Ex Parte 8,070,377 B2 et al

Patent Trial and Appeal Board

Sep 24, 2014

95002103 (P.T.A.B. Sep. 24, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/002,103 08/27/2012 8,070,377 B2 MR1741-109/REXAM 4592
69638 7590 09/24/2014
KAMRATH IP Lawfirm, P.A.
4825 OLSON MEMORIAL HIGHWAY
SUITE 245
GOLDEN VALLEY, MN 55422
EXAMINER
DEMILLE, DANTON D
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
09/24/2014 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

HONG ANN TOLL INDUSTRIES CO., LTD.
Requester

v.
TZU-CHIEN WANG
Patent Owner
____________________

Appeal 2014-002798
Inter Partes Reexamination Control 95/002,103
US Patent No. 8,070,377 B21
Technology Center 3900
____________________
Before STEVEN D. A. McCARTHY, DANIEL S. SONG, and
BRETT C. MARTIN, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

1 Issued to Tzu-Chien Wang on December 6, 2011 (hereinafter referred to as
the '377 patent).
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Reexamination Control 95/002,103
U.S. Patent No. 8,070,377 B2

2
STATEMENT OF THE CASE
Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from the
Examiner’s rejection of claims 3 and 4, both of which were added during the
course of the reexamination proceeding. Claims 1 and 2 were cancelled by
Amendment dated August 7, 2013. We have jurisdiction under 35 U.S.C.
§§ 134(c) and 315(b). We AFFIRM.

THE INVENTION
Appellant’s invention is directed generally to "a quick-release coupler
and, more particularly, to a quick-release coupler for securely coupling a bit
to a pneumatic tool while allowing easy assembly." Spec. col. 1, ll. 12-15.
Claim 3, reproduced below, is illustrative of the claimed subject matter:
3. A quick-release coupler comprising:
a bit (3) including a side having a coupling hole (311);
a rod (41) including first and second sections (410, 419)
spaced in an axial direction, with the first section (410) having
a polygonal cross section perpendicular to the axial direction
and including first and second ends (411, 60) spaced in the
axial direction, with the first end (411) of the first section (410)
adapted to couple with a pneumatic tool (5), with the second
end (60) of the first section (410) having an end face (414),
with the second section (419) extending from the end face (414)
of the second end (60) of the first section (410) and including a
distal end (412) having a recess (415), with the recess (415)
including a first contact section (416) and a second contact
section (417) intermediate the first contact section (416) and the
end face (414) of the first section (410) in the axial direction,
with a depth from the first contact section (416) in a radial
direction perpendicular to the axial direction to an outer
periphery of the second section (419) of the rod (41) being
smaller than that from the second contact section (417) to the
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outer periphery of the second section (419) of the rod (41) in
the radial direction;
a sleeve (42) mounted around the rod (41) and moveable
relative to the rod (41) in the axial direction between an
extended, first position and a retracted, second position, with
the sleeve (42) including first and second ends (421, 422)
spaced in the axial direction, with the second end (422) of the
sleeve (42) coupled with the coupling hole (311) of the bit (3),
with an axial bore (423) extending from the first end (421) of
the sleeve (42) through the second end (422) of the sleeve (42)
in the axial direction, with the axial bore (423) including larger
and smaller sections (424 and 429), with the larger section
(424) having a polygonal cross section perpendicular to the
axial direction and corresponding to the polygonal cross section
of the first section (410) of the rod (41), with a radial bore (425)
extending in the radial direction from an outer periphery of the
second end (422) of the sleeve (42) through an inner periphery
of the smaller section (429) of the axial bore (423), with the
radial bore (425) aligned with the recess (415) of the second
section (419) of the rod (41), with a shoulder (426) formed
between the first and second ends (421, 422) of the sleeve (42);
a ball (44) movably received in the radial bore (425) of
sleeve (42) in the radial direction and moveably received in the
recess (415) of the second section (419) of the rod (41) in the
axial and radial directions, with the ball (44) releasably
engaging the sleeve (42) with the rod (41); and
a spring (43) mounted in the larger section (424) of the
axial bore (423) of the sleeve (42) and biasing the sleeve (42)
from the retracted, second position to the extended, first
position, with the spring (43) being compressed when the
sleeve (42) is in the retracted, second position,
with the ball (44) being engaged in the first contact
section (416) of the recess (415) with an outermost portion
(441) of the ball (44) projecting out of the radial bore (425) of
the sleeve (42) when the sleeve (42) is in the extended, first
position, coupling the bit (3) with the second end (422) of the
sleeve (42),
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with the ball (44) being engaged in the second contact
section (417) of the recess (415) and not projecting out of the
radial bore (425) of the sleeve (42) when the sleeve (42) is in
the retracted, second position, allowing the bit (3) to be
disengaged from the second end (422) of the sleeve (42),
wherein with the shoulder (426) of the sleeve (42)
abutting the side of the bit (3), the sleeve (42) is in the
extended, first position.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Mandl
Cook
Palm
Beardsley
Wang
US 2,108,866
US 2,395,534
US 4,770,073
US 5,289,745
US 7,082,863
Feb. 22, 1938
Feb. 26, 1946
Sep. 13, 1988
Mar. 1, 1994
Aug. 1, 2006

THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
1. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang. RAN 6.
2. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang and Palm. RAN 7.
3. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang and Beardsley. RAN 8.
4. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang and Mandl. RAN 9.
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5. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang, Beardsley, and Palm. Id.
6. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wang, Cook, and Mandl. RAN 10.

