2020004942 (P.T.A.B. Apr. 29, 2021)

FORD MOTOR COMPANY

Patent Trials and Appeals BoardApr 29, 2021

2020004942 (P.T.A.B. Apr. 29, 2021)

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. 15/003,075 01/21/2016 Jose de Jesus COLIN ESPINOZA 83605370 3910 28395 7590 04/29/2021 BROOKS KUSHMAN P.C./FGTL 1000 TOWN CENTER 22ND FLOOR SOUTHFIELD, MI 48075-1238 EXAMINER WARD, THOMAS JOHN ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 04/29/2021 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 JOSE DE JESUS COLIN ESPINOZA, MICHAEL JAMES FREEMAN, JUERGEN WILHELM HOVER, GUIDO H. MUELLER, and MARIO ALBERTO RUBIO MONROY Appeal 2020-004942 Application 15/003,075 Technology Center 3700 ____________ Before CHARLES N. GREENHUT, MICHAEL J. FITZPATRICK, and JEREMY M. PLENZLER, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DECISION ON APPEAL Appellant, Ford Motor Company,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final decision rejecting claims 1–11, 14–17, and 21–25. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection. 1 “Appellant” refers to the applicant as defined in 37 C.F.R. § 1.42. Appellant identifies itself as the sole real party in interest. Appeal Br. 1. Appeal 2020-004942 Application 15/003,075 2 STATEMENT OF THE CASE The Specification Appellant’s “disclosure relates to forming a localized mating surface, for example, in a component to be laser welded.” Spec. ¶1. The Specification explains: Laser welding applications generally require tight mating conditions between the two substrates in order to achieve good quality. If any part of the mating components, outside of the welding area, varies dimensionally towards the other component, a gap may be created at the welding surface. This gap may adversely affect the quality of the weld by reducing the contact between the mating surfaces in the welding area. Id. ¶2. The Claims Claims 1–11, 14–17, and 21–25 are rejected. Final Act. 1. No other claims are pending. Id. Claims 1, 14, and 21 are independent. Appeal Br. Claims App. 1–4. Claims 21 and 23 are illustrative and reproduced below with emphasis added to related limitations in each claim. 21. An assembly comprising: first and second components; the first component includes a non-mating region and first and second discontinuous mating regions, each mating region offset from the non-mating region in a direction towards the second component to form a lateral surface transition region around the perimeter of each mating region and extending between the mating region and the non-mating region, the mating region having a welding surface contacting the second component, the lateral surface transition region and second component forming a first gap therebetween, the non-mating region and the second component forming a second gap therebetween, the first gap extending a shorter distance than the second gap; and Appeal 2020-004942 Application 15/003,075 3 a weld joining the first and second components and located within the welding surfaces. 23. The assembly of claim 21, wherein each mating region is offset from the non-mating region around an entire perimeter of the mating region by the lateral surface. Id. at 3 (emphasis added). The Examiner’s Rejections The following rejections are before us: 1. claims 21–25 under 35 U.S.C. § 102(a)(1) as anticipated by Bittendorfer2 (Final Act. 2); 2. claims 1–3 and 5–11 under 35 U.S.C. § 103 as unpatentable over Stol3 and Bittenrdorfer (id. at 6); 3. claims 1–4 under 35 U.S.C. § 103 as unpatentable over Lin4 and Bittendorfer (id. at 14); 4. claims 1–3, 9, and 10 under 35 U.S.C. § 103 as unpatentable over Briissow5 and Bittendorfer (id. at 18); and 5. claims 14–17 under 35 U.S.C. § 103 as unpatentable over Lin and Bittendorfer (id. at 23). DISCUSSION Prior Art Rejections The Examiner found that Bittendorfer anticipates claim 21. Final Act. 3 (citing Bittendorfer Figs. 13–14). Appellant argues that Bittendorfer fails to disclose “each mating region offset from the non-mating region in a direction towards the second component to form a lateral surface transition 2 US 2009/0280349 A1, published Nov. 12, 2009 (“Bittendorfer”). 3 US 7,115,324 B1, issued Oct. 3, 2006 (“Stol”). 4 US 2015/0144605 A1, published May 28, 2015 (“Lin”). 5 US 4,738,560, issued Apr. 19, 1988 (“Briissow”). Appeal 2020-004942 Application 15/003,075 4 region around the perimeter of each mating region,” as recited in claim 21. Appeal Br. 3 (emphasis added). In the Final Action, the Examiner did not make a coherent finding with respect to this limitation. There, the Examiner stated that Bittendorfer discloses “projections 6 and surface parts 36 are offset from each other (Fig. 13 and 14) around a perimeter of first part 2 [(i.e., the asserted first component)] and sleeve shaped parts 3 and 4 (second component[)].” Final Act. 3. The claim, however, recites “the perimeter of each mating region.” Thus, in the context of Bittendorfer Figure 13, the “perimeter” must refer to the perimeter of each asserted mating region (i.e., joint 16), not the perimeter of the entire first and second components as implied by the Examiner’s finding. However, the transition regions disclosed in Bittendorfer appear to straddle only two of four sides of each mating region. Bittendorfer Fig. 13. On this basis, Appellant argues that “[t]he Bittendorfer [transition] region does not extend around the perimeter of the mating region.” Appeal Br. 4. The Examiner responds: “The perimeter of the mating region is defined