Ex Parte Siller et al

Patent Trial and Appeal Board

Nov 28, 2016

12966964 (P.T.A.B. Nov. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/966,964 12/13/2010
60601 7590 11/29/2016
Muncy, Geissler, Olds & Lowe, P,C,
4000 Legato Road
Suite 310
FAIRFAX, VA 22033
FIRST NAMED INVENTOR
Juergen Siller
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1004/0131PUS1 9770
EXAMINER
KELLEHER, WILLIAM J
ART UNIT PAPER NUMBER
3658
MAILDATE DELIVERY MODE
11/29/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUERGEN SILLER, FRIEDER KRUEGER,
ANDRE BLINZLER, STEPHANIE HARTLEB, MATTHIAS WEISS,
MICHAEL ZELLMANN, and VOLKER MOELLER
Appeal2015-000905
Application 12/966,964
Technology Center 3600
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-10 as unpatentable under 35 U.S.C. § 103(a) over
Lange (US 7,461,900 B2, iss. Dec. 9, 2008). 1 We have jurisdiction under 35
U.S.C. § 6(b ).
We REVERSE.
1 A rejection of claims 9 and 10 under 35 U.S.C. § 112, second paragraph, is
withdrawn in response to an after final amendment filed by Appellants.
Ans. 7.
Appeal2015-000905
Application 12/966,964
THE INVENTION
Appellants' invention relates to a method for manufacturing an
adjustment fitting for a motor vehicle seat. Spec. i-f 3. Claim 1, reproduced
below, is illustrative of the subject matter on appeal.
1. A method for manufacturing an adjustment fitting for a motor
vehicle seat having an outer wheel with internal teeth that are
associated with a first fitting part, and having an inner wheel
with external teeth that are associated with a second fitting
part, the method comprising:
inserting the inner wheel with the external teeth
eccentrically to an axis of rotation, in the manner of a wobble
mechanism, in the outer wheel with the internal teeth,
placing eccentric cam parts that form a variable eccentricity
such that the eccentric cam parts are rotatable with respect to
one another in an eccentric receiving space formed between the
axis of rotation and the inner wheel; and
providing a transmission element having engagement
elements, the transmission element being configured to actuate
the eccentric cam parts and is employed such that the
engagement elements work together with carrier elements of the
eccentric cam parts,
wherein a measurement of the geometry of the inserted
eccentric cam parts is made after said placing the eccentric cam
parts and the geometry of the transmission element is
individually matched based on the measurement data before
insertion of the transmission element, said measurement of the
geometry of the inserted eccentric cam part comprising an angle
of rotation of the eccentric cam parts relative to one another.
OPINION
Unpatentability of Claims 1-7, 9, and 10
The Examiner finds that Lange discloses all of the elements of claim 1
except that it is silent regarding the claimed sequence of the measuring and
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Application 12/966,964
matching steps. Final Action 4--5. The Examiner finds that the
measurement step is inherently met by Lange. Id. at 3--4.
One skilled in the art would recognize that the material
mechanical components are formed from (e.g. metal, steel, etc.)
inherently require [sic] reshaping in order for the components to
properly fit together with adjacent components.
Id. at 4. The Examiner finds that one of ordinary skill in the art would have
recognized that a change in sequence of when the cam parts are measured is
a matter of engineering design, suited to the intended use of the device. Id.
at 5 (citing In re Burhans, 154 F .2d 690 ( CCP A 1946) ). The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time the invention was made to change Lange's sequence of
measuring for the predictable result of increasing the efficiency of
manufacturing. Id.
Appellants traverse the Examiner's rejection by arguing that Lange
does not teach the step of measuring, or the sequence of the measuring step.
Appeal Br. 8. Appellants argue that there is no evidence in Lange to support
the position that measurement of the elements during manufacturing
inherently takes place. Id. at 8-9. Appellants argue that Lange does not
teach or suggest a method for compensating for manufacturing tolerances.
Id. Moreover, Appellants argue that Lange fails to teach or suggest that the
geometry of the eccentric cam parts is measured after assembly of the cam
parts. Id. at 9-10.
In response, the Examiner defends the inherency finding of the final
action, noting that Lange's eccentric cam parts (12, 20) are created in a
particular dimension, weight, size, and orientation in order to engage and
communicate with other parts. Ans. 9-10. Consequently, the size and
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Application 12/966,964
dimensions of individual parts within an assembly are constn.1cted to
physically match and communicate with other components. Id. at 10.
According to the Examiner, this constitutes "measurement." Id. at 9 (citing
Merriam Webster's Dictionary 10th Ed.).
