Ex Parte Andersson

Patent Trial and Appeal Board

Nov 16, 2016

12680000 (P.T.A.B. Nov. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/680,000 03/25/2010
23908 7590 11/18/2016
RENNER OTTO BOISSELLE & SKLAR, LLP
1621 EUCLID AVENUE
NINETEENTH FLOOR
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
Mattias Andersson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ALBSP0134WOUS 1271
EXAMINER
TOLAN, EDWARD THOMAS
ART UNIT PAPER NUMBER
3725
NOTIFICATION DATE DELIVERY MODE
11/18/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ipdocket@rennerotto.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTIAS ANDERSSON
Appeal2014-009913
Application 12/680,000 1
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and LEE L. STEPINA,
Administrative Patent Judges.
STAICOVICI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Mattias Andersson (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's final decision rejecting claims 1-10. 2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b ).
According to Appellant, the real party in interest is Nord-Lock AB.
Appeal Br. 2 (filed May 29, 2014).
2 Claims 11-28 are withdrawn from consideration. Final Act. 1 (mailed
Sept. 6, 2013).
Appeal2014-009913
Application 12/680,000
We REVERSE.
SUMMARY OF DECISION
INVENTION
Appellant's invention relates to a method for manufacturing washers
for locking. Spec. 1, 11. 6-7.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A method for the manufacturing of circular washers for
locking from blanks, a washer having a central hole, a first side
comprising a pattern of radially extending teeth and a second
side comprising a pattern of radially extending cams,
comprising the steps of
- producing a washer blank having an annular shape;
- introducing the washer blank into a die assembly for
forming a closed shaping space by a lower die portion, an
opposing upper die portion, a central die portion and a support
piece providing a circumferential outer wall of said closed
shaping space, the central die portion extending through a
washer blank central hole;
- forming the blank to a washer, in said closed shaping
space, by mutual movement of said lower and upper die
portions;
- opening the closed shaping space to extract the formed
washer.
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 2, 5, 6, and 8-10 under
35 U.S.C. § 103(a) as being unpatentable over Takeda (JP 05-329568, pub.
Dec. 14, 1993) andLin (US 7,331,874 B2, iss. Feb. 19, 2008).
2
Appeal2014-009913
Application 12/680,000
IL The Examiner rejected claims 3 and 4 under 35 U.S.C. § 103(a)
as being unpatentable over Takeda, Lin, and Lee (US 5,259,819, iss. Nov. 9,
1993).
III. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over Takeda, Lin, and Uehara (US 7,191,633 Bl, iss.
Mar. 20, 2007).
ANALYSIS
Rejection I
Claim 1 is directed to a method of manufacturing "a washer having a
central hole, a first side comprising a pattern of radially extending teeth and
a second side comprising a pattern of radially extending cams." Appeal Br.
18 (Claims App.).
The Examiner finds that Takeda discloses most of the manufacturing
steps of claim 1, but that the resulting washer does not have teeth and cams.
Final Act. 2. The Examiner relies on Lin as disclosing "a die set ( 4, 5)
operable to provide [a] known washer structure consisting of sloped
surfaces, grooves (cams) and ridges (teeth) to a blank." Id. (citing Lin, col.
2, 11. 54--63). The Examiner concludes that "[i]t would have been obvious to
one skilled in the art at the time of invention to provide the dies of Takeda
with washer structure features as taught by Lin in order to produce a
circular washer having known locking features." Id.
Appellant argues that because the cutting/punching forces in Takeda
are much lower than the forces needed to form teeth and cams, as in Lin (see
Appeal Br. 8-10), "one having ordinary skill in the art would not be
motivated to provide the dies of Takeda with a washer structure as taught by
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Appeal2014-009913
Application 12/680,000
Lin, and even if one was motivated to do so, it would require a complete
redesign of Takeda to accomplish." Id. at 10. 3
The Examiner responds that because "Lin is a teaching reference ...
show[ing] that it is known in the art to provide washer making dies with
surfaces for producing lobes and ridges in washers," it would not "take a
complete redesign to provide a punch and/or die faces with [such] features."
Ans. 4. Moreover, according to the Examiner, Appellant's argument is
speculative because "[i]f the device has enough force to flatten a dented
washer, there would be enough force to form features or it would be an
obvious matter of design choice to provide enough force." Id. at 4--5. In
support of this position, the Examiner relies on CN 1453097, which was
cited by Appellant in an IDS filed March 30, 2012. Id. at 5 (citing CN
1453097, Figs. 7 and 8).
Appellant replies that it is "mere speculation on the part of the
Examiner that such changes are 'a matter of design choice."' Reply Br. 4.
Appellant asserts that "[t]he Examiner has not provided any rational[e] for
this speculation rather than to assert it so," and "has not provided an
