MELEKIAN, JOSEPH

Patent Trials and Appeals Board

Sep 3, 2019

14446709 - (D) (P.T.A.B. Sep. 3, 2019)

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
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BEFORE THE PATENT TRIAL AND APPEAL BOARD

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Ex parte JOSEPH MELEKIAN1

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Appeal 2019-000547
Application 14/446,709
Technology Center 1700
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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

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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