Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE KLAUS-JURGEN HOFFMAN AND OTTO RUGER
Appeal No. 86-0268
January 31, 1989
HEARD: January 10, 1989
Application for Patent filed July 18, 1984, Serial No. 631,915. Novel Method of Producing a Completely Hardened Metal Element with a Fracture.
Charles A. Muserlian et al. for appellants
Primary Examiner--Frank T. Yost
Examiner--Hien H. Phan
Before Boler, Garris and Pate
This is a decision on the appeal from the refusal of the examiner to allow claims 6 through 10 as amended subsequent to the final rejection. These are all of the claims remaining in the application.
The subject matter on appeal pertains to a method of producing a completely hardened metal structural element such as a roller bearing race. The method consists essentially of the steps of (1) subjecting the surface of the element along an intended course of fracture to high energy radiation, such as a laser beam, to selectively embrittle the metal and (2) then splitting the element along the intended course of fracture. Further details of the appealed subject matter are set forth in claims 6 through 10, of which a reproduction taken from the main brief is appended to this decision.
The following references have been relied upon by the examiner in the rejection listed below:
Steigerwald 3,303,319 Feb. 7, 1967
Barr 3,586,396 June 22, 1971
Hillberry et al. (Hillberry) 3,901,423 Aug. 26, 1975
Aoyama et al. (Aoyama) 3,958,732 May 25, 1976
Haller et al. (Haller) 4,328,411 May 4, 1982
Claims 6 and 7 stand rejected under 35 USC 102(b) as being anticipated by Haller.
Claims 6 and 10 stand rejected under 35 USC 102(b) as being anticipated by Aoyama.
Claim 7, claim 8 and claim 9 stand respectively rejected under 35 USC 103 as unpatentable over Aoyama in view of Steigerwald, Aoyama in view of Barr and Aoyama in view of Hillberry.
The examiner's position with regard to each of the above-noted rejections is set forth in detail on pages 3 through 6 of the answer.
It is the appellants' basic position that '[n]one of the references cited by the examiner suggest Applicants' method of treating a completely hardened metal element without the use of a notch and a chilling process' (main brief, p. 4). Rather than reiterate the detailed arguments advanced by the appellants, we refer to the main and reply briefs for a complete exposition thereof.
We note that appellants have not challenged with any reasonable specificity the rejections of dependent claims 7 through 10. Accordingly, these claims will stand or fall with independent claim 6. In re Nielson, 816 F.2d 1567, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987).
*2 We have carefully considered each of the arguments and comments advanced by the appellants and the examiner in support of their respective positions. In light of these considerations, we conclude, as did the examiner, that the subject matter defined by independent claim 6 is indistinguishable from the subject matter disclosed by either Haller or Aoyama. Our reasons follow.
It is axiomatic that, in proceedings before the Patent and Trademark Office, an application claim is to be given its broadest reasonable interpretation consistent with the specification and that claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art. In re Sneed, 710 F.2d 1544, 218 USPQ 385, 388 (Fed. Cir. 1983).
The appellants argue that the claim 6 language 'a completely hardened metal structural element' and 'the completely hardened structural element' would be interpreted by one of ordinary skill in the art as defining a metal element which is completely crystalline throughout its structure and that the metal elements disclosed by Haller and Aoyama do not possess this crystalline structure. However, we find no probative evidence in the record before us concerning the interpretation that an artisen with ordinary skill would place upon the claim language in question. Moreover, the specification of the subject application does not include a definition for this language. Under these circumstances, this Board cannot accept the interpretation urged by appellants. Instead, we interpret this claim language, as did the examiner, in accordance with its literal meaning, viz., a metal element sufficiently below its melting point temperature as to be completely hardened. As so interpreted, appealed claim 6 encompasses the metal elements disclosed in Haller and Aoyama.
Since the foregoing argument is unpersuasive and is the only argument advanced with respect to the § 102(b) rejection based on Haller, we will sustain this rejection without further comment.
Concerning the § 102(b) rejection based on Aoyama, the appellants further argue that '[u]nlike Applicants' method, the structural element [of Aoyama] is not irradiated directly along the intended course of the fracture' (emphasis added) (main brief, p. 7). This argument is also unpersuasive. As pointed out by the examiner, the claims on appeal are not limited to irradiation directly along the fracture course. Moreover, in light of the disclosure, for example, at lines 53 through 65 in column 4 of the patent, this Board does not agree with appellants' characterization of Aoyama's teaching.
Finally, the appellants argue that the claim 6 language 'consisting essentially of' excludes the notching and quenching steps which are performed in Aoyama's method. We disagree.
The language 'consisting essentially of,' which is typically applied to compositions of matter, is defined in Ex parte Davis, 80 USPQ 448 at 450 (PTO Bd.App. 1948) as follows:
*3 . . . recital of 'essentially' along with 'consisting of [is regarded] as rendering the claim open only for the inclusion of unspecified ingredients which do not materially affect the basic and novel characteristics of the composition.
Accord In re Janakirama-Rao, 317 F.2d 951, 954, 137 USPQ 893, 896 (CCPA 1963); Atlas Powder Co. v. E.I. du Pont De Nemours and Co., 750 F.2d 1569, 1573-1574, 224 USPQ 409, 411 (Fed. Cir. 1984).
