Ex Parte 6199925 et al

Board of Patent Appeals and Interferences

Dec 12, 2007

90006784 (B.P.A.I. Dec. 12, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CBC INDUSTRIES, INC.
____________

Appeal 2007-3821
Reexamination Control 90/006,784
(U.S. Patent 6,199,925 B1)
Technology Center 3600
____________

Decided: 12 December 2007
____________

Before TEDDY S. GRON, JAMESON LEE, and MICHAEL P. TIERNEY,
Administrative Patent Judges.

GRON, Administrative Patent Judge.

DECISION ON APPEAL
Introduction
This is an appeal under 35 U.S.C. § 134 from a final rejection of
Claims 1-2 and 4-12 of Reexamination Control No. 90/006,784, filed
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September 24, 2003, requesting reexamination of all claims of Alba, U.S.
Patent 6,199,925 B1,1 which issued March 13, 2001, from Application
09/339,466 filed June 23, 1999. Claims 1-2 and 4-12, all claims still
pending in this proceeding, stand finally rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Tsui et al. (Tsui), U.S. Patent
5,848,815, patented December 15, 1998, from Application 08/822,050, filed
March 24, 1997, and either Superbolt Inc.’s Catalog, published in 1985
(hereafter Superbolt CAT. 5-85) or Superbolt Inc.’s Catalog, published in
1987 (hereafter Superbolt CAT. 6-87). We AFFIRM.
Representative Claims 1 and 11 of Alba, U.S. Patent 6,199,925 B1
Independent Claims 1 and 11 are transcribed below (Appellant’s Brief
(Br.), Claims Appendix (App’x.)):
1. A high load capacity hoist ring assembly adapted for
installation to an object to be lifted in a hoisted manner thereby, at a
required tensile value without the use of a torque multiplier or
hydraulic tensioning device, said assembly comprising:

a shank member having a first end and a second end, said first
end being adapted to threadably engage said object;

a compression member adapted to being mounted against said
object, said compression member including an end defining an
upper lip portion;

a thrust washer adapted to being mounted on said shank
member in load transmitting relationship to said upper lip
portion of said compression member, said thrust washer
extending radially beyond said upper lip portion;

1 Hereafter, when we refer to the Specification and Figures of
Reexamination Control No. 90/006,784, we cite the corresponding columns,
lines, and figures of Alba, U.S. 6,199,925 B1 (hereafter Alba).
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a retainer flange adapted to engage said shank member on said
second end, a plurality of threaded holes at spaced apart
locations in said retainer flange, said holes extending generally
parallel to and spaced from said shank member;
a plurality of bolts adapted to threadably engage said holes of
said retainer flange, said bolts adapted to separately receive a
torque, said bolts being adapted to extend from said holes to
engage said thrust washer and thereby compressively bias said
compression member;

a lifting loop adapted to being captively engaged between said
shank member and said retainer flange for rotational and pivotal
movement during lifting of said object in hoisted manner; and

wherein said bolts are adapted to being torqued to a predetermined
value to pre-stress said shank member to said required tensile value,
said hoist ring assembly having a load capacity rating of at least
10,000 lbs.

11. A hoist ring assembly adapted for installation at a
required tensile value to an object to be lifted in a hoisted manner
thereby, said tensile value being at least as great as said load capacity
rating, said installation being capable of being accomplished without
the use of a torque multiplier or hydraulic tensioning device, said hoist
ring assembly comprising:

a shank member having a first threaded end and a second
threaded end, said first threaded end being larger than said
second threaded end and adapted to threadably engage said
object;

a compression member having first and second ends and a bore
adapted to slideably receive said second threaded end of said
shank member, said bore being smaller than said first threaded
end, said first end of said compression member being adapted
to bear against said object when said assembly is installed, said
second end defining an upper lip portion;

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a retention ring mounted for rotation about said compression
member;

a lifting loop pivotally mounted to said retention ring;
a thrust washer adapted to being mounted on said shank
member in load transmitting relationship to said second end
upper lip portion of said compression member during lifting of
said object in hoisted manner, said thrust washer extending
radially beyond said upper lip portion;

a retainer flange adapted to threadably engage said shank
member on said second end, said threadable engagement being
adapted to being secured with at least one dowel bindingly
driven through an opening in said retainer flange and into
engagement with said shank member, said retainer flange
having a plurality of threaded holes at spaced apart locations
about said flange;

a plurality of bolts threadably engaging said threaded holes of
said retainer flange, said bolts adapted to separately receive a
torque, said bolts being adapted to extend from said threaded
holes against said thrust washer to compressively bias said
compression member; and

wherein said bolts are adapted to being torqued to a predetermined
value to pre-stress said shank member to said required tensile value,
said hoist ring assembly having a load capacity rating of at least
10,000 lbs.

