Wolfgang Jekel et al.

Patent Trials and Appeals Board

Oct 9, 2020

13881033 - (D) (P.T.A.B. Oct. 9, 2020)

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.
13/881,033 04/23/2013 Wolfgang Jekel ZF P812US 8010
20210 7590 10/09/2020
DAVIS & BUJOLD, P.L.L.C.
112 PLEASANT STREET
CONCORD, NH 03301
EXAMINER
YOO, JUN S
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
10/09/2020 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):
mbujold@nhpat.com
patent@nhpat.com
tclark@nhpat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WOLFGANG JEKEL, FRANK NACHBAR, HAUKE FRENZEL,
IGNACIO LOBO CASANOVA, ANDREAS TEMMEN,
and CHRISTIAN STELTER
____________

Appeal 2020-001012
Application 13/881,033
Technology Center 3700
____________

Before ANTON W. FETTING, AMEE A. SHAH, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 18–37, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as “ZF
FRIEDRICHSHAFEN AG.” Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The Appellant’s invention “concerns a method for producing a chassis
component.” Spec. ¶ 4. In particular, “the purpose of the present invention
is to protect a chassis component . . . more effectively against corrosion,” the
chassis component comprising “a structural component and one or more
joints solidly connected thereto.” Id. ¶¶ 7, 11.
Claims 18, 30, and 35 are the independent claims. Claim 18 is
illustrative of the subject matter on appeal and is reproduced below (with
added bracketing for reference):
18. A method of producing a chassis component, the method
comprising:
[(a)] forming a joint holder (15) in a planar member of a
structural component (3), and the planar member of the structural
component having a material thickness;
[(b)] forming a joint cartridge (5) from a single piece of
material which has a unitary wall (14) that delimits an inside
space and the single piece of material defines both a permanently
closed end and a single opening (7) opposing the permanently
closed end;
[(c)] inserting the joint cartridge (5) into the joint holder
(15) so that the single opening (7) of the joint cartridge (5) is
inserted first through the joint holder (15) of the structural
component (3), the joint cartridge defining a central axis and
having a collar (16) comprising a radially extending surface, and
the joint cartridge (5) being inserted into the joint holder (15)
until an entirety of the radially extending surface of the collar
(16) of the joint cartridge (5) abuts the joint holder (15) such that
the structural component (3) is located between the collar (16) of
the joint cartridge (5) and the single opening (7) in the joint
cartridge (5);
[(d)] assembling a bearing shell (12) and a joint ball (11)
of a ball stud (6) through the single opening of the joint cartridge
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(5) to form a ball joint (2), securing the ball joint (2) in the joint
cartridge (5) by curving the wall (14) of the single piece of
material, adjacent the single opening (7), inwardly to reduce a
diameter of the single opening (7) so that the reduced diameter
of the single opening (7) solely secures the bearing shell (12) and
the joint ball (11) within the joint cartridge (5);
[(e)] welding the joint cartridge (5) to the structural
component (3) via a weld zone (18) to form a solid connection,
the structural component (3) being sandwiched between the weld
zone (18) and the collar (16) and the weld zone (18), which is
formed by welding the joint cartridge (5) to the structural
component (3), is located between the structural component (3)
and the single opening (7) in the joint cartridge (5); and
[(f)] covering the weld zone (18), formed during the
welding, with a sealing bellows (8), which covers the weld zone
and abuts against the structural component (3) and provides
protection of the weld zone (18) against corrosion.
Appeal Br. 12–13 (Claims App.).

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Stephenson US 3,574,363 Apr. 13, 1971
Pyles US 4,283,833 Aug. 18, 1981
Nordloh et al. (“Nordloh”) US 5,601,305 Feb. 11, 1997
Ersoy et al. (“Ersoy”) US 2004/0170470 A1 Sept. 2, 2004
Motofumi2 JP 2006307970 (A) Nov. 9, 2006
Boltshauser US 2009/0003972 A9 Jan. 1, 2009

2 We rely on the English translation entered into the record by the Examiner
on June 1, 2015.
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REJECTIONS
Claims 18, 20–28, 30–35, and 37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Motofumi and Pyles.
Claim 19 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Motofumi, Pyles, Stephenson, and Boltshauser.
Claim 29 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Motofumi, Pyles, and Nordloh.
Claim 36 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Motofumi, Pyles, and Ersoy.

