849,579 7 et al.

Patent Trials and Appeals Board

Mar 2, 2020

95001843 - (D) (P.T.A.B. Mar. 2, 2020)

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.
95/001,843 12/08/2011 7,849,579 073837-0000004 9051
66155 7590 03/02/2020
SmithAmundsen LLC
330 East Kilbourn Avenue
Suite 1100 Tower 1
Milwaukee, WI 53202
EXAMINER
FETSUGA, ROBERT M
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
03/02/2020 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
____________________

EMHART TEKNOLOGIES LLC
Requester, Appellant

v.

HENROB LIMITED1
Patent Owner, Respondent
____________________

Appeal 2019-002078
Inter partes Reexamination Control 95/001,843
Patent US 7,849,579 B22
Technology Center 3900
____________________

Before DANIEL S. SONG, MEREDITH C. PETRAVICK, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Henrob Limited is the real party in interest (Respondent Brief (“Resp. Br.”)
1).
2 Patent US 7,849,579 B2 (“the ’579 patent”) issued December 14, 2010 to
Craythorn et al.
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STATEMENT OF THE CASE
Claims 1, 2, 5–8, 11, 12, and 15–43 are subject to reexamination and
have been confirmed. Right of Appeal Notice (“RAN”) 1. The Requester
appeals under 35 U.S.C. §§ 134 and 315 from the Examiner’s refusal to
reject these claims. Appeal Brief (“Appeal Br.”) 1. In particular, the
Requester appeals the Examiner’s withdrawal of certain previously applied
rejections of these claims. Appeal Br. 3. We have jurisdiction under 35
U.S.C. §§ 134 and 315. The Requester relies on its Appeal Brief and
Rebuttal Brief (“Rebuttal Br.”) in support of its appeal. The Patent Owner
relies on its Respondent Brief in support of the Examiner’s decision.
We REVERSE and enter a NEW GROUND OF REJECTION.
CLAIMED SUBJECT MATTER
The claims are directed to a method for delivering and setting rivets.
Claim 1, reproduced below as amended, is illustrative of the claimed subject
matter:
1. A method for delivering and setting rivets, the rivets
being delivered to a rivet setting tool via an intermediate buffer
for the temporary storage of rivets, the intermediate buffer
being attached to the rivet setting tool, comprising
selectively transporting rivets from a reservoir of rivets,
individually or in groups, through at least one delivery tube
towards the intermediate buffer by using compressed air,
moving the at least one delivery tube relative to the
intermediate buffer from an undocked position where the tube
and intermediate buffer are separated to a docked position in
which they are releasably connected and a rivet path between
the at least one delivery tube and the intermediate buffer is
established,
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transferring the rivets from the delivery tube into the
intermediate buffer by using compressed air,
temporarily storing at least some of the rivets in the
intermediate buffer,
selectively releasing a rivet from an outlet of the buffer
and delivering the released rivet to the tool,
advancing a punch of the tool to insert the rivet into a
workpiece such that the rivet is upset by a rivet upsetting die
that is disposed opposite the tool,
wherein the delivery tube and the intermediate buffer are
in the undocked position during insertion of the rivet.
Appeal Br. 28, Claims App’x (underlining and bracketed deletions removed,
paragraphing added for clarity, italics added for emphasis).
Claims 7, 11, and 43 are also independent and are similarly directed to
a method for delivering and setting rivets. Appeal Br. 29–30, 34, Claims
App’x.
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REFERENCES3
Pertinent prior art references are:
Name Reference Date
Moeller 1,839,490 Jan. 5, 1932
Bonomi 5,465,868 Nov. 14, 1995
Blacket WO 94/15736 July 21, 1994
Auriol WO 95/34391 Dec. 21, 1995
Cullen WO 97/26118 July 24, 1997
Bennett EP 0 130 076 A2 Jan. 2, 1985
Kajino EP 0 703 037 A1 Mar. 27, 1996
Mori JP 57-156174 Sept. 27, 1982
Iekumo JP 62-63025 Mar. 19, 1987
Aoyama JP 7-132424 May 23, 1995

REJECTIONS ON APPEAL
The Requester appeals from the Examiner’s withdrawal of the
following previously applied rejections of various claims under 35 U.S.C.
§ 103(a):4
1. Claims 1, 2, 16, and 18 as unpatentable over Aoyama in view of
Admitted Prior Art (“APA”).
2. Claims 1, 2, and 15–21 as unpatentable over Aoyama in view of
Bennett.

3 For non-English language prior art, citations herein are to the English
language translations of record.
4 We utilize the same numbering used by the Requester to identify the
appealed rejections. See Appeal Br. 3–4. The Requester does not appeal the
withdrawal of rejections based on the combination of: (1) Kajino, Shinjo,
Luckhardt, and Bennett; (2) Cullen, Kajino, and Bennett; (3) Cullen,
Kajiono, Bennett, and Bonomi; (4) Griffin and Kajino; and (5) Griffin,
Kajino, and Bennett. See Ans. 12–17.
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3. Claim 22 as unpatentable over Aoyama in view of Bennett and
Bonomi.
4. Claims 1, 2, 5–8, 11, 12, 15–21, 24–30, 33–39, and 41–43 as
unpatentable over Iekumo in view of Blacket, and Cullen.
5. Claims 22, 31, and 40 as unpatentable over Iekumo in view of
Blacket, Cullen, and Mori.
6. Claims 1, 2, 5, 7, 8, 15, 21, 22, 24, 30, 31, 39, and 40 as
unpatentable over Mori in view of APA, Aoyama, and Auriol.
7. Claims 23 and 32 as unpatentable over Mori in view of APA,
Aoyama, Auriol, and Bonomi.
8. Claims 1, 2, 5, 7, 8, 15–22, 24–31, and 43 as unpatentable over
Mori in view of Blacket, Aoyama, and Auriol.
9. Claims 1, 2, 8, 15–23, and 43 as unpatentable over Mori in
view of Bennett, and Cullen.
10. Claims 6, 11, and 12 as unpatentable over Mori in view of
Bennett, Cullen, and Iekumo.
11. Claims 1, 2, 5, 7, 8, 15, 17, 19, 21, 24, 26, 28, 30, and 42 as
unpatentable over Moeller in view of Kajino, and Bennett.
12. Claims 6, 11, 12, 33, 35, and 39 as unpatentable over Moeller in
view of Kajino, Bennett, and Iekumo.
13. Claims 16, 18, 20, 25, 27, 29, and 43 as unpatentable over
Moeller in view of Kajino, Bennett, and Blacket.
14. Claims 22, 23, 31, and 32 as unpatentable over Moeller in view
of Kajino, Bennett, and Bonomi.

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PROCEDURAL BACKGROUND
The present proceeding began over eight years ago with a Request for
Inter Partes Reexamination, filed December 8, 2011. The long and complex
history of this reexamination is summarized by the Examiner in the
Answer.5 Ans. 2–4; see also Second Action Closing Prosecution (“Second
ACP”) mailed February 3, 2017, pgs. 2–7. We do not repeat the entire
history here. However, for clarity, we highlight the fact in the First Action
Closing Prosecution (“First ACP”) mailed April 30, 2014, the Examiner
refused entry of various prior art rejections proposed by the Requester in
response to the Patent Owner’s amendments to the claims. First ACP 2–5.
However, the Examiner also entered various new prior art rejections that
rejected the Patent Owner’s amended claims. First ACP 8–48. Subsequent
to an issuance of a RAN after the First ACP, the Patent Owner and the
Requester appealed and cross-appealed the case to the Board, filing requisite
briefs. Instead of allowing the appeal and the cross-appeals to proceed to the
Board, a new Examiner issued the Second ACP, which withdrew the prior
art rejections entered in the First ACP. Second ACP 9–22. The new
Examiner subsequently issued a RAN on April 20, 2017, and the present
appeal by the Requester ensued.

5 The Answer omits the numerous petitions of record, the decisions related
thereto, an earlier RAN, the Appeal and Cross-Appeal Briefs, as well as
related Respondent and Rebuttal Briefs filed prior to the Second Action
Closing Prosecution. However, these documents of record do not materially
impact the disposition of this appeal.
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PRINCIPLES OF LAW
Section 103 forbids issuance of a patent when “the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The Supreme
Court emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” and reaffirmed principles
based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. at 415–16. The Court also affirmed that
“when a patent claims a structure already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, the combination must do more than yield a predictable result.” Id. at
416. The Court further explained that “[w]hen a work is available in one
field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.” Id. at 417. The operative question is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id. Moreover, “[a] person of ordinary skill is
also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at
421.

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ANALYSIS
We note that only those arguments timely made in the briefs of record
in this appeal have been considered. Other arguments not made or those not
properly presented to the Board have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.67(c)(1)(vii) (“Any arguments or authorities
not included in the brief permitted under this section or §§ 41.68 and 41.71
will be refused consideration by the Board, unless good cause is shown.”).
Moreover, the Requester quotes the First ACP extensively in its Appeal
Brief in support of its appeal. We cite to the Appeal Brief that includes such
quotations, but omit citations to the First ACP itself for simplicity.
The bases of the present appeal by the Requester is summarized as
follows:
the Board should find that it [would have been] obvious to (1)
modify a screw/bolt delivery and setting machine to deliver and
set rivets, and (2) convert a gravity-feed system into a
compressed-air-feed system. Once these two errors in the
Second ACP are corrected, the First ACP’s prior art rejections
should be reinstated with respect to the claims-on-appeal (i.e.,
Patent Owner’s March 2, 2017 claims) because the Second
ACP/RAN did not otherwise dispute the First ACP’s findings.
Rebuttal Br. 5.
We generally agree with the Requester that the claims at issue are
unpatentable, and address the appealed rejections and the issues raised infra,
albeit in an order that differs slightly from the order presented by the parties.

