Ex Parte Webb et al

Board of Patent Appeals and Interferences

Mar 26, 2009

10784459 (B.P.A.I. Mar. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALAN CHARLES WEBB, PETER HOLLAND,
PETER STANDRING, DOUGLAS H. SMITH, and
LARRY L. BAHNEY
____________________

Appeal 2008-3318
Application 10/784,459
Technology Center 3600
____________________

Decided:1 March 26, 2009
____________________

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before: WILLIAM F. PATE, III, JENNIFER D. BAHR and
JOHN C. KERINS, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2008-3318
Application 10/784,459

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
61-76, 80 and 81. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a spindle that is fixedly assembled to a
surrounding component by deforming a portion of the spindle to engage and
retain the component.
Claim 61 is illustrative of the claimed subject matter and is
reproduced below:
61. In combination:
a spindle (14) having a component (26) secured thereto by a
formed end (20) that is formed by deformation of a deformable
annular end portion (71) on the spindle;
the component having a cylindrical opening (27) therethrough
and an outer face (32);
the spindle (14) having a spindle rotational axis (X FIG. 1), a
spindle outer surface (15) and a deformable annular end portion
(71) with an outer end (78);
the spindle (14) having an inner beveled surface (68) that is
inclined inwardly toward the spindle rotational axis (X FIG. 1)
from the deformable annular end portion (71);
the deformable annular end portion (71) having a cylindrical
outer surface (71a) and a tapered inner surface (72, 74) that
tapers outwardly away from the spindle rotational axis (X)
toward the outer end (78) so that the deformable annular end
portion (71) decreases in radial thickness (between outer
surface 71 a and inner surface 72, 74) along its length in a
direction toward its outer end (78);
the deformable annular end portion (71) being received through
the opening (27) in the component (26) and being deformed
generally radially outwardly and axially into a formed end (20)
that holds the component (26) on the spindle (14), the
deformation being such that the cylindrical outer surface (71a)
of the deformable annular end portion (71) becomes an inner
face (58) of the formed end (20) that extends outwardly of the
spindle rotational axis (X) in engagement with the outer face
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(32) of the component (26), the deformation further being such
that the formed end (20) has a peripheral outside comer (64)
located closely adjacent the outer face (32) of the component
(26);
the deformable annular end portion (71) being deformed and
worked so that both the outer end (78) and at least a portion of
the tapered inner surface (72, 74) of the deformable annular end
portion (71) are formed into a single curved outside surface (60)
on the formed end (20) that faces outwardly generally axially of
the spindle axis and curves smoothly along its length toward the
spindle rotational axis (X) from the peripheral outside comer
(64) of the formed end (20) that is located closely adjacent the
outer face (32) of the component (26);
the curved outside surface (60) on the formed end (20) being
continuously curved from the peripheral outside comer (64) of
the formed end (20) adjacent the outer face (32) of the
component (26) so that a point traveling along the curved
outside surface (60) moves both axially outwardly and radially
inwardly of the spindle axis and the thickness of the formed end
(20) in a direction axially of the spindle rotational axis
gradually increases along its length generally radially of the
spindle axis in a direction from the peripheral outside comer
(64) of the formed end (20) toward the spindle rotational axis
(X).

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Hofmann 5,490,732 Feb. 13, 1996

There are 21 claims pending in the application, namely, claims 61-81.
Claims 77-79 are allowed. Claims 1-60 have been cancelled. Claims 61-76,
80 and 81 have been rejected under 35 U.S.C. §112, first and second
paragraphs. The rejection under 35 U.S.C. §112, first paragraph has been
withdrawn by the Examiner and is not before us for consideration. Answer:
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3. Claims 61-76, 80 and 81 are additionally rejected under 35 U.S.C. §102(e)
as being anticipated by Hofmann.

ISSUES
1. Have Appellants established that the Examiner has erred in rejecting
claims 61-76, 80 and 81 under 35 U.S.C. §112, second paragraph?
2. Have Appellants established that the Examiner has erred in rejecting
claims 61-76, 80 and 81 under 35 U.S.C. §102(e) as being anticipated by
Hofmann?

