Ex Parte Bunch

Board of Patent Appeals and Interferences

Feb 23, 2007

10410854 (B.P.A.I. Feb. 23, 2007)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte TROY J. BUNCH, JR.
__________

Appeal No. 2007-0023
Application No. 10/410,854
___________

HEARD: January 11, 2007
___________

Before OWENS, CRAWFORD and GROSS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The appellant appeals from a rejection of claims 24-36, 38,
40-42, 44 and 47-54, which are all of the pending claims.
THE INVENTION
The appellant claims a threaded fastener. Claims 24 and 44
are illustrative:
24. A fastener comprising:
a head portion having a first opening;
a coupling portion having a second opening; and
a shank portion positioned between said head portion and
said coupling portion;

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said fastener being axially hollow such that a
longitudinally extending hole extends completely through
said fastener between said first and second openings with said
hole having a reduced diameter portion within said shank portion.

44. A fastener comprising:

a head portion;

a threaded portion having threads on an outer surface to
form a male connector, said threads including a first thread
closest to said head portion; and

a shank portion positioned between said head portion and
said threaded portion,

said fastener being axially hollow such that a
longitudinally extending hole extends completely through said
shank portion with said hole having a reduced diameter portion
within said shank portion,

said shank portion being defined by a tubular structure
having an outer wall and an inner wall, with said inner wall
having said reduced diameter portion and with said inner and
outer walls being curved,

said outer wall of said shank portion forming an arc
extending along the entire distance between said first thread of
said threaded portion and a bottom surface of said head portion
and said arc extending continuously between the uppermost section
of said coupling portion and the bottommost section of said head
portion.

THE REFERENCES
Taylor 1,172,406 Feb. 22, 1916
Wescott 1,926,925 Sep. 12, 1933
Nodière 2,006,276 Jun. 25, 1935
Costello 2,546,332 Mar. 27, 1951

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THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as follows:
claims 24, 27, 30, 31, 33-35 and 50 over Nodière in view of
Taylor; claims 25, 26, 28, 29, 38, 40, 41, 44, 47, 48, 50, 53
and 54 over Nodière in view of Taylor and Wescott; and claims 32,
36, 42, 49, 51 and 52 over Nodière in view of Taylor, Wescott and
Costello.
OPINION
We reverse the aforementioned rejections. We need to
address only the independent claims, i.e., claims 24, 38, 44
and 50.
Claim 24
Claim 24 requires a fastener that is axially hollow
completely through the fastener.
Nodière discloses a safety bolt having
[a] hollow unthreaded shank provided with circumferential
depressed ring portions of varying wall thickness spaced by
intermediate portions whose surface is parallel to the bolt
axis. The central bore of the parallel intermediate
portions, and the cross section of the ring portions, are
both so designed that for all axial points of the bolt the
cross-sectional area of the unthreaded portion equals the
cross-sectional area carried by the core of the threaded
portion measured between the deepest points of the threads.
[page 1, left column, lines 16-26]

* * *

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Along the axis of the bolt b and throughout the length of
its body or shank, a bore a is provided which in itself in
the parallel portions of the shank reduces the cross-
sectional area of the unthreaded body or shank to a value
equal to that of the core of the threaded portion, measured
between the deepest points of the threads, the outer
diameter of the shank remaining the same as the outer
diameter of this threaded portion. This unthreaded shank of
the bolt is provided with annular grooves or depressions c
which form ring portions c’ and modify the linearity of the
mid-fibre along the length of the bolt and give it a wavy
shape such that this mid-fibre stretches yieldingly to a
greater extent than if it were linear. [page 2, left column,
lines 27-42]