Patent Owner’s Request for Dismissal
In response to the Requester’s Appeal Brief, the Patent Owner
requests the Board to dismiss the present appeal for various reasons. Resp.
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Br. 2. Because the request of the Patent Owner is directed to the propriety of
the appeal itself, we address this request first, before addressing the
Requester’s appeal.
Appeal Brief
Initially, the Patent Owner argues that “none of the issues raised on
appeal in the Requestor Brief are related to the final decision of the
patentability of any claim. Instead, each and every one of the issues that
Requestor presents on appeal is explicitly directed to the ‘Second ACP’s
withdrawal’ of a prior art rejection.” Resp. Br. 2. In that regard, the Patent
Owner further argues that:
the Requestor Brief does not provide a detailed explanation of
the pertinency and manner of applying the proposed
combinations of prior art references to every claim for which
the rejections are proposed. . . . [T]he Requestor Brief does not
explain how any of the proposed rejections purportedly meets
each and every limitation of any of the claims.
Resp. Br. 3.
As to the reference to the Second ACP, the Requester correctly points
out that the Appeal Brief “explicitly appealed the Second ACP ‘as
incorporated into the RAN (at 4).’” Rebuttal Br. 1; see also Appeal Br. 3
(“Requester appeals the decision in the February 3, 2017 second Action
Closing Prosecution (the ‘Second ACP’) (as incorporated into the RAN (at
4)) to withdraw the following prior art rejections from the April 30, 2014
Action Closing Prosecution (the ‘Frist ACP’).”). Indeed, in the RAN, the
Examiner stated that “[f]or the reasons set forth in the ACP-2 at pages 9–22,
the nineteen (19) prior art grounds of rejection directed to claims 1, 2, 5-8,
11, 12 and 15-43 have been withdrawn.” RAN 4. Thus, considering that the
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Examiner simply referenced the Second ACP in the RAN, we see no
impropriety in the Requester’s reference and discussion of the Second ACP
in its Appeal Brief.
As to the Appeal Brief’s lack of limitation by limitation analysis as to
the claims, it is evident that this is due to the fact that the Requester is
appealing the withdrawal of the rejections already of record, the reasoning
for the withdrawal being set forth by the Examiner in the Second ACP,
which is the last substantive action prior to the appeal. It is evident that the
Requester is relying on findings set forth in the First ACP in arguing that the
basis for withdrawing rejections in the Second ACP was improper because
the amendments do not overcome the rejections set forth in the First ACP.
We find no impropriety in the Appeal Brief arguing the reasoning set forth
in the Second ACP that withdrew the prior entered rejections of the First
ACP.
Not Requester Proposed Rejections
The Patent Owner also argues that the present appeal should be
dismissed because upon the Examiner’s withdrawal of the rejections of the
First ACP, the Requester was allowed to propose these withdrawn rejections
as rejections proposed by the Requester, but the RAN “found [] that the
Requestor’s proposed rejections were not properly presented (RAN [] 6–7).”
Resp. Br. 2. The cited portion of the RAN states that “[i]t is unclear whether
the discussion in the [Requester’s] Comments at pages 5-47 is directed to
rejections which are proposed by Requester as to the claims amended on
May 8, 2012.” RAN 6–7, citing MPEP § 2666.05 (III). Thus, according to
the Patent Owner, the conditions that permit appeal of withdrawn rejections
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has not been met, and the appeal should be dismissed. Resp. Br. 2, citing
MPEP § 2666.05(III).6
We find this line of argument of the Patent Owner unpersuasive. The
language in the MPEP stating that the Requester “may propose the
withdrawn rejection as a ‘rejection proposed by the third party requester’” is
permissive, not mandatory. MPEP § 2666.05(III)(emphasis added). Indeed,
interpreting the MPEP to require explicit proposal by the Requester appears
to be contrary to the Rules pertaining to appeals by a Requester. In
particular, the rules governing appeals states that upon issuance of a RAN,
“the requester may appeal to the Board with respect to any final decision
favorable to the patentability, including any final determination not to make
a proposed rejection, of any original, proposed amended, or new claim.” 37
C.F.R. § 41.61(2)7 (emphasis added). Thus, although the Requester’s appeal

6 The pertinent portion of MPEP § 2666.05(III) states (italics added for
emphasis):
(A) Where the examiner withdraws a ground of rejection
originally initiated by the examiner, such withdrawal should be
clearly stated in the Office action as a decision favorable to
patentability with respect to the withdrawn rejection. The third
party requester’s next set of comments that may be filed (after a
patent owner response to an action) may propose the withdrawn
rejection as a “rejection proposed by the third party requester.”
In the event the patent owner fails to respond to all actions
leading to the Right of Appeal Notice (RAN), including the
Action Closing Prosecution (ACP), and a RAN is then issued,
the third party requester may appeal this withdrawal of rejection
as a final decision favorable to patentability. See 37 CFR
41.61(a)(2).

7 37 C.F.R. § 41.61(2) states:
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may “includ[e] any final determination not to make a proposed rejection,”
the Rules does not limit the Requester’s appeal thereto. The Right of Appeal
Notice has issued, which is a final action that gives the Requester the right to
appeal the decision of the Examiner to the Board. 37 C.F.R. § 1.953(c).8
Moreover, even if the Rules and MPEP were interpreted to require the
Requester to propose the withdrawn rejections as its own, we agree with the
Requester that it has done so. Rebuttal Br. 2. Although the Requester did
not use the specific wording that it “propose[s] the withdrawn rejection as a
‘rejection proposed by the third party requester,’” the Requester made it
amply clear in its Comments of April 3, 2017 in response to the Second
ACP, that in its view, the amended claims would still have been obvious to a
person of ordinary skill, and requested reinstatement of the rejections of the
First ACP. See, e.g., Comments of April 3, 2017, pgs. 8, 12–13, 16.
It is also clear that the Requester was addressing the claims as
amended. As noted, “Requester’s April 3, 2017 Comments specifically and
properly proposed that the exact rejections that were withdrawn in the

Upon the issuance of a Right of Appeal Notice under § 1.953 of
this title, the requester may appeal to the Board with respect to
any final decision favorable to the patentability, including any
final determination not to make a proposed rejection, of any
original, proposed amended, or new claim of the patent by
filing a notice of appeal within the time provided in the Right of
Appeal Notice and paying the fee set forth in § 41.20(b)(1).
8 37 C.F.R. § 1.953(c) states, inter alia:
The Right of Appeal Notice shall be a final action, which
comprises a . . . final decision favorable to patentability . . . .
The Right of Appeal Notice shall set a one-month time period
for either party to appeal.
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Second ACP be reinstated with respect to the amended claims ‘as proposed
by Patent Owner on March 2, 2017.’” Rebuttal Br. 2. As also pointed out
by the Requester, “[t]he claim charts in Requester’s April 3, 2017 Comments
even quoted the exact language of the March 2, 2017 amended claims,
leaving no doubt that Requester was proposing the reinstatement of the
withdrawn rejections as to the amended claims.” Rebuttal Br. 2.
Thus, by the Requester arguing that the amended claims are still
unpatentable over the withdrawn rejections and requesting reinstatement of
these rejections, the Requester has de facto adopted the withdrawn rejections
as its own. In view of the above considerations, we decline the request of
the Patent Owner to dismiss the present appeal of the Requester.

