Ex Parte Boone

Board of Patent Appeals and Interferences

Jul 23, 2012

11047407 (B.P.A.I. Jul. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte NICK L. BOONE
____________________

Appeal 2010-003960
Application 11/047,407
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-003960
Application 11/047,407
2
STATEMENT OF THE CASE
Nick L. Boone (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claim 6. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
The Claimed Subject Matter
Claim 6, reproduced below, is the only claim involved in this appeal.
6. A method of installing barbed wire onto a fencepost,
comprising the steps of:
driving a threaded shank with a helical shaped eye
portion barbed wire fastener into a fencepost with a driver
wherein the eye portion has a truncated straight section
connecting the eye portion with the shank wherein the shank
has a center axis and the truncated straight section is bent at a
45 degree angle from the center axis;
inserting a strand of barbed wire into an eye of the helical
shaped fastener; and
turning the fastener to lock the barbed wire in place.
Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Griffith
Rosenberg
Tassano
US 294,615
US 5,439,338
US 6,854,364 B1
Mar. 4, 1884
Aug. 8, 1995
Feb. 15, 2005
Rejections
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Griffith. Ans. 3.
Appeal 2010-003960
Application 11/047,407
3
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Rosenberg and Tassano.1 Ans. 3.
OPINION
Obviousness in view of Griffith
The Examiner found that Griffith discloses the method of claim 6,
with the exception that Griffith does not disclose the 45 degree angle bend
called for in the claim. Ans. 3. The Examiner determined it would have
been obvious to modify Griffith to provide a 45 degree bend “for ease of
manufacturing and/or since it would have been ‘obvious to try’ - choosing
[from a] finite number of identified, predictable solutions, with a reasonable
expectation of success.” Id.
Appellant does not contest the Examiner’s determination that it would
have been obvious to provide the truncated straight section connecting the
eye portion with the shank of Griffith’s fastening element with a 45 degree
angle. However, Appellant asserts that Griffith does not teach the claimed
step of “turning the fastener to lock the barbed wire in place” because
Griffith “instead teaches taking a wire cable and pressing it inside an eye and
turning the eye into a vertical position.” App. Br. 3-4. Appellant argues that
Griffith does not teach locking barbed wire using a specialized shape,
because Griffith teaches turning the fastening element to a horizontal
position, pressing the wire cable through the outlet of the eye, and then
turning the fastening element farther out to compensate for the vertical
growth of the tree. App. Br. 4.