Discussion
1. Applicable precedent
A. Claim interpretation:
“[I]n proceedings before the PTO, claims in an application are to be
given their broadest reasonable interpretation consistent with the
specification.” In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). The
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same rule applies in reexamination proceedings. In re Yamamoto, 740 F.2d
1569, 1571 (Fed. Cir. 1984).
B. Prima facie obviousness:
The PTO has the initial burden to establish a prima facie case of the
obviousness of the invention claimed under 35 U.S.C. § 103. In re Fine, 837
F.2d 1071, 1074 (Fed. Cir. 1988); In re Piasecki, 745 F.2d 1468, 1471-1472
(Fed. Cir. 1984).
The PTO can satisfy its burden by showing some objective teaching in
the art, or prior knowledge in the art, which would have lead one of ordinary
skill in the art to the invention claimed. In re Fine, 837 F.2d at 1074. We
emphasize the art because separate prior art teachings are combinable, i.e.,
would have been considered by a person having ordinary skill in the art at
the time the invention was made, if, and only if, the prior art teachings are
analogous prior art. For prior art teachings to be analogous, a question of
fact, they must either (1) involve the same field of endeavor, or (2)
reasonably pertain to the particular problem with which the inventor is
concerned. In re Clay, 966 F.2d 656, 658-659 (Fed. Cir. 1992).
C. Weighing the evidence
If the applied prior art teachings are found to be analogous prior art,
and if we thereafter conclude that the Examiner has established that the
claimed subject matter would have been prima facie obvious to a person
having ordinary skill in the art in view of the combined prior art teachings,
then the burden of proof shifts to the Appellant to show facts which support
a contrary conclusion of nonobviousness. In re Piasecki, 745 F.2d at 1472.
Piasecki instructs, Id.:
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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. The
process is as stated in In re Rinehart, 531 F.2d 1048, 1052 . . . (CCPA
1976):

When prima facie obviousness is established and evidence is
submitted in rebuttal, the decision-maker must start over . . . .
An earlier decision should not . . . 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.

To that end, “[e]xpected beneficial results are evidence of obviousness
of the claimed invention, just as unexpected beneficial results are evidence
of unobviousness. In re Skoll, 523 F.2d 1392, 1397 (CCPA 1975); In re
Skoner, 517 F.2d 947, 950 (CCPA 1975). “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 127
S. Ct.1727, 1739 (2007).
Evidence does not establish that the claimed invention has unexpected
benefits, is commercially successful, or has fulfilled a long felt need in the
pertinent art unless it is commensurate with the scope of the claimed subject
matter. In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990)(“objective
evidence of nonobviousness must be commensurate in scope with the
claims”).
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To support nonobviousness, commercial success must flow from, and
a long felt need must be satisfied by, the functions and advantages
attributable to the invention claimed. In re Vamco Machine & Tool, Inc.,
752 F.2d 1564, 1577 (Fed Cir. 1985)(no nexus was established between the
claimed modification and the commercial success of the product or
satisfaction of a long felt need). See In re Paulsen, 30 F.3d 1475, 1482 (Fed.
Cir. 1994):
When a patentee offers objective evidence of nonobviousness, there
must be a sufficient relationship between that evidence and the . . .
[claimed] invention. See Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 . . . (Fed. Cir.), cert denied, 488
U.S. 956 (1988). “The term ‘nexus’ is used . . . to designate a legally
and factually sufficient connection between the proven success and
the . . . [claimed] invention, such that the objective evidence should be
considered in the determination of nonobviousness. The burden of
proof as to this connection or nexus resides with the patentee.” Id.

2. Summary of the claimed invention
The claims on appeal are directed to a new high load capacity hoist
ring assembly having a load capacity rating of at least 10,000 lbs. The new
high load hoist ring assembly has a shank with a first end adapted to
threadably engage a high load. The hoist ring itself is captively engaged on
the shank by a thrust washer secured by a plural bolt retainer flange
engaging the shank’s second end. The plural bolts of the plural bolt retainer
flange are adapted to be torqued to the tensile value required to pre-stress the
shank to the high load without using a torque multiplier or hydraulic
tensioning device. The record establishes that persons having ordinary skill
in the art at the time Appellant’s claimed invention was made would have
had to apply a torque multiplier or a hydraulic tensioning device to the single
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bolt head at the second end of the shank to pre-stress the shank of the prior
art high load capacity hoist ring assemblies to a 10,000 lb. load. See Alba,
col. 1, ll. 5-64, and col. 3, l. 15, to col. 4, l. 8.
3. The evidence for and against obviousness
A. Analogous prior art
“A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering the problem.” In re Clay, 966 F.2d
656, 659 (Fed. Cir. 1992). See In re GPAC Inc., 57 F.3d 1573, 1578 (Fed.
Cir. 1995):
“A reference is reasonably pertinent if, even though it may be in a
different field of endeavor, it is one which, because of the matter with
which it deals, logically would have commended itself to an
inventor’s attention in considering his problem.” Clay, 966 F.2d
at 659 . . . . If a reference disclosure relates to the same problem as
that addressed by the claimed invention, “that fact supports use of that
reference in an obviousness rejection. An inventor may well have
been motivated to consider the reference when making his invention.”
Id.

