Ex Parte Whitney

Board of Patent Appeals and Interferences

Jun 9, 2009

10277785 (B.P.A.I. Jun. 9, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WARREN J. WHITNEY1
____________

Appeal 2009-003395
Application 10/277,785
Technology Center 3600
____________

Decided2: June 10, 2009
____________

Before JENNIFER D. BAHR, STEVEN D.A. MCCARTHY, and DANIEL
S. SONG, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 from a Final Rejection
of claims 1-43 and 10-14. Claims 5-9 have been previously withdrawn

1 The real party in interest is Federal-Mogul Worldwide, Inc. (App. Br. 1).
2 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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(App. Br. 1). We have jurisdiction over this appeal under 35 U.S.C. § 6(b)
(2002).
The claimed invention is directed to a connecting rod for an internal
combustion engine, the body of the connecting rod being made of one
composition of a compacted and sintered non-ferrous powder metal, and a
bearing surface of the connecting rod being made of a different composition
of a compacted and sintered non-ferrous powder metal.
Claim 1, the sole independent claim, reads as follows (App. Br.,
Claims App’x.; emphasis added):
1. A powder metal connecting rod for an internal
combustion engine, comprising:
a connecting rod body fabricated of compacted and
sintered non-ferrous powder metal material of a first
composition having a small end opening for connection to a
wrist pin and a large end opening for connection to crank shaft;
and
a bearing surface surrounding at least said large end
opening and fabricated of a non-ferrous powder metal material
of a second composition different from said first composition
and compacted and sintered as one unitized structure with said
connecting rod body.

The prior art relied upon by the Examiner in rejecting the claims is:
Short US 1,831,325 Nov. 10, 1931
Cadle US 6,626,576 B1 Sep. 30, 2003

3 It appears that the Appellant erroneously omitted dependent claim 4 from
the Grounds of Rejection to be Reviewed on Appeal (App. Br. 2). We treat
this omission as a typographical error in view of the fact that claim 4
ultimately depends from independent claim 1, the patentability of claim 1
being argued in the present appeal.
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The Examiner rejected the appealed claims 1-4 and 10-14 under 35
U.S.C. § 103(a) as unpatentable over Short and Cadle.
We REVERSE.

ISSUE
Whether the Appellant has shown that the Examiner erred in rejecting
independent claim 1 as unpatentable because the Examiner’s application of
Short and Cadle fails to result in a connecting rod body and bearing surface
made with compacted and sintered non-ferrous powder metal materials of
different compositions as recited in independent claim 1?
FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Short describes a “connecting rod 2 provided with a
bushing or liner 4 at one end and segmental liners 6 at the
other.” (p. 1, ll. 82-85; fig. 1).
2. The casting and forging process of Short “is particularly
applicable to the treatment of connecting rods made of
aluminum or aluminum alloy, such as aluminum silicon.” (p. 1,
ll. 87-93). However, Short teaches that the bearing member
(i.e, connecting rod body) could be fabricated from any suitable
metal or alloy. (p. 2, ll. 15-24).
3. Short further teaches “that the [bearing] liner be of a
material which is not melted at the pouring temperature of the
metal forming the [connecting rod].” (p. 1, ll. 27-30). In this
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regard, Short “employ[s] liners of porous bronze composition
known commercially as ‘Durex bearings’” (p. 1, ll. 61-66).
4. Thus, Short describes casting an aluminum connecting
rod about a bronze bearing liner, and then, forging the casting
to tighten the connection between the bearing liner and the
connecting rod body. (p. 1, ll. 22-66).
5. However, Short does not describe fabricating a
connecting rod body and/or a bearing liner from different
compositions of compacted and sintered non-ferrous powder
metals.
6. Cadle describes a process for fabricating a main bearing
cap for an internal combustion engine with compacted and
sintered powder metals (col. 2, ll. 15-16; col. 3, ll. 27-65; col. 4,
l. 58 – col. 5, l. 10). Cadle teaches that “[i]n recent years, a new
material process combination has become commercially
applied, namely a sintered powder metal (P/M) steel.” (Col. 1,
ll. 47-49).
7. The body of the main bearing cap of Cadle “is made of a
high strength powder metal material and other parts are made
with a different more machinable powder metal material which
is metallurgically bonded to the body.” (Col. 1, ll. 15-20).
8. Cadle discloses that “the body Y material Q may be
partially or fully hardened during or after sintering to a bainitic
and/or martensitic microstructure, but the soft material P is
chosen such that it does not respond to the hardening process
remaining soft and machinable.” (Col. 6, ll. 17-22).
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9. Cadle further discloses:
For the particular materials to make a bearing cap
of the invention, the softer, more machinable
powder material P may be a low to medium carbon
powder metal steel (e.g., 0-0.7% carbon)
containing a machinability aid including but not
restricted to one or more of copper above 3%,
manganese sulfide up to 1%, boron nitride (non-
cubic) up to 0.2%, magnesium silicate up to 1%,
and calcium fluoride up to 1%. The harder body
material Q may be a 0.45-0.65% carbon, 0.45-
0.65% phosphorus, 2-4% copper powder metal
steel, or a 0.3-0.7% carbon, 0.3% copper steel.

