Ex Parte Wilcutt et alDownload PDFPatent Trial and Appeal BoardJan 27, 201612630357 (P.T.A.B. Jan. 27, 2016) Copy Citation 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. 2 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. 3 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 4 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." 5 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 6 Copy with citationCopy as parenthetical citation