Rejection 1: Aoyama and APA
The Requester argues that claims 1, 2, 16, and 18 are unpatentable
over Aoyama in view of APA. Appeal Br. 7. Aoyama discloses a supply
system with an automatic feed mechanism for feeding bolt and nuts.
Aoyama, Title, Abs. The Requester argues that it would have been obvious
to one of ordinary skill in the art to have modified Aoyama to deliver rivets
rather than bolts in view of APA. Appeal Br. 7.
The Examiner finds that although Aoyama discloses a bolt supplying
device, it “does not teach the delivery of rivets to a rivet setting tool which
includes a punch and a rivet upsetting die.” Ans. 5. According to the
Examiner, “[t]he APA disclosure (Craythorn: col. 1, ll. 18–19) indicating
that ‘fastener’ broadly encompasses rivets, does not provide a teaching to
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implement with the Aoyama fastener supplying device a rivet setting tool
which includes a punch and a rivet upsetting die.” Ans. 5.
We affirm the Examiner’s withdrawal of this rejection, but not for the
reasons stated by the Examiner. We initially note our agreement with the
Requester that the Examiner’s articulated reasoning stating that the prior art
“does not provide a teaching” appears to improperly require an express
teaching or suggestion in the reference to substitute one equivalent
component for another. Appeal Br. 7–8; see also Rebuttal Br. 4–5. Such
express teaching or suggestion in a prior art for a combination is not a
requirement for an obviousness conclusion. KSR, 550 U.S. at 418–19.
Nonetheless, this rejection is premised on an erroneous finding of an
admission in the APA. The cited portion of the Specification asserted to be
an admission states “[t]he term ‘fasteners’ is used herein to include rivets,
screws, slugs and other types of fastening devices.” Spec. col. 1, ll. 14–17.
We agree with the Patent Owner that “[t]he Requestor and the First ACP
clearly erred in interpreting the APA” (Resp. Br. 3) because this statement is
not an admission, but rather, a definition of what the term “fasteners” mean
as used in the Specification.
The Requester argues that “by expressly equating rivets and other
fasteners, APA did teach and suggest to a PHOSITA the obvious
interchangeability of bolt and rivet setting methods.” Appeal Br. 8.
However, the statement indicating what the term “fasteners” means or
encompasses in the applicant’s Specification is not admitting that rivets are
equivalent to other fasteners, and does not establish general
interchangeability there between. In essence, the Requester is using
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inventor’s own knowledge and perspective to conclude interchangeability
and obviousness. However, the inventor’s own knowledge and perspective
is not necessarily the same as that of those of ordinary skill in the art.
The Requester also points out that the original claim 1 of the ’579
patent generically recited “fasteners,” which included “rivets, screws, slugs,
and other types of fastening devices” in accordance with the APA. The
Requester thus concludes that:
The fact that Patent Owner sought to claim the use of all such
fasteners, despite supporting this claim with only the specific
details of the rivet-setting embodiment, further evidences that
the Patent Owner recognized that the substitution of different
fasteners and fastener setting equipment was well known and
within the skill of a PHOSITA, making further disclosure
unnecessary.
Appeal Br. 8.
However, again, the Patent Owner’s recognition of equivalence and
substitutability, i.e. inventor’s knowledge, is not necessarily the same as that
of a person of ordinary skill in the art. The Requester is improperly using
the inventor’s knowledge without establishing that the same knowledge was
in possession of those of ordinary skill in the art.
The Requester also notes that subsequent to amending the claims to
those on appeal, the Patent Owner further sought to amend claim 1, but that
this amendment was denied entry. Appeal Br. 8. Thus, the Requester
asserts that the Patent Owner “admitted that its claim 1 is not patentable in
its current form.” Appeal Br. 8. However, a Patent Owner may seek to
amend a claim for various reasons and that act alone does not constitute an
admission as to unpatentability of claim 1.
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Therefore, we affirm the Examiner’s withdrawal of Rejection 1, albeit
for reasons other than those stated by the Examiner. The numerous
remaining arguments between the Requester and the Patent Owner regarding
the disclosure of Aoyama, and interpretation of various claims are moot.
Appeal Br. 7; Resp. Br. 6.

Rejections 6 and 7: Based on Mori, APA, Aoyama, and Auriol
The Requester argues that claims 1, 2, 5, 7, 8, 15, 21, 22, 24, 30, 31,
39, and 40 are unpatentable over Mori in view of APA, Aoyama, and Auriol.
Appeal Br. 13–16. The Requester also argues that claims 23 and 32 are
unpatentable in further view of Bonomi, noting that the Examiner withdrew
this rejection based on the withdrawal of the rejection as to independent
claims 1 or 7 in Rejection 6. Appeal Br. 16. Again, the Requester relies on
the alleged admission APA for establishing that rivets and screws are
equivalent and substitutable. Appeal Br. 14. However, as discussed above,
APA is not an admission. Therefore, we affirm the Examiner’s withdrawal
of Rejections 6 and 7, albeit for reasons other than those stated by the
Examiner. The remaining arguments between the Requester and the Patent
Owner regarding the disclosures of Mori, Aoyama, and Auriol, and
interpretation of various claims and their limitations are moot. Appeal Br.
15–16; Resp. Br. 14–15.