(Col. 6, ll. 23-32).
10. Steel is defined as a “malleable alloy of iron and
carbon…” THE AMERICAN HERITAGE® DICTIONARY (4th ed.
2000). Thus, one of ordinary skill in the art would recognize
that steel is a ferrous material. Moreover, one of ordinary skill
in the art would recognize that bainitic and martensitic
microstructures refer to crystalline microstructures of steel;
bainite being a phase that exists in steel microstructures after
certain heat treatments; and martensite being a very hard form
of steel crystalline structure. See, e.g., MCGRAW-HILL
DICTIONARY OF SCIENTIFIC AND TECHNICAL TERMS (6th ed.
2002).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
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invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-
18 (1966).
The Court also noted that “[t]o facilitate review, this analysis should
be made explicit.” KSR, 550 U.S. at 418 (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) (“[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”)). However, “the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. Oetiker, 977 F.2d at 1445.
One cannot show nonobviousness by attacking references individually
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where the rejections are based on combinations of references. In re Keller,
642 F.2d 413, 426 (CCPA 1981).
A prior art reference must be considered in its entirety, i.e., as a
whole, including portions that would lead away from the claimed invention.
W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1550 (Fed.
Cir. 1983). Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “‘A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference, … would be led in a direction divergent from the path
that was taken by the applicant.’” In re Haruna, 249 F.3d 1327, 1335 (Fed.
Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353,
1360 (Fed. Cir. 1999)). However, “the prior art’s mere disclosure of more
than one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004).

ANALYSIS
The Examiner rejected the appealed claims contending that the
combination of Short and Cadle describes all of the claimed limitations
thereof, and that the combination would have been obvious to one of
ordinary skill in the art in view of the cost savings and vibration reduction
that can be realized (Ans. 3-4). The Appellant only argues the patentability
of independent claim 1 in the Appeal Brief, stating that dependent claims 2-4
and 10-14 “stand or fall together with claim 1.” (App. Br. 2).
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The Appellant asserts that the Examiner failed to establish a prima
facie case of obviousness because the proposed combination does not result
in the claimed invention (App. Br. 2-3 and 5-6). The Appellant argues that
Short “teaches away” from the proposed combination because Short focuses
solely on casting and then forging the connecting rod about a bearing and
does not teach or suggest fabricating a connecting rod body and a bearing
liner from different compositions of compacted and sintered non-ferrous
powder metals (App. Br. 4-5). The Appellant also argues that “the
substitution of the Cadle material called for by the examiner would result in
the connecting rod and bearing liner being fabricated of relatively harder and
softer alloys of steel”, which “fails to meet the requirement of claim 1 which
calls for…both materials to be non-ferrous materials.” (App. Br. 5-6;
emphasis in original).
We first dispense with the Appellant’s “teaching away” argument,
which is unpersuasive. While the Appellant is correct that Short’s teachings
focus on “casting and then forging the connecting rod about [a] bearing”,
Short’s disclosure does not criticize, discredit, or otherwise discourage the
use of other manufacturing processes such as that described in Cadle. See
Fulton, 391 F.3d at 1201. Moreover, the Appellant’s argument attacks the
disclosure of Short separately, even though the rejection also relies on Cadle,
which describes the use of powder metal compacting and sintering (FF 6 and
7). Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Nevertheless, we find the Examiner’s obviousness rejection
unsustainable. Short teaches the use of aluminum and bronze to cast and
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forge a connecting rod (FF 1-4). However, Short does not teach fabricating
a connecting rod body and bearing liner from different compositions of
compacted and sintered non-ferrous powder metals (FF 5). The Examiner
contends that Cadle teaches “a body Q fabricated of compacted and sintered
non-ferrous powder metal material of a first composition and a bearing
surface portion P fabricated of a non-ferrous powder metal material of a
second composition different from the first composition. . . .” and further
relies on Cadle’s disclosure at col. 6, ll. 23-32 (FF 9) to support his finding
that “the materials disclosed by Cadle are non-ferrous.” (Ans. 3-4 and 7;
emphasis added).
We disagree. Cadle merely discloses a process for fabricating a
bearing cap with compacted and sintered ferrous powder metals (FF 6-10;
emphasis added). Thus, the Examiner’s reliance on Cadle for teaching
compacting and sintering of non-ferrous powder metal material is misplaced
and not supported by Cadle’s disclosure. Hence, as argued by the Appellant
(App. Br. 5 and 6), the Examiner’s articulated combination of Short and
Cadle in which Short is modified “with the duplex powder metal bearing
device made by [the] compacting and sintering method as taught by
Cadle. . . .” (Ans. 4) fails to result in the claimed invention.
The Examiner also contends that it would have been obvious to one of
ordinary skill in the art to substitute the bronze material used in Short’s
bearing liner with an aluminum-based metal alloy because “Short discloses
that any suitable alloy can be applied as the bearing material” and “since
such a modification would have involved a mere change in the known
material.” (Ans. 4; FF 2). However, the bearing member described by
Short, and relied upon by the Examiner, corresponds to the connecting rod
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body, not the bearing liner (FF 2). Moreover, Short discourages substituting
the bearing liner material with the same material of the connecting rod body
which is advocated by the Examiner, Short teaching that it is necessary to
use a bearing liner made from a material which does not melt at the pouring
temperature of the metal forming the connecting rod body (FF 3).
Therefore, in view of the above, the Examiner’s obviousness rejection
of claim 1 as set forth in the Answer is not sustained. The Examiner’s
rejection of dependent claims 2-4 and 10-14 that ultimately depend from
claim 1 is also not sustained for the same reasons.

CONCLUSION
The Appellant has shown that the Examiner erred in rejecting claims
1-4 and 10-14 as unpatentable over Short and Cadle.

DECISION
The Examiner’s rejection of claims 1-4 and 10-14 is REVERSED.

REVERSED

rvb

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