Chad Larson

Patent Trials and Appeals Board

Jul 1, 2021

2020002228 (P.T.A.B. Jul. 1, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/004,618 11/06/2013 Chad M. Larson 189141-3001 6162
50787 7590 07/01/2021
Stradley Ronon
30 Valley Stream Parkway
Great Valley Corporate Center
Malvern, PA 19355-1481
EXAMINER
IMAM, TANZIM
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
07/01/2021 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
____________

Ex parte CHAD M. LARSON

Appeal 2020-002228
Application 14/004,618
Technology Center 3700
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 16–35. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Chad M.
Larson. Appeal Br. 3.
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Application 14/004,618

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BACKGROUND
The Specification discloses that “the present invention generally
relates to fastening systems for assemblies of any two or more components,
but [is] particularly useful in commercial structures, utility structures, steel
bridges, rail, conveyance, heavy equipment, heavy industrial, construction,
agricultural and general structural steel fastening applications.” Spec. ¶ 3.
CLAIMS
Claims 16, 25, and 35 are the independent claims on appeal. Claim 16
is illustrative of the appealed claims and recites:
16. A fastening system comprising:
a fastener comprising a bolt and a nut, the bolt having a
head and a shank extending axially from the head, the shank
having at least one threaded portion and at least one splined
portion, the splined portion defining an end of the bolt, the
threaded portion located between the head and the splined
portion, the nut having an inner surface and an outer surface, the
inner surface being in threaded engagement with the at least one
threaded portion of the bolt; and
a single tool comprising a first socket and a second socket,
wherein the first socket is engagable with the outer surface of the
nut and the second socket is engagable with the splined portion
of the bolt, wherein
the tool is adapted to provide both a desired snugging
torque within an elastic range of a stress curve of the fastener and
a final tensioning to the fastener, wherein the tool is adapted to
rotate the first socket relative to the second socket by a desired
turn-of-nut angle to provide the final tensioning to the fastener,
and wherein the splined portion remains connected to the
threaded portion after final tensioning such that the tool can
uninstall or further tension the fastener.
Appeal Br. 51.
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Application 14/004,618

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REJECTIONS
1. The Examiner rejects claims 16, 25, and 35 under 35 U.S.C. § 103(a) as
unpatentable over Goss2 in view of DeMartelaere3 as evidenced by
Makimae.4
2. The Examiner rejects claims 16–21, 23, 25–29, and 31–35 under
35 U.S.C. § 103(a) as unpatentable over Matsumura5 in view of
DeMartelaere as evidenced by Makimae.
3. The Examiner rejects claims 22 and 30 under 35 U.S.C. § 103(a) as
unpatentable over Matsumura in view of DeMartelaere as evidenced by
Makimae and further in view of Duvan6 or Becker.7
4. The Examiner rejects claim 24 under 35 U.S.C. § 103(a) as unpatentable
over Matsumura in view of DeMartelaere as evidenced by Makimae and
further in view of Illgner8 or Uno.9
5. The Examiner rejects claims 16, 25, 26, 28, 29, and 31–35 under
35 U.S.C. § 103(a) as unpatentable over Illgner in view of DeMartelaere
as evidenced by Makimae.

