Ex Parte Behr et al

Patent Trial and Appeal Board

Dec 23, 2013

10573273 (P.T.A.B. Dec. 23, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/573,273 12/18/2006 Thomas Behr 3926.245 9235
41288 7590 12/24/2013
PATENT CENTRAL LLC
Stephan A. Pendorf
1401 Hollywood Boulevard
Hollywood, FL 33020
EXAMINER
TAOUSAKIS, ALEXANDER P
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
12/24/2013 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 THOMAS BEHR, UWE ROHRBERG, and TILMANN HAUG
____________

Appeal 2012-002912
Application 10/573,273
Technology Center 3700
____________

Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
FRANCES L. IPPOLITO, Administrative Patent Judges.

IPPOLITO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 4-5 and 7-14. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Claims 4 and 5 are the independent claims on appeal. Claim 4 listed
below is illustrative of the subject matter on appeal, and recites:
4. A diesel powered vehicle, wherein the diesel engine includes
a crankshaft with combined drive gear wheel, wherein both the
crankshaft and drive gear wheel are cast as one piece, wherein
crankshaft and gear wheel exhibit differential hardening,
wherein both are manufactured from tempered ductile iron
(ADI), wherein the hardness of the gear wheel is further
increased by at least one of (a) local differential thermal
treatment during ADI heat treatment and (b) peening, and
wherein the friction wear resistance of the gear teeth is
increased by application of carbide containing coatings (CADI).

REJECTIONS2
1. Claims 4-5, 7-9, and 11-13 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Hoyes (WO 0047362, published Aug. 17, 2000),

1Appellants also seek our review of the Examiner’s restriction requirement,
which resulted in the withdrawal of claims 3 and 6. App. Br. 6. However,
we do not review this issue as this is a matter reviewable by petition to the
Technology Center Director. See MPEP §§ 1002.02 (c), 1201 (the Board
will not ordinarily hear a question that is reviewable by petition); In re
Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citation omitted).
2In the Answer, the Examiner issued the third and fourth rejections as new
grounds of rejection. Ans. 8, 12.
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Wilde (US 6,258,180 B1, issued Jul. 10. 2001), and Oyelayo (US
2002/0098392 A1, published Jul. 25, 2002).
2. Claims 10 and 14 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Hoyes, Wilde, Oyelayo, and Kawanami (US 5,409,415,
issued Apr. 25, 1995).
3. Claims 4-5, 7-9, and 11-13 are rejected under 35 U.S.C. 103(a) as
being unpatentable over Hoyes, Kolbe (US 2,815,682, issued Dec. 10,
1957), Wilde, and Oyelayo.
4. Claims 10 and 14 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Hoyes, Kolbe, Wilde, Oyelayo, and Kawanami.