Accordingly, finding problems with fastening mechanisms employed with
one type of device, persons having ordinary skill in the art would naturally
have looked at other fastening mechanisms with comparable fastening
capacity but without one or more of the problems associated with the prior
art high capacity hoist ring assemblies. As recognized in KSR Int’l Co. v.
Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007), “[F]amiliar items may have
obvious uses beyond their primary purposes.”
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We find that the differences between the claimed high load capacity
hoist assembly of Alba’s Claims 1, 2, 4, 7-10, and 12 and Tsui’s prior art
safety hoist ring assembly to which Appellant’s arguments are directed, are
differences between Alba’s plural bolt retainer flange adapted to engage the
shank member and Tsui’s shank with its single bolt head. We find that the
differences between the claimed high load capacity hoist assembly of Alba’s
Claims 5 and 6 and Tsui’s safety hoist ring assembly to which Appellant’s
arguments are directed, are differences between Alba’s plural bolt retainer
flange adapted to threadably engage a shank member having a first threaded
end securing an object, a second threaded end threadably engaging the plural
bolt retainer flange, and an un-threaded portion having a diameter less than
the first threaded end, and at least one dowel securing the retainer flange to
the second threaded end; and Tsui’s bolt having a single threaded end
securing an object and a bolt head at its opposing end. We find that the
differences between the claimed high load capacity hoist assembly of Alba’s
Claim 11 and Tsui’s safety hoist ring assembly to which Appellant’s
arguments are directed, are differences between Alba’s retainer flange
adapted to threadably engage a shank member having a first threaded end
adapted to threadably secure an object, a second threaded end smaller than
the first threaded end which threadably engages the retainer flange, and a
dowel securing the plural bolt retainer flange to the second threaded end;
and Tsui’s bolt having a single threaded end securing an object and a bolt
head at its other end.
We find that the prior art hoist ring assembly depicted in Alba’s
Figure 1 is the hoist ring assembly described by Tsui. According to Alba,
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Tsui’s safety hoist ring assembly requires a torque multiplier to pre-stress
the shank member bolt head to a 10,000 lbs. load.
Next, Superbolt CAT. 5-85 teaches (p. ii):
Simple Concept
A SUPERBOLT Torquenut is threaded on to a mating member bolt, a
long anchor bolt or on the end of a threaded shaft. The main thread is
only used for positioning. Once the SUPERBOLT® Torquenut is
properly positioned, actual tensioning is accomplished by tightening
the jackbolts positioned around the main thread. Ordinary hand
wrenches can be used to create enormous forces.

Economical
SUPERBOLT Products are simple devices with low manufacturing
cost. By comparison, hydraulic tensioning devices are very expensive
and cannot generate enough force to achieve proper stress levels.

Time Saving
The relative ease of mounting and removal can reduce application
time and ease maintenance procedures.

No Special Tools Needed.
Up to 10,000 tons of force can be generated using simple hand tools.
An ordinary torque wrench or impact wrench is all that is needed to
pre-stress any size SUPERBOLT Torquenut or Torquebolt.

. . . . .

Holding Power
When properly torqued SUPERBOLT Products will not come loose.
Pre-stressed nuts and bolts remain tight on vibrating or pulsating
equipment or on constantly reversing loads.