OPINION
The Appellant does not argue the rejections of claims 18–37
separately. Therefore, we consider these claims as a group with claim 18
representative and the rejections of claims 19–37 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).
The Appellant contends that the Examiner’s rejection of independent
claim 18 is in error because: (1) Motofumi does not teach a planar member
of a structural component as recited in limitation (a) (see Appeal Br. 5);
(2) Motofumi does not teach a housing formed from a single piece of
material as recited in limitation (b) (see id. at 6); and (3) the Examiner relies
on hindsight reasoning for combining Motofumi with Pyles (see id. at 10).
For at least the following reasons, we are not persuaded of error on the part
of the Examiner by these arguments.
Regarding limitation (a) requiring “a planar member of a structural
component,” the Examiner finds Motofumi’s structural component, arm 31,
has a planar member, flat portion of plate surface 49. Final Act. 2; Ans. 20.
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The Appellant argues that “49 is NOT planar, but has a large curved section
(burr) that separates the base of the bellows 14 from the collar 11.” Appeal
Br. 5 (italics omitted). However, as the Examiner points out, the Examiner
does not rely on Motofumi’s burring part 32 as teaching the planar member;
rather, the Examiner relies on the flat portion of plate surface 49 as the
planar member of arm 31. Ans. 20. The Examiner’s finding is supported.
See, e.g., Motofumi 1, Fig. 1. We note that the claim requires only that there
be a planar member of a structural component, i.e., at least a portion of the
structural component be planar; it does not require the entire structural
component be planar.
The Appellant’s argument regarding limitation (b)’s requirement of a
housing formed from a single piece (see Appeal Br. 6) is unpersuasive
because the Appellant argues against Motofumi individually when the
Examiner relies on the combination of Motofumi and Pyles for teaching this
limitation. The test for obviousness is not what any one reference would
have suggested, but rather what the combined teachings of the references
would have suggested to those of ordinary skill in the art. See In re Keller,
642 F.2d 413, 426 (CCPA 1981). “[O]ne cannot show non-obviousness by
attacking references individually were, as here, the rejections are based on
combinations of references.” Id. (citation omitted). Here, the Examiner
finds “Motofumi does not explicitly teach . . . forming a joint cartridge from
a single piece of material” (Final Act. 3) and relies on Pyles for correcting
this deficiency (see id. at 4). The Appellant does not provide argument or
technical reasoning to rebut the Examiner’s finding that Pyles teaches
forming a joint cartridge from a single piece of material.
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The Appellant’s arguments that the Examiner relies on hindsight
reasoning (see Appeal Br. 10) are unpersuasive of error because the
Appellant does not provide sufficient argument, details, or technical
reasoning why the Examiner’s articulated reasoning is ineffective to support
the conclusion of obviousness. Here, the Examiner articulates clear reasons
why it would have been obvious to one of skill in the art to “replace the
collar (11) of Motofumi having filleted corners with the collar (64) of Plyes
[sic] having acute corners as shown in Fig. 1 of Pyles,” “integrate the multi-
part socket (8) of Motofumi with a closing plate (13) to form a single-piece
socket (42) as taught by Plyes [sic],” “replace the stopping ring (51) of
Motofumi with the weld (50) of Plyes [sic],” and “replace the flanged hole
of Motofumi having a burring part (32) with a plain hole (24) of Plyes [sic].”
Final Act. 4–5. The Examiner thus establishes a prima facie case of
obviousness as the Examiner has provided articulated reasoning with
rational underpinning to support a legal conclusion of obviousness. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). The Appellant does not
provide sufficient evidence or technical reasoning why the Examiner’s
reasons are in error. See In re Eli Lilly & Co., 902 F.2d 943, 945 (Fed. Cir.
1990). Rather, the Appellant simply argues that “[n]either Pyles ’833, nor
Motofumi ’970, say anything of” the reasons stated by the Examiner.
Appeal Br. 10 (italics and underlining omitted). The Appellant’s argument
amounts to an argument that the Examiner’s reasoning is in error because
the cited references do not explicitly provide a motivation to arrive at the
proposed combination. However, there is no rigid requirement that the prior
art explicitly disclose a particular benefit. As our reviewing court has stated:
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KSR expanded the sources of information for a properly flexible
obviousness inquiry to include market forces; design incentives;
the “interrelated teachings of multiple patents”; “any need or
problem known in the field of endeavor at the time of invention
and addressed by the patent”; and the background knowledge,
creativity, and common sense of the person of ordinary skill.
Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir.
2009) (citing KSR, 550 U.S. at 418–21). The Appellant fails to address why
the Examiner’s articulated reasoning is incorrect, is based on the Appellant’s
Specification, or is otherwise ineffective to support the conclusion of
obviousness.
For the above reasons, we are not persuaded of Examiner error, and
we sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent
claim 18 and the rejections of claims 19–37 that stand with that of claim 18.
CONCLUSION
The Examiner’s decision to reject claim 18–37 under 35 U.S.C.
§ 103(a) is sustained.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
18, 20–28,
30–35, 37
103(a) Motofumi, Pyles 18, 20–28,
30–35, 37

19 103(a) Motofumi, Pyles,
Stephenson,
Boltshauser
19
29 103(a) Motofumi, Pyles,
Nordloh
29
36 103(a) Motofumi, Pyles,
Ersoy
36
Overall
Outcome
18–37
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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)(1)(iv).

AFFIRMED