Ex parte BEIER et al.

Board of Patent Appeals and Interferences

Jun 30, 1998

08272782 (B.P.A.I. Jun. 30, 1998)

Application for patent filed July 8, 1994.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ALFRED BEIER, DIETRICH DISTLER,
HELMUT WITTKE, CHRISTIAN NESSELRATH
________________
Appeal No. 97-2605
Application 08/272,7821
________________
HEARD: JUNE 9, 1998
________________
Before STAAB, McQUADE and CRAWFORD, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 5, 8 and
9. Claim 10, which has been indicated as reciting allowable
subject matter, presumably stands objected to as depending from a
rejected base claim. Claims 6 and 7, the only other claims
Appeal No. 97-2605
Application 08/272,782
English language translations of these references,2
prepared on behalf of the Patent and Trademark Office, are
appended hereto.
Although the examiner refers to U.S. Patent No. 5,053,6103
to Landtwing et al. in the main answer (Paper No. 13, see pages 4
and 7) to support his position, this patent has not been included
in the statement of either of the rejections on appeal. Where a
reference is relied on to support a rejection, whether or not in
a minor capacity, there is no excuse for not positively including
the reference in the statement of the rejection. In re Hoch, 428
F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
Accordingly, we have not considered the teachings of Landtwing et
al. in reviewing the merits of the examiner's rejections.
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pending in the application, stand withdrawn from consideration
pursuant to 37 CFR § 1.142(b).
The invention relates to “cam arrangements of the type used,
for example, to control the intake and exhaust valves of internal
combustion engines” (specification, page 1). Claim 8 is
illustrative of the subject matter on appeal and reads as
follows:
8. A cam arrangement having a cam profile surface
comprising a plurality of punched layers of flat sheet stock
assembled in aligned and laterally adjacent relation and
providing a camshaft opening, and fastening means for joining the
layers together at a location outside the cam profile surface
wherein the fastening means comprises at least one weld joint
adjacent to the camshaft opening.
The references relied upon by the examiner as evidence of
obviousness are:2,3
Appeal No. 97-2605
Application 08/272,782
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Morishima (Japanese ‘291) 61-129291 Jun. 17, 1986
(Japanese Patent Document)
Tanida et al. (Japanese ‘651) 3-181651 Aug. 7, 1991
(Japanese Patent Document)
Hanakawa et al. (Japanese ‘654) 3-181654 Aug. 7, 1991
(Japanese Patent Document)
Shibata et al. (Japanese ‘655) 3-181655 Aug. 7, 1991
(Japanese Patent Document)
Claims 5, 8 and 9 stand rejected under 35 U.S.C. § 103:
a) as being unpatentable over the Japanese ‘291 reference;
and
b) as being unpatentable over the Japanese ‘291 reference in
view of any one of the Japanese ‘651, ‘654 or ‘655 references.
Reference is made to the appellants’ main and reply briefs
(Paper Nos. 12 and 19) and to the examiner’s final rejection,
main answer and supplemental answer (Paper Nos. 8, 13 and 20) for
the respective positions of the appellants and the examiner with
regard to the merits of these rejections.
The Japanese ‘291 reference discloses a cam 9 having a
camshaft opening 14. The cam consists of a plurality of laser
cut plates or layers 1 joined in aligned and laterally adjacent
relation to one another by rivets or bolts 8. The examiner
acknowledges that this cam does not meet the limitation in
independent claim 8 requiring the fastening means for joining the
Appeal No. 97-2605
Application 08/272,782
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layers together to comprise at least one weld joint adjacent to
the camshaft opening (see pages 4 and 5 in the final rejection).
The Japanese ‘651, ‘654 and ‘655 references disclose one-
piece cams which are affixed to their respective camshafts by one
or more weld joints adjacent the camshaft openings in the cams.
With regard to the 35 U.S.C. § 103 rejection based on the
Japanese ‘291 reference alone, the examiner states that
[i]t is common knowledge in the art to use welding
in order to join the layers together. The use of
welding to join the layers together is notoriously well
known.
It would have been obvious to one having ordinary
skill in the art at the time the invention was made to
use [a] weld joint in order to [join] the layers of
[the Japanese ‘291 reference] together as suggested by
common knowledge in the art [final rejection, page 4].
This rejection is unsound because the examiner has failed to
advance any factual basis for his finding that it is common
knowledge or notoriously well known in the art to use welding to
join the layers of a cam together. Rejections based on 35 U.S.C.
§ 103 must rest on a factual basis. In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 177-78 (CCPA 1967). In making such a
rejection, the examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded
Appeal No. 97-2605
Application 08/272,782
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assumptions or hindsight reconstruction to supply deficiencies in
the factual basis. Id. Here, the examiner has improperly relied
on speculation and unfounded assumption, rather than facts, to
supply the acknowledged deficiency in the Japanese ‘291 reference
with respect to the subject matter recited in claim 8.
Accordingly, we shall not sustain the 35 U.S.C. § 103 rejection
of this claim, or of claims 5 and 9 which depend therefrom, as
being unpatentable over the Japanese ‘291 reference.
As for the 35 U.S.C. § 103 rejection based on the Japanese
‘291 reference in view of any one of the Japanese ‘651, ‘654 or
‘655 references, the examiner states that
[the Japanese ‘651, ‘654 or ‘655 reference]
teaches at least one weld joint adjacent the camshaft
opening in order to join the cam to [the] shaft.
It would have been obvious to one having ordinary
skill in the art at the time the invention was made to
use at least one weld joint adjacent the camshaft
opening in order to [join] the cam layers of the
[Japanese ‘291 reference] as suggested by [the Japanese
‘651, ‘654 or ‘655 reference] [final rejection, pages 5
and 6].
The problem here, however, is that none of the Japanese
‘651, ‘654 or ‘655 references supports the examiner’s conclusion.
As indicated above, these secondary references teach the use of
weld joints to affix one-piece cams to their camshafts. Such
teachings would not have provided the artisan with any suggestion
Appeal No. 97-2605
Application 08/272,782
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or motivation to join the Japanese ‘291 cam layers together with
at least one weld joint adjacent the camshaft opening as recited
in claim 8. The examiner’s conclusion to the contrary is
predicated on an impermissible hindsight reconstruction of the
claimed invention wherein the claims have been used as an
instruction manual to selectively piece together disparate
disclosures in the prior art. Thus, we shall not sustain the 35
U.S.C. § 103 rejection of claim 8, or of claims 5 and 9 which
depend therefrom, as being unpatentable over the Japanese ‘291
reference in view of any one of the Japanese ‘651, ‘654 or ‘655
references.
The decision of the examiner is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-2605
Application 08/272,782
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