1 Although not listed in the statement of the rejection, the Examiner
ostensibly additionally relies on Griffith as evidence that the use of barbed
wire to form fences was known in the art at the time of Appellant’s
invention. Fin. Rej. 4 (mailed May 11, 2009); Ans. 4.
Appeal 2010-003960
Application 11/047,407
4
Griffith discloses screwing fastening element A into the tree about as
far as it can go, then turning it with its eye into a horizontal position (fig. 4),
thereby satisfying the “driving” step of claim 6, then pressing the wire cable
inside the eye (dotted lines in fig. 4) and allowing it to spring back into the
eyelet, thereby satisfying the “inserting” step of claim 6, then finally turning
the fastening element into a vertical position in which the wire cable rests in
the eye at some distance from the body of the tree, thus satisfying the
“turning” step of claim 6. Griffith, ll. 40-50.
Griffith’s fastening method is substantially the same as Appellant’s
disclosed method, wherein the fastener is twisted into the fence post, the
barbed wire is then inserted into the eye of the fastener to secure the barbed
wire to the fastener, and the fastener is turned to tighten the barbed wire and
lock it in place. See Spec. 4, ll. 4-18.
Griffith’s additional disclosure of subsequent repositioning steps after
the wood of the tree has grown (Griffith, ll. 50-55) does not negate the fact
that Griffith discloses the claimed method steps.
We do not agree with Appellant that Griffith fails to disclose the step
of “turning the fastener to lock the barbed wire in place” of claim 6. We
sustain the rejection of claim 6 as unpatentable over Griffith.
Obviousness in view of Rosenberg and Tassano
Appellant argues that Rosenberg does not teach or suggest inserting a
strand of barbed wire into an eye of a helically shaped fastener. App. Br. 4.
Appellant further asserts that Tassano does not cure this deficiency in
Rosenberg because “Tassano does not discuss how or what the screw hook
is used to fasten.” App. Br. 4-5.
This argument does not show error in the Examiner’s rejection,
because the Examiner acknowledges that “Rosenberg does not disclose the
Appeal 2010-003960
Application 11/047,407
5
particular fence wire,” and relies on Tassano only for a teaching directed to
the 45 degree bend in the truncated straight section of the fastener. Ans. 4,
5. The Examiner relies on Griffith as evidence that the use of barbed wire to
form fences was known in the art at the time of Appellant’s invention. Ans.
4, 5. As such, we understand the Examiner’s position to be that Rosenberg’s
teaching to use the disclosed fastener (a threaded wood bolt with open eye as
depicted in fig. 4e) in “fences” combined with the knowledge of one skilled
in the art at the time of Appellant’s invention, as evidenced by Griffith, of
installing a barbed wire fence using a threaded wood bolt with an eye in
accordance with the method steps outlined above in discussing the rejection
based on Griffith alone, would have suggested to a person of ordinary skill
in the art performing the method taught by Griffith to install barbed wire
onto a fencepost using Rosenberg’s fastener, modified as proposed by the
Examiner in view of the teachings of Tassano. See id.
Appellant also argues that Rosenberg and Tassano do not teach the
step of “turning the fastener to lock the barbed wire in place.” App. Br. 5.
The Examiner responds to this argument by pointing out that claim 6 does
not specify the sequence or order of the method steps recited in claim 6.
Ans. 5-6. The Examiner reasons that using a fastener as disclosed in the
combination of Rosenberg and Tassano to install a barbed wire to a
fencepost would require at least an initial step of turning the screw into the
fence and that such turning would meet the claim limitation at issue. Ans. 6.
A two-part test has been established for determining if the steps of a
method claim that do not otherwise recite an order must nonetheless be
performed in the order in which they are written. First, we look to the claim
language to determine if, as a matter of logic or grammar, the recited steps
must be performed in the order written. “If not, we next look to the rest of
Appeal 2010-003960
Application 11/047,407
6
the specification to determine whether it ‘directly or implicitly requires such
a narrow construction.’” Altiris, Inc. v. Symantec Corp., 318 F.3d 1363,
1369-70 (Fed. Cir. 2003) (quoting Interactive Gift Express, Inc. v.
CompuServe, Inc., 256 F.3d 1323, 1343 (Fed. Cir. 2001)) (emphasis in
original). If not, the sequence in which such steps are written is not a
requirement of the claim. Id.
Appellant’s Specification describes a method sequence in which the
fastener is twisted into the fence post, “[n]ext, the driving mechanism is
removed from the eye portion 16, and barbed wire is inserted into the eye 22
of the helically shaped barbed wire fastener 10 to secure the barbed wire to
the fastener,” and “[t]hen the driving mechanism 12 is placed back onto the
eye portion 16 of the fastener 10 and used to tighten the barbed wire by
turning the fastener 10 and locking the barbed wire in place.” Spec. 4, ll. 4-
18. By contrast, claim 6 does not contain any temporal verbiage, such as
“first,” “next,” or “then” that would dictate the sequence of the recited steps.
We must be careful not to read a particular embodiment appearing in the
written description into the claim if the claim language is broader than the
embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358 F.3d
870, 875 (Fed. Cir. 2004) (stating “it is important not to import into a claim
limitations that are not a part of the claim. For example, a particular
embodiment appearing in the written description may not be read into a
claim when the claim language is broader than the embodiment.”). In this
case, Appellant’s drafting of claims without the use of the more limiting
temporal terminology contained in the Specification implies a claim scope
that is broader than the disclosed embodiment of the method.
Thus, the Examiner correctly determined that claim 6 does not require
the recited steps to be performed in any particular sequence. At least
Appeal 2010-003960
Application 11/047,407
7
implicit in Rosenberg’s disclosure of using the disclosed anchor bolt in
fences is the understanding that the anchor bolt will be driven into the fence
post by turning, that such turning threads the anchor bolt into the fence post
to secure it in place, and that the fence wire to be secured to the fence post is
inserted into the eye of the anchor bolt, thereby also being secured or locked
to the fence post via the securement of the anchor bolt to the fence post,
regardless of whether the fence wire is inserted into the eye before or after
the bolt is threadedly secured to the fence post. See Rosenberg, col. 3, ll. 1-5
(discussing adaptation of the screw part of the anchor bolt to its actual use,
such as self-drilling bolts for wood). “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 421 (2007). See also Perfect Web Tech., Inc. v. InfoUSA,
Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009) (“while an analysis of
obviousness always depends on evidence … it also may include recourse to
logic, judgment, and common sense available to the person of ordinary skill
that do not necessarily require explication in any reference”). Thus, the
Examiner correctly determined that in the contemplated use of Rosenberg’s
anchor bolt in fences, and in particular in the known use of anchor bolts to
install barbed wire onto a barbed wire fence, as evidenced by Griffith, the
anchor bolt would be turned to lock the barbed wire in place.
Moreover, even construing claim 6 as requiring first driving the
barbed wire fastener into a fencepost, then inserting a strand of barbed wire
into the eye of the fastener, and then subsequently turning the fastener to
lock the previously inserted barbed wire in place, such a sequence of steps is
a known method for installing a barbed wire fence, as evidenced by Griffith
(discussed above), and thus would have been an obvious technique for using
Rosenberg’s anchor bolt in fences, in order to install a barbed wire fence.
Appeal 2010-003960
Application 11/047,407
8
For the above reasons, the Examiner did not err in concluding that
Rosenberg and Tassano, combined with the knowledge of a person of
ordinary skill in the art, as evidenced by Griffith, render obvious the subject
matter of claim 6.
DECISION
The Examiner’s decision rejecting claim 6 is sustained.
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)(1)(iv).
AFFIRMED

hh