2 Goss et al., US 2011/0048182 A1, pub. Mar. 3, 2011.
3 DeMartelaere et al., US 4,845,998, iss. July 11, 1989.
4 Makimae et al., US 4,987,669, iss. Jan. 29, 1991.
5 Matsumura et al., US 5,582,079, iss. Dec. 10, 1996.
6 Duvan et al., US 2011/0132157 A1, pub. June 9, 2011.
7 Becker, US 2005/0061119 A1, pub. Mar. 24, 2005.
8 Illgner et al., WO 2008/149386 A1, pub. Dec. 11, 2008.
9 Uno et al., US 7,204,667 B2, iss. Apr. 17, 2007.
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DISCUSSION
We are persuaded of error with respect to each rejection on appeal to
the extent the Examiner did not properly consider Appellant’s proffered
objective evidence of non-obviousness.
With respect to claim 16, for example, the Examiner relies on Goss,
Matsumura or Illgner as disclosing a fastening system as claimed except for
the requirement that the tool is adapted to provide a final tensioning to the
fastener by providing both a desired snugging torque and a desired turn-of-
nut angle. See Final Act. 2–3, 9–10, 22–23. With respect to this deficiency,
the Examiner relies on DeMartelaere as teaching that it was known to
provide tools adapted to provide a selected snugging torque “and a final
tensioning to fastener via a torque-angle procedure” in which a socket is
rotated “by a selected desired turn angle . . . to provide the final tensioning
to the fastener.” See, e.g., id. at 3. The Examiner finds that DeMartelaere
teaches that such a tightening procedure “allows a user to take advantage of
the precision machining of the fastener threads so as to obtain a
predetermined elastic stretching of the fastener within an assembly.” Id.
(citing DeMartelaere, col. 1, l. 64–col. 2, l. 9). The Examiner also finds that
Makimae teaches that tightening a fastener to a desired snugging torque and
then to a desired turn angle “allows a large tightening axial force close to the
limit of elasticity of the fastener . . . to be constantly obtained irrespective of
the friction coefficient of the fastener.” Id. at 4 (citing Makimae, col. 3, ll.
27–46). The Examiner determines it would have been obvious to modify
either Goss, Matsumura, or Illgner based on the teachings of DeMartelaere
and Makimae to provide a tool that is adapted to provide both snugging
torque and turn-of-nut angle tensioning as claimed. See id. at 4, 10–11, 24.
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Appellant raises various arguments regarding the suitability of the
combinations proposed by the Examiner. See Appeal Br. 17–42.
Additionally, Appellant argues that the objective evidence provided
establishes that the claims are not obvious. See id. at 42–50. Specifically,
Appellant argues that the evidence provided establishes “the functional
advantages and unexpected results of the claimed invention,” a long felt
need for the claimed solution, and that “the advantages offered by the
claimed system prompted the fastener industry to embrace the applicant’s
system.” Id. Appellant also argues that the Examiner has failed to
adequately address this evidence. See, e.g., Reply Br. 5.
We have reviewed Appellant’s arguments regarding the art of record,
but we are not persuaded that the Examiner erred in determining that the
claims are prima facie obvious in view of the art. However, we agree with
Appellant that the Examiner has failed to adequately address certain
objective evidence that may indicate the claims are non-obvious.
“If rebuttal evidence of adequate weight is produced, the holding of
prima facie obviousness, being but a legal inference from previously
uncontradicted evidence, is dissipated. Regardless of whether the prima
facie case could have been characterized as strong or weak, the examiner
must consider all of the evidence anew.” See in re Piasecki, 745 F.2d 1468,
1473 (Fed. Cir. 1984) (citing In re Rinehart, 531 F.2d 1048, 1052 (CCPA
1976)); Manual of Patent Examining Procedure (“MPEP”) § 2145,
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Consideration of Applicant’s Rebuttal Arguments (9th ed., rev. 10.2019, last
rev. June 2020).10 Rinehart explains this process:
When prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over.
Though the burden of going forward to rebut the prima facie
case remains with the applicant, the question of whether that
burden has been successfully carried requires that the entire
path to decision be retraced. An earlier decision should not, as
it was here, be considered as set in concrete, and applicant’s
rebuttal evidence then be evaluated only on its knockdown
ability. Analytical fixation on an earlier decision can tend to
provide that decision with an undeservedly broadened umbrella
effect. Prima facie obviousness is a legal conclusion, not a fact.
Facts established by rebuttal evidence must be evaluated along
with the facts on which the earlier conclusion was reached, not
against the conclusion itself. Though the tribunal must begin
anew, final finding of obviousness may of course be reached,
but such finding will rest upon evaluation of all facts in
evidence, uninfluenced by any earlier conclusion reached by an
earlier board upon a different record.
Rinehart, 531 F.2d at 1052 (emphasis added).
Appellant first cites to objective evidence in the form of declarations
filed in August 2018 from five individuals: David Sharp, Charles E.
Hundley, Gian Andrea Rassati, James A. Swanson, and Keisuke Watanabe.
See Appeal Br. 42–50. Appellant also cites to an ASTM standard

10 MPEP § 2145 recites:
Office personnel should not evaluate rebuttal evidence for its
‘knockdown’ value against the prima facie case, Piasecki, 745
F.2d at 1473, . . . or summarily dismiss it as not compelling or
insufficient. If the evidence is deemed insufficient to rebut the
prima facie case of obviousness, Office personnel should
specifically set forth the facts and reasoning that justify this
conclusion.
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specification: ASTM F3148-15 titled “Standard Specification for High
Strength Structural Bolt Assemblies, Steel and Alloy Steel, 144 ksi
Minimum Tensile Strength, Inch Dimensions.” Id. at 46–47. Regarding this
evidence, Appellant asserts, for example, that the Declaration of David
Sharp “summarizes the unexpectedly improved properties or properties not
present in the prior art achieved by the claimed invention.” Appeal Br. 43–
44. Appellant asserts that the Watanabe and Rassati declarations provide
similar evidence. Id. at 44. Appellant also argues that the Sharp Declaration
provides evidence of long-felt need, industry acceptance, and commercial
success. Id. at 46–48 (citing Sharp Decl. ¶¶ 9, 30, 31). Appellant asserts
that the remaining rejections provides similar evidence. Id. at 48. Finally,
Appellant cites the ASTM F3148-15 standard specification as establishing
that “the advantages offered by the claimed system prompted the fastener
industry to embrace the applicant’s system.” Id. at 46.
The rejections before us were presented in a Non-Final Action mailed
on April 15, 2019, after the filing of the declarations relied upon by
Appellant. However, the Examiner does not provide an evaluation of this
evidence in the Non-Final Action from which this appeal is based. The
Examiner did acknowledge this evidence in a Final Action mailed on
December 4, 2018, but the Examiner only provided a cursory finding that
the evidence was insufficient. In response to Appellant’s arguments, the
Examiner provides some additional analysis regarding unexpected results,
but provides no substantive discussion of the remaining evidence. See Ans.
15–16. Rather, regarding Appellant’s proffered evidence of long-felt need,
commercial success, and industry embrace, the Examiner provides only the
conclusory statement:
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even if there was long felt need to improve fastener systems, a
long time passed since the identification of the problem and the
conception of the invention of the instant application, and the
industry embraced the invention of the instant application, none
of this changes the fact that there is plenty of motivation (cited
in the 103 rejections of claims 16, 25, and 35) for one of ordinary
skill in art to combine the two-socket tool and splined fastener
structure of Goss/Matsumura/Illgner with the concept/idea of
providing both a desired snugging torque and a desired turn angle
final tensioning to a fastener taught by DeMartelaere in order to
arrive at the invention as claimed.
Id. at 16. The Examiner’s handling of this evidence in this manner does not
provide a substantive analysis of the evidence and suggests that the
Examiner has determined that no amount of evidence would overcome the
Examiner’s conclusion of obviousness. Thus, the Examiner appears to be
considering the evidence against the pre-determined conclusion of
obviousness, i.e., only for its “knockdown” value against the Examiner’s
conclusion of obviousness. Further, the Examiner’s analysis only addresses
unexpected results and long-felt need and fails to consider evidence on the
record related to other indicia of non-obviousness. For example, the
Examiner does not appear to consider evidence related to industry
acceptance, as discussed in the provided declarations and the cited ASTM
standard specification.
Based on the foregoing, we determine that the Examiner has not
adequately considered Appellant’s rebuttal evidence as required, and thus,
we do not sustain any of the rejections before us.

CONCLUSION
We REVERSE the rejections of claims 16–35.
In summary:
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Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
16, 25, 35 103(a) Goss,
DeMartelaere,
Makimae
16, 25,
35
16–21, 23,
25–29, 31–35
103(a) Matsumura,
DeMartelaere,
Makimae
16–21,
23, 25–
29, 31–
35
22, 30 103(a) Matsumura,
DeMartelaere,
Makimae,
Duvan/Becker
22, 30
24 103(a) Matsumura,
DeMartelaere,
Makimae,
Illgner/Uno
24
16, 25, 26,
28, 29, 31–35
103(a) Illgner,
DeMartelaere,
Makimae
16, 25,
26, 28,
29, 31–
35
Overall
Outcome
16–35

REVERSED