articulated reasoning with some rational underpinning to support this
conclusion, and therefore has failed to make a prima facie case for
obviousness." Id. Appellant argues that CN 1453097 does not support the
Examiner's position because based on the "structural differences noted at
only the 'business-end' of the machine that is shown, it is inherently
3 In support of this argument, Appellant refers to a declaration under 3 7
C.F.R. § 1.132 prepared by Byron Palmer, which was submitted with the
Notice of Appeal on Mar. 6, 2014. Although the record shows that the
declaration has not been considered, we do not reach the declaration because
we do not sustain the Examiner's rejections, for reasons explained herein.
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Appeal2014-009913
Application 12/680,000
apparent that there are differences in each of the depicted machining
operations to one of ordinary skill in the art." Id. at 6.
First, we do not agree with the Examiner's position that, because the
device of Takeda has enough force to flatten a dented washer, there would
be enough force to form the claimed surface features. "Inherency ... may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient."
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations and internal
quotation marks omitted). In this case, although we appreciate that
flattening an indented washer would require some force, nonetheless, the
Examiner has not provided any persuasive evidence or technical reasoning
to show that the force required for flattening necessarily is sufficient to form
the claimed surface features, namely, teeth and cams, on a washer.
Second, we also do not agree with the Examiner's position that the
force required for forming the claimed features is an obvious matter of
design choice. See Ans. 5. A proposed change that results in different
structure and function may not be an obvious design choice. E.g., Fluor
Tee, Corp. v. Kappas, 499 Fed. Appx. 35, 41--42 (Fed. Cir. 2012) (adding an
expander to a lower pressure configuration to accommodate a high pressure
feed was not a design choice where a separate high-pressure configuration
also was used). Here, Takeda discloses a two-step operation for forming a
flat washer having a central hole 4. In a first punching operation, a first set
of punching dies 1, 2 are used to form a part 5 and then, in a second
operation, part 5 is turned upside down and a placed between a second set of
dies 8, 13 in a closed configuration to shave off peripheral edge portion 18
and to flatten the resulting washer 5. See Takeda, Abstract, para. 10, Figs.
5
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Application 12/680,000
4a, 4b. Lin likewise forms similar central holes 21, 27 using a stamping
process. See Lin, col. 2, 11. 64---67 and col. 3, 11. 16-19; Figs. 3A, 3B, 4.
However, Lin then discloses forming "structures such as wedge planes (i.e.,
sloped surfaces), V-shaped grooves, and ridges on the top and bottom
surfaces" in a separate cold forging process using dies 4, 5, in an open die
configuration. Id. at col. 2, 11. 57---60, col. 3, 11. 7-15. As such, modifying
the level of force in Takeda's process is not a mere design choice, as the
Examiner contends, because forming the features of Lin requires a cold
forging process using an open die configuration, which is structurally
different from the closed die configuration used in Takeda's shaving and
flattening process. Compare Takeda, Fig. 4b with Lin, Fig. 4. The
Examiner has failed to adequately explain how merely modifying the level
of force in Takeda's process would result in washer 5 having the surface
features of Lin. We thus agree with Appellant that modifying the process of
Takeda, to include a cold forging process using an open die configuration
would change the structure and operation of Takeda and thus, does not
constitute a mere design choice, as the Examiner contends. Reply Br. 2--4;
Appeal Br. 9-10.
Lastly, we do not agree that CN 1453097 supports the Examiner's
position, because each of the Figures in CN 1453097 depicts a different
processing step with each step using a differently shaped die and thus, each
step having a different function. CN 1453097, Abstract; Figs. 4--8. As the
structure of the dies shown in Figures 7 and 8 of CN 1453097 are different,
it cannot be concluded that merely modifying the level of force applied in
the forging process of Figure 7 will result in the surface features shown in
Figure 8.
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Application 12/680,000
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 1, 2, 5, 6, and 8-10 under 35 U.S.C. § 103(a) as unpatentable over
Takeda and Lin.
Re} ections II and III
The Examiner's use of the disclosures of Lee or Uehara does not
remedy the deficiencies of the rejection based on Takeda and Lin, discussed
supra. See Final Act. 3--4.
Accordingly, for the same reasons as set forth above, the rejections
under 35 U.S.C. § 103(a) of claims 3 and 4 based on the combined teachings
of Takeda, Lin, and Lee, and of claim 7 based on the combined teachings of
Takeda, Lin, and Uehara, are also not sustained.
SUMMARY
The Examiner's decision to reject claims 1-10 is reversed.
REVERSED
7