Ex Parte Mautino et al

Board of Patent Appeals and Interferences

Aug 10, 2012

10913017 (B.P.A.I. Aug. 10, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER S. MAUTINO and
JOSEPH L. GAGLIARDINO
____________

Appeal 2010-006877
Application 10/913,017
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, JAMES P. CALVE, and
RICHARD E. RICE, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the rejection of claims
44-51, 53-61, and 63-65. App. Br. 4.1 Claims 1-43, 52, and 62 have been
canceled. App. Br. 23-29. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.

1 Refers to the Appeal Brief filed on Oct. 28, 2009.
Appeal 2010-006877
Application 10/913,017

2
CLAIMED SUBJECT MATTER
Claim 44 represents the claimed subject matter on appeal:
44. A railcar coupler knuckle, comprising:
a tail section;
a hub section, said hub section having a pivot pinhole
formed therein, said pivot pinhole having generally straight
cylindrical sidewalls;
a front face section connected to said hub section, said
front face section including a nose section and a pulling face
portion formed inwardly from said nose section, at least a
portion of said pulling face portion including an enhanced
bearing surface area which includes a substantially flat portion
disposed substantially in a vertical direction and which is
substantially arcuate in a horizontal direction, said substantially
flat portion of said enhanced bearing surface area having a
configuration corresponding to a configuration of a portion of a
manufacturing core.

REJECTIONS
Claims 44-46, 48-50, and 53 are rejected under 35 U.S.C. § 102(b) as
anticipated by Hanula (US 4,645,085; iss. Feb. 24, 1987).
Claims 44-51 and 53 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hanula.
Claims 54-61 and 63-65 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Hanula and Murphy (US 5,145,076; iss. Sep. 8, 1992).
Claims 44-46, 48-51, 54-56, 58-61, 64, and 65 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Thrift (US 5,050,751; iss. Sep.
24, 1991) and Murphy.

Appeal 2010-006877
Application 10/913,017

3
ANALYSIS
Claims 44-46, 48-50, and 53 as anticipated by Hanula
Appellants argue claims 44-46, 48-50, and 53 as a group. App. Br.
13-14. We select claim 44 as representative. See 37 C.F.R. 41.37(c)(1)(vii)
(2011). Claims 45, 46, 48-50, and 53 stand or fall with claim 44.
The Examiner found that Hanula discloses a coupler knuckle with an
enhanced bearing surface area having a configuration that is vertically flat
and horizontally arcuate. Ans. 3-4. The Examiner interpreted claim 44 to
claim a coupler knuckle and the limitation “said substantially flat portion of
said enhanced bearing surface area having a configuration corresponding to
a configuration of a portion of a manufacturing core” as a mere reference to
an unclaimed manufacturing process, in the nature of a product-by-process
limitation, that does not distinguish the claimed subject matter over the
coupler knuckle of Hanula, which has the same structure as the claimed
coupler knuckle. Ans. 4-5, 10 (citing MPEP 2113 for the proposition that
patentability is based on the product itself in the case of product-by-process
claims).
Appellants argue that claim 44 recites an enhanced bearing surface
with a substantially flat portion having a configuration corresponding to a
configuration of a portion of a manufacturing core. App. Br. 13. Appellants
also argue that claim 44 does not claim a manufacturing core, but claims a
coupler knuckle with an enhanced bearing surface that corresponds to a
configuration of a portion of a manufacturing core. App. Br. 14. Appellants
further argue that even if the manufacturing core is a process limitation, it
must be given consideration to the extent it distinguishes the product over
the prior art. App. Br. 14. Appellants assert that claim 44 “recites elements
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Appeal 2010-006877
Application 10/913,017

