Ex Parte Mouro

Board of Patent Appeals and Interferences

Jul 27, 2007

10101228 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MARCOS ANTONIO RODRIGUES MOURO
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Appeal 2006-1555
Application 10/101,228
Technology Center 3600
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Decided: July 27, 2007
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Before WILLIAM F. PATE III, MURRIEL E. CRAWFORD, and
HUBERT C. LORIN, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

This is an appeal from the final rejection of claims 1-9. These are the
only claims in the application.
We have jurisdiction over the appeal under 35 U.S.C. §§ 6 and 134.
The claimed invention is directed to an adjustable steering tie-rod for
an automobile. The tubular intermediate tie rod adjusting member, threaded
Appeal 2006-1555
Application 10/101,228

on the inside and the outside, has both inside and outside threads interrupted
by longitudinal grooves.
Claim 1 reproduced below, is further illustrative of the claimed
subject matter.
I. An adjustable steering tie-rod assembly having a
longitudinal locking device, said assembly comprising:
a steering terminal having an external threaded region on
a rod portion thereof, the rod portion being in the interior of an
intermediate member with internal and external threads, said
internal and external threads having pitches opposite to each
other which in turn is coupled in a tubular extremity of a
steering tie-rod with internal threads, wherein the intermediate
member is provided with longitudinal grooves in sectioned
lines on its internal and external threads.
The references of record relied upon by the examiner as evidence of
obviousness are:
Ricca US 3,479,675 Nov. 25, 1969
Krawczak US 6,074,125 Jun. 13, 2000
Fox US 6,276,399 B1 Aug. 21, 2001

Claims 1-7 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Krawczak in view of Ricca.
Claim 8 stands rejected under 35 U.S.C. §103 as being
unpatentable over Krawczak in view of Ricca and Fox.
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Appeal 2006-1555
Application 10/101,228

ISSUE
The sole issue for our consideration is whether the examiner has
established the prima facie obviousness of the subject matter of claims 1-9.
PRINCIPLES OF LAW
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598
(Fed. Cir. 1988). In so doing, the Examiner must make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966), viz., (1) the scope and content of the prior art; (2) the
differences between the prior art and the claims at issue; and (3) the level of
ordinary skill in the art. “[T]he examiner bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.” In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). Furthermore, “‘there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness’ . . . . [H]owever, the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claim, for
a court can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.” KSR Int’l Co. v. Teleflex Inc., 127
S. Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441
F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)). Obviousness is
then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445, 24
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Application 10/101,228

USPQ2d at 1444; Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984).

FINDINGS OF FACT AND ANALYSIS

We have carefully reviewed the rejections on appeal in light of the
arguments of the appellant and the examiner. We find ourselves in
agreement with the appellant that none of the applied prior art teaches
“longitudinal grooves in sectioned lines” (Claim 1) or a tubular member with
internal and external threads “provided with longitudinal grooves” to inhibit
spontaneous rotation (Claim 3).
Krawczak discloses a tie rod assembly that admittedly lacks a
plurality of grooves. The examiner has cited Ricca as showing a plurality of
grooves (7a, 10) on external and internal threads. In reality, the threaded
portions of Ricca are roughened. The preferred form of roughening is
diamond knurling. Col. 2, ll. 14-16. While we acknowledge the examiner’s
argument that the valley between two longitudinally juxtaposed knurling
peaks is a groove, we agree with appellant that this is a strained
interpretation of the term “groove.” We are confident that one of ordinary
skill would not regard such a valley as a “groove” in the ordinary or
customary usage of that word.
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Appeal 2006-1555
Application 10/101,228

Furthermore, it is not clear that there remains two longitudinally
juxtaposed peaks after the screw threads are cut in the knurling. In such a
case, the examiners peak-to-peak groove is merely a slanted valley that
extend along some portion of a peak’s profile. To the extent the examiner is
relying on the peak-to-peak profile as a groove, we note that the undisturbed
knurling of Figures 1, 3, 5 and 7 is merely an intermediate stage of
manufacture of the Ricca fastener. It would not have been obvious to
combine an unfinished fastener profile into the finished automotive product
that is Krawczak.
Additionally, we agree with the appellant that there is no suggestion
or motivation to combine the teachings of Krawczak and Ricca. The
examiner points to Ricca at Col. 2, ll. 63-67 as a suggestion or motivation. In
fact, we find that this disclosure teaches away from the combination in that it
clearly states that when the knurled portion reaches the screw threads the
fastener will jam on the threads of the mating element. It is unclear how a
knurled intermediate member could function to provide adjustability if it
jammed when the knurled portion reached the threads on the mating
element.
The disclosure of Fox in no way ameliorates the problems we have
encountered with the Krawczak and Ricca references.

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Appeal 2006-1555
Application 10/101,228

In summary, the rejections of claim 1-9 under 35 U.S.C. § 103 are
reversed.

REVERSED

vsh

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