in Bittendorfer is [sic, as] the region anywhere around the joint 16 (Fig. 13).” Ans. 28. As we best can discern, the Examiner has construed “around the perimeter” to mean, effectively, “in the vicinity of the perimeter,” such that the claim would be satisfied by a transition region formed along any single portion of the perimeter of a mating region. In the Reply Brief, Appellant stresses the word “perimeter,” clearly advocating for a meaning that would require the transition region to fully surround or encircle the mating region. Reply Br. 1–2. We look to the Specification in construing the claim. See, e.g., Renishaw plc v. Marposs Societa per Azioni, 158 F.3d 1243, 1248 (Fed. Cir. 1998) (“[A] claim must be read in view of the specification of which it is a Appeal 2020-004942 Application 15/003,075 5 part.”). The Specification, describing the embodiment of Figure 4, states: “Pad 36 is located entirely within the first component 22 and therefore a gap 32 is formed around the entire perimeter of pad 36.” Spec. ¶22 (emphasis added). Twice more the Specification mentions perimeter, both times similarly stating “entire perimeter.” See id. ¶4, original claim 5. Thus, it is reasonably presumed that claim 21’s recitation of “perimeter” must carry a somewhat different meaning than had Appellant qualified it with the word “entire.” Moreover, claim 23 depends from claim 21 and recites in entirety: “The assembly of claim 21, wherein each mating region is offset from the non-mating region around an entire perimeter of the mating region by the lateral surface.” Claims App. 3 (emphasis added). Section 112(d) and the doctrine of claim differentiation are both relevant here. Section 112(d) states: A claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers. 35 U.S.C. § 112(d). And the doctrine of claim differentiation has been explained as follows: There is presumed to be a difference in meaning and scope when different words or phrases are used in separate claims. To the extent that the absence of such difference in meaning and scope would make a claim superfluous, the doctrine of claim differentiation states the presumption that the difference between claims is significant. Where some claims are broad and others narrow, the narrow claim limitations cannot be read into the broad whether to avoid invalidity or to escape infringement. United States v. Telectronics, Inc., 857 F.2d 778, 783–84 (Fed. Cir. 1988). “In the most specific sense, ‘claim differentiation’ refers to the presumption that an independent claim should not be construed as requiring a limitation Appeal 2020-004942 Application 15/003,075 6 added by a dependent claim.” Liebel-Flarsheim Company v. Medrad, Inc., 358 F.3d 898 (Fed. Cir. 2004). In view of § 112(d) and the doctrine of claim differentiation, we do not construe claim 21 to require a transition region around the entire perimeter of the mating region. However, that begs the question: Around how much of the perimeter does claim 21 require the transition region to extend? The answer to that question is unknown to us and likewise would be to a person of ordinary skill in the art reading the claim in view of the Specification. A claim is indefinite if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim contains words or phrases whose meaning is unclear. In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014) (per curiam); see also Ex parte McAward, No. 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). The indefinite scope of claim 21 precludes meaningful review of the Examiner’s prior art rejection. Consequently, we pro forma reverse the rejection. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). For the same reason, we reverse the prior art rejections of claims 1–4, 6–11, 14–17, 22, 24, and 25, each of which recites or incorporates by reference the indefinite limitation “around a perimeter of the mating region.” We also reverse the prior art rejections of claims 5 and 23, both of which recite “around an entire perimeter of the mating region.” Claims App. 1, 3. The rejections of these claims are reversed on the merits because such a feature is not disclosed or taught by Bittendorfer. Appeal 2020-004942 Application 15/003,075 7 New Ground of Rejection As discussed above, we reverse pro forma the prior art rejections of claims 1–4, 6–11, 14–17, 21, 22, 24, and 25. As also mentioned above, each of these claims recites or incorporates by reference “around a perimeter of the mating region.” For reasons already explained, that limitation is indefinite in light of claims 5 and 23 and the Specification. Accordingly, claims 1–4, 6–11, 14–17, 21, 22, 24, and 25 are rejected under 35 U.S.C. § 112(b). SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed New Ground 21–25 102(a)(1) Bittendorfer 21–25 1–3, 5–11 103 Stol, Bittenrdorfer 1–3, 5–11 1–4 103 Lin, Bittendorfer 1–4 1–3, 9, 10 103 Briissow, Bittendorfer 1–3, 9, 10 14–17 103 Lin, Bittendorfer 14–17 112(b) 1–4, 6–11, 14–17, 21, 22, 24, 25 Overall outcome 1–11, 14– 17, 21–25 1–4, 6–11, 14–17, 21, 22, 24, 25 Appeal 2020-004942 Application 15/003,075 8 TIME PERIOD FOR RESPONSE Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, 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 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 proceeding 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. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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). REVERSED; 37 C.F.R. § 41.50(b)