Rejection 4: Iekumo, Blacket, and Cullen
In the Second ACP, the Examiner withdrew the rejection of claims 1,
2, 5–8, 11, 12, 15–21, 24–30, 33–39, and 41–43 over the combination of
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Iekumo, Blacket, and Cullen. Second ACP 10. The Examiner’s Answer
reproduces the reasoning for the withdrawal set forth in the Second ACP for
clarity and convenience, and accordingly, we cite to the Answer. See Ans. 4
(“For the convenience of the Board, the reasoning relied upon in the ACP-2
for rendering the attendant decisions favorable to patentability are
reproduced below.”).
The Examiner finds that Iekumo discloses a headed rod supplying
device, but “does not teach the delivery of rivets to a rivet setting tool by
using compressed air.” Ans. 6. The Examiner also finds that Blacket’s
disclosure of transporting rivets via gravity or blown-air “does not provide a
teaching to convert the Iekumo headed rod supplying device from a gravity
feed system to a compressed air feed system.” Ans. 6–7. According to the
Examiner, “[t]he blown-air tool embodiment in Blacket includes an inclined
supply passage (220) which would appear inconsistent with the gravity
transport of headed rods associated with the Iekumo device.” Ans. 6–7. The
Examiner further finds that the disclosures of Cullen “does not provide a
teaching to convert the Iekumo headed rod supplying device from a gravity
feed system to a compressed air feed system.” Ans. 7. Based on these
findings, the Examiner concludes that “a reasonable combination of the
Iekumo, Blacket, [and] Cullen . . . would not result in a method for
delivering and setting rivets as required by [independent] claims 1, 7, 11 and
43.” Ans. 7.
The Requester argues that these claims are unpatentable over the
combination of Iekumo, Blacket, and Cullen, and requests reinstatement of
the First ACP’s rejection. Appeal Br. 10. We agree with the Requester and
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address the factual and substantive issues raised in the appeal by the parties
infra. Our findings and conclusions relative to this rejection are generally in
agreement with those set forth in the First ACP, and we adopt the findings
and conclusions as set forth therein to the extent that they are consistent with
our analysis set forth below.
Appeal Brief
The Patent Owner argues that “the Requestor Brief makes no attempt
to show why it would be obvious to one of ordinary skill in the art to pick
and choose amongst all the components of the three disparate systems to
purportedly arrive at the claimed subject matter of any of the claims.” Resp.
Br. 9. To the extent that the Patent Owner is again pointing out that the
Requestor Brief does not provide a detailed explanation of the rejection as to
each claim, we again do not find this argument persuasive considering that
the Requester is appealing the withdrawal of the rejections already of record.
Moreover, as to applicability of Iekumo for supplying rivets, it
specifically discloses supplying “headed rods such as screws and rivets,”
thereby establishing their substitutability to one of ordinary skill in the art.
Iekumo, col. 3, ll. 3–4. The Requester has also pointed to Blacket, which
not only suggests use of rivets in supplying devices such as that of Iekumo,
but also establishes that it was known by those in the art to use either a
gravity feed system or a compressed air feed system. Blacket, pg. 6, ll. 6–
11, pg. 15, ll. 1–6. We agree that the Requester has sufficiently set forth in
its Appeal Brief, why it believes the Examiner’s withdrawal of this rejection
in the Second ACP was improper, and why the rejection should be
reinstated. See Rebuttal Br. 3 (“Requester pointed out exactly how it was
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obvious from the prior art to convert prior art fastener systems . . . to use
rivets, and how such conversion rendered the claims-on-appeal obvious”),
citing Appeal Br. 5, 7–11, 13, 14–15, 17–19, 20–21, 25–27. To the extent
that the Patent Owner is asserting propriety of the withdrawal based on
specific limitations appearing in the claims, we address the Patent Owner’s
specific arguments infra.
Second ACP
The Patent Owner argues that “[t]he Second ACP withdrew rejections
based on findings that the references previously relied upon as showing
elements of the claims did not actually provide such showings.” Resp. Br. 4.
This argument is not substantiated. The Requester is correct that the Second
ACP does not make specific findings that contradict findings set forth in the
First ACP. See Rebuttal Br. 5 (“[T]he Second ACP/RAN did not otherwise
dispute the First ACP’s findings.”). The Second ACP withdrawal of this
rejection was due to the Patent Owner’s amendment to limit claims to rivets
instead of fasteners generally, and the Examiner’s determination that a
teaching to convert the systems of the primary references to feed rivets using
compressed air was lacking. See Second ACP 11–12. The Examiner’s
reasoning for withdrawing this rejection (and similarly, other rejections),
i.e., that the prior art “does not provide a teaching to convert the Iekumo
headed rod supplying device,” appears to require express teaching of such
conversion. Ans. 6–7. However, as noted above, such express teaching or
suggestion in a prior art for a combination is not a requirement for an
obviousness conclusion. KSR, 550 U.S. at 418–19; Appeal Br. 11–12.
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Interchangeability of Fasteners
The Patent Owner argues that:
the claims are directed to systems for delivering and setting
rivets, not to using a rivet as a fastener. Any purported
interchangeability or [sic, of] rivets and other fasteners such as
bolts and screws to fasten workpieces is not relevant to the
issue at hand, it does not address whether different types of
fasteners can simply be substituted in a delivery system.
Resp. Br. 3.
According to the Patent Owner, “various fasteners cannot simply be
substituted in any given delivery system, but . . . require changes in the
tooling of the associated delivery system.” Resp. Br. 3, citing Blacket, pg. 6,
ll. 5–11).
We do not agree with the Patent Owner’s characterization of the issue.
The appeal of the Requester is not premised merely on interchangeability of
rivets with other fasteners without changes to a delivery system. In addition,
we find that interchangeability of rivets with other fasteners to be relevant to
the issues on appeal. Although establishing that rivets are interchangeable
with other different types of fasteners does not establish that rivets can
simply be substituted in a delivery system without changes thereto, the issue
is whether the claimed invention would have been obvious to one of
ordinary skill in the art in view of the evidence of record, even if changes or
modifications to the prior art systems would have been required. We answer
this in the affirmative in view of the evidence of record.
As the Requester points out, Iekumo specifically discloses that “[t]he
present invention relates to a device for separating and supplying headed
rods such as screws and rivets.” Appeal Br. 10, quoting Iekumo, pg. 3, ll.
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3–4. Moreover, Blacket also provides motivation or suggestion to apply
Iekumo to the delivery and setting of rivets, Blacket teaching that “the
mechanisms described by which to apply a rivet could equally be applied to
a screw and other like type fasteners. The punch of the preferred
embodiments below is then replaced with the appropriate fastener tooling.”
Appeal Br. 11, quoting Blacket, pg. 6, ll. 6–11; see also id. at pg. 2, ll. 10–16
(“The term ‘fastener’ shall include rivets, screws and other like fastening
devices. . . . The term ‘fastener actuator’ includes a punch when the fastener
is a rivet, a driver when the fastener is a screw, that is, the tooling
appropriate to insert or apply the fastener after its delivery by the nose
assembly.”); pg. 13, ll. 25–16. Thus, Iekumo and Blacket alone and in
combination, provides sufficient suggestion to apply the supply device of
Iekumo in delivering rivets.
Accordingly, we agree with the Requester that “it was well known in
the art that mechanisms used in rivet setting tools were applicable to
screwdrivers and vice versa,” and conclude that it would have been obvious
to a person of ordinary skill in the art to have applied “the Iekumo machine
to rivets and include conventional rivet setting equipment and methods.”
Appeal Br. 11.
Compressed Air
As to the use of gravity feed versus compressed air feed delivery
systems, the Patent Owner argues that the Requester
has merely shown evidence that both types of systems are
known in the art. But, the invention is not directed to a
compressed air delivery system in general, it is directed to a
compressed air system having a specific configuration of
components. The Requestor has failed to provide any evidence
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showing that components from a gravity feed system would be
interchangeable with components of a compressed air feed
system, which is what would be required by each of the
proposed rejections.
Resp. Br. 3–4.
According to the Patent Owner, the Requester
improperly ignores the fact that substitution of a compressed air
system for a gravity feed system requires a complete redesign
of the system components, and that components designed for an
open rail gravity feed system would be inoperable if the rails
were replaced with closed tubes as required for a compressed
air system.
Resp. Br. 4.
The Patent Owner’s arguments are unpersuasive. As to “specific
configuration of components” recited in the claims, the Patent Owner has
submitted arguments directed to specific claims, which we address infra. As
to the asserted reliance on interchangeability of gravity feed and compressed
air feed systems, we again disagree with the Patent Owner’s characterization
of the issue raised. The issue is not whether or not the Requester has
established how a compressed air feed system can be bodily substituted in
the device of Iekumo, but rather, whether substitution of such systems would
have been obvious and within the skill of those of ordinary skill in view of
Blacket’s disclosure that it was known to use a gravity feed system or a
compressed air system in delivery of rivets. See In re Keller, 642 F.2d 413,
425 (CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be expressly
suggested in any one or all of the references. Rather, the test is what the
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combined teachings of the references would have suggested to those of
ordinary skill in the art”).
As the Requester points out, Blacket discloses “using a compressed
air delivery system to deliver rivets to a rivet setting tool” (Appeal Br. 12),
and generally suggests “the interchangeability of conventional gravity and
compressed air to move rivets in a rivet supply apparatus.” Appeal Br. 11.
Blacket specifically states that “[a]s will be apparent to the skilled addresses,
the present invention enables the rivets or other fasteners to be accurately
fed to the fastening heads of the machines by tape, gravity or blow-feeding,”
thereby establishing the high level of skill of those of ordinary skill in the
art, and their ability to utilize different delivery systems. Blacket, pg. 15, ll.
1–6. In that regard, as the Requester also points out, “the Second ACP itself
recognizes that ‘Blacket discloses alternative embodiment fastening tools,
wherein either gravity (e.g., Fig. 1) or blown-air [i.e., compressed air] (e.g.
Fig. 8) is used to transport rivets.’ Second ACP at 11.” Appeal Br. 11.
Accordingly, considering the skill and creativity possessed by those of
ordinary skill in the art and the disclosure of Blacket, we find merit in the
Requester’s argument that it would have been also obvious “to further
modify Iekumo to use compressed air to transport the rivets within the tube
as taught by Blacket to insure the rivets are forced within the tube all the
way into the nose of the setting tool.” Appeal Br. 11. We further agree with
the Requester that:
it is inconsequential to obviousness that some ordinary redesign
of a prior art machine might be needed to accommodate
compressed-air delivery. Compressed-air rivet delivery
mechanisms would perform the same function in the modified
prior art machine as they had been known to perform in the prior
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art, and the conversion between gravity and compressed-air feed
systems was well known and within the skill of ordinary
artisans.
Rebuttal Br. 4.
Therefore, we agree with the Requester that the substitution of one
type of feed system for another is merely “the predictable use of prior art
elements according to their established functions.” Rebuttal Br. 4, quoting
KSR, 550 U.S. at 417.
Iekumo
The Patent Owner argues that “Iekumo relates to a gravity-fed
automatic screwdriver 6, (see Iekumo at Figures), and one of ordinary skill
in the art would not consider Iekumo when seeking to improve riveting
methods that utilize a punch and die.” Resp. Br. 10. However, as discussed
above, Iekumo itself discloses its application to rivets. Iekumo, pg. 3, ll. 3–
4.
The Patent Owner also argues that “there is no basis in any of Iekumo,
Blacket, or Cullen upon which one of ordinary skill in the art would alter
Iekumo from a gravity fed system to a compressed air delivery system using
tubes” because such a modification would “require removing all of the rails
of Iekumo, including chutes 25a, 25b and 7a, 7b, and completely redesigning
the delivery system and intermediate buffer,” thereby altering its principle of
operation. Resp. Br. 10. However, as discussed, Blacket clearly establishes
that it is known in the art that a gravity feed system and a compressed air
feed system are viable alternatives for delivering rivets, and thus, one can be
substituted for another. Blacket, pg. 6, ll. 6–11, pg. 15, ll. 1–6; Fig. 8.
Accordingly, the modification objected to by the Patent Owner is already
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recognized in the art as being a viable alternative, and within the skill of one
of ordinary skill. In addition, this evidence also indicates that those of
ordinary skill do not view such a substitution as altering the principle of
operation of delivering a rivet from a location to the riveting machine.
Blacket
The Patent Owner further argues that “Blacket only suggests blowing
rivets along the supply passage when it is necessary for the rivets to move
upwards. In relation to all other embodiments of Blacket, gravity is used,
and there is no suggestion that the rivets should be transported using
compressed air.” Resp. Br. 10. However, we do not agree that Blacket’s
statement that “[i]n certain applications, the rivets 217 will be blown up the
supply passage 220” teaches to use compressed air only when transporting
rivets upwardly. Blacket, pg. 9, ll. 1–2; see also Appeal Br. 12 (“[N]othing
in Blacket [] limits use of compressed air to moving rivets only in an upward
direction.”). We agree with the Requester that the disclosure of both types
of rivet supply systems indicates that compressed air systems can be used
instead of gravity-feed systems. Appeal Br. 12. In that regard, the
Requester has provided a reason with rational underpinnings as to why using
compressed air may be advantageous in that it “can be used to facilitate rivet
movement in any desired direction.” Appeal Br. 12.
In our view, it would have been evident to one of ordinary skill that
the distance, angle, the frictional forces through which rivets must be
delivered, etc., are all considerations for both gravity and compressed air
feed systems, and that depending on the particulars of a given delivery
system, each system may have advantages and disadvantages. The Patent
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Owner appears to be requiring explicit teaching or suggestion for use of
compressed air to transport rivets in a non-upward direction, and appears to
ignore the fact that a person of ordinary skill in the art is not an automaton
and has ordinary skill and creativity. KSR, 550 U.S. 421.
Therefore, in view of Blacket’s disclosure, it would have been
obvious to a person of ordinary skill in the art to have implemented the
device of Iekumo using compressed air for delivering rivets as a predictable
variation or to “insure the rivets are forced within the tube all the way into
the nose of the setting tool” as concluded by the Requester. Appeal Br. 11.
Cullen
The Patent Owner further argues that “Cullen relates to stud welding,
which is a fundamentally different technology and would not be considered
relevant by one of ordinary skill in the art.” Resp. Br. 10. We understand
this argument to be asserting that Cullen is not analogous art. The test for
determining whether a prior art reference is analogous art is: “(1) whether
the art is from the same field of endeavor, regardless of the problem
addressed, and (2) if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Clay, 966 F.2d 656, 659
(Fed. Cir. 1992).
As to Cullen’s disclosure, we observe that a stud, like a rivet, is a
fastener, and it is directed to “[a]n apparatus for transporting a plurality of
fasteners [] in an automated changing system,” i.e., material handling of
fasteners. Cullen, Abst. Thus, Cullen is within the same field of endeavor
as the Patent Owner’s invention. In addition, the First ACP makes clear that
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Cullen was relied on for disclosing “how docking and undocking works for a
pressurized delivery tube.” First ACP 14, citing Cullen, pg. 16, ll. 8–14;
Fig. 3. Thus, Cullen would have been reasonably pertinent to the problem
confronting the inventor, and discloses a solution for connecting and
disconnecting pressurized delivery tubes.
Claims 1 and 2
As to claims 1 and 2 specifically, the Patent Owner argues that:
The First ACP improperly relies on Cullen as teaching the
claimed docking and undocking. However, first member 62
and second member 64 of Cullen do not correspond to the
delivery tube and the intermediate buffer, because Cullen
describes them as being “mated,” but does not describe them as
being moved relative to one another during operation, or as
having a docked and an undocked position.
Resp. Br. 10–11.
Thus, the Patent Owner argues that claims 1 and 2 recitations
requiring the steps of moving to docked and undocked position are not
satisfied by merely having tubes connected to each other as in Cullen. Resp.
Br. 11.
This argument is not persuasive as it argues Cullen individually.
“Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d 413, 425 (CCPA 1981). As noted above, the First ACP
found that Iekumo discloses moving the intermediate buffer (chutes) 7a, 7b
relative to the delivery chutes 25a, 25b. First ACP 13; see also Iekumo,
Figs. 5, 7; pg. 6 (“The screwdriver 6 fixed to the arm 3 of the industrial robot
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1 is moved, and the chutes 7a, 7b fixed to the screwdriver 2 and the other
chutes 25a, 25b are aligned with each other (FIG 5).”). The First ACP relied
on Cullen for teaching “how docking and undocking works for a pressurized
delivery tube,” Cullen disclosing that its attachment is “for facilitating
attachment to a feed tube with a quick-disconnect type connector.” First
ACP 14; Cullen, pg. 17, ll. 1–4. Thus, in implementing the system of
Iekumo with its moving intermediate buffer using pressurized air delivery
tubes, it would have been obvious to one of ordinary skill in the art to utilize
the attachment/connector of Cullen to allow for connection and
disconnection, i.e., docking and undocking, of the moving intermediate
buffer as taught in Iekumo.
Claims 5, 7, and 8
Regarding claims 5, 7, and 8, the Patent Owner argues that the
Requester’s Appeal Brief is “silent with respect to any of the elements” of
these claims. Resp. Br. 11. However, we find this argument unpersuasive
for the reasons already discussed above relative to the Patent Owner’s
request for dismissal of the appeal.9
The Patent Owner also argues that Iekumo “does not indicate any
structure corresponding to the docking device” and stopping component 27
does not correspond to the claimed gate because it is not part of a docking
device that is opened or closed. Resp. Br. 11. However, the Patent Owner’s
argument is unpersuasive because it argues Iekumo individually, and ignores