ANALYSIS
The rejection of claims 4 and 5 as unpatentable over Hoyes, Wilde, and
Oyelayo
Appellants argue independent claims 4 and 5 as a group. We select
claim 4 as representative. Claim 5 stands or falls with claim 4. See 37
C.F.R. § 41.37(c)(1)(vii) (2011).
For independent claim 4, the Examiner found that the recited
limitations of “wherein both the crankshaft and drive gear wheel are cast as
one piece” and “wherein the hardness of the gear wheel is further increased
by at least one of (a) local differential thermal treatment during ADI heat
treatment and (b) peening” are product-by-process limitations. Ans. 5. The
Examiner determined that the structure implied by the process steps is “a
crankshaft combined with a drive gear wheel manufactured from tempered
ductile iron (ADI), has been heat treated and at least the gear teeth having a
carbide containing coating (CADI).” Ans. 5. The Examiner further found
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that Hoyes teaches the claimed diesel powered vehicle that includes a
crankshaft with combined drive gear wheel except for (1) the crankshaft and
drive gear wheel both being “manufactured from tempered ductile iron
(ADI)” and (2) the carbide containing coating (CADI). Id. at 6. The
Examiner additionally found that Wilde teaches producing a crankshaft from
austempered ductile iron and Oyelayo discloses a carbide coating deposited
on gear teeth. Id.
To start, Appellants contend that the Examiner has not adequately
considered the recited product-by-process limitation of “both the crankshaft
and drive gear wheel are cast as one piece” because this process results in a
casted one-piece structure, which is distinguishable from conventionally
forging, welding, or screwing together a crankshaft and a gear wheel. App.
Br. 11, 13-14; Reply Br. 4-5 (emphasis in original). Appellants also argue
that casting provides labor savings in being able to cast two dissimilar parts
together quickly and economically. App. Br. 4; Reply Br. 5.
We are not persuaded of Examiner error on this basis because if the
product in the product-by-process claim is the same as, or obvious from, a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process. In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985) (citations omitted). Here, the Examiner explained that the
structure implied from the recited process steps is, among other things, a
crankshaft combined with a drive gear wheel. Ans. 5. The Examiner found
Hoyes discloses the same or similar structure because Hoyes teaches “a
forged unitary structure comprising a crankshaft and gear wheel.” Ans. 14
(citing Hoyes, p. 1, ll. 16-22). Appellants’ arguments distinguishing casting
from forging, welding, or screwing two separate parts together do not
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persuasively challenge the Examiner’s finding that Hoyes teaches a one-
piece forged structure that renders the claimed one-piece product obvious.
Appellants next contend that cutting teeth in Hoyes’s gear wheel after
forging provides a different product than the claimed product because “both
the crankshaft and drive gear wheel, with teeth, are cast (not forged)
together as one piece.” App. Br. 12 (emphasis in original); Reply Br. 5-6.
This argument is not persuasive as Appellants have not pointed to, and we
do not see, a claim limitation requiring the gear teeth to be cast with the
crankshaft and drive gear wheel. Unclaimed limitations cannot impart
patentability. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants also argue that Hoyes teaches a different surface
microstructure because Hoyes’s gear teeth must be cut into the gear wheel
after forging and “any microstructure treatment imparted to the surface of
the gear disk for increased friction wear…prior to cutting teeth would not
survive.” App. Br. 12; see also Reply Br. 5-6 (“Hoyes…lacks teaching of
the integral forming of teeth.”) This is not persuasive because the Examiner
found that Oyelayo teaches depositing a boron carbide coating onto gear
teeth and that this coating could be applied to “formed gear teeth, i.e. after
the cutting operation of Hoyes et al has taken place.” Ans. 16 (citing
Oyelayo, para. [0029]) (emphasis added). Appellants’ argument does not
persuasively challenge this finding.
Appellants additionally contend that Hoyes discloses uniform heat
treatment of the entire crankshaft or induction heating of the gear wheel,
which results in two different areas of hardness instead of the “three
different areas of hardening due to the [claimed] recited steps, i.e. there are
two different ADI steps, and one CADI step. . . .” App. Br. 13 (emphasis in
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original). Initially, we note that Appellants appear to contend that the “two
different ADI steps and one CADI step” are:
(1) “both [the crankshaft and gear wheel] are manufactured from
tempered ductile iron (ADI)”;
(2) “the hardness of the gear wheel is further increased by at least one
of (a) local differential thermal treatment during ADI heat
treatment and (b) peening”; and
(3) “the friction wear resistance of the gear teeth is increased by
application of carbide containing coatings (CADI).”
See id. at 11. We agree with Appellants that the claimed invention includes
at least two different areas of hardness as claim 4 recites “wherein
crankshaft and gear wheel exhibit differential hardening.” App. Br., Claims
App’x.
We do not, however, agree that the “one CADI step” necessarily
results in a third area of different hardness. Appellants’ interpretation
essentially requires that the CADI step increases the friction wear resistance
at only the gear teeth to provide a hardness that is different from that of the
gear wheel and crankshaft. However, during examination, “the PTO must