Superbolt CAT. 6-87, p. 3, provides substantially the same teaching.
At page 1, including Figures 3-6 on pages 1-2, Superbolt CAT. 5-85
teaches (p. 1), “Over the years a number of methods or devices have been
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used to pre-stress large diameter screws. Although they help to some extent,
they have severe limitations.” Standard boxwrenches, socketwrenches,
torquewrenches, etc., are normally used to tighten screws with a thread size
limit of one inch (p. 1, Fig. 3). Sledge hammers are used but with little
control (p. 2, Fig. 4). Heating and cooling the bolt has control and loosening
problems (p. 2, Fig. 5). Use of hydraulic pressure is expensive and lacks
sufficient tightening power (p. 2, Fig. 6). The SUPERBOLT Torquenut is
said to be inexpensive, easy to tighten, easy to loosen, uses no more room
than an ordinary nut, gives good torque control, has 10 times the tightening
power of the hydraulic nut and will not come loose if properly torqued (p. 2,
Fig. 7). According to Superbolt CAT. 5-85, the SUPERBOLT Torquenuts
have been used to “tighten large piston rods and tension cables on
suspension bridges” and “can be directly interchanged with existing standard
nuts because they will fit into the same space. Any critical bolt above 1-1/2”
diameter is a replacement candidate” (p. 2, last para.; emphasis added).
Moreover, both Superbolt CAT. 5-85 (p. 3, ENGINEERING
APPLICATIONS FOR SUPERBOLT PRODUCTS) and Superbolt CAT. 6-
87 (p. 4, ENGINEERING APPLICATIONS FOR SUPERBOLT
PRODUCTS) teach, “For most tightening problems[,] the application of
SUPERBOLT . . . [p]roducts is quite simple. The allowable tension loads
on the main threads are given in the catalog tables for the various types of
SUPERBOLT . . . [n]uts, . . . [b]olts[,] or . . . [t]hrust . . . [c]ollars.”
We find that Superbolt CAT. 5-85 and Superbolt CAT. 6-87, even
though they allegedly relate to a different field from that of the inventor’s
endeavor, are reasonably pertinent to the tightening and pre-stressing
problems faced by Alba and Tsui in their field of endeavor. Therefore, we
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find that the Superbolt CAT. 5-85 and Superbolt CAT. 6-87 are analogous
prior art because their teachings reasonably would have been considered by
a person having ordinary skill in the art when dealing with the tightening and
pre-stressing problems Alba and Tsui faced.
B. Evidence of obviousness
The preponderance of the evidence supports the Examiner’s finding
that the teachings of Superbolt CAT. 5-85 and Superbolt CAT. 6-87
reasonably would have been considered by persons having ordinary skill in
the art when dealing with tightening and pre-stressing problems of the kind
both Alba and Tsui faced. Therefore, contrary to Appellant’s view, we see
that the Examiner finally rejected the claims on appeal for obviousness in
view of the combined teachings of analogous prior art.
Both Superbolt CAT. 6-87 and Superbolt CAT. 5-85 describe a
retainer flange which, when threadably engaging a shank member, can
deliver over 10,000 tons of clamping force with ordinary hand tools
(Superbolt CAT. 6-87, p. 2, subtitle; Superbolt CAT. 5-85, p. ii, subtitle).
Appellant has not shown that the Examiner erred in its findings of fact and
conclusions of law (Examiner’s Answer, pp. 18-22, including Exhibits H, I,
and J thereat) that Superbolt CAT. 6-87, pp. 3, 5, 8 and 11, and Superbolt
CAT. 5-85, pp. 8, 9, and 11, depict, and reasonably would have suggested,
(1) a shank member threaded at each end of an unthreaded portion of smaller
relative diameter, where (2) the one end of the shank member is threadably
attached to a plural bolt torquenut and the other, larger end of the shank
member is adapted to threadably engage a standard nut, and where (3) at
least one dowel secures the plural bolt torquenut to the smaller diameter
threaded end of the shank member. On review of the evidence, we find that
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each of Superbolt CAT. 6-87 and Superbolt CAT. 5-85 describes and/or
reasonably suggests a tightening system including a shank member, plural
bolt retainer flange, plural bolts, and a securing dowel, i.e., all the limitations
of the tightening system of a high load capacity hoist ring assembly defined
by each of Appellant’s Claims 1, 2 and 4-12.
We conclude therefore that the Examiner established the prima facie
obviousness of high load capacity hoist assemblies Appellant claims in view
of the combined prior art teachings. We conclude that the Superbolt CAT.
5-85 and Superbolt CAT. 6-87 teachings reasonably would have led a person
having ordinary skill in the art to ease many of Tsui’s tightening and pre-
stressing requirements, including Tsui’s use of a torque multiplying or
hydraulic tensioning device, by replacing Tsui’s bolt/bolt head assembly
with a plural bolt torquenut assembly capable of developing over 10,000
tons of fastening force with ordinary hand tools. The applied Superbolt
catalogs urge that plural bolt torquenut systems constitute a
“BREAKTHROUGH” in the art of improving tightening power. The plural
bolt torquenut systems are said to reduce prior art expenses, ease tightening,
ease loosening, improve torque control, and increase the tightening power of
a variety of prior art tightening systems.
Having concluded that the Examiner satisfied the PTO’s burden to
make out a prima facie case of obviousness under 35 U.S.C. § 103(a) in
view of the combined prior art, the burden shifts to Appellant to present
evidence to the contrary. We must reconsider all the evidence for with all
the evidence against patentability. In re Piasecki, supra.

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C. Evidence of nonobviousness
(1) Unexpected results
While Superbolt CAT. 5-85 and Superbolt CAT. 6-87 prima facie
would have suggested to a person having ordinary skill in the art that
replacing the bolt/bolt head of Tsui’s safety hoist ring assembly with a
shank/plural bolt torquenut would reap the benefits taught in the Superbolt
catalogs, Appellant questions whether a person having ordinary skill in the
art reasonably would have expected success, even with the teachings of the
Superbolt catalogs before him, without actual proof of success. We find of
record some evidence that Alba and a few other people were skeptical that
plural bolt systems such as those described in the Superbolt catalogs could
successfully replace single bolt systems for use in high load capacity hoist
ring assemblies of the type described by Tsui.
The President of Superbolt Inc. stated in Superbolt CAT. 5-85 (p. 1,
first full para.):
Since the introduction of our SUPERBOLT Torquenuts (Figure 1), we
find that everybody finds it interesting, but few people realize the true
BREAKTHROUGH in tightening power we have achieved. Our
innocent looking machine can tighten large screws up to 10 times
tighter than previously possible and at a relatively low cost.

