MELEKIAN, JOSEPHDownload PDFPatent Trials and Appeals BoardSep 3, 201914446709 - (D) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. 14/446,709 07/30/2014 JOSEPH MELEKIAN MERIT 140020 PUS 9480 113600 7590 09/03/2019 Brooks Kushman P.C. / Meritor Twenty Second Floor 1000 Town Center Southfield, MI 48075 EXAMINER PATEL, DEVANG R ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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): docketing@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSEPH MELEKIAN1 ____________ Appeal 2019-000547 Application 14/446,709 Technology Center 1700 ____________ Before BEVERLY A. FRANKLIN, CHRISTOPHER C. KENNEDY, and MERRELL C. CASHION, JR., Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellant identifies the real party in interest as ArvinMeritor Technology, LLC. Appeal 2019-000547 Application 14/446,709 2 Appellant requests our review under 35 U.S.C. § 134(a) of the Examiner’s decision rejecting claims 1–7 and 20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: l. A method of making an assembly having a cast iron subassembly, comprising: providing a steel insert having a first joining surface; bonding the steel insert to a cast iron part to form the cast iron subassembly such that the first joining surface is an exterior surface of the cast iron subassembly; providing a steel component having a second joining surface: abutting the second joining surface with the first joining surface; and joining the cast iron subassembly to the steel component proximate the first and second joining surfaces by welding, wherein the weld obtained by welding generates a weld pool, an area immediately adjacent to the weld and the weld pool defines a fusion zone and a heat affected zone, the heat affected zone does not extend to the cast iron part, and the cast iron of the cast iron part is not converted to white cast iron. The Examiner relies on the following prior art references as evidence of unpatentability: Doud US 7,377,598 B2 May 27, 2008 Siwei et al. CN 202463477 U Oct. 3, 2012 (hereafter “Siwei”) Appeal 2019-000547 Application 14/446,709 3 THE REJECTIONS 1. Claims 1–7 and 20 are rejected under 35 U.S.C. § 112(b) as being indefinite. 2. Claims 1–4, 6, 7, and 20 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Doud. 3. Claims 1–4, 6, 7, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over Doud. 4. Claim 5 is rejected under 35 U.S.C. § 103 as being unpatentable over Doud in view of Siwei. ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal (including the Examiner’s Answer, the Appeal Brief, and the Reply Brief), we are persuaded that Appellant identifies reversible error. Thus, we reverse the Examiner’s rejections and add the following primarily for emphasis. Rejection 1 We refer the Examiner’s statement of the rejection as set forth on pages 3–4 of the Non-final Office Action mailed January 8, 2018. Therein, the Examiner states that certain claim terms (e.g., “immediately adjacent”) are subject to varying interpretations and therefore the claims are indefinite. We agree with Appellant’s stated position in reference to Appellant’s Figure 5 as set forth on pages 2–4 of the Appeal Brief Claim 1 recites that an area immediately adjacent to the weld 50, and Appeal 2019-000547 Application 14/446,709 4 the weld pool 52 defines a fusion zone 54 and a heat affected zone 56. This is illustrated in Figure 5 (reproduced on page 2 of the Appeal Brief). When the claim is read in view of its plain meaning, and in light of the Specification as explained by Appellant in the record, we are in agreement that the claims are definite. We note that a claim must be read in accordance with the precepts of English grammar. In re Hyatt, 708 F.2d 712, 715 (Fed. Cir. 1983). There is a heavy presumption that a claim term carries its ordinary and customary meaning. Amgen, Inc. v. Hoechst Marion Rousel, Inc., 314 F.3d 1313, 1327. In view of the above, we reverse Rejection 1. Rejection 2 We refer to Appellant’s stated position for this rejection as presented on pages 4–10 of the Appeal Brief. Therein, Appellant argues, inter alia, that Doud does not disclose that “the heat affected zone does not extend to the cast iron part” as claimed, including reference made to Mr. Melekian’s Rule 132 Declaration. Appeal Br. 6–9. The Examiner finds that the statements in the Declaration are speculatory and unsupported by objective evidence. Ans. 8–9. To the contrary, paragraph 7 of the Declaration sets forth a detailed technical analysis of Doud in support of the position that the heat from heating of the plugs 68 such that the plugs 68 and the inserts 72 partially liquefy extends to the cast iron part 46 (cast iron tube member shown in Doud’s Figure 6 (this figure is reproduced on page 7 of the Appeal Brief)). The Examiner has not rebutted adequately this technical explanation. Therefore, we are persuaded that Doud does not disclose an element of the claim (“the heat affected zone does not extend to the cast iron part”). We thus reverse Rejection 2. Appeal 2019-000547 Application 14/446,709 5 Rejections 3–4 The obviousness rejections made by the Examiner do not address or cure the aforementioned stated deficiency of Doud, and therefore we reverse these rejections for the same reasons that we reverse Rejection 2. DECISION Each rejection is reversed. ORDER REVERSED Copy with citationCopy as parenthetical citation