give claims their broadest reasonable construction consistent with the
specification. Therefore, we look to the specification to see if it provides a
definition for claim terms, but otherwise apply a broad interpretation.” In re
ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007)
(citation omitted); see also In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir.
1984). Appellants’ Specification teaches that the gear teeth are only an
“example” of “partial areas of the cast part” that can be hardened by local
introduction of carbide containing layers in the cast shape (Spec., para.
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[0017]) or melt (Spec., para. [0014]). As such, the broadest reasonable
interpretation of the recited CADI step does not exclude areas other than the
gear teeth, such as the entire gear wheel, from coating. Indeed, the
Examiner found, this step only requires that “at least the gear teeth are
coating [sic] with an application of ‘carbon containing coatings’” and does
not preclude coating the entire crankshaft and gear wheel. Ans. 16-17. With
this broadest reasonable interpretation in mind, Appellants have not
explained how the CADI step must result in a third area of different hardness
where the coating step is not limited to just the gear teeth. Moreover, even
assuming Hoyes can be read to teach two areas of hardness, for the reasons
discussed, we are not apprised of any Examiner error in the finding that
Hoyes teaches the claimed structure.
Appellants also argue that Hoyes does not teach use of tempered
ductile iron (ADI) and differential increased carbide in the gear teeth. App.
Br. 12; Reply Br. 5-6. These arguments are unpersuasive because the
Examiner relies on Wilde and Oyelayo respectively for these features.
Nonobviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. In re Merck & Co., Inc. 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(citing In re Keller, 642 F.2d 413, 425 (C.C.P.A. 1981)).
Appellants further contend that Wilde does not suggest that the
crankshaft and the gear wheel can be cast together and also does not teach
surface treatment of the gear wheel or gear teeth because the disclosed
primary iron carbides are uniformly dispersed. App. Br. 14-15. However,
the Examiner relies on Hoyes to teach the claimed product of a crankshaft
and gear wheel combined as a unitary structure and Oyelayo to teach a boron
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carbide coating. Ans. 5-6. Appellants’ attack on Wilde individually is not
persuasive.
Appellants next argue that Oyelayo does not teach incorporating
carbide into the alloy, the use of tempered ductile iron, or selectively
hardening only the gear teeth. App. Br. 15. This is not persuasive because
the Examiner relies on Wilde (not Oyelayo) to teach tempered ductile iron
and carbides uniformly dispersed in the ADI microstructure. Ans. 6, 17.
Additionally, Appellants have not pointed, and we do not see, a claim
limitation requiring selective hardening of only the gear teeth. As discussed
supra, Appellants have not persuasively challenged the Examiner’s finding
that claim 4 requires “that at least the gear teeth are coating [sic] with an
application of ‘carbon containing coatings.’” See Ans. 17.
Appellants assert that there is no teaching in Hoyes, Wilde, and
Oyelayo or technical reason known to the skilled artisan for combining the
references. App. Br. 15. However, as discussed supra, Appellants’
arguments have not apprised us of any error in the Examiner’s findings or
conclusion of obviousness based on these references. Moreover, the
Examiner reasoned that it would have been obvious to: (1) produce the
Hoyes crankshaft and gear wheel out of Wilde’s austempered ductile iron for
exceptional strength and toughness; and (2) provide a carbide coating onto
the gear teeth of Hoyes to increase surface hardness and wear resistance as
taught by Oyelayo. See Ans. 6. Appellants’ arguments also do not
persuasively challenge this reasoning.
Accordingly, we sustain the rejection of claim 4 and claim 5, which
falls with claim 4.
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The rejection of claims 7 and 11 as unpatentable over Hoyes, Wilde, and
Oyelayo
Appellants argue claims 7 and 11 as a group. We select claim 7 as
representative. Claim 11 stands or falls with claim 7.
Claim 7 depends from claim 4 and additionally recites “the hardness
of the gear wheel is increased by local differential thermal treatment during
ADI heat treatment.” App. Br., Claims App’x.
Appellants assert that the Examiner has ignored this limitation
because it is a product-by-process limitation. App. Br. 15. However, we do
not find this contention supported by the record as the Examiner found the
“resulting structure of thermal treatment is a heat treated gear wheel, which
Hoyes et al meets.” Ans. 7.
Appellants further contend that the term “local” refers to the gear
wheel and cannot refer to the entire gear wheel and crankshaft. App. Br. 15.
We are not apprised of Examiner error on this basis because the Examiner
found the term “‘local’ can be interpreted to be local to a specific area,
treatment of the gear wheel itself is ‘local’” and that Hoyes teaches heat
treating the gear wheel. Ans. 7, 18; see also Hoyes, p. 1, ll. 21-22.
Accordingly, we sustain the rejection of claim 7. Claim 11 falls with
claim 7.
The rejection of claims 8 and 12 as unpatentable over Hoyes, Wilde, and
Oyelayo
Appellants argue claims 8 and 12 as a group. We select claim 8 as
representative. Claims 12 stands or falls with claim 8.
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Claim 8 depends from claim 7 and further recites “wherein carbide is
locally introduced into the melt to obtain an ADI microstructure with