FINDINGS OF FACT
1. As required by claim 80, the Figure 22 embodiment of Hofmann discloses
a spindle 1 having a component 2-5 secured thereto by a formed end
(“bead”) 9 (Fig. 3) that is formed by deformation of a deformable annular
end portion (col. 2, ll. 63-67) on the spindle 1; the component 2-5 having
a cylindrical opening therethrough (Fig. 2) and an outer face (surface of 3
above arrow r in Fig. 3); the spindle 1 having a spindle rotational axis
(broken line Fig. 2), a spindle outer surface (surface of 1 against radially
inner surface of 2, 3) and a deformable annular end portion (shown
deformed at 93; col. 2, ll. 63-67) with an outer end (surface to the left and
below reference character α in Fig. 3); the spindle 1 having an inner

2 Figure 3 is a close up of the Figure 1 embodiment. Since a close-up of the
Figure 2 embodiment is not provided in Hofmann, reference is made to
features of the enlarged Figure 3 view of the Figure 1 embodiment to refer to
elements present in both the Figure 1 and the Figure 2 embodiments.
3 It is noted that reference numeral 10, mentioned in the Specification of
Hofmann as referring to the undeformed hub barrel, is not depicted in the
drawings.
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beveled surface 9’’ (Fig. 2) that is inclined inwardly toward the spindle
rotational axis (broken line Fig. 2) from the deformable annular end
portion (forming 9); the deformable annular end portion (forming 9)
having a cylindrical outer surface (surface of 1 adjacent to the edge of 3
referenced by arrow r in Fig. 3) and a tapered inner surface (surface of 9
on each side of arrow R; col. 4, l. 22) that intersects (the corner above 9’
in Fig. 3 as replaced by the shoulder 9’’ of the Fig. 2 embodiment) the
inner beveled surface 9’’; the tapered inner surface (proximate R)
tapering outwardly (by α and β) away from the spindle rotational axis
(broken line Fig. 2) from its intersection with the inner beveled surface
9’’ in a direction toward the outer end (surface to the left and below
reference character α in Fig. 3) so that the deformable annular end
portion (forming 9) decreases in radial thickness (col. 3, ll. 20-25) along
its length in a direction (outward in Fig. 2; upward in Fig. 3) toward its
outer end (surface to the left and below reference character α in Fig. 3);
the deformable annular end portion (forming 9) being received through
the opening (within 2, 3) in the component 2-5 and being deformed
generally radially outwardly (outward in Fig. 2; upward in Fig. 3) and
axially (leftward along broken line in Fig. 2) into a formed end 9 that
holds (col. 1, ll. 65-67) the component 2-5 on the spindle 1, the
deformation being such that the cylindrical outer surface (surface of 1
adjacent to the edge of 3 referenced by arrow r in Fig. 3) of the
deformable annular end portion (forming 9) becomes an inner face
(surface of 1 adjacent to the edge of 3 referenced by arrow r in Fig. 3) of
the formed end 9 that extends outwardly (outward in Fig. 2; upward in
Fig. 3) of the spindle rotational axis (broken line Fig. 2) in engagement
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with the outer face (surface of 3 above arrow r in Fig. 3) of the
component 2-5; and the tapered inner surface (proximate R) of the
deformable annular end portion (forming 9) being outwardly (outward in
Fig. 2; upward in Fig. 3) deformed along its length (forming R; col. 4, ll.
16-18) from adjacent its intersection (corner above 9’) with the inner
beveled surface 9’’ to its outer end (surface to the left and below
reference character α in Fig. 3).
2. As required by claim 81, the Figure 2 embodiment of Hofmann discloses
the inner face (surface of 1 adjacent to the edge of 3 referenced by arrow
r in Fig. 3) of the formed end 9 merges with the spindle outer surface
(surface of 1 against radially inner surface of 2, 3) along an inside comer
(at r), and the intersection (corner above 9’) between an4 outer surface
(surface having curve R) of the formed end 9 and said inner beveled
surface 9’’ is located generally diagonally opposite (e.g. on opposite side
of the portion of 1 defining β in the direction of diagonal cross hatching
of 1 shown in Fig. 3) from said inside comer (at r).
3. Hofmann fails to disclose “a single curved outside surface (60) on the
formed end (20) that faces outwardly generally axially of the spindle axis
and curves smoothly along its length toward the spindle rotational axis
(X) from the peripheral outside comer (64) of the formed end (20) that is
located closely adjacent the outer face (32) of the component (26); the
curved outside surface (60) on the formed end (20) being continuously
curved from the peripheral outside comer (64) of the formed end (20)

