Ex Parte Bormann et al

Patent Trial and Appeal Board

Sep 29, 2017

12735532 (P.T.A.B. Sep. 29, 2017)

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.
12/735,532 10/18/2010 Axel Bormann BOSC.P6227US/11602922 1309
24972 7590 10/03/2017
NORTON ROSE FULBRIGHT US LLP
1301 Avenue of the Americas
NEW YORK, NY 10019-6022
EXAMINER
HIDALGO-HERNANDEZ, RUTH G
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
nyipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AXEL BORMANN and JOHANN BAYER
Appeal 2016-001859
Application 12/735,532
Technology Center 3700
Before BRANDON J. WARNER, LEE L. STEPINA, and
FREDERICK C. LANEY, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Axel Bormann and Johann Bayer (“Appellants”)1 appeal under
35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 11, 15, 18,
22, 26, 27, 29, and 31—33, which are all the pending claims. Appeal Br. 1.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is ROBERT
BOSCH GmbH. Appeal Br. 1.
Appeal 2016-001859
Application 12/735,532
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention “relates to a method for aligning an
elongated component that is to be fitted, with at least two component
segments, into two coaxial installation points spaced apart from one
another.” Spec., p. 1,11. 3—6.2 Claims 11 and 32 are independent. Claim 11,
reproduced below with emphasis added, is illustrative of the subject matter
on appeal.
11. A method for aligning an elongated component that is to
be fitted, with at least two component segments, into two
coaxial installation points spaced apart from one another,
comprising:
joining at least two component pieces by abutting
together mutually facing end surfaces of the at least two
component pieces, wherein the elongated component is made
up of the at least two component pieces joined to one another;
welding the joined at least two component pieces;
checking coaxiality of the at least two component
segments and measuring any existing deviation from coaxiality;
and
generating at least one material fusion area, limited
radially and in a circumferential direction, in a surface region of
one of the at least two component pieces located between the at
least two component segments at a magnitude such that as a
result of axial shrinkage ensuing upon cooling of the at least
one material fusion area, coaxiality of the elongated component
and the at least two component segments is produced at least
within tolerable limits;
wherein the deviation from coaxiality is measured in
terms of magnitude and radial direction, and generation of the
at least one material fusion area is carried out in the surface
2 We note that references herein to Appellants’ Specification refer to
the Substitute Specification filed July 22, 2010.
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Application 12/735,532
region of the one of the at least two component pieces
diametrical with respect to the measured direction of the
deviation; and
wherein multiple material fusion areas are generated,
spaced apart from one another in a circumferential direction
next to one another.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Shirai ’561 US 2002/0117561 A1 Aug. 29, 2002
Shirai ’856 US 6,446,856 B2 Sept. 10, 2002
Matsui US 7,856,890 B2 Dec. 28,2010
Appellants’ Admitted Prior Art (“AAPA”) as described at page 2,
lines 5—7 of the Substitute Specification.3
REJECTIONS
The following rejections are before us for review:
I. Claims 11, 15, 18, 22, 26, 27, and 31 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over AAPA and
Shirai ’856. Final Act. 2—3.
II. Claims 29 and 30 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Shirai ’856, and Shirai ’561.
Id. at 3^4.
3 We note that the Examiner’s identification of page 2, lines 6—8 of the
Original Specification appears to correspond to page 2, lines 5—7 of the
Substitute Specification. See supra, note 2; Final Act. 2, 4.
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Application 12/735,532
III. Claim 32 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Shirai ’856, and Matsui. Id. at 4—5.
ANALYSIS
Appellants argue that the rejections are improper because of alleged
deficiencies in Shirai ’856 and an allegation of improper hindsight. See
Appeal Br. 3—5; Reply Br. 1—3. After careful consideration of the record
before us, Appellants’ arguments do not apprise us of error in the
Examiner’s factual findings from AAPA or Shirai ’856, which are supported
by a preponderance of the evidence, or the Examiner’s reasonable
conclusion of obviousness, which is rationally articulated based on prior art
teachings. In short, we sustain the Examiner’s rejections based on the
reasoned positions set forth therein and in light of the Examiner’s thorough
responses to Appellants’ arguments. See Final Act. 2—5; Ans. 6—9. We
address Appellants’ principal assertions below simply as a matter of
emphasis.
Specifically, Appellants assert that a combination of teachings from
AAPA and Shirai ’856 would not render obvious a material fusion area
(corrective weld) disposed “solely in the surface of only one of the
components].” Appeal Br. 4 (emphasis added); see Reply Br. 1—2.
Initially, we note that this assertion appears to be directed toward an
unclaimed requirement that is merely “show[n] and describe[d]” in a
particular embodiment.4 Appeal Br. 4. Regardless, we do not discern a
4 For example, base claim 11, as argued by Appellants, only recites
“generating at least one material fusion area ... in <2 surface region of one
of the at least two component pieces,” which does not restrict the material
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Application 12/735,532
meaningful distinction between even this asserted requirement and the
combined teachings relied on in the rejection—we agree with the Examiner
that applying Shirai ’856’s teaching of a corrective weld (e.g., disposed on
the outside of component piece 11 and axially offset from the middle of
connecting weld seam 140, as shown in Figure 17) to AAPA’s abutting joint
would logically result in the corrective weld being disposed on “only one” of
the component pieces—and Appellants do not provide any factual evidence
or persuasive technical reasoning to explain why it would be disposed
anywhere else. See Ans. 7.
Appellants also assert that the combination of teachings from AAPA
and Shirai ’856 “is based on hindsight reconstruction.” Appeal Br. 4; see
Reply Br. 2—3. However, Appellants do not identify any knowledge relied
upon by the Examiner that was gleaned only from Appellants’ disclosure
and that was not otherwise within the level of ordinary skill at the time of the
invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (so
long as a conclusion of obviousness is based on a reconstruction that “takes
into account only knowledge which was within the level of ordinary skill at
the time the claimed invention was made and does not include knowledge
gleaned only from [Appellants’] disclosure, such a reconstruction is
proper”). Thus, Appellants’ assertion of hindsight is unsupported.
As to Appellants’ separate argument for claim 18 (see Appeal Br. 5;
Reply Br. 3), insofar as Appellants’ disclosure supports that the corrective
material fusion area is “close to” a connecting point of the component pieces
as claimed (see Fig. 4), we do not see why the corrective weld of Shirai ’856
fusion area to being disposed on “only one” of the component pieces.
Appeal Br., Claims App. (emphasis added).
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Application 12/735,532
is not likewise “close to” a connecting point of those component pieces (see
Shirai ’856, Fig. 17). See Ans. 8—9.
We note that any other arguments not specifically addressed in detail
herein have been thoroughly considered by the panel but are not persuasive
for the reasons discussed supra and those well expressed in the Examiner’s
Answer.
After careful consideration of all the evidence of record, Appellants’
arguments do not apprise us of error in the Examiner’s findings or reasoning
in support of the conclusion of obviousness. Accordingly, we sustain
Rejections I—III.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 11, 15, 18, 22,
26, 27, and 31 under 35 U.S.C. § 103(a) as being unpatentable over AAPA
and Shirai ’856.
We AFFIRM the Examiner’s decision rejecting claims 29 and 30
under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Shirai ’856,
and Shirai ’561.
We AFFIRM the Examiner’s decision rejecting claim 32 under
35 U.S.C. § 103(a) as being unpatentable over AAPA, Shirai ’856, and
Matsui.
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)(l)(iv).
AFFIRMED
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