting member and the first rail. OPINION Unpatentability of Claims 1 and 3—6 Claim 1 The Examiner finds that Kiehl discloses all of the elements of claim 1 except for: (1) the interconnecting member and first rail being composed of different materials; and (2) the use of adhesive. Final Action 3—A. The Examiner relies on Kokubo as disclosing the use of different materials for each and any of a first hollow member, a second hollow member, and a sleeve. Id. at 3 (citing Kokubo Tflf 150-152). The Examiner relies on Stol as disclosing the use of adhesive. Id. at 4. The Examiner concludes that it would have been obvious to a person of ordinary skill in the art at the time of the invention to select any of three different materials, as taught by Kokubo, for the rails and interconnecting member of Kiehl. Id. at 3. According to the Examiner, a person of ordinary skill in the art would have selected any suitable material to join members in a structurally sound manner. Id. at 4. The Examiner further concludes that it would have been obvious to a person of ordinary skill in the art at the time the invention was 2 Appeal 2015-001686 Application 13/239,592 made to use adhesive as taught by Stol in the invention of Kiehl. Id. According to the Examiner, a person of ordinary skill in the art would have done this to better adhere the two parts. Id. (citing Stol 148). Appellants traverse the Examiner’s rejection by first arguing that the rejection does not “clearly indicate” which references teach a cross-member and rail having differing composition and a sleeve member and rail having the same material composition. Appeal Br. 5. The Examiner responds that Kiehl discloses that cross-member 12 is aluminum and that side rail 14 is steel. Ans. 8 (citing Kiehl col. 3,11. 35—37, 49—51). The Examiner concedes that reinforcing collar 24 is of the same material (e.g., aluminum) as cross member 12. Id. However, the Examiner relies on Kokubo as teaching that the various components can be made of different materials. Id. (citing Kokubo ^Hf 150—153). The Examiner reiterates the point made in the final rejection that it would have been obvious to select any suitable material for joining the members and making them structurally sound. Id. The Examiner further states that selecting a known material based on its suitability for an intended use is considered to be within the ambit of ordinary skill. Id. at 9 (citing In reLeshin, 277 F.2d 197 (CCPA 1954)). An Examiner is required to “adequately explain” the shortcomings of an application “so that the applicant is properly notified and able to respond.” Hyatt v. Dudas, 492 F.3d 1365, 1370 (Fed. Cir. 2007); see also In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992), In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, by “notify[ing] the applicant... [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as 3 Appeal 2015-001686 Application 13/239,592 may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. That section “is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). After reviewing the Examiner’s Final Action and Answer in light of the foregoing standard, the Examiner clearly informed Appellants that the limitation regarding a cross-member and rail having the same material composition is met by Kiehl as modified by Kokubo and, therefore, we are unable to agree with Appellants that the rejection does not “clearly indicate” which references teach a cross-member and rail having differing composition and a sleeve member and rail having the same material composition. Appeal Br. 5. We also agree with the Examiner that this case is appropriate for application of the principal set out in the Leshin case: Mere selection of known [materials] ... on the basis of suitability for the intended use, would be entirely obvious', and in view of 35 U.S.C. 103 it is a wonder that the point is even mentioned. Leshin, 277 F.2d at 199 (emphasis added). In light of the teachings in both Kiehl and Kokubo regarding the use of both steel and aluminum in analogous structures to the claimed invention, we find Appellants’ arguments asserting patentability over the mere selection of steel and aluminum for different components of the invention unpersuasive. Id. Next, Appellants argue that Kiehl teaches away from the sleeve member and rail being weld compatible with the sleeve and cross-member having different material compositions. Id. To the contrary, however, Kiehl explicitly discloses that: 4 Appeal 2015-001686 Application 13/239,592 Magnetic pulse welding is a well-known process that can be used to permanently join two metallic components, such as a pair of metallic structural components for a vehicular body and frame assembly. Magnetic pulse welding is particularly advantageous because it can readily and permanently join components that are formed from different metallic materials. Kiehl, col. 1,11. 54—60 (emphasis added). The second portion of the [aluminum] reinforcing collar 24 can be secured to the [steel] side rail 14 using conventional welding techniques, such as by gas metal arc welding and the like. Id. col. 6,11. 