9 The Patent Owner makes the same, or a similar argument, with respect to
various other claims separately argued. Such arguments as to these other
claims are also unpersuasive for the same reason. We omit further
discussion of such arguments to avoid repetition.
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the teachings of Cullen that was cited for teaching “how docking and
undocking works for a pressurized delivery tube.” It would have been
obvious to a person of ordinary skill to have modified Iekumo in view of
Cullen to include the steps of docking and undocking when using
compressed air to deliver rivets. As to the claimed gate, we note that it is the
gate that is opened and closed, not that the docking device opens and closes.
Iekumo discloses a stopping component 27 provided on distal end of the
chutes 25a, 25b such that when implemented with the “quick-disconnect
type connector” of Cullen, it would be part of a docking device. Iekumo,
Fig. 6.
Claims 6, 11, and 12
According to the Patent Owner, the rejection is deficient as to claims
6, 11, and 12 because
the fly off preventing component 18 of Iekumo does not
correspond to the gate of claims 6, 11 and 12 because it is not
part of a docking device, and it is not opened or closed based on
the engagement or disengagement of first and second portions
of a docking device.
Resp. Br. 11.
However, this argument is unpersuasive for reasons similar to that of
claims 5, 7, and 8 discussed above, except that the fly off preventing
component is provided on the distal most end of chutes 7a, 7b. Iekumo, Fig.
5.
The Patent Owner also argues that “the fly off preventing component
18 of Iekumo is designed for and operates with gravity fed chutes 25a, 25b,
and 7a, 7b, and would be inoperable with compressed air delivery tubes.”
Resp. Br. 11. However, the Patent Owner does not provide an explanation
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or evidence in support of its assertion. It is not apparent why such devices
for preventing unintended dispensing of a rivet cannot be used as part of a
docking device that transports rivets using compressed air. Iekumo, pg. 6
(the fly off preventing component is “subjected to the action of a spring [],
and can rotate around a pin.”).
Claims 15, 24, and 33
The Patent Owner again asserts that modifying Iekumo to use
compressed air instead of gravity would not have been obvious, and would
require modifications that alter the principle of operation. Resp. Br. 11–12.
These arguments are unpersuasive for the reasons already discussed supra.
Claims 16, 25, and 34 (further in view of Bonomi and Auriol)
These claims recite that the method comprises “stacking the rivets
substantially vertically in the intermediate buffer.” Appeal Br. 31, Claims
App’x. The Patent Owner argues that “Blacket does not disclose an
intermediate buffer, much less one in which rivets are stacked substantially
vertically,” and that rivets are “passed along the delivery passage 20
individually (see Blacket at pgs. 7, 8), so no ‘stacking’ takes place.” Resp.
Br. 12.
We initially observe that Iekumo was relied upon for disclosing, and
Iekumo discloses, an intermediate buffer. First ACP 13. Nevertheless, the
First ACP did find that Blacket shows stacking rivets substantially vertically
and being reoriented 90° during delivery to the tool. First ACP 15, citing
Blacket, pg. 6, l. 32–pg.7, l. 4; Fig. 1. The Patent Owner appears to be
correct that contrary to the First ACP, Blacket does not stack rivets
substantially vertically. In particular, although Figure 1 of Blacket clearly
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shows that tube 22 is vertical, and rivets are conveyed therein, there is no
disclosure of “stacking rivets” in this vertically oriented tube. Neither
Iekumo nor Cullen discloses this recited limitation.
Nevertheless, Iekumo discloses storing rivets in an intermediate buffer
that is angled approximately 40°, such that the rivets are stored at a partially
vertical angle. Iekumo, Figs. 2, 4. Although we do not find that the
Iekumo’s angled intermediate buffer stacks rivets “substantially vertically,”
we conclude that it would have been obvious to a person of ordinary skill in
the art to have further modified Iekumo so that rivets are stacked
substantially vertically as recited by these claims. Specifically, we further
rely on Bonomi of record that teaches vertical stacking of rivets in multiple
buffers (Bonomi, Figs. 3(a), 3(b), Abst.), and Auriol that teaches such
substantially vertical stacking of rivets in a storage device 20, i.e., in a buffer
(Auriol, Fig. 4, pg. 8 (rivets “are stacked one behind the other”)). See
Randall Mfg. v. Rea, 733 F.3d 1355, 1362–63 (Fed. Cir. 2013) (prior art of
record but not specifically relied upon in the rejection considered as
evidence of the state of the art, common knowledge, and common sense of
one of ordinary skill in the art). Thus, substantially vertical orientation of
rivets stored in a buffer was well-known and practiced in the art, and it
would have been obvious to a person of ordinary skill in the art to have
further modified Iekumo so that rivets are stacked substantially vertically in
order to reduce the lateral footprint and the moment of inertia of the riveting
system and/or as a predictable variation in the angling of the intermediate
buffer. KSR, 550 U.S. at 417.
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Claims 18, 20, 27, 29, 36, and 38 (further in view of Bonomi and
Auriol)
Claims 18, 27, and 36 each recite “the rivets are stacked in the
intermediate buffer magazine in a first orientation and are reoriented through
substantially 90° to a second orientation during delivery to the tool.” See,
e.g., Appeal Br. 31–33, Claims App’x. Claims 20, 29, and 38 ultimately
depend from one of claims 18, 27, and 36. In addition to arguing that
Blacket does not disclose stacking of rivets, the Patent Owner also asserts
that reorientation of the rivet through substantially 90° is not shown. Resp.
Br. 12.
As to stacking of rivets, we observe that these claims are different
than claims 16, 25, and 34 discussed above because these claims do not
recite “substantially vertically” stacking the rivets. Thus, the recited
limitation merely requiring “stacking” appears to be reasonably satisfied by
Iekumo in which the screws are illustrated as being stacked at an angle. See
Iekumo, Fig. 2. Nevertheless, to any extent that Iekumo cannot be
reasonably considered as disclosing stacked rivets, we rely on the
disclosures of Bonomi and Auriol as discussed above to conclude that such
stacking of rivets would have been obvious to one of ordinary skill in the art
in order to reduce the lateral footprint and the moment of inertia of the
riveting system and/or as a predictable variation in the angling of the
intermediate buffer. Randall, 733 F.3d at 1362–63; KSR, 550 U.S. at 417.
Furthermore, the Patent Owner’s argument regarding reorientation of
the rivet is not persuasive because, as set forth in the First ACP, Blacket
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clearly discloses reorientation of the rivet through “substantially 90° to a
second orientation during delivery to the tool” as recited. Blacket, Fig. 3(a);
First ACP 15.
Claim 43 (further in view of Bonomi and Auriol)
As to independent claim 43, the Patent Owner argues that the
suggested combination of Iekumo, Blacket and Cullen does not disclose:
(1) “selectively transporting rivets from a reservoir of rivets,
individually or in groups, through at least one delivery tube
towards the intermediate buffer by using compressed air”; (2)
“stacking the rivets substantially vertically in the intermediate
buffer,” . . . (3) the delivery tube and the intermediate buffer
having a docked and an undocked position, as discussed with
respect to claim 1 above; and (4) “the rivet being reoriented
through substantially 90° during delivery to the tool.”
Resp. Br. 12.
These arguments are not persuasive for the reasons discussed supra
except for the argument that the cited prior art lacks disclosure of “stacking
the rivets substantially vertically in the intermediate buffer.” However, we
again rely on the disclosures of Bonomi and Auriol as discussed above to
conclude that such orientation of the rivets would have been obvious to one
of ordinary skill in the art in order to reduce the lateral footprint of the
riveting system and/or as a predictable variation in the angling of an
intermediate buffer. Randall, 733 F.3d at 1362–63; KSR, 550 U.S. at 417.
Claims 17, 26, and 35
These claims recite that “the rivets are transported along the delivery
tube in an internal profile of T-shaped cross-section.” See, e.g., Appeal Br.
31, Claims App’x. The Patent Owner argues that the combination of
Iekumo, Blacket and Cullen fails to satisfy these claims because
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Blacket teaches a fastener supply passage 201 with a section of
T-shaped profile, but the fastener guide tube 208 connected to
the fastener supply passage 201 has a simple rectangular cross-
section (Blacket at Figure 6). Notably, it is the guide tube 208
that is taught as being suitable for general transport of rivets,
rather than the delivery passage 201.
Resp. Br. 12.
According to the Patent Owner,
One of ordinary skill would not incorporate an intermediate
buffer downstream of the T-shaped delivery passage 201, as
there is clearly no room to do so. . . . Even if the buffer was
positioned at the far end of the tube 208 from the tool, there
would be no reason to use a tube of T-shaped profile, since any
rivet orientation would be lost during travel along the
downstream tube of rectangular profile.
Resp. Br. 13.
However, the basis of the Patent Owner’s arguments are not clear
because Blacket does not use the reference numerals 201 or 208.
Regardless, the Patent Owner’s arguments appear to be based on bodily
incorporation. We disagree with the Patent Owner’s inference that because
Blacket discloses the fastener supply passage as having a T-shaped profile
and the guide tube as having a rectangular cross-section, a passage having a
T-shaped profile is somehow not suitable for use in general transport of
rivets. Nothing in Blacket suggests that a passage having a T-shaped profile
renders it unsuitable for transport of rivets in the guide tube, or any other
tube. To the contrary, the fact that Blacket discloses a passage having a T-
shaped profile is capable of transporting rivets, even along a bend, would
indicate to one of ordinary skill in the art that the T-shaped profile is suitable
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for transport of rivets, whether for “general transport,” to the rivet punch, or
some other location. Blacket, Fig. 1.
As to the Patent Owner’s assertion of lack of room for the
intermediate buffer and the asserted lack of reason, these arguments again
appear to focus on bodily incorporation and/or otherwise to require explicit
teachings. It would have been obvious to one of ordinary skill in the art to
utilize T-shaped profile in passages in order to maintain control over the
orientation of the rivet as it is transported in the rivet supply system. KSR,
550 U.S. at 417.
Claims 19, 28, and 37 (further in view of Bonomi and Auriol)
These claims require the intermediate buffer to have a T-shaped cross-
section, and stacking of rivets therein. Appeal Br. 31, Claims App’x. The
Patent Owner argues that “since none of Iekumo, Blacket, and Cullen
disclose ‘stacking’ of rivets . . . none of them disclose stacking rivets in an
intermediate buffer with a T-shaped internal profile,” and “any stacking in
the system of Blacket would have to take place in the guide tube 208, which
has a rectangular profile, rather than a T-shaped one.” Resp. Br. 13.
As to the requirement of “stacking,” this requirement appears to be
reasonably satisfied by Iekumo in which the screws are illustrated as being
stacked at an angle. See Iekumo, Fig. 2. However, as also discussed above,
to any extent that Iekumo cannot be reasonably considered as disclosing
stacked rivets, we rely on the disclosures of Bonomi and Auriol as discussed
above to conclude that such orientation of the rivets would have been
obvious to one of ordinary skill. The Patent Owner’s reliance on the T-
shaped cross-section of the intermediate buffer is unpersuasive for reasons
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similar to those discussed above relative to claims 17, 26, and 35. In this
regard, the Patent Owner argues the applied references separately.
Claim 41
Claim 41 recites that “rivets are delivered to a plurality of
intermediate buffers, each attached to the rivet setting tool.” Appeal Br. 34,
Claims App’x. The First ACP found that “Cullen teaches a plurality of
buffer tubes 118 each attached to the setting tool.” First ACP 15, citing
Cullen, pg. 12, ll. 12–22. The cited passage of Cullen discloses an example
robotic application that utilizes a plurality of interface fittings, “which could
accommodate different sized studs.” First ACP 15. The first ACP
concluded that “[i]t would have been obvious to one of ordinary skill in the
art to further modify Iekumo to include a plurality of buffer tubes [] as
taught by Cullen to accommodate different sized fasteners.” First ACP 16.
The Patent Owner argues that:
Cullen does not disclose even a single intermediate buffer, so it
provides no basis for a plurality of intermediate buffers. The feed
tube 118 of Cullen is not an intermediate buffer, because it does not
continue to supply weld studs to the welding gun 26 when the robot
adaptor unit 16 is disengaged from the tooling adaptor unit 22.
Resp. Br. 13.
The Patent Owner appears to be correct that Cullen does not disclose
an intermediate buffer so the Examiner’s finding to the contrary is in error.
However, as already discussed above, Iekumo discloses an intermediate
buffer. Accordingly, in view of Cullen’s disclosure to provide plurality of
tubes to accommodate fasteners of different sizes in robotic applications, it
would have been obvious to provide a plurality of intermediate buffers
attached to the rivet setting tool of Iekumo as modified by Blacket, in order
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to accommodate rivets of different sizes and to optimize rivet setting
processes that require different sized rivets.
Claim 42
Claim 42 recites that “the nose of the tool moves towards the
workpiece and die to perform a riveting operation.” Appeal Br. 34, Claims
App’x. The First ACP found that “Iekumo teaches the robot moves the nose
of the tool towards the workpiece and die to perform a riveting operation,
5:25–6:12.” First ACP 16. The Patent Owner argues that “Iekumo does not
disclose a rivet delivery tool, or the associated punch and die, and therefore
does not disclose the nose of a rivet delivery tool moving towards the
workpiece ‘and die to perform a riveting operation,’ as recited in claim 42.”
Resp. Br. 13. We partially agree.
The rejection set forth in the First ACP is not clear because the cited
portion of Iekumo pertains to devices for stopping the screw, and does not
pertain to advancement of a nose of a tool. In that regard, page 5 of Iekumo
ends at line 22, and does not even have line 25. Although Iekumo discloses
that its supply device is for supplying headed rods such as screws and rivets,
because the particular embodiment illustrated in the figures and specifically
discussed is directed to a supply device for screws, it lacks disclosure of an
associated punch and die such that it fails to disclose the claimed movement
of the nose of the tool. See Iekumo, Title, pg. 3, ll. 3–4.
Nevertheless, Blacket clearly discloses that the fastener actuator
“includes a punch when the fastener is a rivet,” and that “[p]referably, the
frame is a C-type frame with a fastener upsetting die mounted on one jaw
and the setting tool mounted on the other jaw and connected to an actuator. .
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. . Preferably, the means to advance the punch is a plunger, operated by a[]
hydraulic cylinder.” Blacket, pg. 2, ll. 12–16; pg. 3, ll. 15–20. Blacket also
states that “[t]he machine may have a C-frame (not shown) with a rivet
upsetting die (also not shown) mounted appropriately as will be clear to
those skilled in the art.” Blacket, pg. 6, ll. 14–17. Thus, Blacket clearly
establishes that use of a punch and upsetting die is well known in the art, and
that advancing the punch is part of the process of upsetting rivets.
Summary of Rejection 4
For the reasons discussed supra, we generally agree with the
Requester that the method of claims 1, 2, 5–8, 11, 12, 15–21, 24–30, 33–39,
and 41–43 would have been obvious to one of ordinary skill and creativity in
the art, and any requisite modifications would have been well within the skill
of those of one or ordinary skill in the art. Accordingly, we reverse the
Examiner’s withdrawal of this rejection. However, as to claims 16, 18–20,
25, 27–29, 34, 36–38, and 43, we modify the rejection to further rely on
Bonomi and Auriol in concluding that these claims would have been obvious
to a person of ordinary skill in the art. As to the other claims subject to this
rejection but not specifically addressed above, the Requester’s assessment
appears to correct that the Examiner withdrew the rejection of such claims
based on the withdrawal of the rejection as to the independent claims.
Appeal Br. 13. We do not discern any patentable subject matter recited in
these claims, and reverse the Examiner’s withdrawal of these remaining
claims as well.
Therefore, in view of the above considerations, we reverse the
Examiner’s withdrawal of Rejection 4 of claims 1, 2, 5–8, 11, 12, 15–21,
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24–30, 33–39, and 41–43 as being unpatentable over Iekumo in view of
Blacket, and Cullen, but further in view of Bonomi and Auriol as to claims
16, 18–20, 25, 27–29, 34, 36–38, and 43 as discussed above. We
denominate this reversal as a New Ground of Rejection under 37 CFR
§ 41.77(b).

Rejection 5: Iekumo, Blacket, Cullen, and Mori
Claims 22, 31, and 40 recite that “the passage of rivets from the
reservoir is detected by a sensor.” Appeal Br. 32, Claims App’x. The
Requester argues that claims 22, 31, and 40 are unpatentable over Iekumo in
view of Blacket, Cullen, and Mori, noting that the Examiner withdrew this
rejection as to dependent claims based on the withdrawal of the rejection as
to the independent claims from which they depend. Appeal Br. 13.
The Patent Owner argues that it would not have been obvious to “add
Mori because Mori relates to a gravity fed screw delivery system, not a rivet
delivery system using a delivery tube and compressed air.” Resp. Br. 14.
However, as discussed above relative to Rejection 4, both Iekumo and
Blacket clearly establish that it was well known in the art that mechanisms
used in screwdrivers are applicable to rivet setting tools, and that these
references, each alone and in combination, provide sufficient suggestion to
apply the teachings of Mori to the device of Iekumo, as modified by Blacket
and Cullen.
The Patent Owner further argues that the “screw detector 13 of Mori
detects ‘the presence or absence of screws on the sub-chute rail 5,’ (Mori at
p. 3 lines 21-23), which is detecting screws that are on the delivery chute,
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not screws that are passing from the reservoir.” Resp. Br. 14. We are not
persuaded by this argument because it again is premised on bodily
incorporation. While Mori may disclose providing a sensor on the sub-chute
rail as argued by the Patent Owner, its broader teaching to one of ordinary
skill is to use sensors to monitor proper transport of a screw. In view of
Mori’s teaching to use such sensors in a fastener feed system, it would have
been obvious to one of ordinary skill in the art to have used sensors in any
location desired to ensure that rivets are being properly transported and/or
dispensed throughout the system, including from the reservoir. Such
modification or combination is merely a predictable variation which yields
predictable results, which would have been obvious to one of ordinary skill
and creativity. See KSR, 550 U.S. at 417, 421; see also In re Kuhle, 526
F.2d 553, 555 (CCPA 1975) (the particular placement of a contact in a
conductivity measuring device was held to be an obvious matter of design
choice).
Claims 23, 32, and 41 (New)
Claims 23 and 32 were not reached in Rejections 4 and 5. These
claims recite that “rivets are delivered to a plurality of intermediate buffers,
each attached to the rivet setting tool.” Appeal Br. 32, 33, Claims App’x.
Mori discloses an automatic screwdriver including a screw supplier 14 that
provides screws to sub-chute rail 5, which in turn, provides screws to main
chute rail 3 that is fixed to, and provides screws to a screwdriver 2. Mori,
pg. 3, Fig. 1. Thus, the disclosure of Mori is similar to that of Iekumo.
However, Mori explicitly teaches that “[a] plurality of magazines can also be
used to align and retain screws for the screw supplier” (Mori, pg. 6) thereby
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suggesting the method recited in these claims as to a plurality of
intermediate buffers for rivets. Accordingly, we modify this rejection to
include claims 23 and 32.
As to claim 41, this claim also recites “rivets are delivered to a
plurality of intermediate buffers, each attached to the rivet setting tool.”
Appeal Br. 34, Claims App’x. Claim 41 stands rejected in Rejection 4
discussed above based on the combination of Iekumo, Blacket, and Cullen.
It is our view that the teachings of Mori discussed above further augments
that rejection, and thus, include claim 41 in this rejection as well.
Summary of Rejection 5
Accordingly, in view of the above, we also reverse the Examiner’s
withdrawal of this rejection of claims 22, 31, and 40, as being unpatentable
over Iekumo in view of Blacket, Cullen, and Mori, and denominate the same
as a New Ground of Rejection under 37 C.F.R. § 41.77(b), modifying the
rejection to further include claims 23, 32, and 41.

