Ex Parte Carter

Board of Patent Appeals and Interferences

Jul 12, 2012

12247973 (B.P.A.I. Jul. 12, 2012)

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.
12/247,973 10/08/2008 Jon T. Carter P003435-RD-MJL 9003
74829 7590 07/13/2012
Julia Church Dierker
Dierker & Associates, P.C.
3331 W. Big Beaver Road
Suite 109
Troy, MI 48084-2813
EXAMINER
YOON, KEVIN E
ART UNIT PAPER NUMBER
1735
MAIL DATE DELIVERY MODE
07/13/2012 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 JON T. CARTER
____________

Appeal 2010-011299
Application 12/247,973
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-8, 11-14, 19, and 20. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.

Representative claim 1 reads as follows:
1. A clinching method, comprising:
Appeal 2010-011299
Application 12/247,973

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establishing a first layer on a second layer, the first layer having an
aperture formed therein and being thinner than the second layer;
engaging a rotating punch with the second layer through the aperture
in the first layer, thereby generating frictional heat and softening the second
layer, the rotating punch configured with at least a first diameter, a shoulder,
a second diameter that is larger than the first diameter, a third diameter that
is smaller than both the first and second diameters, and a second shoulder
extending from the first diameter to the third diameter, an end of the third
diameter initially contacting the second layer; and
pressing the rotating punch into the softened second layer, thereby
causing at least some of the second layer to: back extrude through an
annulus defined by the aperture in the first layer and a section of the punch
having at least one of the diameters; contact the shoulder of the rotating
punch; and extend onto a surface of the first layer adjacent the aperture.

The Examiner maintains, and Appellant appeals, the following
rejections under 35 U.S.C. § 103(a):
Claims 1, 2, 5, 6, 11-14, 17, and 19 as being unpatentable over the
combined prior art of Fukuda1, and Murakami2;
Claims 3 and 4 as being unpatentable over the combined prior art of
Fukuda, Murakami, and Okamoto3; and
Claims 7 and 8 as being unpatentable over the combined prior art of
Fukuda, Murakami, and “Understanding the Basic Differences . . .”4.
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).

1 JP 2007-136505 issued June 7, 2007, as translated.
2 US 2004/0144830 A1 issued July 24, 2004.
3 US 2004/0079787 A1 issued April 29, 2004.
4 “Understanding the basic difference between direct drive friction and
welding inertia friction welding”, Friction and Inertia Welding Services,
http://www.frictionwelding.com/report4.htm, December 5, 2006.
Appeal 2010-011299
Application 12/247,973

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“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted with
approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR Int'l Co. v. Teleflex Inc., 550 U.S. at 421(citing Graham v. John Deere
Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the
prior art the teachings of the invention in issue”)).
After review of the respective positions provided by Appellant and the
Examiner, we agree with Appellant a preponderance of the evidence
supports Appellant’s assertions that the Examiner’s rejection is based on
improper hindsight for substantially the reasons set forth by Appellant in the
Briefs (e.g., App. Br. 14-15 (explaining that without the present invention as
a guide, the Examiner has not shown that one of ordinary skill would find
any reason to modify Fukuda’s method to use a rotating punch having the
three diameter structure as recited in claim 1 to engage a second layer
through an aperture in a first thinner layer as recited in claim 1, since the
rotating punch of Murakami works in the reverse direction from Fukuda
with respect to its path through the first thinner layer and second layer such
that the rejection is based on using impermissible hindsight); see also Reply
Br. 5-7).
We further agree that a preponderance of the evidence supports the
Appellant’s position that the Examiner has taken an unreasonably broad
interpretation of the recited “second shoulder extending from the first
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Application 12/247,973

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diameter to the third diameter” (App. Br. 17; Reply Br. 7). Notably, as
pointed out by Appellant, Murakami explicitly states that the structure of an
embodiment similar to that upon which the Examiner relies does not form a
shoulder (App. Br. 17; Murakami, para. [0050]). Thus, Appellant’s position
that Murakami does not show a shoulder that extends from the first diameter
to the third diameter due to the presence of the groove 20 in Murakami is
reasonable. The Examiner has also not on this record directed us to or relied
upon any other evidence or technical reasoning pertaining to a second
shoulder as claimed.
The Examiner’s rejection and response to argument presented in the
Answer does not adequately address the concerns raised by the Appellant
outlined above (Ans. generally).
For the foregoing reasons, and those presented by Appellant in the
Briefs, the Examiner has not satisfied the initial burden of presenting a prima
facie case of obviousness, and we conclude that the Examiner’s rejection is
improperly based upon improper hindsight reasoning. KSR, 550 U.S. at 42.
None of the other references applied in the rejections have been relied
upon by the Examiner to cure the deficiencies noted above.
For these reasons and those set out in the Briefs, we reverse the
Examiner’s § 103 rejections on appeal.
CONCLUSION
In summary, the rejections before us on appeal are reversed.

REVERSED

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