In other words, the President of Superbolt Inc., himself, acknowledged that
few people realize the benefits in tightening power achievable using the
Superbolt torquenuts. Seemingly then, it is arguable that persons having
ordinary skill in the art might not have reasonably expected to achieve
success replacing the single large fastening bolts used in prior art high load
capacity hoist ring assemblies with plural bolt torquenuts without some
evidence of actual success.
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Alba himself testified (Declaration of Tony Alba, p. 4):
Despite the advantages of easier torquing to be had by the plural bolt
tensioning system defined in such claims, this represented a dramatic
shift against conventional thought in the industry and among users.
The use of a plurality of bolts to tension the shank member appeared
at first to offer a plurality of opportunities for this tensioning system
to fail, because the improper tensioning or loosening of any one
tensioning bolt might compromise the entire tensioning system.

Alba declared (Declaration of Tony Alba, pp. 4-5, bridging para.;
emphasis added):
I was concerned that the ordinary users of hoist ring assemblies would
not be able to maintain the necessary tolerances for the torque values.
I was originally somewhat skeptical about this plural bolt tensioning
system, but I determined to design and make hoist ring assemblies
with this system and test them. . . . Testing was required to determine
that the plural bolt tensioned shank members would remain properly
tensioned, and that the system was superior enough to existing single
bolt systems that users would willingly incur the risk and expense of
learning to use this new system.

Alba’s testimony indicates that he could not have predicted success
replacing the single bolt systems used in prior art high load capacity hoist
ring assemblies with a plural bolt system until he successfully tested a plural
bolt system in a high load capacity hoist ring assembly (Declaration of Tony
Alba, p. 5).
While the President of Superbolt Inc. appears to have conceded that
few people realize the “BREAKTHROUGH” in tightening power achievable
using the Superbolt torquenuts, some apparently did understand the
ramifications of his company’s disclosure. While Appellant argues that the
prior art Superbolt teachings are nonanalogous to high load capacity hoist
ring assemblies, Alba’s testimony suggests that he at least was well aware
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of, and understood, the benefits in tightening power reported to be
achievable using plural bolt systems.
A problem we see with the testimony of Tony Alba and the statement
by the President of Superbolt Inc. regarding Alba’s own and other people’s
skepticism that plural bolt torquenut systems could effectively replace single
bolt systems in high load capacity hoist ring assemblies, is that the evidence
does not establish the level of knowledge, skill, and experience with which a
person having ordinary skill in the art would have read the Superbolt
catalogs. The evidence merely shows that the expectation of success
replacing single bolt systems with plural bolt systems in high load capacity
hoist ring assemblies varies greatly depending on the levels of knowledge
and understanding of Superbolt-type plural bolt systems by the persons apt
to use them and their experience with such systems.
Unlike Appellant, we presume that persons having ordinary skill in
the art would have had knowledge of the teachings of the Superbolt catalogs
and understood them. While Alba suggests that a person having ordinary
skill in the relevant art would not have read and understood the teachings of
the Superbolt catalogs, we find otherwise. Alba appears to have understood
the benefits the prior art reported to be achievable using plural bolt
tightening systems. Nevertheless, Alba had to prove it to himself.
On the other hand, the evidence also shows that Superbolt Inc. was
convinced of the benefits of the plural bolt systems and reported such to any
person interested in developing over 10,000 tons of tightening force with
ordinary hand tools. We note that Superbolt CAT. 6-87 dropped the earlier
report of skepticism.
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We find that persons having ordinary skill in the art would have had
knowledge and understanding of the teachings of the Superbolt catalogs
regarding “the true BREAKTHROUGH in tightening power” achievable
using Superbolt torquenuts (Superbolt CAT. 5-85, p.1). Appellant’s
evidence of unexpected results lacks sufficient weight to overcome the prior
art’s expectations of success because, contrary to Appellant’s view, we find
that persons having ordinary skill in the art not only would have known and
understood all the tightening and loosening problems associated with prior
art high load capacity hoist ring assemblies but also would have known and
understood that the teachings reported in the Superbolt catalogs are
supported by data and guidance sufficient to enable persons having ordinary
skill in the art to predict and achieve success using the plural bolt tightening
systems disclosed therein, i.e, information based on actual test results.
Finally, Alba’s fear that one or two bolts of a plural bolt tightening
system might jar loose when in use in a high load capacity hoist ring
assembly is tempered by our conclusion that an unlimited number of bolts
may be employed in the plural bolt tightening systems the prior art
describes, The unloosened bolts should retain sufficient tightening power to
secure a high load. Moreover, both Superbolt catalogs report (Superbolt
CAT. 5-85, p. i; Superbolt CAT. 6-87, p. ii; emphasis added):
Holding Power
When properly torqued SUPERBOLT . . . Products will not come
loose. Pre-stressed nuts and bolts remain tight on vibrating or
pulsating equipment and on constantly reversing loads.