Rejection 8: Mori, Blacket, Aoyama, and Auriol
In the Second ACP, the Examiner withdrew the rejection of claims 1,
2, 5, 7, 8, 15–22, 24–31, and 43 over the combination of Mori in view of
Blacket, Aoyama, and Auriol. Second ACP 13–14. The Examiner withdrew
this rejection finding that “Mori does not teach the compressed air delivery
of rivets to a rivet setting tool which includes a punch and a rivet upsetting
die.” Ans. 8. The Examiner also finds that Blacket, Aoyama, and Auriol
“do[] not provide a teaching to convert the Mori screwdriver to a rivet
setting tool which includes a punch and a rivet upsetting die.” Ans. 8–9.
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The Examiner further finds that Blacket also “does not provide a teaching to
convert the Mori screwdriver from a gravity feed system to a compressed air
feed system,” and that “[t]he blown-air tool embodiment in Blacket includes
an inclined supply passage (220) which would appear inconsistent with the
gravity transport of screws associated with the Mori device.” Ans. 9.
The Requester argues that claims 1, 2, 5, 7, 8, 15–22, 24–31, and 43
are unpatentable over Mori in view of Blacket, Aoyama, and Auriol, and
requests reinstatement of the rejection set forth in the First ACP. Appeal Br.
17. We agree with the Requester and address the factual and substantive
issues raised in the appeal by the parties infra. Our findings and conclusions
relative to this rejection are generally in agreement with those set forth in the
First ACP, and we adopt the findings and conclusions as set forth therein to
the extent that they are consistent with our analysis set forth below.
As noted above, Mori discloses an automatic screwdriver including a
screw supplier 14 that provides screws to sub-chute rail 5, which in turn,
provides screws to main chute rail 3 that is fixed to, and provides screws to,
a screwdriver 2. Mori, pg. 3, Fig. 1. Thus, the disclosure of Mori is similar
to that of Iekumo discussed above relative to Rejections 4 and 5. As also
noted above, Mori discloses a screw detector 4 fixed to the main chute rail
for detecting screws therein, and teaches that “[a] plurality of magazines can
also be used to align and retain screws for the screw supplier.” Mori, pgs. 2,
6.
The Requester argues that the Examiner appears to improperly require
an express teaching to convert Mori’s screwdriver to a rivet setting tool, and
that it would have been obvious to a person of ordinary skill in the art to
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modify “Mori’s screw setting apparatus/method in view of Blacket to set
rivets and include a rivet setting tool” considering that Blacket teaches such
interchangeability. Appeal Br. 17. The Requester also argues that:
[i]t would have been obvious to one of ordinary skill in the art to
further modify Mori to use compressed air or blow-feeding the rivets
as taught by Blacket as an obvious well-known means to ensure
accurate delivery of rivets through the tube into the head of the setting
tool.
Appeal Br. 18 (citing Blacket, pg. 15, ll. 1–6).
The Requester further argues that “Aoyama also renders it obvious to
have incorporated a compressed air delivery system into Mori,” and that
“gravity feed and compressed air feed were well-known alternatives,” with
compressed air being “advantageous because it facilitates upward movement
of the fasteners, thereby permitting greater freedom in the vertical placement
of upstream and downstream components.” Appeal Br. 19.
Thus, the issues and arguments presented as to the Examiner’s
withdrawal of this rejection are similar to those discussed above relative to
Rejection 4. We agree with the Requester that these claims would have been
obvious for reasons similar to those already discussed above. We address
the Patent Owner’s arguments in support of the Examiner’s withdrawal
infra.
Claim 1
The Patent Owner argues that:
there is no disclosure in any of Mori, Blacket, Aoyama, or Auriol that
provides a reason for which one of ordinary skill in the art would alter
Mori from a gravity fed system to a compressed air delivery system
using tubes, which would impermissibly alter the principle of
operation of Mori.
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Resp. Br. 18.
The Patent Owner argues that “Blacket teaches that blowing of a rivet
should only be used when the rivet is required to move upwards,” and that it
“does not disclose an intermediate buffer attached to the rivet setting tool, as
recited in claim 1.” Resp. Br. 18. These arguments are unpersuasive for
reasons substantially similar to those discussed above relative to Rejection 4,
and we conclude that the evidence indicates that substitution of one type of
feed with another was well-known in the art, and within the skill of those of
ordinary skill and creativity.
The Patent Owner argues that “Mori does not disclose a docking
device, and gate 8 is not the gate of a docking mechanism.” Resp. Br. 18.
However, these arguments are unpersuasive because Mori discloses gate 8
similar to that of Iekumo discussed relative to Rejection 4, and we agree
with the finding in the First ACP that “Aoyama teaches how docking and
undocking works [] for a delivery tube that uses compressed air.” First ACP
24; see also Aoyama, Fig. 1. Accordingly, we conclude that “[i]t would
have been obvious to one of ordinary skill in the art to modify Mori to assist
transport of the fasteners through the delivery tube and to use the docking
mechanism as taught by Aoyama when connecting and disconnecting the
delivery tube to the intermediate buffer.” First ACP 22.
The Patent Owner also argues that Auriol does not disclose the steps
of “selectively releasing a rivet,” and “advancing a punch,” as recited in
claim 1. Resp. Br. 18. However, Auriol discloses that “[t]he rivets are
conveyed to a riveting station one by one,” thereby disclosing the step of
selectively releasing a rivet. Auriol, Abstract. The device of Blacket also
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selectively releases rivets and further discloses applicability of its devices
with screws. See, e.g., Blacket, pg. 6, ll. 5–9, pg. 8, ll. 2–3pg. 15, ll. 1–4.
As also discussed above, Blacket clearly establishes that use of a punch and
upsetting die is well known in the art for upsetting rivets, and that advancing
the punch is part of the riveting process. Blacket, pg. 2, ll. 12–16; pg. 3, ll.
15–20; pg. 6, ll. 14–27. Therefore, the Patent Owner’s arguments with
respect to claim 1 are unpersuasive.
Claims 5 and 7
The Patent Owner argues that as to claims 5 and 7,
the First ACP improperly relies upon the gate 8a of Mori as
corresponding to the recited gate at the outlet of the delivery
tube. However, . . . Mori does not disclose a docking device as
recited in the claims because there is no second portion
associated with an inlet of the intermediate buffer that forms a
releasable connection to sub-chute 5.
Resp. Br. 18–19.
Again, the Patent Owner’s argument is unpersuasive because it argues
Mori separately, and does not take into consideration that Aoyama, which
was cited for teaching “how docking and undocking works [] for a delivery
tube that uses compressed air.” First ACP 22. It would have been obvious
to a person of ordinary skill to have modified Mori in view of Aoyama to
include the steps of docking and undocking when using compressed air to
deliver rivets.
Claim 43
The Patent Owner argues that:
Mori in view of Blacket, Aoyama and Auriol does not disclose:
(1) “selectively transporting rivets . . . using compressed air”;
(2) the delivery tube and the intermediate buffer having a
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docked and an undocked position, as discussed with respect to
claim 1 above; (3) “stacking the rivets substantially vertically in
the intermediate buffer,” as discussed with respect to claims 16
and 25 above; and (4) “the rivet being reoriented through
substantially 90° during delivery to the tool.”
Resp. Br. 20.
Thus, the Patent Owner’s arguments relative to claim 43 is
substantively the same as those presented with respect to Rejection 4, and
equally unpersuasive for reasons discussed above. We specifically find that
Auriol applied in the present rejection discloses stacking the rivets
substantially vertically. Auriol, Fig. 4.
Claims 6, 11, 12, 23, and 32–42 (New)
These claims were not included in this rejection based on the
combination of Mori in view of Blacket, Aoyama, and Auriol. See First
ACP 20–23. However, the basis for their exclusion is not readily apparent.
Indeed, we conclude that these claims are unpatentable considering the
teachings of these references already discussed above.
For example, the subject matter of: opening and closing gates during
docking as recited in claim 6; driving of a rivet using a punch as recited in
claim 12; substantially vertical stacking of rivets as recited in claims 34 and
36; and using a delivery tube with a T-shaped cross-section as recited in
claims 35 and 37, would have been obvious to one of ordinary skill in the art
for the reasons already discussed. Appeal Br. 29, 31, 33, Claims App’x.
Moreover, delivering rivets to a plurality of intermediate buffers as recited in
claims 23, 32 and 41, and detecting rivets using a sensor as recited in claim
40 (Appeal Br. 32, 33, 34, Claims App’x), also would have been obvious to
one of ordinary skill in the art considering that, as noted above, Mori
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specifically discloses a screw detector 4 fixed to the main chute rail for
detecting screws therein, and further teaches that “[a] plurality of magazines
can also be used to align and retain screws for the screw supplier.” Mori,
pg. 2, 6. Therefore, we further modify this rejection to include claims 6, 11,
12, 23, and 32–42.
Summary of Rejection 8
Therefore, in view of the above, we reverse the Examiner’s
withdrawal of this rejection of claims 1, 2, 5, 7, 8, 15–22, 24–31, and 43
over Mori in view of Blacket, Aoyama, and Auriol, and denominate the
same as a New Ground of Rejection. We also add to this New Ground of
Rejection, claims 6, 11, 12, 23, and 32–42, which were excluded in the First
ACP.