32-35. The flange portion 20 of the side rail 14 can be permanently joined to the reduced region 15 of the cross member 12 using the same magnetic pulse welding technique described above. Id. col. 6,11. 61—65. In any event, a reference does not teach away if it merely discloses an alternative invention but does not “criticize, discredit, or otherwise discourage” investigation into the invention claimed. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants have not directed us to any language in Kiehl that criticizes, discredits, or otherwise discourages investigation into the claimed invention. Appellants raise a similar “teaching away” argument regarding Kokubo (Appeal Br. 6) that similarly lacks underlying factual basis in the record. Fulton, 391 F.3d at 1201. In view of the foregoing discussion, we determine 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 claim 1. 5 Appeal 2015-001686 Application 13/239,592 Claim 3 Claim 3 depends from claim 1 and adds the limitation: “further comprising press-fitting the interconnecting member and the first rail together.” Claims App. The Examiner finds that Kiehl teaches that it is known to crimp a first pipe to an interconnecting portion of a second pipe. Final Action 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 crimp the flange portion of an interconnection member to the first pipe. Id. Appellants challenge the Examiner’s findings and conclusion, contending that it is improper to assert that it would have been obvious to modify a combination of references merely based upon the Examiner’s assertion that the interconnection member is capable of being crimped. Appeal Br. at 6—7.1 In response, the Examiner explains that one with ordinary skill would have been capable of crimping the flange of the interconnecting member 24, since Kiehl in fact teaches in the invention that the flange of the rail 14 is crimped to rail 12, one of ordinary skill would have been capable of connecting the rail 12 and the interconnecting member 24 in the same manner, for Kiehl is teaching that it is a known way of connecting a flange and rail, further Kiehl states "If desired, a reinforcing collar 24 may be secured to portions of the cross member 12 and the side rail 14, as also shown in FIGS. 4, 5, and 6. To accomplish this, the reinforcing collar 24 can include a first portion that extends about a portion of the cross-member 12 and a second portion that extends adjacent to the side rail 14 about the first aperture 18. The first and second portions of the reinforcing collar 24 can be secured to the cross-member 12 and the side rail 14 in any desired manner or manners. However, in 1 Appellants also raise another “teaching away” argument that lacks merit and factual foundation as previously discussed with respect to similar arguments advanced against the rejection of claim 1. See Fulton, 391 F.3d at 1201. 6 Appeal 2015-001686 Application 13/239,592 a preferred embodiment of the invention, both the cross member 12 and the reinforcing collar 24 are formed from a first metallic material (such as an aluminum alloy), while the side rail 14 is formed from a second metallic material (such as a steel alloy). In this instance, the first portion of the reinforcing collar 24 can be secured to the cross-member 12 by magnetic pulse welding techniques", therefore it would have been capable of being connected in the same manner that the rail 14 and 12 are connected in Figure 7. Ans. 9. We have reviewed Figures 4—7 of Kiehl. Figures 4—6 depict aluminum cross-member 12 passing through two apertures each disposed on respective opposite sides of steel side rail 14. Kiehl, Figs. 4—6, col. 5,1. 64 — col. 6,1. 3. The first aperture is surrounded by (steel) flange portion 20 and the second aperture is surrounded by (aluminum) reinforcing collar 24. Id. col. 6,11. 5—10. The reinforcing collar can be secured to cross-member 12 and side rail 14 in any desired manner or manners. Id. col. 6,11. 3—5. A first portion of reinforcing collar 24 is secured to cross-member 12 by magnetic pulse welding techniques. Id. col. 6,11. 10-12. A second portion of reinforcing collar 24 is secured to side rail 14 using conventional welding techniques. Id. col. 6,11. 32—35. Figure 7 of Kiehl depicts flange 20 overlying a portion of cross-member 12 and further depicts a reduced region 15 that is formed by, among other things, mechanical forming processes that a person of ordinary skill in the art would recognize as crimping. Id. Fig. 7, col. 6, 36—57. Essentially, the Examiner finds and concludes that a person of ordinary skill in the art would have found it obvious to crimp reinforcing collar 24 onto cross-member 12 on a first side of the side rail in a manner substantially similar to the crimping performed on flange 20 and cross-member 12 on a second side of the side rail. Looking 7 Appeal 2015-001686 Application 13/239,592 at Figures 4—7, it appears that the general dimensions and geometric relationship of the flange and cross-member are similar, if not substantially identical, to the corresponding relationships between the reinforcing collar and cross-member. Id. Figs. 4—7. Given the evidence before us, we reject Appellants’ argument that it is “improper” for the Examiner to rely on her own expertise to reach a conclusion that a person of ordinary skill in the art would have found it obvious to crimp the reinforcing collar/cross-member joint in a manner similar to the flange/cross-member joint on the opposite side of the side rail. 