We might speculate that persons having ordinary skill in the art would
have been less skeptical that a prior art product would perform in the manner
the prior art describes and/or suggests than, for example, a patent applicant
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seeking to deny the obviousness of the subject matter it claims in view of the
same prior art disclosure. We might also speculate that persons having
ordinary skill in the art would have been more skeptical that a prior art
product would perform in the manner the prior art describes and/or suggests
than the president of a corporation seeking to sell the products described
and/or suggested in its catalogs. We will not speculate. In re Steele, 305
F.2d, 859, 862 (CCPA 1962)(obviousness under 35 U.S.C. 103 should not
be based on speculation).
Suffice it to say that in this case Appellant’s evidence of unexpected
results is insufficient to deny the greater weight of evidence in favor of
obviousness. Expected beneficial results are strong evidence of the
obviousness of a claimed invention. In re Skoll, 523 F.2d 1392, 1397
(CCPA 1975); In re Skoner, 517 F.2d 947, 950 (CCPA 1975). See also In re
Eli Lilly & Co., 902 F.2d 943, 948 (Fed. Cir. 1990) (“[appellant] has not
shown that a significant aspect of his claimed invention is unexpected in
light of the prior art”). “For obviousness under § 103, all that is required is a
reasonable expectation of success.” In re O’ Farrell, 853 F.2d 894, 904
(Fed. Cir. 1988). As in O’Farrell, here “the prior art explicitly suggested the
substitution that is the difference between the claimed invention and the
prior art, and presented . . . evidence.” In re O’ Farrell, 853 F.2d at 901.
“Obviousness does not require absolute predictability of success. Indeed,
for many inventions that seem quite obvious, there is no absolute
predictability of success until the invention is reduced to practice.”
Id. at 903.
In addition, Appellant argues that persons having ordinary skill in the
art would have understood that safety in high load capacity hoist ring
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assemblies is difficult to achieve and that safety is critical to the commercial
success of high load capacity hoist ring assemblies (Declaration of Gary
Tsui, pp. 2-3; Declaration of Tony Alba, pp. 2-5; Declaration of Phillip
Stranahan, pp. 2-3; Second Declaration of Phillip Stranahan, pp. 2-3).
Appellant then argues that persons having ordinary skill in the art would not
have reasonably expected the Superbolt tightening systems described in the
Superbolt catalogs to satisfy the safety requirements for high load capacity
hoist ring assemblies (Appeal Brief, pp. 19-29 (Br. 19-29); Reply Brief, pp.
11-12 and 22-24 (RBr. 11-12, 22-24); Declaration of Tony Alba, pp. 4-5).
In support of its safety argument, Appellant points to the cautionary
statements regarding bolt loosening when plural bolt torquenuts are secured
to moving and/or vibrating machinery found in Steinbock, U.S. Patent
5,083,889, dated January 28, 1992 (‘889, col. 2, ll. 29-48), regarding the
safety of systems disclosed in Steinbock, Re. 33,490, dated December 18,
1990, for reissue of U.S. Patent 4,622,730, originally issued November 18,
1986, and Peterson, U.S. Patent 4,927,305, dated May 22, 1990 (Br. 19-20,
23-25). The Examiner does not deny that systems described in the
Steinbock ‘730 patent and ‘490 reissue are systems described in the
Superbolt catalogs.
However, the Examiner argues that the same apparatus said by
Steinbock and Peterson to have bolt-loosening problems when used to
secure moving and/or vibrating systems is “extremely effective in
performing the functions for which it was designed. That is, it is capable of
stressing a fastener to immense levels of tension” (‘889, col. 2, ll. 29-32).
We find that Steinbock was primarily concerned that loose bolts may escape
and damage the moving elements of machinery (‘889, col. 2, ll. 39-48).
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Appellant has not established that high load capacity hoist ring assemblies
are susceptible to motion and/or vibration problems of the type indicated by
Steinbock. Rather, Steinbock teaches that its plural bolt fastening systems
are extremely effective in performing their fastening functions for immense
levels of tension. Moreover, irrespective of the type of fastening system
employed, safety in use depends on many factors, including the number of
bolts in the fastening system, the size of the load, the skill of the artisan
tightening each bolt of the fastening system, the thickness of the shank at
each threaded end, etc.. As said in In re Watson, 517 F.2d 465, 475 (CCPA
1975), and In re Anthony, 414 F.2d 1383, 1394 (CCPA 1969), “[I]t must be
recognized that ‘safety’ is a relative matter, and that absolute proof of
complete safety is realistically impossible.”
Furthermore, “the patent statutes do not establish ‘safety’ as a
criterion for patentability of any of the statutory classes of patentable subject
matter mentioned in § 101 . . . .” In re Anthony, 414 F.2d at 1394.
Appellant has not cited any precedent for its argument that evidence
establishing a prima facie case of obviousness to make and use claimed
subject matter under 35 U.S.C. § 103 may be denied based on safety
considerations. The PTO cannot police the safety of useful inventions.
(2) Commercial success
We are not persuaded that the Declaration of Phillip Stranahan (First
Stranahan) and Second Declaration of Phillip Stranahan (Second Stranahan)
establish the commercial success of the full scope of the high load capacity
hoist ring assemblies Appellant claims. First, Exhibit A attached to Second
Stranahan is said to be (Second Stranahan, p. 2) :
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. . . [a]n exploded view of one of the EZ-Torque brand hoist ring
assemblies that is presently offered for sale by American Drill
Bushing Co. I am informed and believe that the EZ-Torque hoist ring
assemblies are covered by at least claims 1, 2, 3, 5, 6, 7, 8, 9, 10, and
11 of U.S. Patent No. 6,199,925, and that these hoist ring assemblies
generally include among their features: a shank member having an
end which engages the object to be lifted; a compression member
adapted to being mounted against the object; a retainer flange
engaging the shank member near a second end, and having a plurality
of spaced threaded holes extending generally parallel to and spaced
from said shank member; a plurality of separately torqued bolts for
threadably engaging and extending from the holes of the retainer
flange to compressively bias the compression member away from said
retainer flange and against said object; and a lifting loop captively
engaged between the shank member and retainer flange for rotational
and pivotal movement; wherein the bolts may be torqued to
collectively pre-stress the shank member to a tensile value required
for a given hoisting load.

