Ex Parte Billings

Patent Trial and Appeal Board

Feb 29, 2016

12021475 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/021,475 01129/2008
63652 7590 03/02/2016
DISNEY ENTERPRISES, INC.
c/o Marsh Fischmann & Breyfogle LLP
8055 East Tufts A venue
Suite 450
Denver, CO 80237
FIRST NAMED INVENTOR
Jerry Carl Billings
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.
07-DIS-235-PR-US-UTL 3954
EXAMINER
SAETHER, FLEMMING
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
PTOMail@mfblaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY CARL BILLINGS
Appeal2014-000563
Application 12/021,4 7 5
Technology Center 3600
Before: CHARLES N. GREENHUT, JILL D. HILL, and LISA M. GUIJT,
Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON i\.PPEi\L
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3-6, 8, 10-14, and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm and designate our affirmance as including a new ground of
rejection under 37 C.F.R. § 41.50(b).
The claims are directed to a fastener safety retention appartus. Claim
1, reproduced below, is illustrative of the claimed subject matter:
Appeal2014-000563
Application 12/021,475
1. An apparatus providing fastener retention upon a failure,
compnsmg:
a first structural member;
a second structural member; and
a fastener installed to pass through the first and second
structural members and, the fastener comprising:
a shaft, wherein said shaft includes a first end and a second
end·
'
a through hole through said shaft;
a secondary member, said secondary member including a
first portion extending beyond said first end of said shaft, a
second portion extending beyond said second end of said
shaft and a third portion disposed within said through hole;
a first capturing member connected to said first portion of
said secondary member; and
a second capturing member connected to said second
portion of said secondary member, wherein said first and
second capturing members each have a cross dimension in a
plane perpendicular to a central axis of said through hole that
is greater than a diameter of said through hole, wherein the
secondary member is flexible and wherein a distance between
said first and second capturing members is greater than the
length of said shaft by at least 0.09 inches such that the first
and second capturing members are spaced apart from the first
and second ends of the shaft when the fastener is installed,
including applying a tensile loading to the fastener, to hold
the first and second structural members together such that the
first and second structural members contact each other and
when the fastener has been stretched under the tensile loading.
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Appeal2014-000563
Application 12/021,475
REJECTION 1
Claims 1, 3---6, 8, 10-14, and 20 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Davis (US 1,018,741) in view of Johnson (US
4,720,204). Final Act. 2.
OPINION
The Examiner's rejection under§ 103(a) cannot be sustained on the
basis as set forth by the Examiner because it is premised on an unreasonably
broad claim construction. The Examiner explains that "in Davis[,] one of
the ends of the fastener (7) is read as the base of the cavity ( 15)" and that in
Johnson, "again the end is read as the base of the internal threaded cavity
(33)." Ans. 5. Appellant correctly argues that "no one skilled in the art
would understand 'end' to be a surface within [either referenced] shaft."
App. Br. 12.
Although we do not sustain the rejection on the basis set forth by the
Examiner, we ultimately agree with the Examiner's conclusion that the
subject matter of independent claims 1, 14, and 20 would have been obvious
to one having ordinary skill in the art in view of Davis and Johnson. See
Final Act. 3 ("it would have been obvious ... to replace [Davis'] second
member ... with one as disclosed in Johnson because the second members
1 The Examiner indicated that the amendment of April 25, 2013 would be
entered for purposes of appeal. This amendment removed claim language
that formed the basis for the § 112 rejection set forth in the Final Action of
March 22, 2013. Although there does not appear to be any express
indication in the record that the amendment overcame the § 112 rejection,
neither the Appellant nor the Examiner further discuss this rejection.
Accordingly, the§ 112 rejection does not appear to be before us for review.
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Appeal2014-000563
Application 12/021,475
of[] both Davis and Johnson are for the same purpose would yield the same
predictable results."). With the exception of the Examiner's interpretation of
the shaft ends, as discussed above, we agree with and adopt as our own the
Examiner's remaining findings concerning Davis. Id. at 2-3.