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. When a prima facie case of obviousness is made, the burden then shifts to the applicant to come forward with evidence and/or argument supporting patentability. In re Giannelli, 739 F.3d 1375, 1379 (Fed. Cir. 2014). Here, Appellants present neither evidence nor persuasive technical reasoning that tends to controvert the Examiner’s prima facie case of obviousness. Accordingly, we sustain the Examiner’s unpatentability rejection of claim 3. Claim 4 Claim 4 depends from claim 3 and adds the limitation: “wherein the press-fitting includes forming at least one set of crimps in the 8 Appeal 2015-001686 Application 13/239,592 interconnecting member and first rail. Claims App. Appellants argue that the Examiner fails to show a motivation to modify the prior art to crimp the components as claimed. Appeal Br. 7. We find this argument unpersuasive for essentially the same reasoning applied to the rejection of claim 3 above. Accordingly, we sustain the Examiner’s unpatentability rejection of claim 4. Claims 5 and 6 Appellants do not argue for the separate patentability of claims 5 and 6 apart from arguments presented with respect to claims 3 and 4 which we have previously considered and found unpersuasive and find equally unpersuasive here. We sustain the rejection of claims 5 and 6. Claim 7 Claim 7 is an independent claim that is substantially similar in scope to claim 1. Claims App. In traversing the rejection, Appellants rely solely on the same arguments that we considered and found unpersuasive with respect to claim 1 and find equally unpersuasive here. We sustain the rejection of claim 7. Claims 8—10 Claim 8 depends from claim 7 and adds the limitation: “further comprising at least one set of crimps commonly formed in the interconnecting member and first rail.” Claims App. Claims 9 and 10 depend from claims 8 and 9 respectively and are not separately argued. Id., Appeal Br. 8. In traversing the rejection, Appellants raise essentially the same arguments that we have previously found unpersuasive with respect to the rejections of claims 1, 3, and 7 above and find equally unpersuasive here. Appeal Br. 8. We sustain the rejection of claims 8—10. 9 Appeal 2015-001686 Application 13/239,592 Claim 21 Claim 21 is an independent claim that is substantially similar in scope to claim 4. Claims App. In traversing the rejection, Appellants rely solely on arguments that we previously considered and found unpersuasive with respect to claims 1,3, and 4 and find equally unpersuasive here. Appeal Br. 9. We sustain the rejection of claim 21. Claims 22, 23, 25, and 26 Appellants do not argue for the separate patentability of claims 22, 23, 25, and 26. Appeal Br. 9. We sustain the rejection of claims 22, 23, 25, and 26. See 37 C.F.R. §41.37(c)(l)(iv)(2012). Claim 24 Claim 24 depends from claim 21 and adds the following limitation: “wherein inserting the interlocked cross member and sleeve member into a hole in a sidewall of the rail includes positioning the crimp within the rail.” Claims App. Appellants argue that the Examiner’s rejection fails to provide a motivation for making the proposed combination. Appeal Br. 10. Appellants also argue that the Examiner’s rejection fails to mention the “crimp within the rail” limitation and, thus, fails to establish a prima facie case of obviousness. Id. The Examiner responds by directing our attention to Kiehl, Figure 7, which shows crimp 15 within flange 20 which is an integral part of rail 14. Ans. 12. We have reviewed Figure 7 of Kiehl. Appellants’cursory argument regarding the location of the crimp does not apprise us of error in the Examiner’s findings and conclusion. We sustain the rejection of claim 24. 10 Appeal 2015-001686 Application 13/239,592 Claims 27—30 Claim 27 is an independent claim that is substantially similar in scope to claim 4. Claims App. Claims 28—30 depend therefrom and are not separately argued. Appeal Br. 11. In traversing the rejection, Appellants rely solely on arguments that we previously considered and found unpersuasive with respect to claim 1 and find equally unpersuasive here. Id. 10—11. We sustain the rejection of claims 27—30. Claim 31 Claim 31 depends from claim 27 and adds the limitation: “wherein the rail has a hole in a sidewall and the interlocked cross member and sleeve member are welded into the hole such that the crimp is retained within the rail.” Claims App. In traversing the rejection, Appellants rely on the same cursory “crimp within the rail” argument that we previously considered and found unpersuasive with respect to claim 24 and find equally unpersuasive here. Appeal Br. 11. We sustain the rejection of claim 31. DECISION The decision of the Examiner to reject claims 1, 3—10, and 21—31 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)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation