Ex Parte Clarke et al

Patent Trial and Appeal Board

Sep 28, 2017

13056299 (P.T.A.B. Sep. 28, 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.
13/056,299 01/27/2011 Christopher James Clarke 063511-9166-00 2677
23409 7590 10/02/2017
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
OMGBA, ESSAMA
ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER JAMES CLARKE,
ROGER STANTON DOO, MARGARET LUCAS, and
RUSSELL JOHN TRINICK
Appeal 2016-008022
Application 13/056,299
Technology Center 3700
Before BRETT C. MARTIN, MICHELLE R. OSINSKI, and
NATHAN A. ENGELS, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1—3, 5, and 9-26 and 28—32. Claims 4, 6—8, and 27 were
canceled during prosecution. Claims Appx. We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
Appeal 2016-008022
Application 13/056,299
THE INVENTION
Appellants’ claims are directed generally “to an apparatus and method
for joining components together and more particularly, but not exclusively,
to joining sheet material such as metals using rivets or the like.” Spec. p. 1.
Claim, 1 reproduced below, is illustrative of the claimed subject matter:
1. A method for producing a joint in at least two overlapping
workpieces using a joining tool including a punch to insert a self­
piercing rivet into the workpieces to form the joint, the
workpieces having a first surface that is nearest the tool, the
method comprising:
placing the workpieces between the tool and a die,
positioning a rivet between the punch and the first surface,
using the punch to insert the rivet into the at least two
overlapping workpieces such that the first surface is pierced by
the rivet, the punch applying a compressive force during rivet
insertion to deform the workpieces into a joint at a joining area
between the tool and the die, and
applying continuous ultrasonic energy to at least one of the
workpieces in the joining area around a perimeter of the rivet for
at least part of the time during production of the joint so as to
increase the ductility of at least one of the workpieces in the
joining area due to the acoustoplastic effect,
wherein the ultrasonic energy is applied by the die, or by
a nose of the tool.
The prior art relied upon by the Examiner in rejecting the claims on
REFERENCES
appeal is:
Hahn US 2001/0002506 A1 June 7, 2001
US 2003/0115927 A1 June 26, 2003
US 2004/0093725 A1 May 20, 2004
US 2006/0168792 A1 Aug. 3, 2006
WO 2007/137367 A1 Dec. 6, 2007
Lempenauer
Malolepszy
Reatherford
Durandet
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Appeal 2016-008022
Application 13/056,299
REJECTIONS
The Examiner made the following rejections:
Claims 1—3, 11—22, and 30-32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over (Applicant’s Admitted Prior Art)
AAPA, Durandet, Reatherford, and Malolepszy. Ans. 2.
Claims 5, 9, 10, and 23—25 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Durandet, Reatherford, Malolepszy, and
Lempenauer. Ans. 6.
Claims 26, 28, and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over AAPA, Durandet, Reatherford, Malolepszy, and
Hahn. Ans. 6.
ANALYSIS
The Examiner finds that the AAPA fails to “disclose applying
continuous ultrasonic energy to at least one of the workpieces in the joining
area around a perimeter of the rivet.” Ans. 3. The Examiner further finds
that Durandet “teaches that it is desirable to increase ductility of workpieces
to be joined in the joining area in joining processes such as self-piercing
riveting [(SPR)] or clinching.” Id. The Examiner then concludes that “it
would have been obvious to one of ordinary skill.. .to have enhanced the
formability of at least a portion of one of the workpieces of AAPA in the
joining area as taught by Durandet.” Id. Durandet increases ductility,
however, not through the use of ultrasonic energy as claimed, but via lasers
to condition the material before processing. Id. The Examiner then utilizes
the teachings of Reatherford relating to the use of ultrasonic energy to
increase ductility in clinching processes and concludes that it would have
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Appeal 2016-008022
Application 13/056,299
been obvious to “substitute[e] the laser of Durandet et al. in favor of the
technique taught by Reatherford et al.” Ans. 3^4.
Appellants’ main argument against this combination is that “based on
Durandet alone, use of ultrasonic energy according to the claims cannot be
obvious to the person having ordinary skill in the art.” Reply Br. 5.
Appellants further argue that “clinching and SPR are different processes”
and that “the physical phenomena involved in SPR and in clinching are
different, and therefore different considerations apply.” Id. at 6. Appellants
also submit a Declaration of Russell J. Trinick (“Trinick Declaration”) as
evidence of the differences between SPR and clinching as well as numerous
reasons as to why one would not look to clinching to improve an SPR
process. See Trinick Decl. 6—19.
For example, as Appellants argue, “it is desirable in clinching to
reduce the interfacial friction as much as possible, because in clinching, the
interfacial friction is considerable and it is the most limiting factor,” whereas
“SPR may not be influenced by the level of interfacial friction, or may even
require increase in interfacial friction.” Reply Br. 6—7. Furthermore, “SPR
can join ‘hard on soft’ workpieces,” while such “is not possible, or not
practical, with clinching.” Id. at 7. In general, Appellants provide numerous
bases in the form of declaration evidence as to why one would not simply
replace the lasers in Durandet, which applies to both SPR and clinching,
with the ultrasonic vibrations in Reatherford, which applies only to
clinching. See Reply Br. 7—9 (Trinick Decl.).
The Examiner’s only response to this evidence is to state that “the
examiner submits that those arguments [in the Trinick Declaration] were
fully addressed in the Office action mailed 22 August 2014.” Ans. 11. The
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Appeal 2016-008022
Application 13/056,299
Examiner’s prior response to the Trinick Declaration, however, was merely
to point out that “a similar technique of promoting ductility in the
workpieces can be used in both clinching and SPR technologies.” Non-final
Act. 8 (Aug. 22, 2014). This broad statement, however, does not address the
Appellants’ specific arguments and evidence as to the differences between
SPR and clinching and why one of skill in the art would not replace one kind
of technology, namely lasers, with another technology, ultrasonic energy,
simply because Durandet teaches that using lasers to increase ductility could
be applicable in both SPR and clinching. We acknowledge that the Trinick
Declaration is submitted by one of the inventors and therefore weight should
be given to the Declaration accordingly, but the Examiner essentially
dismisses the Declaration out of hand without specifically addressing the
arguments made therein.
We note also that claim 1 specifically recites “applying continuous
ultrasonic energy to at least one of the workpieces in the joining area around
a perimeter of the rivet.” (Emphasis added). The Examiner, however,
merely finds that Durandet teaches using a laser “in the joining area.” Ans.
3. Also, because none of the references teaching the use of ultrasonic energy
involves rivets, there can be no teaching therein of applying ultrasonic
energy around the perimeter of the rivet. The Examiner, therefore, has not
actually identified an equivalent teaching because “in the area” is not the
same as “around the perimeter of the rivet.” While we appreciate the
Examiner’s logic in general, as specifically applied to the references at issue,
we must acknowledge the declaration evidence submitted against the use of
ultrasonic energy in SPR, when the prior art teaches its use only in clinching.
The Examiner has not adequately addressed the Appellants’ arguments
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Application 13/056,299
against this usage and we cannot simply dismiss the declaration evidence as
the Examiner has done.
As an example, Mr. Trinick states that “if ultrasonic energy were to be
applied by the punch, the acousto-plastic effect would lead to a temporary
increase in ductility of the rivet... [that] would reduce the rivet’s column
strength and detrimentally affect its ability to pierce a workpiece stack.”
Trinick Decl. | 6. Given that lasers and ultrasonic energy work in different
ways, while it may have been possible to use lasers in both SPR and
clinching, it is entirely possible that the more focused energy of a laser could
be more precisely utilized in a manner that ultrasonic energy simply could
not. Again, the Examiner’s finding of applying energy “in the area” does
not address the claimed element of “around the perimeter of the rivet.”
Absent some teaching of utilizing ultrasonic energy in a riveting, or other
piercing fastener, environment, which clinching is not, we simply cannot
support the Examiner’s conclusion over the evidence of record. Because all
of the rejections rely on this deficiency and none of the other references
cures this defect, we do not sustain the Examiner’s rejection of independent
claims 1, 22, and 31 or the claims dependent therefrom.
DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 1—3, 5, 9—26, and 28—32.
REVERSED
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