5
Appellants’ arguments do not persuade us that the structure of the
claimed enhanced bearing portion differs from the structure of Hanula’s
coupler knuckle due to the use of a manufacturing core. Appellants assert
repeatedly that the claimed bearing surface differs from that disclosed in
Hanula due to the use of a manufacturing core, but Appellants do not point
to any structure of the claimed bearing surface that differs from Hanula’s
substantially flat portion and substantially arcuate portion. See Hazani v.
United States Int’l Trade Comm’n, 126 F.3d 1473, 1479 (Fed. Cir. 1997)
(“chemically engraved” limitation imparts structure to claimed product but
chemically engraved products of Hazani’s patent were identical for all
relevant purposes to product disclosed in prior art Kuo patent); In re Marosi,
710 F.2d 799, 803 (Fed. Cir. 1983) (where a product-by-process claim is
rejected over a prior art product that appears to be identical, although
produced by a different process, the burden is upon applicants to come
forward with evidence establishing an unobvious difference between the
claimed product and the prior art product).
As such, we sustain the rejection of claims 44-46, 48-50, and 53.
Claims 44-51 and 53 as unpatentable over Hanula
Appellants argue claims 44-51 and 53 as a group. App. Br. 14-18.
We select claim 44 as representative. See 37 C.F.R. 41.37(c)(1)(vii) (2011).
Claims 45-51 and 53 stand or fall with claim 44.
The Examiner found that Hanula discloses a coupler knuckle with the
structure recited in claim 44. Ans. 5. The Examiner also found that Hanula
discloses a coupler knuckle that is made by casting with a core and mold and
determined that it would have been obvious to use a manufacturing core or
mold with a similar or “corresponding” configuration to the structure being
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Application 10/913,017

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cast to produce a cast coupler knuckle with a desired configuration. Ans. 5-
6 (citing Hanula, col. 4, l. 49 to col. 5, l. 3). The Examiner interpreted the
term “corresponding” to mean “to be similar or equivalent in character,
quantity, origin, structure, or function” so that any minor variations between
the mold or core and the final product of Hanula (coupler knuckle) would
have a configuration “corresponding” to the configuration of a portion of the
manufacturing core. Ans. 6 (citing AMERICAN HERITAGE DICTIONARY).
Appellants argue that Hanula’s cores create internal cavities and do
not correspond to any exterior surface. App. Br. 15, 17. Appellants also
argue that the Examiner has not cited anything to show that it would have
been obvious to make an enhanced bearing surface having a configuration
that corresponds to a configuration of a portion of a manufacturing core.
App. Br. 15. Appellants further argue that Hanula discloses no such core
and therefore does not disclose a final product with surfaces having a
configuration corresponding to such a manufacturing core. Reply Br. 4.
As discussed supra, the Examiner had a sound basis for finding that
Hanula discloses the structure of the claimed bearing surface, and Appellants
have not shown that the claimed bearing surface differs from that of Hanula.
The Examiner also had a sound basis for finding that Hanula discloses a
casting process that uses a core to fabricate a structure that corresponds to
the configuration of the core and that it would have been obvious to use a
manufacturing core or mold to make the claimed enhanced bearing surface
such that the configuration of the bearing surface would correspond to the
configuration of the core. Ans. 10. Although Hanula uses cores to create
internal cavities, Appellants’ arguments do not persuade us of error in the
Examiner’s finding that Hanula teaches the use of cores to form structures,
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7
the configurations of which correspond to the configuration of a core, and
that it would have been obvious in forming an enhanced bearing surface by
such process to form a bearing surface that corresponds to a configuration of
a portion of the manufacturing core.
As such, we sustain the rejection of claims 44-51 and 53.
Claims 54-61 and 63-65 as unpatentable over Hanula and Murphy
Appellants argue claims 54-61 and 63-65 as a group and separately
argue claim 65. App. Br. 18-19. We select claim 54 as representative and
address Appellants’ arguments for claim 65. Independent claim 54 recites a
railcar coupler system with
at least a portion of said pulling face portion
including an enhanced bearing surface area which
includes a substantially flat portion disposed
substantially in a vertical direction and which is
substantially arcuate in a horizontal direction, said
substantially flat portion of said enhanced bearing
surface area having a configuration corresponding
to a configuration of a portion of a manufacturing
core.
The Examiner found that Hanula discloses a coupler system with an
enhanced bearing surface and Murphy discloses a pinhole with a generally
straight cylindrical sidewall. Ans. 7-8, 11-12. The Examiner also found that
Hanula’s substantially flat portion extends for a predetermined distance in a
vertical direction and a predetermined length along a horizontal direction
that would correspond to dimensions of a manufacturing core. Ans. 11-12
(citing to annotations of Figures 2 and 4 of Hanula illustrated at page 4 of
the Answer).
Appellants argue that “Hanula neither anticipates nor renders obvious
a knuckle portion with an enhanced bearing surface with a substantially flat
Appeal 2010-006877
Application 10/913,017

8
portion having a configuration corresponding to a configuration of a portion
of a manufacturing core.” App. Br. 18. As discussed supra, however, the
Examiner had a sound basis for finding that Hanula discloses the claimed
structure.
Appellants argue that the Examiner has not cited to any portion of
Hanula or Murphy that discloses the substantially flat portion extending for a
predetermined distance in a vertical direction and predetermined length in a
horizontal direction that correspond to dimensions of a manufacturing core
and mold cavity as called for in claim 65. App. Br. 19; Reply Br. 6 (“The
Examiner still fails to cite to any portion of Hanula or Murphy as disclosing
these elements or providing any reason or suggestion that these elements
would have been obvious.”). These arguments do not apprise us of error in
the Examiner’s findings that Hanula discloses these features as set forth in
the previous two rejections. Ans. 12 (incorporating previous findings such
as annotated Figures 2 and 4 of Hanula and findings that Hanula discloses a
manufacturing core that forms corresponding portions of a coupler knuckle
with predetermined distance and predetermined length).
As such, we sustain the rejection of claims 54-61 and 63-65.
Claims 44-46, 48-51, 54-56, 58-61, 64, and 65 as unpatentable over Thrift
and Murphy
Appellants argue claims 44-46, 48-51, 54-56, 58-61, 64, and 65 as a
group. App. Br. 19-21. We select claim 44 as representative. Claims 45,
46, 48-51, 54-56, 58-61, 64, and 65 stand or fall with claim 44.
The Examiner found that Thrift discloses a coupler knuckle 30 that
includes a pin hole 21, tail section, front face and nose, and a pulling face
section with a bearing surface that is substantially flat in a vertical direction
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Application 10/913,017

9
and substantially arcuate in a horizontal direction. Ans. 7-8 (citing fig. 6).
The Examiner found that Murphy discloses a pinhole with generally straight
cylindrical sidewalls. Ans. 8 (citing fig. 7). The Examiner interpreted claim
44 to cover a coupler knuckle such that recitation of a manufacturing core or
mold, or combination, provides no further distinction of the claimed subject
matter over Thrift’s coupler knuckle having the same structure. Ans. 8-9.
Appellants argue that claim 44 does not claim a manufacturing core,
but instead claims a railcar coupler knuckle with elements that define the
configuration of a surface of the coupler knuckle. App. Br. 20. Appellants
also argue that claim 44 recites the configuration of the coupler knuckle as
corresponding to a configuration of a portion of a manufacturing core and
these features “structurally distinguish the claimed invention from other
railcar coupler knuckles that do not have bearing surface configurations that
correspond to a configuration of a portion of a manufacturing core.” App.
Br. 20; Reply Br. 6-7. Appellants further argue that the Examiner cites to
nothing in Thrift or Murphy as disclosing or rendering obvious these
elements. Reply Br. 7.
Appellants’ arguments do not persuade us of error in the Examiner’s
findings that Thrift has an enhanced bearing surface with a substantially flat
portion disposed substantially in a vertical direction and that is substantially
arcuate in a horizontal direction. Ans. 7-8 (citing fig. 6). The Examiner had
a sound basis for these findings and Appellants have not shown that Thrift
does not disclose the claimed structure of the bearing surface or that the use
of a manufacturing core or mold results in a structure of the claimed bearing
surface that differs from the structure of Thrift. Ans. 8-9. As such, we
sustain the rejection of claims 44-46, 48-51, 54-56, 58-61, 64, and 65.
Appeal 2010-006877
Application 10/913,017

10
DECISION
We AFFIRM the rejection of claims 44-46, 48-50, and 53 under 35
U.S.C. § 102(b) as anticipated by Hanula.
We AFFIRM the rejection of claims 44-51 and 53 under 35 U.S.C. §
103(a) as unpatentable over Hanula.
We AFFIRM the rejection of claims 54-61 and 63-65 under 35 U.S.C.
§ 103(a) as unpatentable over Hanula and Murphy.
We AFFIRM the rejection of claims 44-46, 48-51, 54-56, 58-61, 64,
and 65 under 35 U.S.C. § 103(a) as unpatentable over Thrift and Murphy.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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