There are two differences between the subject matter of claim 1,
which is exemplary of the independent claims, and Davis. First, as the
Examiner correctly found, Davis's tie-pin, regarded as the recited
"secondary member," is not "flexible," as required by claim 1. Second,
Davis's tie-pin does not include first and second portions "extending beyond
[the respective shaft ends]" such that the tie-pin's head 14 and inner end 12,
the recited "capturing members," are separated by a "distance greater than
the length of said shaft by at least . 09 inches such that [they] are spaced
apart from the first and second ends of the shaft when the fastener is
installed," as required by claim 1.
As to the first difference, the flexibility of the recited "secondary
member," we agree with and adopt as our own the Examiner's finding that
Johnson teaches such flexible members, i.e., "a safety cable or line (it can be
a chain, steel cable, or suitable other material) indicated at 41," were known
in the art to serve substantially the same function and produce substantially
the same predictable results of retaining a broken fastener. See Final Act. 3
(referencing discussion at Johnson col. 3, 11. 37--40). We also agree with and
adopt as our own the Examiner's conclusion that the substitution of these
similarly functioning elements would have been obvious to one having
ordinary skill in the art. See id. Appellant does not dispute any of the
Examiner's factual findings or legal conclusion in this regard. See App. Br.
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Appeal2014-000563
Application 12/021,475
8-13. Indeed, Appellants acknowledge that the invention may be practiced
where "[t]he secondary member 108 may be a flexible member or it may be
non-flexible." Spec. 10, para. 39. Appellant's arguments instead focus on
the second difference between the claimed subject matter and the prior art
mentioned above-the length of the fastener shaft relative to the ends and
capturing members of the secondary member. See id.
The second difference stems mainly from the type of bolt Davis
employs as compared to the bolt described and depicted in Appellant's
Specification. Davis uses a stud-type bolt 7 having a counterbored socket
hole 15 at one end and a countersunk hole at the other end (unlabeled,
receiving tie-pin end 12). See Davis, p. 1, 11. 68---69; 78-89, Fig. 2. In
Appellant's illustrated embodiment, the through hole "is of a single diameter
along the entire length of the shaft 101." Spec. 9, para. 3 7. This results in
the absence of space within the receiving hole of the secondary member for
the capturing members at each end of the secondary member. Johnson
demonstrates that constructing a central bore 40 without counterbores or
countersinks was known in the art to produce similar predictable results. See
Johnson Figs. 2-3. As Appellant also recognizes, Appellant's invention may
be practiced using "[ o ]ther hole configurations, for example with
counterbores or countersinks at one or both ends of the shaft 101." Spec. 9,
para. 3 7. Using a fastener without counterbores or countersinks is an
obvious variant of Davis's fastener and would yield a "secondary member
including [first and second portions] "extending beyond [the respective shaft
ends]" such that the "distance between [the] first and second capturing
members," is at least equal to "the length of said shaft," as recited in claim 1.
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Appeal2014-000563
Application 12/021,475
Another difference between Davis's bolt and Appellant's bolt is that
Davis's bolt is secured in blind hole 10 by nut 8 and threaded engagement
with arms or spokes 2. In Appellant's illustrated embodiment, bolt 101 is
secured in a through hole (Figure 4, unlabeled) by head 106 and nut 402.
Contrary to Appellant's assertion (App. Br. 9), Davis expressly discusses
one benefit of relative movement between the tie-pin head 14 and bolt 7 is
that "broken bolts may readily be detected by simple observation of the
relative positions of the outer ends of the bolt and the heads 14 of the pins,
since, as hereinbefore indicated, the said heads normally occupy positions in
the outer ends of the sockets 15." Davis p. 1, 1. 109--p. 2, 1. 6. This relative
movement cannot be achieved absent some amount of slack between the
secondary member and fastener. Such slack is illustrated in both Davis (cf.
