Ex Parte Bowers et al

Patent Trial and Appeal Board

Feb 27, 2018

14256436 (P.T.A.B. Feb. 27, 2018)

United States Patent and Trademark Office
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.
14/256,436 04/18/2014 Ned C. Bowers 11612-021 2418
151692 7590 03/01/2018
Robert L Wolter
EXAMINER
Beusse, Wolter, Sanks & Maire PLLC SAETHER, FLEMMING
390 N. Orange Ave., Suite 2500
Orlando, EL 32801 ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
03/01/2018 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):
ktissue@bwsmiplaw.com
rwolter @ b wsmiplaw. com
c serafin @ bw smiplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NED C. BOWERS and RUSSELL ORTNER
Appeal 2017-0047211
Application 14/256,4362
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 11—13, 15—18, 20, and 21. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
October 17, 2016) and Reply Brief (“Reply Br.,” filed January 17, 2017),
and the Examiner’s Answer (“Ans.,” mailed December 21, 2016) and Final
Office Action (“Final Act.,” mailed May 24, 2016).
2 Appellants identify the inventors, Ned C. Bowers and Russell Ortner, as
the real parties in interest. App. Br. 2.
Appeal 2017-004721
Application 14/256,436
CLAIMED INVENTION
Appellants’ claimed invention relates to “quick connect fasteners for
holding panels, [or] other components, together” (Spec. 12).
Claims 11 and 17 are the independent claims on appeal. Claim 11,
reproduced below, is representative of the claimed subject matter:
11. A fastener for securing together a first panel to a second
panel, wherein the first panel and the second panel each include
an aperture for receiving the fastener, and a first side of the first
panel and the second panel are facing each other, and a second
side of each is facing away from each other, comprising:
a grommet having an opening and a radially outwardly
extending flange for engaging the second side of said first panel;
a receptacle being a rivet nut mounted to the first side of
the second panel and having a central opening facing the first
side of the first panel and aligned with the respective apertures
of the first panel and the second panel; and
an insert in threaded engagement with an interior surface
of the rivet nut receptacle and the insert having cam and locking
surfaces for engaging a cross pin of a stud having been inserted
through the grommet.
REJECTIONS
Claims 11, 12, and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Summers et al. (US 2,881,499, iss. Apr. 14, 1959)
(“Summers”) and Torresen et al. (US 2,670,021, iss. Feb. 23, 1954)
(“Torresen”).
Claims 13, 15, 16, 18, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Summers, Torresen, and De Groff et al
(US 905,294, iss. Dec. 1, 1908) (“De Groff’).
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Appeal 2017-004721
Application 14/256,436
ANALYSIS
Independent Claim 11 and Dependent Claim 12
We are persuaded by Appellants’ argument that the Examiner’s
rejection of independent claim 11 under 35 U.S.C. § 103(a) cannot be
sustained because the rejection is based on improper hindsight
reconstruction (App. Br. 12), i.e., that it would not have been obvious to a
person of ordinary skill in the art at the time of Appellants’ invention to
combine Summers and Torresen in the manner the Examiner proposes,
absent impermissible hindsight.
In rejecting claim 11 under § 103(a), the Examiner cites Summers as
disclosing substantially all the limitations of the claim (Final Act. 2).
However, the Examiner acknowledges that Summers does not disclose “a
rivet nut configuration,” i.e., “a receptacle being a rivet nut,” as recited in
claim 11 (id.). The Examiner cites Torresen to cure the deficiency of
Summers (id. (finding that Torresen discloses a fastener for securing first
and second panels comprising “[a] receptacle configured as a rivet nut
([Fig. 2] at 38)”)). And the Examiner concludes that it would have been
obvious to a person of ordinary skill in the art at the time of Appellants’
invention “to replace the separate rivets of Summers for securing the
receptacle to the first panel with a rivet nut configuration as disclosed in
Torresen” (id. at 2—3) because “in Summers’[s] and Torresen’s similar fields
of endeavor[,] replacing one rivet means of securing a fastener receptacle to
a panel with another [rivet means] would yield [a] predictable result[ ],” i.e.,
“the receptacle of Summers would be similarly secured to the first panel
only instead with [a] rivet nut configuration” (id. at 3).
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Application 14/256,436
Referring, in the Answer, to Figure 1 of Summers and Figures 1 and 2
of Torresen, the Examiner further details the proposed modification:
[T]he rejection is not replacing the entirety of Summers with a
rivet nut but, is instead only replacing the rivets by which
Summers is attached to the plate (26 in Summers) with a non-
threaded rivet part as part of the receptacle. The combination
would maintain the advantages of Summers since the insert,
which provides the advantages, would not be affected by the
combination.
.... [T]he rejection is in combination with Torresen wherein the
threaded part of the receptacle would be maintained. Torresen
disclose[s] a threaded part (19) [sic — 21] which would be
analogous to the threaded receptacle part of Summers and,
further adds a non-threaded part (22) extending from the
threaded part thus once the combination was made, there would
be a similar non-threaded part added to and extending from the
threaded receptacle part of Summers for riveting the threaded
part to the panel. So therefore, in the combination the added non-
threaded part of the receptacle could be riveted without affecting
the necessary threaded part of the receptacle same as the nut part
of Torresen is not affected once riveted.
(Ans. 4). In other words, as best understood, the Examiner proposes to
modify Summers’s receptacle 22 (see Summers, Fig. 1) to add a deformable
non-threaded portion, like deformable barrel 16 of Torresen’s anchor nut
(see Torresen, Fig. 1). This added deformable portion would then be
squeezed to form a bulge, like Torresen’s bulge 38 (see Torresen, Fig. 2), to
secure receptacle 22 of Summers to one of sheets 10 and 11 (see Summers,
Fig. 1). Finally, insert 30 (see Summers, Fig. 2) would be inserted into
deformed receptacle 22, and stud 12 (see id., Fig. 1) used to connect
sheets 10 and 11 via receptacle 22.
We are not persuaded that the Examiner’s proposed modification is
merely the predictable use of prior art elements according to their
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Appeal 2017-004721
Application 14/256,436
established functions. Nor is the Examiner’s proposed modification a simple
substitution of one rivet means for another. Rather, the Examiner proposes
to completely eliminate Summers’s rivets 26 by making receptacle 22
deformable so that the receptacle provides the means to secure itself to
sheet 11, like the anchor nut disclosed in Torresen.
The Examiner maintains, as described above, that a person of ordinary
skill in the art would have been motivated to make these modifications
because “replacing one rivet means of securing a fastener receptacle to a
panel with another” would yield a predictable result (Final Act. 3). Yet,
critically here, the Examiner does not explain why a person of ordinary skill
in the art would have had “an apparent reason to combine the known
elements in the fashion claimed.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007). As the Court observed in KSR:
Although common sense directs one to look with care at a patent
application that claims as innovation the combination of two
known devices according to their established functions, it can be
important to identify a reason that would have prompted a person
of ordinary skill in the relevant field to combine the elements in
the way the claimed new invention does.
Id. Merely asserting that the result of a proposed modification would have
been “predictable” is not sufficient because it does not address a reason that
would have prompted a modification of the prior art in the first place.
The Examiner has failed to articulate any reasoning with rational
underpinning for combining the cited references to arrive at a “fastener for
securing together a first panel to a second panel,” as recited in claim 11,
without impermissible hindsight. As such, the Examiner has failed to
establish a prima facie case of obviousness with respect to claim 11.
KSR, 550 U.S. at 418 (“[R]ejections on obviousness grounds cannot be
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Application 14/256,436
sustained by mere conclusory statements. Instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.”) (citation omitted).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 11 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of dependent claim 12.
Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonob vious”).
Independent claim 17
Independent claim 17 includes language substantially similar to the
language of claim 11, and stands rejected based on the same rationale
applied with respect to claim 11 (Final Act. 3). Therefore, we do not sustain
the Examiner’s rejection under 35 U.S.C. § 103(a) of independent claim 17,
for the same reasons set forth above with respect to claim 11.
Dependent Claims 13, 15, 16, 18, 20, and 21
The Examiner’s rejection of dependent claims 13, 15, 16, 18, 20, and
21 based on De Groff, in combination with Summers and Torresen, does not
cure the deficiency in the Examiner’s rejection of independent claims 11 and
17. Therefore, we do not sustain the rejection of dependent claims 13, 15,
16, 18, 20, and 21 under 35 U.S.C. § 103(a) for the same reasons set forth
above with respect to the independent claims.
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Appeal 2017-004721
Application 14/256,436
DECISION
The Examiner’s rejections of claims 11—13, 15—18, 20, and 21 under
35 U.S.C. § 103(a) are reversed.
REVERSED
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