11090861 (B.P.A.I. Feb. 7, 2012)

Ex Parte Brissette

Board of Patent Appeals and InterferencesFeb 7, 2012

11090861 (B.P.A.I. Feb. 7, 2012)

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. 11/090,861 03/25/2005 Ronald N. Brissette 9539-000121/US 9998 27572 7590 02/08/2012 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 828 BLOOMFIELD HILLS, MI 48303 EXAMINER EKIERT, TERESA M ART UNIT PAPER NUMBER 3725 MAIL DATE DELIVERY MODE 02/08/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte RONALD N. BRISSETTE ____________________ Appeal 2009-012880 Application 11/090,861 Technology Center 3700 ____________________ Before: JOHN C. KERINS, WILLIAM V. SAINDON, and MICHAEL C. ASTORINO, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-012880 Application 11/090,861 2 STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1, 2, 4-13, and 15-22. We have jurisdiction under 35 U.S.C. § 6(b). Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A method comprising: providing a shaft having a coupling section, said coupling section having a generally cylindrical exterior surface; applying a coating to the coupling section to form an engaging surface wherein said coating includes a polymeric plastic; and cold-forming said shaft and said coating such that a plurality of protrusions is formed in said engaging surface. The Examiner relies upon the following prior art references: Orain Beckman Deriaz Yaegashi Fletcher Zepf US 4,115,022 US 4,552,544 US 5,471,858 US 5,771,737 US 5,903,965 US 7,105,472 B2 Sep. 19, 1978 Nov. 12, 1985 Dec. 5, 1995 Jun. 30, 1998 May 18, 1999 Sep. 12, 2006 The Examiner makes the following rejections under 35 U.S.C. § 103(a): I. Claims 1, 2, 6-10, and 22 as unpatentable over Yaegashi and Zepf. II. Claims 12, 14-19, and 21 as unpatentable over Orain and Zepf. III. Claims 1, 4, and 5 as unpatentable over Yaegashi, Beckman, and Zepf. IV. Claims 1 and 11 as unpatentable over Yaegashi, Orain, and Zepf. V. Claims 12 and 13 as unpatentable over Orain, Fletcher, and Zepf. VI. Claims 12, 13, and 20 as unpatentable over Orain, Deriaz, Fletcher, and Zepf. Appeal 2009-012880 Application 11/090,861 3 SUMMARY OF DECISION We REVERSE. OPINION Each of the Examiner’s rejections relies on a finding that Zepf teaches a method of coating a metal workpiece with a polymeric compound or polymeric plastic and then subjecting the workpiece to cold forming. Ans. 4 (citing to Zepf, col. 2, ll. 21, 39); see also Ans. 5-6 (with the other rejections referring back to “Zepf, as applied to claim 1”). Appellants argue, for each rejection, that Zepf teaches a polymeric compound but not a polymeric plastic. Appeal Br. 14, 21, 28, 35, 42, 49. The Examiner states that the disclosure of polymeric compounds in Zepf is the basis for the finding that Zepf teaches polymeric plastic. Ans. 7. However, not all polymeric compounds are plastics. The polymeric compound identified in Zepf, polyethylene glycol or PEG, is typically a liquid or a wax1, which is a form consistent with Zepf’s coating solution being a substitute for a traditional lubricant. See Zepf, col. 1, ll. 36-40, 44- 50 (describing a more ecologically friendly alternative to existing lubricants); col. 2, l. 22 (describing polyethylene glycol [PEG], which is typically a liquid or wax, as an exemplary polymer). We find no evidence that PEG would be considered by persons of ordinary skill in the art to be a 1 A dictionary describes polyethylene glycol as having “forms [that] vary from clear, colorless, viscous liquids to waxy solids; generally soluble with water and alcohol; used in making cosmetics, pharmaceuticals, and rubber, and as plasticizers, binders, and food additives.” Academic Press Dictionary of Science and Technology (1992) (retrieved from http://www.credoreference.com/entry/apdst/polyethylene_glycol) (last visited Jan. 26, 2012). Appeal 2009-012880 Application 11/090,861 4 polymer plastic as required in the claimed coating.2 The Examiner provides no technical analysis or further evidence that would allow us to conclude, by a preponderance of the evidence, that the polymeric compounds in Zepf are actually a polymeric plastic. As such, we agree with Appellant that the Examiner erred in finding that Zepf teaches a polymeric plastic as required by independent claims 1, 12, and 22. The Examiner’s rejections of the dependent claims are likewise in error because of their reliance on the erroneous finding identified above. DECISION For the above reasons, we reverse the Examiner’s decision regarding claims 1, 2, 4-13, and 15-22. REVERSED hh 2 A dictionary definition of “plastic” is “Any of various synthetic or organic materials that can be molded or shaped, generally when heated, and then hardened into a desired form.” Academic Press Dictionary of Science and Technology (1992) (retrieved from http://www.credoreference.com/ entry/apdst/plastic) (last visited Jan. 26, 2012).