Figs. 2 and 3) and Johnson (cf. Figs. 2 and 3). Although in Davis slack is
illustrated and discussed as beneficial only in connection with one side of
the fastener, this is due to Davis's bolt being secured in a blind hole
rendering one side not visible. Clearly, the use of a through hole is a
predictable variation of a blind hole to secure structural members,
particularly if those structural members are relatively thin compared to the
length of the fastener. Appellant also acknowledges that the invention may
be practiced wherein "[ t ]he threaded hole may be a through hole or a blind
hole." Spec. 9, para. 35. It would have been obvious to one having ordinary
skill in the art to employ Davis's arrangement with a through hole such that
the fastener extends entirely therethrough and to provide the same capability
for visual inspection as described by Davis on both ends of the fastener
instead of just one end. This would yield "capturing members" separated by
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Appeal2014-000563
Application 12/021,475
a "distance greater than the length of said shaft ... such that [they] are
spaced apart from the first and second ends of the shaft when the fastener is
installed," as recited in claim 1.
As Appellant correctly points out, Johnson does not appear to discuss
the ability or benefit of visual inspection, as failure can readily be observed
externally from Johnson's broken section 26. App. Br. 11. However, mere
silence does not amount to teaching away from the benefits described by
Davis. See App. Br. 11. Johnson provides slack for a different reason: to
control the "amount of movement between the separated portions of the
safety section." Johnson, col. 4, 11. 28-30. Johnson's goal is to preserve the
components of the banner while ensuring the safety of bystanders during
high wind loading. Id. at col. 2, 11. 26-46. Thus, the prior art demonstrates
that the distance between the capturing members relative to the length of the
fastener, i.e., the slack-generating distance, affects two different results:
safely retaining broken parts and allowing for quick visual inspection.
Because the prior art demonstrates the recited difference between lengths
was known to be a result-effective variable, we agree with the Examiner that
the burden to demonstrate criticality is Appellant's. Ans. 3--4; MPEP §
2144.0S(II)(B). This burden is not carried by merely asserting, with regard
to the distance between the capturing members being "greater than the
length of said shaft by at least 0.09 inches," that "[t]his additional claim
limitation is not shown or suggested by either of the two references relied
upon." See App. Br. 12.
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Appeal2014-000563
Application 12/021,475
For the reasons discussed above, we agree with the Examiner's
conclusion that the subject matter of independent claims 1, 14, and 20 would
have been obvious to one having ordinary skill in the art.
Regarding claim 6, we also agree with the Examiner that, although the
relative diameters of the fastener and hole are not expressly discussed, one
skilled in the art would readily recognize that each of these influences the
strength of the connection during operation and failure, respectively. Again,
absent a showing of any criticality associated with the particular dimensions
chosen, or unexpected or unpredictable results, we agree with the Examiner
that selection of a particular diametrical ratio between the bolt and hole is
the product of routine optimization. Ans. 3--4; MPEP § 2144.0S(II)(B).
Appellant contends that Johnson teaches away from the recited relationship.
App. Br. 13. However, when considering the combined teachings of Davis
and Johnson, one skilled in the art would understand that Johnson's
frangible aspect need not be incorporated into Davis when incorporating the
features relating to flexibility, uniform hole diameter, and slack. "It is well-
established that a determination of obviousness based on teachings from
multiple references does not require an actual, physical substitution of
elements." In re Mouttet, 686 F.3d 1322, 1332 (Fed. Cir. 2012).
Appellant does not separately argue any other dependent claims.
As we have modified the Examiner's basis for rejecting the claims on
appeal we designate our affirmance of the Examiner's rejection as a new
ground of rejection under 37 C.F .R. § 41.50(b) in order to afford Appellant
an opportunity to respond.
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Appeal2014-000563
Application 12/021,475
DECISION
The Examiner's rejection is affirmed and designated as a new ground
of rejection pursuant to 37 C.F.R. § 41.50(b).
FINALITY OF DECISION
37 C.F.R. § 41.50(b) provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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