supplemental introduced carbides in the cast part.”
The Examiner treated this limitation as a product-by-process claim
limitation and found that the “resulting structure is carbides throughout the
thickness of the part.” Ans. 7. The Examiner further found that Wilde
teaches uniformly dispersing carbides throughout an ADI microstructure and
that it would have been obvious to “create a part having carbides within its
microstructure, as taught by Wilde et al, because it improves hardness and
wear resistance.” Id. (citing Wilde, col. 1, ll. 64-65).
Appellants contend that Wilde does not teach “casting a single piece
crankshaft and gear wheel with local hardening of the gear wheel part by
local incorporation of carbide.” App. Br. 16, Reply Br. 5-6. Essentially,
Appellants argue that in claim 8 the carbides are incorporated only into the
microstructure of the gear wheel to increase just the hardness of the gear
wheel. Id. However, claim 8 only requires that the carbides “locally
introduced into the melt” results in an ADI microstructure with the carbides
and does not restrict the carbides to any particular area of the cast part to
impart hardening only to a specific area. This interpretation is consistent
with the Specification’s broad teaching of locally introducing carbide into
the melt to obtain an ADI microstructure, (para. [0014]), which we note does
not restrict the carbide to any specific area of the microstructure or exclude
having the carbide throughout the microstructure even if introduced locally
to a specific area of the melt. Moreover, while the Specification arguably
teaches embodiments for hardening partial areas of the cast part, for example
the gear teeth, these embodiments are not read into the claims. Kara Tech.
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Inc. v. Stamps.com Inc., 582 F.3d 1341, 1348 (Fed. Cir. 2009) (“The
patentee is entitled to the full scope of his claims, and we will not limit him
to his preferred embodiment or import a limitation from the specification
into the claims.”) (citation omitted).
With this in mind, we are also not persuaded by Appellants’ argument
because claim 8 does not exclude having uniformly dispersed carbides in the
ADI microstructure as taught in Wilde.
We sustain the rejection of claim 8. Claim 12 falls with claim 8.
The rejection of claims 9 and 13 as unpatentable over Hoyes, Wilde, and
Oyelayo
Appellants argue claims 9 and 13 with claims 8 and 12; however,
because the limitation is similar but different, we address claims 9 and 13
separately as a group. We select claim 9 as representative. Claims 13 stands
or falls with claim 9.
Claim 9 depends from claim 7 and further recites:
wherein the friction wear resistance of the gear teeth is
increased by locally introducing carbide into the melt in the
area of the cast teeth to obtain an ADI microstructure with
supplemental introduced carbides in the area of the teeth of the
cast part.
App. Br., Claims App’x.
For similar reasons discussed supra , we also find that claim 9 does
not require the carbides locally introduced into the melt in the area of the
cast teeth to be restricted to the microstructure of the teeth. Although the
teeth microstructure will include carbides, claim 9 does not preclude other
areas of the cast part from also having carbide once the carbides are added to
the melt.
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As such, we are also not persuaded by Appellants’ argument that
Wilde’s ADI microstructure with uniformly dispersed carbides does not
render obvious the resulting structure from the claimed process recited in
claim 9.
We sustain the rejection of claim 9 and claim 13, which falls with
claim 9.
The rejection of claims 10 and 14 as unpatentable over Hoyes, Wilde,
Oyelayo, and Kawanami
Appellants argue claim 10 and 14 as a group. We select claim 10 as
representative. Claim 14 stands or falls with claim 10.
Claim 10 depends from claim 4 and further recites “the hardness of the gear
wheel is increased by peening.” App. Br., Claims App’x.
Appellants rely on the same arguments addressed above for claim 4.
For the same reasons discussed, we are not apprised of any Examiner error
by those arguments. We sustain the rejection of claims 10 and 14.
The rejection of claims 4-5, 7-9, and 11-13 as unpatentable over Hoyes,
Kolbe, Wilde, and Oyelayo.
In the Answer, the Examiner entered a new ground of rejection based
on the additional reference Kolbe and explained “Kolbe et al. is presented in
this new grounds of rejection to show that it is well known in the art that
the selection between casting or forging a crankshaft is obvious to one of
ordinary skill in the art.” Ans. 9-10 (citing Kolbe, col. 2, l. 11-12)
(emphasis in original).
Appellants contend that Kolbe only teaches a crankshaft but not a
combined crankshaft and gear wheel. Reply Br. 7-8. However, this is
unpersuasive as the Examiner only relies on Kolbe to show it is well known
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to select between casting or forging and found Hoyes teaches the combined
structure. Ans. 9-10.
For these reasons and those discussed supra, we sustain the rejection
of claims 4-5, 7-9, and 11-13.
The rejection of claims 10 and 14 as unpatentable over Hoyes, Kolbe, Wilde,
Oyelayo, and Kawanami
For this new ground of rejection, Appellants do not present any
argument challenging the Examiner’s findings and conclusion of
obviousness. Reply Br., generally.
In view of this reason and those discussed supra, we sustain the
rejection of claims 10 and 14.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 4-5, 7-14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR §1.136(a). See 37 CFR
§1.136(a)(1)(iv).
AFFIRMED

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