4 The phrase “the outer surface (60, 62, 66) of the formed end (20)” is
interpreted to read as “an outer surface (60, 62, 66) of the formed end (20)”
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adjacent the outer face (32) of the component (26) so that a point
traveling along the curved outside surface (60) moves both axially
outwardly and radially inwardly of the spindle axis,” as recited in claims
61 and 70.
4. The ordinary meaning of the term “corner” is “the position at which two
lines, surfaces, or edges meet and form an angle.” THE AMERICAN
HERITAGE® DICTIONARY OF THE ENGLISH LANGUAGE: FOURTH EDITION
(2000).

PRINCIPLES OF LAW
With regard to the requirement, set forth in the second paragraph of
35 U.S.C. § 112, for “particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention,” it has been
stated that the “essence of that requirement is that the language of the claims
must make it clear what subject matter they encompass.” In re Hammack,
427 F.2d 1378, 1382 (CCPA 1970). This has been frequently stated in a
shortened form as a requirement that the claims set forth the “metes and
bounds” of their coverage. See, e.g., In re Venezia, 530 F.2d 956, 958
(CCPA 1976); In re Goffe, 526 F.2d 1393, 1397 (CCPA 1975); In re
Watson, 517 F.2d 465, 477 (CCPA 1975); In re Knowlton, 481 F.2d 1357,
1366, (CCPA 1973). This requirement has usually been viewed from the
perspective of a potential infringer, “so that they may more readily and
accurately determine the boundaries of protection involved and evaluate the
possibility of infringement and dominance.” Hammack, 427 F.2d at 1382.

since antecedent basis has not been established for that surface. Appropriate
correction should be required in any further prosecution.
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A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir.1987).
When the reference does not disclose that the drawings are to scale
and is silent as to dimensions, arguments based on measurement of the
drawing features are of little value. See Hockerson-Halberstadt, Inc. v. Avia
Group Int'l, 222 F.3d 951, 956 (Fed. Cir. 2000) (The disclosure gave no
indication that the drawings were drawn to scale. "[I]t 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.").