Although 'consisting essentially of' is typically used and defined in the context of compositions of matter, we find nothing intrinsically wrong with the use of such language as a modifier of method steps as here. [FN1] Accordingly, we consider the language 'consisting essentially of,' when used as a modifier of method steps, to render the claim open only for the inclusion of steps which do not materially affect the basic and novel characteristics of the claimed method. To determine the steps included versus excluded by this language, the claim must be read in light of the specification. In re Janakirama-Rao, supra, 317 F.2d at 954, 137 USPQ at 896; In re Herz, 537 F.2d 549, 551, 190 USPQ 461, 463 (CCPA 1976). In this regard, we emphasize that, from our perspective, it is an applicant's burden to establish that a step practiced in a prior art method is excluded from his claims by 'consisting essentially of' language. See In re Herz, supra, 537 F.2d at 551-552, 190 USPQ at 463 ('[A]n applicant who has not clearly limited his claims is in a weak position to assert a narrow construction' and '[t]here is no evidence that . . . [the prior art] dispersant would materially affect the basic and novel characteristic of . . . [the claimed] composition'). Also see Ziegler v. Phillips Petroleum Co., 483 F.2d 858, 878, 177 USPQ 481, 494 (5th Cir. 1973) ('In the absence of any evidence that a third component was being excluded by the 'essentially consisting of' language, we cannot read those words as meaning 'consisting solely of' or 'consisting exclusively of").
With respect to the case at bar, this Board is of the view that a notching or groove-forming step is not excluded by the language of independent claim 6, appellants' contrary argument notwithstanding. This is evident from a review of dependent claim 10 which recites the step of 'providing the surface of the structural element along at least a portion of the intended course of the fracture with a groove.' See In re Sutton, 211 F.2d 582, 585, 101 USPQ 186, 189-190 (CCPA 1954). With further regard to this issue, we note that other details of this step are described at page 5 of the subject specification wherein appellants state:
Since this groove is not provided to influence the course of the fracture, it is not necessary, in contrast to known methods, to form this groove as a sharp-edged notch.
*4 Presumably, the appellants consider the groove referred to in claim 10 and encompassed by claim 6 as being distinct from the sharpedged notch used in the prior art. However, these claims contain no limitations concerning the type of groove encompassed thereby, and it is well settled that a limitation of the specification must not be read into a claim where no express statement of the limitation is included therein. In re Prater, 415 F.2d 1393, 1405, 162 USPQ 541, 551 (CCPA 1969); In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA 1978). In any event, the distinction presumed by appelllants is seemingly inapplicable to the notch disclosed by Aoyama in light of patentee's teaching that '. . . extreme sharpness is not essential' (column 3, lines 22-23). In short, the only evidence of record concerning this matter reflects that appellants' claimed method includes a notching or groove-forming step which, even as disclosed, is indistinguishable from the corresponding step performed by Aoyama. Under these circumstances, we must conclude that patentee's notching step would not materially affect the basic and novel characteristics of the method on appeal, and accordingly the step is not excluded from this method.
As for appellants' argument that the language of claim 6 excludes Aoyama's quenching step, we have carefully perused the specification of this application and find nothing therein concerning a quenching step. Moreover, we find no evidence in the remainder of the record before us to support appellants' argument. In the absence of such evidentiary support, this argument is unpersuasive. See In re Herz and Ziegler v. Phillips Petroleum Co., supra. Also see In re Pearson, 494 F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974) ('Attorney's argument in a brief cannot take the place of evidence').
For the above-stated reasons, this Board cannot accept the appellants' contention that the claim language 'consisting essentially of' excludes the notching and quenching steps disclosed in the Aoyama patent. Therefore, we will sustain the 102(b) rejection of independent claim 6 based on this reference.
As indicated earlier, the appellants have not challenged the rejections of dependent claims 7 through 10 with any reasonable specificity. Accordingly, these claims fall with independent claim 6.
The decision of the examiner is affirmed.
37 CFR 1.136(a) does not apply to the time for taking any subsequent action in connection with this appeal.
BOARD OF PATENT APPEALS AND INTERFERENCES
James R. Boler
Bradley R. Garris
FN1. See National Distillers and Chemical Corp. v. Brenner, 255 F.2d 136, 149 USPQ 598 (D.D.C. 1966) wherein the court analyzed the scope of the following claim language:
A polymerization process consisting essentially of polymerizing . . . with a polymerization catalyst consisting essentially of . . . [Emphasis added.]
See also Bethell v. Koch, 427 F.2d 1372, 166 USPQ 199 (CCPA 1970), in which the decision of National Distillers and Chemical Corp. v. Brenner was explained. In neither of these cases did the respective courts express a view that 'consisting essentially of' was inappropriately used as a modifier of the claimed polymerizing step.
Claims on Appeal
*5 6. A method of producing a completely hardened metal structural element provided with a fracture of an intended course consisting essentially of subjecting the surface of the completely hardened structural element at least along a portion of the intended course of the fracture and in transverse limitation thereto to a high energy radiation to selectively embrittle the metal and then splitting the elements along the intended course of the fracture.
7. The method of Claim 6 wherein subjecting the structural element to the high energy radiation comprises exposing it to a laser beam.
8. The method of Claim 6 wherein the structural element is a roller bearing race.
9. The method of Claim 6 wherein splitting the structural element comprises putting the surface subjected to radiation under tensile stress in its region subjected to radiation by applying a force to the structural element to generate the fracture.
10. The method of Claim 6 comprising providing the surface of the structural element along at least a portion of the intended course of the fracture with a groove and subjecting the base thereof to the radiation.
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