With respect to the sequential order of steps, the Examiner reiterates
the position from the final action that "one of ordinary skill in the art would
have recognized that the change in sequence of when the measurement of
the geometry of the inserted eccentric cam parts is made after said placing is
a matter of engineering design, suited to the intended use of the device." Id.
at 11. The Examiner reiterates that the change of sequence can be utilized
for the predictable result of increasing the efficiency of manufacturing by
making products in an order convenient for construction. Id. The Examiner
takes the position that the order of performing process steps is prima facie
obvious in the absence of new or unexpected results. Id. (citing Burhans,
154 F.2d at 690). The Examiner observes that Appellants tout the claimed
sequence of steps as maximizing compatibility based on matching measured
machine tolerances; however, the Examiner reasons that such a result is
neither new nor unexpected. Id.
In reply, Appellants argue that the Examiner focuses on the
dimensions of individual parts of the assembly, which Appellants contend is
unrelated to the claimed invention. Reply Br. 3.
That is, while it may be accurate to assume that the individual
components were indeed measured at the time they were
manufactured, Lange does not teach or suggest, explicitly or
inherently, that the individual components are also measured
during the assembly of the adjustment fitting. Indeed, as
previously explained, conventionally, for manufacturing
reasons, the individual parts of adjustment fittings have
deviations from the norm with respect to their geometry
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parameters. That is, manufacturing tolerances are typically
permitted and always present in the individual parts.
Id. Appellants argue that the Examiner's findings regarding measurement of
parts occurs at the time that the parts are manufactured and that it is not
obvious to measure the eccentric cam during assembly. Id.
Although the Examiner provides no supporting evidence, we tend to
agree with the Examiner that it is conventional in the design and
manufacture of component parts of an overall larger assembly to design and
make the parts in accordance with predetermined, specified dimensions. We
also agree that it is conventional in such process to compare the dimensions
of one part with the dimensions of another part, among other things, to
ensure that the parts will complement each other. This process can properly
be considered "measurement of the geometry of ... parts" within a broad,
but reasonable, construction of "measure." We also tend to agree with the
Examiner that Burhans generally stands for the proposition that sequencing
the order of performing process steps is prima facie obvious in the absence
of new or unexpected results.
In the instant case, however, geometric measurement of cam parts is
"individually matched." Claims App., claim 1. As we understand the
claimed method in view of the Specification, the method requires measuring
and comparing the measured geometry of an actual, manufactured cam
part 30 to the measured geometry of an actual, manufactured cam part 32.
This situation is different, for example, from comparing the measured
geometry of an actual, manufactured cam part to an objective standard, such
as engineering CAD drawings, as might be accomplished during an interim,
work-in-progress quality control inspection during the manufacturing
process.
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Thus, even if it is inherent in Lange to measure the cam parts, we
agree with Appellants that the Examiner has not established that Lange
teaches or suggests measuring an actual cam part (such as cam part 30) and
individually matching it to another cam part (such as cam part 32). The
Examiner's underlying fact findings also are not sufficient to support a
conclusion that it would have been obvious to a person of ordinary skill in
the art to measure and compare one actual part to another for purposes of
individually matching them during the assembly process, and the Examiner
does not provide any reason to modify Lange to meet these limitations.
In view of the foregoing, we do not sustain the rejection of claim 1,
neither do we sustain the rejection of claims 2-7, 9, and 10, that depend
therefrom. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992)
(dependent claims are nonobvious if the independent claims from which
they depend are nonobvious ).
Unpatentability of Claim 8
Claim 8 is an independent claim that, like claim 1, contains a
limitation directed to individually matching the geometry of cam parts.
Claims App. Consequently, we do not sustain the rejection of claim 8 for
the reasons expressed above with respect to claim 1.
DECISION
The decision of the Examiner to reject claims 1-10 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
REVERSED
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