ANALYSIS
The Examiner finds that Wang teaches each and every aspect of claim
3 except for a shoulder abutting the side of the bit. See RAN 6-7 (citing
Requester's Response, pp. 27-34, dated Dec. 12, 2012). The Examiner finds
that this missing element is taught by Palm via Palm's teaching of a
"shoulder on the tab 40 of outer sleeve 42 abut[ting] the side of the bit as
shown in figure 5." RAN 8. Appellant, in rebutting this rejection, argues
only the missing aspect found by the Examiner to be taught in Palm. See
App. Br. 5. Appellant first argues that "Palm shows . . . a shoulder formed
on the shaft 12 (not on the sleeve) for abutting with the socket." Id. While
Palm does include a shoulder on shaft 12 as depicted in Figure 3, Palm also
teaches a corresponding shoulder 40 of sleeve 42, which is shown abutting
socket 26 as shown in Figure 5. Hence, we do not find this argument
persuasive.
Appellant further argues how the present invention differs from that in
Palm, which teaches the use of two balls for the locking mechanism, and
concludes that one of skill in the art would not, absent hindsight, combine
the features of Palm with Wang. See App. Br. 5. The test for obviousness,
however, is not whether the features of one reference may be bodily
incorporated into another reference. In re Bozek, 416 F.2d 1385, 1390
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(CCPA 1969); In re Mapelsden, 329 F.2d 321, 322, (CCPA 1964). Rather,
we look to see whether combined teachings render the claimed subject
matter obvious. In re Wood, 599 F. 2d 1032, 1037 (CCPA 1979). In this
case, the Examiner has adequately provided a reasonable basis with a
rational underpinning as to why one of skill in the art would have combined
the teachings of Wang and Palm to arrive at the claimed invention. See
RAN 8.
Appellant also argues that one of skill in the art would not combine
the teaching of a shoulder on a shaft to arrive at the claimed shoulder on a
sleeve, but as discussed supra, this misstates the Examiner's finding. See id.
Having not been persuaded of Examiner error, we sustain the Examiner's
rejection of claim 3 as unpatentable over Wang and Palm.
The Examiner also finds that Palm teaches the missing element of
grooves on the sleeve of claim 4. See RAN 8. Appellant attacks this
combination by arguing that one of ordinary skill in the art would not have
had reason to add grooves such as those described by Palm to the outer
periphery of Wang’s sleeve. App. Br. 5. Once the main body 10 and the
movable member 20 of Wang’s socket adapter were assembled, one would
mount a socket 90 to the socket adapter by pushing against the movable
member 20 to insert the square, smaller portion of the main body 10 into a
square recess 92 of the socket 90. Wang col. 3, ll. 35-43. Appellant argues
that one of ordinary skill in the art would have had no reason to add Palm’s
grooves to the outer periphery of Wang’s main body 10 because one would
not have gripped the outer periphery of the main body while mounting the
socket 90 on the socket adapter. App. Br. 5.
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Pior to the mounting of the socket 90 on the socket adapter, however,
one would push the larger portion of the movable member 20 into the
receiving chamber 12 of the main body 10. Wang col. 3, ll. 13-19 and 29-
35. The Examiner correctly finds that one of ordinary skill in the art would
have had reason to add grooves of the type described by Palm to the outer
periphery of Wang’s main body or sleeve 10. Adding the grooves would
have facilitated gripping of the main body 10 while pushing in the movable
member or inner rod 20. RAN 12-13. As with the rejection of claim 3, the
Examiner has sufficiently explained why the teachings of Wang and Palm in
combination would render claim 4 obvious. Accordingly, we likewise
sustain the Examiner's rejection of claim 4.
Because our affirmance of the rejection over Wang and Palm is
dispositive as to both claims on appeal, we do not reach the Examiner's
cumulative rejections of claims 3 and 4 based on unpatentability over Wang
alone or in combination with one or more of Beardsley, Cook, and Mandl
under 35 U.S.C. § 103(a). See 37 C.F.R. § 41.50(a)(1) (2012) ("The
affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed.").

DECISION
For the above reasons, we AFFIRM the Examiner's decision to reject
claims 3 and 4.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). In the event
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neither party files a request for rehearing within the time provided in
37 C.F.R. § 41.79, and this decision becomes final and appealable under
37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice
on the Director of the United States Patent and Trademark Office. See
37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED

peb
PATENT OWNER:
KAMRATH IP LAWFIRM, P.A.
4825 OLSON MEMORIAL HWY., SUITE 245
GOLDEN VALLEY, MN 55422

THIRD PARTY REQUESTER:

ROSENBERG, KLEIN & LEE
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