We conclude that finally rejected Claims 1, 2, and 4-12 on appeal are
not limited to the EZ-Torque brand hoist ring assembly depicted in Exhibit
A that Second Stranahan declares to be presently offered for sale by
American Drill Bushing Co. First, Exhibit A shows a shank member having
a one threaded end threadably engaging an object and a second threaded end
threadably engaging the plural bolt retainer flange. The diameter of the
threaded end engaging the object is greater than the diameter of the threaded
end engaging the plural bolt retainer flange. However, the hoist ring
assembly defined by Appellant’s Claims 1, 2, 4, 7-10, and 12 may have a
shank member with a single threaded end. The retainer flange and shank
member may be one integral component (Br. App’x). The hoist ring
assembly defined by Appellant’s Claims 1, 2, 4-10, and 12 may have a
shank member with first and second threaded ends having the same diameter
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(Br. App’x). The hoist ring assembly defined by Appellant’s Claim 11 may
have a shank member with first and second threaded ends where the first
threaded end is larger than the second threaded end, but the first threaded
end may or may not be larger in diameter than the first threaded end (Br.
App’x).
With regard to a hoist ring assembly comprising a shank member
threaded at both ends, Alba teaches (Alba, col. 6, ll. 10-27) that a larger
diameter of the first threaded end relative to the diameter of the second
threaded end of the shank member significantly improves the load rating
capacity of the hoist ring assembly. Alba teaches that a shank member
having one diameter “introduces stress concentrations at the location where
the threads end adjacent the un-threaded portion” (Alba, col. 6, ll. 18-23).
Second, Exhibit A depicts a hoist ring assembly having a plural bolt
retainer flange with at least ten (10) bolts. Moreover, the plural bolt retainer
flange of Exhibit A is secured to the second threaded end of the shank
member by two dowels. Appellant’s Claims 1, 2, and 4-12 are directed to
hoist ring assemblies utilizing any “plurality” of bolts (2 to 10 or more) in
the retainer flange (Br. App’x). The retainer flange of Claims 1, 2, 4, 6-10,
and 12 may or may not be secured to the second threaded end of the shank
member by two securing dowels (Br. App’x). Alba teaches (Alba, col. 6, ll.
39-50; emphasis added):
Other combinations may be used, as desired, to increase or decrease
the number of bolts in the retainer flange as may be required to
achieve the desired tension in the shank member without using torque
multiplies. Additional outer peripheral locations having spaced apart
holes for bolts may also be used, ir desired. In general, it has been
found that for most applications, utilizing just six bolts is sufficient to
substantially reduce the required installation torque values and
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eliminate the undesirable necessity of using an expensive and bulky
torque multiplier.

Second Stranahan declares (Second Stranahan, p. 3):
Since their introduction, in fact, the EZ-Torque hoist rings of the
present invention have quickly replaced most of the sales of the Safety
Engineered Hoist Rings in the 100,000 pound and up rated load sizes.

