Ex Parte 6199925 et alDownload PDFBoard of Patent Appeals and InterferencesDec 12, 200790006784 (B.P.A.I. Dec. 12, 2007) Copy Citation 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 Appeal 2007-3821 Reexamination Control 90/006,784 2 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). Appeal 2007-3821 Reexamination Control 90/006,784 3 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; Appeal 2007-3821 Reexamination Control 90/006,784 4 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 Appeal 2007-3821 Reexamination Control 90/006,784 5 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.: Appeal 2007-3821 Reexamination Control 90/006,784 6 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”). Appeal 2007-3821 Reexamination Control 90/006,784 7 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 Appeal 2007-3821 Reexamination Control 90/006,784 8 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.” Appeal 2007-3821 Reexamination Control 90/006,784 9 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, Appeal 2007-3821 Reexamination Control 90/006,784 10 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 Appeal 2007-3821 Reexamination Control 90/006,784 11 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 Appeal 2007-3821 Reexamination Control 90/006,784 12 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 Appeal 2007-3821 Reexamination Control 90/006,784 13 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. Appeal 2007-3821 Reexamination Control 90/006,784 14 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. Appeal 2007-3821 Reexamination Control 90/006,784 15 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 Appeal 2007-3821 Reexamination Control 90/006,784 16 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. Appeal 2007-3821 Reexamination Control 90/006,784 17 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 Appeal 2007-3821 Reexamination Control 90/006,784 18 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 Appeal 2007-3821 Reexamination Control 90/006,784 19 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). Appeal 2007-3821 Reexamination Control 90/006,784 20 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) : Appeal 2007-3821 Reexamination Control 90/006,784 21 . . . [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 Appeal 2007-3821 Reexamination Control 90/006,784 22 (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 Appeal 2007-3821 Reexamination Control 90/006,784 23 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 Appeal 2007-3821 Reexamination Control 90/006,784 24 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 Appeal 2007-3821 Reexamination Control 90/006,784 25 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 Appeal 2007-3821 Reexamination Control 90/006,784 26 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. Appeal 2007-3821 Reexamination Control 90/006,784 27 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 Appeal 2007-3821 Reexamination Control 90/006,784 28 Bruce A. Jagger, Esq. Brunton & Jagger P.O. Box 29000 Glendale, CA 91209 Clifford A. Poff 9800B McKnight Road Suite 115 Pittsburgh, PA 15237 Copy with citationCopy as parenthetical citation