Ex Parte Ruehl

Patent Trial and Appeal Board

Dec 12, 2012

11279321 (P.T.A.B. Dec. 12, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PHILLIP C. RUEHL
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Appeal 2012-009630
Application 11/279,321
Technology Center 3600
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Before GAY ANN SPAHN, EDWARD A. BROWN, and
NEIL T. POWELL, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Phillip C. Ruehl (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejections of claims 1, 4-6, and 9-16. Appellant cancelled
claims 2, 3, 7, 8, and 17. Appellant’s representative presented oral argument
on December 7, 2012. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

Appeal 2012-009630
Application 11/279,321

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The Claimed Subject Matter
The claimed subject matter relates to “the use of frame rails” in
automotive vehicles. Spec. 1, ll. 3-5. Claims 1, 10, 11, and 15 are
independent and claim 1, reproduced below, is illustrative of the subject
matter on appeal.
1. A box-type structural assembly
comprising;
a first section having a web and a pair of
flanges;
a second section having a web and a pair of
flanges;
a first locator disposed on the web of the
first section, and a second locator disposed on the
web of the second section;
at least one spacer positioned by the first and
second locators between the webs of the first and
second sections, the spacer having a first end and a
second end, wherein the first end of the spacer is
positioned around the first locator and the second
end of the spacer is positioned around the second
locator;
wherein the locators comprise opposed
cupped holes in the webs of the first and second
sections, wherein each cupped hole is defined by a
raw edge that has been cupped away from the
respective web to form a lip structure that extends
toward an opposing cupped hole, such that the
cupped hole on the locator of the first section has a
lip structure extending toward the locator of the
second section and the cupped hole on the locator
of the second section has a lip structure extending
toward the locator of the first section;
wherein the lip structures of the cupped
holes extend into void areas of the spacer; and
securing means for securing the flanges of
the first and second sections together.
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Application 11/279,321

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The Rejections
The following Examiner’s rejections are before us for review:
(1). claims 1, 4, and 10-15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over DiCesare (US 2006/0091701 A1, published May 4, 2006)
and Valin (US 6,186,696 B1, issued Feb. 13, 2001); and
(2). claims 5, 6, 9, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over DiCesare, Valin, and Pinzl (US 2005/0117997 A1,
published Jun. 2, 2005).

OPINION
Rejection (1) – Obviousness based on DiCesare and Valin
The Examiner finds that DiCesare substantially discloses the subject
matter of independent claims 1, 10, 11, and 15, but fails to disclose that the
lip, lips or lip portion extend(s) into void area(s) of the spacer or into the
spacer itself. Ans. 5-9. To cure the deficiency of DiCesare, the Examiner
turns to Valin for its teaching of a member 10, shown in Figures 1 and 3,
that has a spacer 16 and edges 18 that extend into the void of the spacer.
Ans. 6-9. The Examiner concludes that it would have been obvious to one
of ordinary skill in the art to modify DiCesare “to have the lip portion extend
into the void because the members are functional equivalents and would
perform equally as well.” Ans. 6; see also Ans.7-8, 8-9, and 9.
Appellant argues that “the ‘members’ in Valin and DiCesare are not
functional equivalents,” as they serve very different functions. App. Br. 16.
In particular, Appellant argues that the DiCesare member “is intended to
allow manufacturing pilots during the manufacturing process, and bolts or
other fasteners when the resulting frame is in use, to pass in and out of the
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Application 11/279,321

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spacer void, multiple times, with ease,” whereas the Valin member “is
intended to mechanically force, by pressing, a single cylindrical part into a
tubular part to form one cruciform part, strongly implying that a substantial
amount of force must be applied during the pressing operation.” App. Br.
16-17.
The Examiner responds that the DiCesare and Valin “members are
functional equivalents in that they provide a stiffening effect and a
reinforcement effect.” Ans. 13. The Examiner cites to the proposition that
“[i]n order to rely on equivalence as a rationale for supporting an
obviousness rejection, the equivalency must be recognized in the prior art,
and cannot be based on applicant’s disclosure or the mere fact that the
components at issue are functional or mechanical equivalents.”1 Ans. 13-14.
In applying this proposition to the present facts, the Examiner reasons that
the member 10 of DiCesare and the member 10 of Valin are obvious
functional equivalents because “the[y] achieve the same function as
provided in the prior art: to provide a support for the opening,” because
“[i]n each case, the spacer (DiCesare: 14 and Valin: 16) provide a strength to
the opening that would not otherwise be present.” Ans. 14. The Examiner
concludes that “this function is the same and the combination [of DiCesare
and Valin] is proper.” Id.
Appellant replies that “[t]he Examiner does not . . . show how the
prior art has recognized those two structures as equivalents, but rather
simply provides arguments that the two different structures accomplish the

1 The Manual of Patent Examining Procedure (MPEP) § 2144.06 II, entitled
“Substituting Equivalents Known For The Same Purpose,” citing In re Ruff,
256 F.2d 590 (CCPA 1958).
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same function,” and “[t]he Examiner even refers to [Appellant’s] own
disclosure, even though such reference is prohibited by . . . Ruff.” Reply Br.
3-4.
We agree with Appellant. The Examiner has failed to establish the
functional equivalence of the members of DiCesare and Valin, because the
spacer 14 of DiCesare appears to serve a support function (DiCesare, para.
[0015], referring to reference numeral 14 as a “support tube”) and the spacer
16 of Valin appears to serve the function of a die for forming the upstanding
rims 18 (Valin, col. 5, ll. 61-63). Even if DiCesare’s frame member
assembly 10 having a spacer (support tube 14) and Valin’s assembly 10 of
cylindrical part 11 and tubular part 12 having spacer 16 are functional
equivalents as asserted by the Examiner, this is not enough to support
equivalency as a rationale for obviousness according to Ruff. Since the
Examiner has not established that the purported equivalency between
DiCesare and Valin is recognized in the prior art as is required by Ruff, the
Examiner improperly relied on equivalence as a rationale for supporting an
obviousness rejection. Thus, we conclude that the Examiner’s articulated
reasoning for modifying DiCesare to have the lip portion extend into the
void by the teaching of Valin, i.e., “because the members are functional
equivalents and would perform equally as well,” does not have a rational
underpinning. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(holding that “rejections 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.”).

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Application 11/279,321

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Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1, 10, 11, and 15, and claims 4 and 12-14 dependent on
claims 1 and 11, respectively, under 35 U.S.C. § 103(a) as unpatentable over
DiCesare and Valin.

Rejection (2) – Obviousness based on DiCesare, Valin, and Pinzl
Claims 5, 6, and 9 depend indirectly from independent claim 1 and
claim 16 depends directly from independent claim 15. The Examiner’s
rejection of claims 5, 6, 9, and 16 relies upon the same reason without
rational underpinning as discussed supra with respect to independent claims
1 and 15. Thus, for the same reasons as discussed supra with respect to
independent claims 1 and 15, we do not sustain the Examiner’s rejection of
claims 5, 6, 9, and 16 under 35 U.S.C. § 103(a) as unpatentable over
DiCesare, Valin, and Pinzl.

DECISION
We reverse the Examiner’s decision to reject claims 1, 4-6, and 9-16.

REVERSED

Klh