ANALYSIS
The rejection of claims 61-76, 80 and 81 under 35 U.S.C. §112, second
paragraph is affirmed.
Regarding the rejection of claims 61-76, 80 and 81 under 35 U.S.C.
§112, second paragraph, Appellants argue that the Examiner erred by
determining that the parenthetical language in the clause, “decreases in
radial thickness (between outer surface 71a and inner surface 72, 74) along
its length” (claim 61) renders the claim unclear. Brief: 10. This argument is
persuasive. While parenthetical language may give rise to a rejection for
lack of clarity, in this instance the phrase is sufficiently clear in that it
merely provides an explicit definition, i.e., between outer and inner, of what
the term radial is already understood to mean.
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Although the Examiner erred by determining that the parenthetical
language renders claims 61-76, 80 and 81 indefinite, the rejection under 35
U.S.C. §112, second paragraph, is sustained, because the Appellants have
not established that the Examiner erred in concluding that the language of
the claims 61-76, 80 and 81 does not make clear the metes and bounds of
their coverage.
It is not clear from claims 61-76, 80 and 81 whether the claims would
be directly infringed only upon making, using, offering for sale, or selling
the hub assembly in the deformed state, e.g., as depicted in Figure 7C, or if
they would be directly infringed prior to the deformation by making, using,
offering for sale, or selling the hub assembly in the deformable state, e.g., as
depicted in Figure 7A. Claim 61 recites the combination as including a
“deformable annular end portion,” which implies the claims cover the hub
assembly in the deformable state, that is, prior to deformation, while at the
same time requiring a “formed end,” which implies the claims cover the hub
assembly in the formed state, that is, after the deformation. Additionally,
some limitations such as, “the deformable annular end portion (71) being
received through the opening (27) in the component (26) and being
deformed generally radially outwardly and axially into a formed end (20)
that holds the component (26) on the spindle (14),” seem to indicate that the
claims are only infringed upon performing the step of deforming, e.g., the
step depicted in Figures 7B to 7C. Because of this uncertainty the Examiner
reasonably concluded that a potential infringer would be unable to
accurately determine the metes and bounds of protection encompassed by
claims.
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Appellants argue that, “[i]t is plain that the claims are directed to a
formed end.” Brief: 11. If claim 61 is directed to the assembly having a
formed end, it is unclear how, in that claim, “the spindle (14) [has] an inner
beveled surface (68) that is inclined inwardly toward the spindle rotational
axis (X FIG. 1) from the deformable annular end portion (71)”, because the
deformable annular end portion 71 does not exist when the assembly is in
the formed state (See Fig. 1 and 7C). Additionally, if the claims are directed
to the assembly having a formed end, it is unclear how “the deformable
annular end portion (71) [has] a cylindrical outer surface (71a) and a tapered
inner surface (72, 74) that tapers outwardly away from the spindle rotational
axis (X) toward the outer end (78) so that the deformable annular end
portion (71) decreases in radial thickness (between outer surface 71a and
inner surface 72, 74) along its length in a direction toward its outer end (78)”
because neither the deformable annular end portion 71 nor the outer end 78
thereof, which becomes curved surface 68, exists in the formed state (See
Figs. 1, 7C and 3).
Appellants’ argument regarding similar limitations in issued claims
(Brief:11-12; Re. Brief: 3-4) is not relevant to the particular issues presented
in the claims under review in this application. We do not object to the notion
that characteristics of an original or preform state may be important in
contributing to the final structure of an apparatus, nor do we conclude that
such characteristics are, per se, incapable of being used to clearly define the
structure of a claimed final apparatus (Re. Brief: 4). When original or
preform characteristics are claimed, however, they should be recited as just
that, characteristics of an original or preformed state of the claimed
apparatus and, not, as is done here, elements of the claimed final apparatus
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for which protection is sought. Since the Examiner reasonably concluded
that claim limitations requiring the final apparatus to exist in both the
formed and the deformable state introduce ambiguity into the claims which
render it unclear when the claims would be infringed, the rejection under 35
U.S.C. §112, second paragraph is sustained.
Although we have affirmed the rejection of claims 61-76, 80 and 81
under 35 U.S.C. §112, second paragraph, for the sake of completeness, the
prior art rejections are addressed below.

The rejection of claims 61-76 under 35 U.S.C. §102(e) as being anticipated
by Hofmann is reversed.
Claim 61 recites, “the curved outside surface (60) on the formed end
(20) being continuously curved from the peripheral outside comer (64) of the
formed end (20) adjacent the outer face (32) of the component (26) so that a
point traveling along the curved outside surface (60) moves both axially
outwardly5 and radially inwardly of the spindle axis.” The Appellants argue
that the only corner of Hofmann that could reasonably construed as the
peripheral outside corner is the corner of the hub 1 which directly abuts
bearing ring 3 at a point directly above the corner indicated by arrow r in
Figure 3 –a sharp corner. The Appellants acknowledge that the sharp corner
directly below and to the left of reference character α viewed in Figure 3,

