Bobby Hu

Patent Trials and Appeals Board

Nov 25, 2019

13678641 - (D) (P.T.A.B. Nov. 25, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/678,641 11/16/2012 Bobby Hu CFP-5588 3306
69638 7590 11/25/2019
Mayer & Williams, P.C.
55 Madison Avenue, Suite 400
Morristown, NJ 07960
EXAMINER
MULLER, BRYAN R
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
11/25/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO@dockettrak.com
docket@mwpatentlaw.com
info@THELAWFIRM.CC
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte BOBBY HU

Appeal 2018-000843
Application 13/678,641
Technology Center 3700

Before KEVIN F. TURNER, DANIEL S. SONG, and
FREDERICK C. LANEY, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 6–11 and 13–15.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as the
inventor. Br. 1.
2 Amendment After Final amending independent claim 11 to incorporate
limitations of previously rejected claims 2–4 was entered, and claims 2–4
have been canceled. Ans. 2; Adv. Act. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a socket assembly. Independent claim 11,
reproduced below, is illustrative of the claimed subject matter:
11. A socket assembly comprising:
a body including a driving portion and a transmission
portion, with the transmission portion including a first end and
a second end spaced from the first end along a longitudinal
axis, with the first end of the transmission portion connected to
the driving portion, with the driving portion adapted to be
driven by a driving tool, with the transmission portion adapted
to drive a fastener, with the body made of a first metal, and with
the first end of the transmission portion having a first color;
a sleeve mounted to the second end of the transmission
portion, with the sleeve including an outer periphery, with the
transmission portion having an outer periphery extending from
the driving portion to the sleeve, with the outer peripheries of
the sleeve and the transmission portion positioned adjacent to
and aligned with one another, with the sleeve made of a second
metal different from the first metal, with the outer periphery of
the sleeve coated with a coating of material formed on the
sleeve, with the outer periphery of the sleeve having a second
color different than the first color; and
a jacket made of a transparent material or light-
transmittable color material and mounted around the
transmission portion and the outer periphery of the sleeve, with
the jacket including first and second ends spaced from each
other along the longitudinal axis, with the jacket further
including an outer periphery extending between the first and
second ends of the jacket, with the jacket further including an
inner periphery extending between the first and second ends of
the jacket and surrounded by the outer periphery of the jacket,
with the jacket having a longitudinal length at least greater than
a longitudinal length of the sleeve, wherein the inner periphery
at the first end of the jacket surrounds and abuts the outer
periphery of the transmission portion of the body, wherein the
inner periphery at the second end of the jacket surrounds and
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abuts the outer periphery of the sleeve, with the jacket including
a lip extending inward from the second end of the jacket in a
radial direction perpendicular to the longitudinal axis, with the
lip abutting the end face of the sleeve facing away from the
driving portion of the body, with the first color of the
transmission portion of the body and the second color of the
outer periphery of the sleeve visible through the outer and inner
peripheries of the jacket.
Br. 11–12 (Claims App’x).
REJECTIONS
The Examiner rejects various claims under 35 U.S.C. § 103(a) as
follows:
1. Claims 11 and 15 as unpatentable over Wallden (US 7,117,765
B1, issued Oct. 10, 2006) in view of Huang (US 7,836,801 B2, issued Nov.
23, 2010), Arnold (US 5,819,606, issued Oct. 13, 1998), Neijndorff (US
6,138,538, issued Oct. 31, 2000), and Wallace (US 2003/0192409 A1, pub.
Oct. 16, 2003). Final Act. 2; Ans. 2.
2. Claims 6, 7, 9–11, 13, and 143 as unpatentable over Tsai (US
2011/0100167 A1, pub. May 5, 2011) in view of Wallace and Neijndorff.
Final Act. 4.
3. Claim 8 as unpatentable over Tsai in view of Wallace,
Neijndorff and Carey (US 5,009,133, issued Apr. 23, 1991). Final Act. 7.

3 As noted, Amendment After Final amending independent claim 11 to
incorporate limitations of claims 2–4 has been entered, and claims 2–4
canceled. Ans. 2; Br. 10 (Claims App’x).
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OPINION
The Appellant argues claims 6–11 and 13–15 together as a group.4
Br. 3. Therefore, we select independent claim 11 as representative. Only
those arguments actually made by Appellant have been considered in this
decision, and any other arguments that could have been made are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(iv); see also In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011); Ex Parte Frye, 94 USPQ2d 1072, 1075–76
(BPAI 2010) (precedential).

Rejection Based on Wallden
The Examiner rejects independent claim 11, finding that Wallden
discloses a socket assembly substantially as claimed. Final Act. 2–3. The
Examiner finds that “Wallden fails to disclose the material of the socket or
sleeve, a coating on the sleeve [and] a jacket mounted around the body and
sleeve.” Final Act. 3. The Examiner takes official notice that “nearly all
tool sockets [are] formed from metal, most commonly from steel.” Final
Act. 3. The Examiner also finds that both Huang and Arnold disclose
“colored sleeves for application to a tool for easily identifying size and/or
other characteristics” and that the sleeves may be made of anodized
aluminum “to provide the desired color . . . in order to provide durable,
relatively inexpensive sleeves available in a wide range of colors.” Final
Act. 3.

4 We note that although Rejection 1 is based on Wallden whereas Rejections
2 and 3 are based on Tsai, the Appellant argues these rejections together.
For clarity, we separately address Rejections 2 and 3 based on Tsai.
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Based on these findings, the Examiner concludes that it would have
been obvious to a person of ordinary skill in the art to have “form[ed] the
sleeves of Wallden from aluminum (a second metal that different from the
first commonly known steel used for sockets) and to use anodizing to
provide a durable colored outer coating on the aluminum sleeve as is well
known in the art.” Final Act. 3.
The Examiner further finds that “Neijndorff discloses a polymeric
jacket for applying to cover metal surfaces of driving tools and sockets to
prevent marring or scratching of surfaces to which a fastener is being driven
by the socket,” and that the polymeric jacket may be made of, inter alia,
polycarbonate, which is known to be transparent and/or translucent. Final
Act. 3–4. The Examiner also finds that Neijndorff discloses the recited
relative dimensional and structural characteristics of the jacket. Ans. 4–5.5
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art to have provided a jacket for the sockets of
Wallden, and because the socket of Wallden have colored indicia, “to form
the jacket of transparent and/or translucent material,” in order to “allow the
user to observe the indicia” and maintain visibility thereof. Final Act. 4;
Ans. 5; Ans. 12 (“it would clearly be obvious to select from one of the
known transparent/translucent materials or at least provide the material in a
transparent/translucent form to allow a user to view the colored socket
portions, or else [it would] destroy[] the intended function . . . if a user were
unable to view the colored portions.”).

5 We cite to the Answer instead of the Final Office Action considering the
fact that independent claim 11 was amended in the entered Amendment
After Final.
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We agree with the Examiner’s findings and conclusions, and address
the Appellant’s arguments below.
The Appellant initially asserts that the Background of the Invention
section of the Specification establishes a long-felt but unmet need for “a
long, impact socket having a length larger than 75 mm, for use with
pneumatic tools, and especially adapted for using on aluminum alloy wheels
having deep screw holes.” Br. 3; see also Br. 8. The referenced portion of
the Specification states that aluminum alloy wheels are liable to scratch
when conventional sockets are used thereon, and that bolts for aluminum
allow wheels “are smaller than regular bolt sizes.” Spec. 1, ll. 5–8, 11–13.
However, establishing long-felt need requires objective evidence
showing existence of a persistent problem recognized by those of ordinary
skill in the art for which a solution was not known. In re Gershon, 372 F.2d
535, 538–39 (CCPA 1967). Hence, the Appellant must present affidavits or
other factual evidence of “a failure of others to provide a feasible solution to
[a] long-standing problem” and evidence “that experts did not foresee” the
solution claimed. See In re Piasecki, 745 F.2d 1468, 1475 (Fed. Cir. 1984).
Finally, the invention must satisfy the long-felt need. In re Cavanagh, 436
F.2d 491, 496 (CCPA 1971).
In the present appeal, we are not presented with objective evidence
that establishes existence of a persistent problem recognized by those of
ordinary skill in the art, failure of others to provide a solution, how such
unmet need was met by the invention claimed, or other evidence that
supports finding of long-felt need. In that regard, as evident from the prior
art relied upon, deep sockets were well-known and it cannot be reasonably
disputed that such sockets sized for wheel lugs were not known.
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The Appeal Brief includes an image of a document entitled “Super
Impact” appearing to show deep sockets, with annotations “impact socket
for pneumatic tools,” and “length larger than 75 mm.” Br. 4. However, the
Appellant does not identify where the document is in evidence, explain what
the document is, explain its pertinence to the claimed invention, or present
arguments based thereon as to the present appeal generally or to establish
long-felt need in particular.
The Appellant also provides a short discussion of each of the
references relied upon by the Examiner, and argues that the references do
not “relate to or solve problems relating to aluminum alloy wheels.” Br. 4–
5. The Appellant also points out alleged deficiencies as to various
references in disclosing the claimed invention, or suggesting combining
features of these references together. Br. 4–5. For example, the Appellant
states that “Wal[l]den does not relate to or solve problems relating to
aluminum alloy wheels and does not disclose or suggest forming the sleeve
of a metal different than that of the body and does not disclose or suggest a
jacket.” Br. 4.
To any extent that these statements of the Appellant are arguments,
they are unpersuasive. The Appellant does not persuasively set forth any
reasons as to why the prior art relied upon are either not within the same
field of endeavor of sockets, or reasonably pertinent to the problem with
which the inventor is involved. In re Clay, 966 F.2d 656, 659 (Fed. Cir.
1992). In addition, 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).
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The Appellant argues that the rejection is focused on “the differences
of the present invention from the prior art and not on the invention as a
whole,” and that “none of the prior art disclose or suggest that the parts
disclosed in the respective patents could be rearranged as well as utilized in
a different socket type in a manner as recited in the claims and/or disclose or
suggest a reason or motivation to do so.” Br. 5. In support, the Appellant
cites to various case law for the proposition that the prior art needs to
provide a suggestion, teaching or motivation for the suggested modification.
Br. 6. The Appellant also sets forth a series of questions as to why a person
of ordinary skill would have modified Wallden in the manner suggested by
the Examiner when the references to do not disclose or suggest doing so.
Br. 7. For example, the Appellant questions
what would motivate a person skilled in the art to attempt to
disregard the express teachings of Wallden to form its sleeve of
metal instead of a vinyl tape, powder coat, ionized or colored
snap ring to achieve a function which is not accomplished or
suggested as desirable in Wallden and/or to add a jacket to
achieve a function which is not accomplished or suggested as
desirable in Wallden?
Br. 7.
These arguments are unpersuasive. The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17–18 (1966). There is nothing improper about the Examiner
considering the differences between claim 11 and the prior art.
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As to the Appellant’s argument based on lack of suggestion, teaching
or motivation for the suggested modification within the prior art, the
Supreme Court has rejected the rigid requirement of a teaching, suggestion
or motivation to combine known elements in order to establish obviousness.
See KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418–19 (2007). What is
required is an articulated reason with a rational basis to support the
obviousness conclusion. See KSR, 550 U.S. at 417–18. In the present case,
the Examiner has provided reasons with rational underpinnings as
summarized above as to why it would have been obvious to one of ordinary
skill to have modified the sockets of Wallden in view of the applied prior art
references. In contrast, the Appellant does not address the articulated
reasoning provided by the Examiner with evidence or persuasive arguments.
The Appellant also argues that “[t]he Examiner failed to support what
the level of skill is.” Br. 7. However, this argument is unpersuasive because
the cited prior art can be considered as representative of the level of ordinary
skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001) (“[T]he absence of specific findings on the level of skill in the art does
not give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown.’”); Union Carbide
Corp. v. American Can Co., 724 F.2d 1567, 1573 (Fed. Cir. 1984).
The Appellant further argues that “Neijndorff does not disclose or
suggest that the preferred plastic materials are ‘transparent and/or
translucent,’” and that “it has not been shown that materials listed in
Neijndorff forming the jacket ‘are known to be transparent and/or
translucent.’” Br. 8. According to the Appellant, “even assuming that some
of the materials could be available as being transparent and/or translucent,”
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because these materials are disclosed in Neijndorff for the purpose of
“improved wear and higher strength,” there is “no motivation or reason that
exists in Neijndorff to use ‘transparent and/or translucent’ material.” Br. 8.
This argument is unpersuasive because it again presumes that a reason
must be provided in the prior art reference to combine the art, and fails to
address the rationale actually provided by the Examiner as to why it would
have been obvious to one of ordinary skill to provide a transparent or
translucent jacket. As to the polycarbonate material disclosed in Neijndorff,
it cannot be reasonably disputed that polycarbonate is transparent and that
this fact is well established.6 See also Ans. 11–12.
Therefore, for the reasons discussed above, the Appellant has not
persuaded us of any error in the Examiner’s rejection of independent claim
11 based on Wallden, and we affirm the same. The Appellant does not
submit any arguments as to dependent claim 15 also subject to this rejection.
Thus, claim 15 falls with claim 11.