Rejections 2 and 3: Based on Aoyama and Bennett
The Requester argues that claims 1, 2, and 15–21 are unpatentable
over Aoyama in view of Bennett, and that claim 22 is unpatentable in further
view of Bonomi. Appeal Br. 9–10. However, each of these claims stand
rejected relative to Rejections 4, 5, and 8 discussed above. Therefore,
Rejections 2 and 3 are moot, and we decline to reach the same.

Rejections 9 and 10: Based on Mori, Bennett, and Cullen
The Requester argues that claims 1, 2, 8, 15–23, and 43 are
unpatentable over Mori in view of Bennett, and Cullen, and that that claims
6, 11, and 12 are unpatentable in further view of Iekumo. Appeal Br. 20–23.
However, each of these claims stand rejected relative to Rejections 4, 5, and
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8 discussed above. Therefore, Rejections 9 and 10 are moot, and we decline
to reach the same.

Rejections 11–14: Based on Moeller, Kajino, and Bennett
The Requester argues that claims 1, 2, 5, 7, 8, 15, 17, 19, 21, 24, 26,
28, 30, and 42 are unpatentable over Moeller in view of Kajino, and Bennett;
claims 6, 11, 12, 33, 35, and 39 are unpatentable in further view of Iekumo;
claims 16, 18, 20, 25, 27, 29, and 43 are unpatentable in further view of
Blacket; and claims 22, 23, 31, and 32 are unpatentable in further view of
Bonomi. Appeal Br. 23–27. However, each of these claims stand rejected
relative to Rejections 4, 5, and 8 discussed above. Therefore, Rejections 11–
14 are moot, and we decline to reach the same.

CONCLUSIONS
1. The Examiner’s decision to withdraw Rejections 1, 6, and 7 is
AFFIRMED, albeit for reasons other than those relied upon by the
Examiner.
2. The Examiner’s decision to withdraw Rejection 4 is
REVERSED and denominated as a New Ground of Rejection, the rejection
being modified to rely on Bonomi and Auriol as to claims 16, 18–20, 25,
27–29, 34, 36–38, and 43.
3. The Examiner’s decision to withdraw Rejection 5 is
REVERSED and denominated as a New Ground of Rejection, the rejection
being modified to include claims 23, 32, and 41.
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4. The Examiner’s decision to withdraw Rejection 8 is
REVERSED and denominated as a New Ground of Rejection, the rejection
being modified to include claims 6, 11, 12, 23, and 32–42.
5. Rejections 2, 3, and 9–14 are moot, and we decline to reach
these rejections.
DECISION SUMMARY

In summary, the following claims stand rejected, and the rejections
thereof are denominated as New Grounds of Rejection pursuant to 37 C.F.R.
§ 41.77(b):

This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.77(b), which provides “[a]ny decision which includes a new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.77(b) also provides that the Patent Owner,
WITHIN ONE MONTH FROM THE DATE OF THE DECISION, must
Claims Rejected 35 U.S.C.
§
Basis New Ground
1, 2, 5–8, 11, 12,
15, 17, 21, 24–
30, 33–39, 41, 42
103(a) Iekumo,
Blacket, Cullen
1, 2, 5–8, 11, 12, 15,
17, 21, 24–30, 33–39,
41, 42
16, 18–20, 25,
27–29, 34, 36–
38, 43
103(a) Iekumo,
Blacket, Cullen,
Bonomi, Auriol
16, 18–20, 25, 27–29,
34, 36–38, 43
22, 23, 31, 32,
40, 41
103(a) Iekumo,
Blacket, Cullen,
Mori
22, 23, 31, 32, 40, 41
1, 2, 5–8, 11, 12,
15–43
103(a) Mori, Blacket,
Aoyama, Auriol
1, 2, 5–8, 11, 12, 15–
43
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exercise one of the following two options with respect to the new grounds of
rejection to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. The owner may file a response requesting
reopening of prosecution before the examiner. …
(2) Request rehearing. The owner may request that the proceeding be
reheard under § 41.79 by the Board upon the same record. …
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. §§ 1.956 and 41.77(g).
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

REVERSED; 37 C.F.R. § 41.77(b)

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CC

Patent Owner:

SMITHAMUNDSEN LLC
330 EAST KILBOURN AVENUE, SUITE 1100 TOWER 1
MILWAUKEE, WI 53202

Third Party Requester:

PILLSBURY WINTHROP SHAW PITTMAN LLP
(STANLEY BLACK & DECKER)
P.O. BOX 10500
MCLEAN, VA 22102