The problems with Appellant’s evidence of commercial success are readily
recognizable. First, Appellant has declared that Exhibit A is but “one of the
EZ-Torque brand hoist ring assemblies that is presently offered for sale by
American Drill Bushing Co.” (Second Stranahan, p. 2). The EZ-Torque
hoist ring assemblies are said to be covered by Claims 1-3 and 5-11 (Second
Stranahan, p. 2). However, we have no understanding of: (a) what other
hoist ring assemblies with what particular features other than those specific
to the hoist ring assembly depicted in Exhibit A are covered by the EZ-
Torque brand, (b) what other hoist ring assemblies other than the specific
assemblies claimed have been offered for sale under the EZ-Torque brand,
(c) how have EZ-Torque brand hoist ring assemblies been marketed relative
to Safety Engineered Hoist Rings, and (d) what share of the entire hoist ring
assembly market is attributable to the EZ-Torque brand and Safety
Engineered hoist ring assemblies.
From the evidence before us, we understand that Exhibit A is not
commensurate in scope with the full scope of the hoist ring assemblies
Appellant claims. We also know that Exhibit A is only one of the hoist ring
assemblies offered for sale by American Drill Bushing Co.. Consequently,
evidence tending to show that the hoist ring assemblies sold under the EZ-
Torque brand name were commercially successful is not commensurate in
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scope with the full scope of the subject matter claimed. Based on the
evidence submitted by Appellant, we cannot determine whether there is a
nexus between the full scope of the hoist ring assemblies defined by any one
of Appellant’s Claims 1, 2, and 4-12 on appeal and the EZ-Torque brand
hoist ring assemblies offered for sale by American Drill Bushing Co.. In
short, Appellant has not established commercial success for the invention
claimed. To satisfy its burden of proof, Appellant must not only show that
there is commercial success but also show that the thing that is commercially
successful is the invention claimed. Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988).
(3) Long felt need
We are concerned that the evidence of a long felt need that Appellant
asks us to consider for the full scope of the subject matter claimed is
provided by interested parties, i.e., the statements in Alba’s U.S. Patent
6,199,925 and the Declarations of Tony Alba, himself, and Phillip Stanahan,
the Vice President and General Manager of CBC Industries, Inc., the owner
of Alba’s U.S. Patent 6,199,925. While the Declaration of Gary Tsui, the
inventor of the Safety Hoist Ring of Tsui, U.S. 5,848,815, relates to the
safety requirements of the industry, Tsui does not state that the hoist ring
assemblies covered by his patent are unsafe, unsafe relative to the hoist ring
assemblies covered by Alba’s patent, or otherwise inadequate to function
effectively as described.
We may equally infer from Appellant’s evidence that persons skilled
in the art were well satisfied with the performance of the prior art hoist ring
assemblies and had the necessary manpower, torque multipliers, and
hydraulic tensioning devices to effectively and safely make and use the prior
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art hoist ring assemblies for their intended purpose. Alba and his assigns
reported the problem and a solution to that problem. Alba and his assigns
declare that the use of torque multipliers and hydraulic tensioning devices
were expensive, the skill of the manpower applying those devices was low,
and accordingly, the safety of the performance of the prior art hoist ring
assemblies requiring the use of those devices was wanting. Tsui does not
corroborate their declarations.
There appears to have been no long felt need in the art to solve the
problem Alba recognized, especially when the problem is immediately
solved by an inventor seeking to sell his solution. Appellant has not shown
that the prior art generally recognized the problem with the prior art hoist
ring assemblies before Alba proffered a marketable solution to the problem.
Appellant has not shown that persons having ordinary skill in the art
generally were dissatisfied with the prior art hoist ring assemblies being
used.
Furthermore, just like Appellant’s evidence of commercial success,
the evidence of long felt need is not commensurate in scope with the subject
matter claimed. If an alleged long felt need was satisfied by the EZ-Torque
brand hoist ring assemblies, the evidence does not disclose the full scope of
such devices, the market and manner of their marketing, or their relationship
to the claimed subject matter. Patentability cannot be based on speculation.
In re Steele, supra. A showing of unobviousness must be based on objective
evidence. In re De Blauwe, 736 F.2d 699, 706 (Fed. Cir. 1984): In re
Lindner, 457 F.2d 506, 508 (CCPA 1972).
Finally, we note that the Steinbock patents of record and the Superbolt
catalogs recognized the solution to Alba’s problems many years before Alba
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decided to confirm Steinbock’s teachings. A person having ordinary skill in
the art is presumed to be aware of the pertinent prior art. In re Gorman, 933
F.2d 982, 986 (Fed. Cir. 1991). A long felt need ends once the prior art
provides a reasonable expectation of successfully solving an existent
problem. In re Tiffin, 443 F.2d 394, 400 (CCPA 1971).
Nor has Appellant shown that a long felt need to solve a problem may
be satisfied by eliminating all doubt that prior art solutions to a problem
would succeed. Obviousness does not require absolute predictability of
success. Reasonable expectation of success is all that is required for
obviousness under 35 U.S.C. § 103. Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F.2d 804, 809 (Fed. Cir. 1989); In re O’Farrell, 853
F.2d 894, 903 (Fed. Cir. 1988); In re Longi; 759 F.2d 887, 897 (Fed. Cir.
1985).
Conclusion
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. at 1739. Where, as here, persons
having ordinary skill in the art would have had good reasons to pursue
known options to improve a product old in the art, and success is achieved as
predicted, the new product most likely is unpatentable under U.S.C. § 103.
Id. at 1740. In this case, Appellant failed to meet its burden to show that
persons having ordinary skill in the art reasonably would not have expected
the success the prior art predicted. Accordingly, we affirm the Examiner’s
final rejection of Appellant’s Claims 1, 2, and 4-12.

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Order
Having considered all the evidence of record for and against the
patentability of Claims 1, 2, and 4-12 of Reexamination Control No.
90/006,784 under 35 U.S.C. § 103, we affirm the appealed final rejections.
Accordingly, it is
ORDERED that the examiner’s final rejection of Claims 1, 2, and 4-
12 of Reexamination Control No. 90/006,784 are affirmed; and
FURTHER ORDERED that the time for taking future action in this
appeal cannot be extended under 37 CFR § 1.136(a)(2006).
AFFIRMED

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Bruce A. Jagger, Esq.
Brunton & Jagger
P.O. Box 29000
Glendale, CA 91209

Clifford A. Poff
9800B McKnight Road
Suite 115
Pittsburgh, PA 15237