Rejections Based on Tsai
The Examiner also rejects independent claim 11 based on Tsai,
finding that Tsai discloses a socket assembly substantially as claimed,
including a differently colored sleeve, but finds that Tsai fails to disclose
“how the sleeve is colored” and a jacket. Final Act. 4–5. The Examiner
takes official notice that “metal materials that are colored are typically either

6 “Polycarbonate : any of various tough transparent thermoplastics
characterized by high impact strength and high softening temperature.”
MERRIAM-WEBSTER, https://www.merriam-webster.com/dictionary/
polycarbonate (last visited Nov. 15, 2019).
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painted or coated with some form of electrochemical process, which will
provide the desired color as well as protect the metal from corrosion.” Final
Act. 5. The Examiner further finds that Wallace and Neijndorff “both
disclose polymeric jackets for applying to cover metal surfaces of driving
tools and sockets to prevent marring or scratching of surfaces to which a
fastener is being driven by the socket,” and that Neijndorff further discloses
making the jacket out of polycarbonate, which is known to be transparent.
Final Act. 5.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to have provided a jacket for the sockets of Tsai “to
prevent marring or scratching of surfaces during use, as taught by Wallace
and Neijndorff, wherein it would obviously be further desirable to form the
jacket of transparent and/or translucent material” such as polycarbonate
disclosed in Neijndorff “to allow the user to observe the indicia provided on
the sleeve of Tsai.” Final Act. 5–6. The Examiner also finds that Wallace
discloses the recited lip and the length of the jacket. Ans. 7.
As noted above, although Rejections 2 and 3 are based on Tsai, the
Appellant argues these rejections together with Rejection 1, which is based
on Wallden. Thus, the arguments of the Appellant addressed above relative
to Rejection 1 are applicable to the rejections based on Tsai, these arguments
being unpersuasive for the reasons discussed above. As to Tsai specifically,
the Appellant only makes arguments similar to those made with respect to
Wallden, questioning “what would motivate a person skilled in the art to
attempt to add a jacket to achieve a function which is not accomplished or
suggested as desirable in Tsai?” Br. 7. Again, the Appellant does not
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address the reasoning set forth by the Examiner in the rejections based on
Tsai.
Therefore, we affirm the Examiner’s rejection of independent claim
11 based on the combination of Tsai, Wallace, and Neijndorff. Dependent
claims 6, 7, 9, 10, 13, and 14 also rejected in Rejection 2 fall with claim 11.
In addition, the Appellant does not submit any arguments directed to claim
8. Thus, Rejection 3 of claim 8 is also affirmed.
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
11, 15 103(a) Wallden,
Huang,
Arnold,
Neijndorff,
Wallace
11, 15
6, 7, 9–11,
13, 14
103(a) Tsai, Wallace,
Neijndorff
6, 7, 9–11,
13, 14

8 103(a) Tsai, Wallace,
Neijndorff and
Carey
8
Overall
Outcome
6–11, 13–15

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED