Ex Parte Wirth

Patent Trials and Appeals BoardJun 24, 2019

12566294 - (D) (P.T.A.B. Jun. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/566,294 09/24/2009 53609 7590 06/26/2019 REINHART BOERNER VAN DEUREN P.C. 2215 PERRYGREEN WAY ROCKFORD, IL 61107 FIRST NAMED INVENTOR Georg Wirth 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. 507529 2143 EXAMINER GAMINO, CARLOS J ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 06/26/2019 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): RockMail@reinhartlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEORG WIRTH Appeal2018-007025 Application 12/566,294 Technology Center 1700 Before GEORGE C. BEST, N. WHITNEY WILSON, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellant2 appeals under 35 U.S.C. Â§ 134(a) from the Examiner's Final Rejection of claims 1-4, 10, 13, 14, and 16-21, which constitute all the claims pending in this application. We have jurisdiction. 35 U.S.C. Â§ 6(b ). We REVERSE. 1 In our Decision, we refer to the Specification ("Spec.") of Application 12/566,294 ('"294 Appn") filed September 24, 2009; the Final Office Action dated November 17, 2017 ("Final Act."); the Appeal Brief filed February 20, 2018 ("App. Br."); the Examiner's Answer dated May 2, 2018 ("Ans."); and the Reply Brief filed July 2, 2018 ("Reply Br."). 2 Appellant identifies Eberspaecher Exhaust Technology GmbH & Co. KG as the real party in interest. App. Br. 2. Appeal2018-007025 Application 12/566,294 This is the second time claims for a method described by the '294 Application have come before us on appeal. In our prior decision, in Appeal 2015-003731 (entered Nov. 2, 2016), we affirmed obviousness rejections over two sets of prior art. In due course, Appellant filed a Request for Continued Examination under 37 C.F.R. Â§ 1.114 with amended claims, and there came a time when this appeal from rejections was filed. The claims are directed to a method of joining two components, at least one of which is a tubular component. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief (with some indentation, paragraphing, and italicizing added), illustrates the claimed subject matter: 1. A method for the joining of two components of which at least one is tubular in shape, comprising the steps of: providing a ring-shaped joining element having at least an outer cone on an axial side, the ring shaped joining element defining a passage therethrough having a diameter substantially smaller than an inner diameter of the tubular component, wherein the outer cone is axially pressed into an axial end section of the tubular component, as a result of which the axial end section of the tubular component widens along the outer cone; wherein, on an axial end of the widened axial end section and on the joining element, a circumferential weld seam is produced; and wherein a second component on an axial end section thereof is joined with the joining element. 2 Appeal2018-007025 Application 12/566,294 REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Williams et al. ("Williams") Barnard Tursky us 2,125,324 us 4,307,833 US 2004/0265191 A 1 REJECTIONS3 The Examiner maintains the following rejections: Aug. 2, 1938 Dec. 29, 1981 Dec. 30, 2004 1. Claims 1-4, 10, 13, 14, and 16-21 under 35 U.S.C. Â§ 112, second paragraph, as indefinite. Final Act. 2-3. 2. Claims 1-4, 10, 13, 14, and 16-21 under 35 U.S.C. Â§ 103(a) as obvious over Tursky in view of Williams and Barnard. Final Act. 3-9. OPINION Rejection 1. After our prior decision, Appellant amended claim 1, the sole independent claim then and now, to modify the ring-shaped joining element to further require "the ring shaped joining element defining a passage therethrough having a diameter substantially smaller than an inner diameter of the tubular component." Compare PT AB Decision in Appeal 2015-003731 at 2 with Claims App'x 1 of App. Br. The Examiner finds that inclusion of "substantially smaller" in claim 1 renders the claim indefinite underÂ§ 112, 2d paragraph. Final Act. 2. 3 Because this application was filed before the March 16, 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 3 Appeal2018-007025 Application 12/566,294 Appellant argues that one of ordinary skill in the art at the time of the invention would not have understood "substantially smaller" to be indefinite when read in light of the Specification and figures. App. Br. 6. Our reviewing court has held that the use of terms such as "about," "substantially," and "approximately" does not automatically render a claim indefinite. See, e.g., Deere & Co. v. Bush Hog, LLC, 703 F.3d 1349, 1359 (Fed. Cir. 2012) ("This court has repeatedly confirmed that relative terms such as 'substantially' do not render patent claims so unclear as to prevent a person of skill in the art from ascertaining the scope of the claim."); Ecolab, Inc. v. Envirochem, Inc., 264 F.3d 1358, 1367 (Fed. Cir. 2001); Andrew Corp. v. Gabriel Elecs., Inc., 847 F.2d 819, 821-2 (Fed. Cir. 1988). One of ordinary skill in the art would have understood "substantially smaller" to mean that the ring-shaped joining element is small enough to be readily inserted into the axial end section of the tubular component before the tubular section is flared, but still not so small that the axial end of the axial end section does not widen as a result of the insertion. We do not sustain the rejection of the claims as indefinite. Rejection 2. The Examiner finds that Tursky teaches a method for joining two components of which at least one is tubular in shape, and providing an axial end section of the tubular component wherein a circumferential weld seam is produced inherently or is well-known and obvious. Final Act. 3-4. The Examiner finds that Williams teaches a ring- shaped joining element and that Barnard teaches a tube that is pressed fit on a conical outer surface of a collar so that the tube widens. Id. at 4-5. When the references cited by the examiner fail to establish a prima facie case of obviousness, the rejection is improper and will be reversed. In 4 Appeal2018-007025 Application 12/566,294 re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). The Examiner does not direct us to any disclosure in the prior art that teaches a ring-shaped joining element having a diameter substantially smaller than an inner diameter of the tubular component, nor proffer any explanation of why modifying the prior art to contain the substantially smaller inner diameter would have been obvious to one of ordinary skill in the art at the time of the invention. As such, no prima facie case of obviousness is made. We do not sustain the rejection of the claims as obvious over Tursky in view of Williams and Barnard. DECISION TheExaminer'srejectionofclaims 1-4, 10, 13, 14, and 16-21 as indefinite is reversed. The Examiner's rejection of claims 1-4, 10, 13, 14, and 16-21 as obvious is also reversed. REVERSED 5