Ex Parte Wilcutt et al

Patent Trial and Appeal Board

Jan 27, 2016

12630357 (P.T.A.B. Jan. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/630,357 12/03/2009
59582 7590 01/28/2016
DICKINSON WRIGHT PLLC
2600 WEST BIG BEA VER ROAD
SUITE 300
TROY, MI 48084-3312
FIRST NAMED INVENTOR
Michael Wilcutt
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CH-41566 (710240-4827) 9594
EXAMINER
FERGUSON, MICHAEL P
ART UNIT PAPER NUMBER
3679
MAILDATE DELIVERY MODE
01/28/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL WILCUTT, GEORGE PHILLIPS, ANTHONY DAKE,
RICKIE WILLIAMS, CHRIS SHORES, and KENNON BRET SWAYER
Appeal2014-000983
Application 12/630,357 1
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to
replacement ball joint assemblies. The Examiner rejected the claims as
obvious under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 6(b ). We reverse and enter a NEW GROUND OF REJECTION pursuant
to our authority under 3 7 C.F .R. § 41. 50(b ).
1 According to Appellants, the real party in interest is Federal-Mogul
Corporation. App. Br. 3.
Appeal2014-000983
Application 12/630,357
STATEivIENT OF THE CASE
Background
According to Appellants, "[the] invention relates to a press-fit type
ball joint [of] the type used in automobile and light truck applications, and
more particularly toward a replacement ball joint assembly adapted to be
pressed into a previously used and possibly distorted receiving hole in a
suspension component." Spec. i-f 2.
The Claims
Claims 1-14 are on appeal. Claim 1 is illustrative and recites:
1. A replacement ball joint assembly adapted to be pressed
into a previously used and possibly distorted receiving hole in a
vehicular suspension component, said ball joint assembly
compnsmg:
a socket housing defining a central axis, said socket
housing including an exterior side wall having a lead-in end and
an axially spaced exterior stop flange;
a moveabie member having a baH head portion pivotaHy
captured in said socket housing and a mounting shaft extending
generally axially therefrom;
said exterior side wall of said housing further including a
plurality of generally annular knurls each having a respective
crest portion establishing an outer diameter, said plurality of
knurls being axially separated one from another by intervening
relief grooves, each of said knurls disposed concentrically about
said central axis;
plurality of said knurls adjacent said lead-in end having a
smaller outer diameter than the last said knurl adjacent said stop
flange.
App. Br. 13.
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Appeal2014-000983
Application 12/630,357
The Rejections
1. The Examiner rejects claims 1-13 2 as obvious under 35 U.S.C.
§ 103(a) over Appellants' admitted prior art ("AAPA") in view of
Lee 3 and Abe. 4
2. The Examiner rejects claim 14 as obvious under 35 U.S.C.
§ 103(a) over AAPA in view of Lee, Abe, and Pazdirek. 5
DISCUSSION
With respect to each of independent claims 1 and 8, the Examiner
relies on Lee to disclose a plurality of annular knurls as claimed and
concludes:
it would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify the assembly
disclosed by Applicant's admitted prior art wherein the socket
housing comprises annular knurls as taught by Lee in order to
define relief grooves which resist axial removal of the socket
housing, and more securely axially retain the housing within a
hole in a suspension component.
Final Action 4.
With respect to the proposed combination of AAP A and Lee,
Appellants argue, inter alia, the record lacks support for the reason or
motivation provided by the Examiner for making the proposed combination.
See App. Br. 9-10. We agree. "[R]ejections on obviousness grounds cannot
2 Although the Final Action lists claim 14 under this rejection, claim 14 is
only discussed in the context of the rejection in view of AP A, Lee, Abe, and
Pazdirek. See Final Action 2-11.
3 Lee, US 7 ,028,699 B2, iss. Apr. 18, 2006.
4 Abe, JP 2004286161, pub. Oct. 14, 2004.
5 Pazdirek et al., US 6,505,989 Bl, iss. Jan. 14, 2003.
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Appeal2014-000983
Application 12/630,357
be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
We agree with Appellants that Lee is silent regarding the functionality of the
knurls relied upon by the Examiner. Thus, we find that Lee itself does not
provide any support for the reasons to combine AAPA and Lee. Further,
though the Examiner states that the rationale to combine may be found in the
knowledge generally available to one of ordinary skill in the art, established
scientific principles, or legal precedent, the Examiner provides no support
for the rationale provided. Finally, the record before us does not support the
Examiner's conclusion that the use of Lee's knurls in the AAP A device
would provide a more secure fit for the housing over the use of the knurls
already provided in the AAPA device. For these reasons, we determine that
the Examiner failed to establish a prima facie showing of obviousness with
respect to either of the independent claims. Accordingly, we do not sustain
any of the rejections before us.
NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to our
authority under 3 7 C.F .R. § 41. 50(b ).
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over AAP A in view of Abe. AAP A discloses a replacement ball joint
assembly, socket housing, and movable member as claimed, as described by
the Examiner. See Final Action 2-3. AAP A discloses a plurality of
longitudinal knurls and does not disclose annular knurls or the knurls having
a smaller diameter on the lead-in end claimed. However, we find that the
inclusion of annular knurls as claimed would have been obvious to one of
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Appeal2014-000983
Application 12/630,357
ordinary skill in the art in light of Abe's disclosure. Specifically, Abe
discloses the use of a plurality of annular knurls (setting protrusions 3) on
the base of a ball joint with decreased diameter at the lead-in end designed to
"raise the resistance performance against coming off the ball joint by
improving the setting strength of the ball joint." Abe, Abstract. Thus, one
of ordinary skill in the art would have been motivated to include annular
knurls as claimed in the AAP A device in order to improve the setting
strength of the device in the receiving hole in a vehicular suspension
component.
In rejecting claim 1, we note that we are primarily a reviewing body,
rather than a place of initial examination. We, therefore, leave it to the
Examiner to determine whether the remaining claims in the application
should be rejected on similar grounds to those set forth herein or in
combination with additional prior art. The fact that we do not enter new
grounds of rejection for claims 2-14 should not be construed to mean that
we consider those claims to be patentable over the prior art of record.
CONCLUSION
For the reasons indicated above, we reverse the rejection of claims 1-
14.
Pursuant to our authority under 3 7 C.F .R. § 41.50(b ), we enter a new
ground of rejection, rejecting claim 1 under 35 U.S.C. § 103(a) as
unpatentable over AAP A in view of Abe.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
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Appeal2014-000983
Application 12/630,357
Rather, WITHil~ TWO ivIONTHS FROivI THE DATE OF THE
DECISION, Appellants must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the newly rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record ....
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).
REVERSED; 37 C.F.R. § 41.50(b)
msc
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