5 It is noted that the term “axially outwardly [of the spindle axis]” , as
defined in claim 61 is the direction which the curved outside surface faces
(Claims Appendix: 19, ll. 5-6) , i.e., to the right in Figure 3, as distinguished
from the “outboard” direction of the spindle which is defined in the
specification as to the right in Figure 1—which would correspond to left in
Figure 3.
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could reasonably be read as a peripheral outside corner, but disagree that this
corner could reasonably be read as “closely adjacent” the outer face of the
component. Brief 13-14; Re. Brief: 5. The Examiner opines that the corner
where the straight portion of bead 9 meets the curved portion, just below the
line associated with reference numeral 9 in Figure 3, may be read as the
peripheral outside corner. Answer: 5-6. Regardless of which corner is
adopted as the “peripheral outside comer,” Hofmann does not disclose each
and every element of the claim.
If, as Appellants suggest, the corner directly abutting the bearing ring
is read as the peripheral outside corner, Hofmann would not disclose the
continuous curve required by the limitation quoted above. A point traveling
radially inwardly from that corner would travel in a straight line (downward
as viewed in Figure 3) as opposed to a continuous curve and would not
travel axially at all. A point traveling along the continuously curved surface
(up and to the right as viewed in Figure 3 from that corner to corner directly
below and to the left of reference character α moves axially outwardly and
radially outwardly, not inwardly, until the continuous curve ends at that
sharp corner near reference character α. If the sharp corner near reference
character α is read as the peripheral outside corner, a point traveling along
the continuously curved surface (down and to the left as viewed in Figure 3)
from that corner to the corner directly abutting the bearing ring moves
axially inwardly, not outwardly until the continuous curve ends at that sharp
corner directly abutting the bearing ring. A point traveling radially inwardly
and axially outward from the sharp corner near reference character α (down
and to the right as viewed in Figure 3) moves along a straight surface (see
Answer: 5), not a continuous curve.
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The point where the straight surface defining an angle from vertical
measured by α meets the curved surface measured by radius R can not
reasonably be construed as a “corner” as the Examiner suggests. The smooth
point of transition where a line meets a curve is a point where the line is
essentially tangent to that curve. There is no angle and infinite radius at such
a transition and therefore it cannot reasonably be construed as a “corner”
(Fact 5). The Examiner further asserts that, “[a] careful inspection [of Figure
3] of Hofmann will show that for a short distance the curved outside surface
of the formed end starts its curve while it is sill moving [axially] outwardly.”
Answer: 5-6. 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. See, e.g.,
Hockerson-Halberstadt, 222 F.3d at 956. To assert that there is some point
above the curve having radius R that could reasonably be construed as a
“peripheral outside corner” from which a point moves radially outward and
axially inwardly before turning into the straight surface, where it is not clear
from the figures, nor mentioned in the specification, amounts to speculation
and conjecture and cannot form the basis of a rejection under 35 U.S.C.
§102(e). Since Hofmann fails to disclose each and every element of claims
61 and 70 (Fact 3) the rejection of claims 61 and 70, and, additionally, of
dependent claims 62-69 and 71-76, under 35 U.S.C. §102(e) as being
anticipated by Hofmann is reversed.

The rejection of claims 80 and 81 under 35 U.S.C. §102(e) as being
anticipated by Hofmann is affirmed.
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The features relating to the curved outside surface, discussed above,
are not present in claims 80-81. Hofmann discloses each and every feature of
claims 80 and 81 (Facts 1 and 2, respectively). The limitation requiring, “the
tapered inner surface…outwardly deformed along its length” does not
necessarily require the surface to be outwardly deformed along its entire
length as Appellants suggest. Brief: 17. The Examiner reasonably construed
the phrase to include a surface that is outwardly deformed at at least some
location along its length. Appellants note the benefits of their design as
compared to Hofmann (Brief: 17), but since Appellants do not relate these
benefits to any particular elements of claims 80 and 81, this does not
advance Appellants’ argument that the Examiner erred by rejecting claims
80 and 81 as being anticipated by Hofmann. Accordingly, the rejection of
claims 80 and 81 under 35 U.S.C. §102(e) as being anticipated by Hofmann
is affirmed.

CONCLUSION OF LAW
On the record before us, Appellants have not established that the
Examiner erred in rejecting claims 61-76, 80 and 81 under 35 U.S.C. §112,
second paragraph, nor have Appellants established that the Examiner erred
by rejecting claims 80 and 81 under 35 U.S.C. §102(e) as being anticipated
by Hofmann. Appellants have established that the Examiner erred by
rejecting claims 61-76 under 35 U.S.C. §102(e) as being anticipated by
Hofmann.

DECISION
For the above reasons, the Examiner's rejection of claims 61-76, 80
and 81 under 35 U.S.C. §112, second paragraph is affirmed. The Examiner’s
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rejection of claims 80 and 81 under 35 U.S.C. §102(e) as being anticipated
by Hofmann is affirmed. The Examiner’s rejection of claims 61-76 under
35 U.S.C. §102(e) as being anticipated by Hofmann is reversed.
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-IN-PART

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