As shown in Nodière’s figure 1, the hollow portion of the shank
does not extend all the way through the bolt but, rather, extends
only from the inner end of the head to the inner end of the
threaded portion. Nodière does not indicate how a bolt having
that hollow portion is made.
Taylor discloses a hollow bolt that is formed from a piece
of tubing, has an opening all the way through it, and has a
shouldered or square head having an enlarged recess or opening
(page 1, lines 20-27; figure 1).
The examiner argues that “it would have been obvious to one
of ordinary skill in the art to form the fastener of Nodiere to
be hollow the entire length thereof as discloses [sic] in Taylor
because such would greatly simplify the manufacture of the
fastener” (answer, page 4). Nodière’s bolt, the examiner argues,
likely is made by a complicated process such as forming the
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hollow core as a separate tube and then attaching it to head and
threaded portions (answer, page 6). The examiner argues that
even if Taylor’s process were modified to form a shank having
Nodière’s wavy hollow portion, such as by using hot or cold
forming and/or cutting, Taylor’s process still would be simpler
than forming Nodière’s shank and then attaching head and threaded
portions to it (answer, page 8).
Even if Taylor’s process could be modified to form Nodière’s
wavy hollow shank portion, the examiner’s argument is not
persuasive for the following reasons.
First, the examiner has not established that the bolt
performance desired by Nodière, i.e., elastic and resilient yield
under vibration without exceeding the elastic limit of the
material of the bolt and without permanent deformation of the
bolt (page 1, left column, lines 10-13), could be obtained if the
bolt were hollow throughout its entire length.
Second, extending Nodière’s hollow portion through the
threaded portion would prevent the cross-sectional area at the
core of the threaded portion measured between the deepest points
of the threads from equaling the cross-sectional area of the
unthreaded portion at all of its axial points (first page, left
column, lines 22-26). The examiner argues that the hollow
portion’s wall could be thinned to maintain the desired cross-
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sectional area ratio (answer, page 7). The examiner, however,
has not established that one of ordinary skill in the art would
have expected that if the hollow portion wall were thinned,
Nodière’s desired elastic and resilient yield under vibration
without exceeding the elastic limit of the material of the bolt
and without permanent deformation of the bolt would be obtained
(page 1, left column, lines 10-13).
Third, the examiner has not established that if Nodière’s
hollow portion were extended such that the bolt appears hollow at
each end, the bolt would look like an ordinary bolt regularly
used in practice as desired by Nodière (page 1, right column,
line 55 – page 2, left column, line 2). The examiner argues that
Nodière does not state that the ordinary look is critical or
preclude the bolt from having open ends (answer, page 8). The
examiner argues that the presence of Nodière’s depressions c and
c’ along the hollow portion indicates that Nodière gives
“ordinary” a meaning broad enough to encompass a bolt having an
opening at each end (answer, pages 8-9). Nodière’s goal is to
make a bolt that looks like an ordinary bolt yet has increased
elastic deformation (page 1, second column, line 51 – page 2,
left column, line 2). Nodière achieves that goal by using a
shank that is hollow and has annular grooves (page 2, left
column, lines 3-17). The bolt having that shank is the bolt
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Nodière considers to have an ordinary look. Nodière does not
indicate that if the bolt had open ends it would have the
ordinary look.
For the above reasons we conclude that the examiner has not
established a prima facie case of obviousness of the inventions
claimed in the appellant’s claims 24, 27, 30, 31, 33-35 and 50.
Claims 38, 44 and 50
Claims 38 and 50 require a fastener that is axially hollow
completely through the fastener. Claim 44 requires (and claim 38
also requires) a threaded fastener having a hollow shank portion
between a head portion and a threaded portion, and an outer wall
forming an arc extending the entire distance between a bottom
surface of the head portion and the first thread closest to the
head portion. Claim 50 also requires a “shank portion having
means extending continuously along the entire extent of said
shank portion for elastically deforming to axially preload said
fastener.”
Wescott discloses a metal sucker rod that is used in pumping
wells (page 1, lines 15-19). The sucker rod can be a box and pin
type rod having at one end an externally threaded pin and at the
other end an internally threaded socket or box, or can be a
double pin rod having, at each of its ends, a threaded pin that
screws into a separate female coupling (page 1, lines 25-34). To
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prevent severe concentration of vibratory stresses at any point
and distribute them over such a large area that the fatigue or
endurance limit of the metal is not exceeded, the pin is undercut
between the last full thread and the body of the rod to a
diameter less than the minor diameter of the threaded section
(page 1, lines 69-72). The surface formed by the undercutting
has smooth transitory curves joining the threaded section and the
body (page 1, lines 73-76).
The examiner argues that “it would have been obvious for one
of ordinary skill in the art to form the device of modified
Nodiere with only a single continuous curve between the head and
thread in view of the teachings of Wescott. A continuous curve
would be advantageous depending upon the particular application”
(answer, page 4). The examiner acknowledges (answer, page 10)
that the examiner’s proposed modification of Nodière is contrary
to Nodière’s requirement that the cross-sectional area at the
deepest point of the thread is equal to the cross-sectional area
of the unthreaded shank at all of its axial points (page 1, left
column, lines 19-26). The examiner argues that “the skilled
artisan would modify Nodiere, admittedly not maintaining the
constant cross-sectional area, to reduce the cross-sectional area
of the shank portion as disclose [sic] in Wescott in order to
further improve the characteristics of the bolt in resisting
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loosening due to vibration as discussed in Wescott” (answer, page
10). The benefit disclosed by Wescott, however, pertains to a
solid shank. The examiner has not established that one of
ordinary skill in the art would have expected the benefit to
apply to Nodière’s bolt having a hollow shank. Furthermore,
Nodière’s bolt also resists loosening due to vibration, but does
so by having a wavy hollow shank with a cross-sectional area
that, at all axial points, equals the cross-sectional area
between the deepest points of the threads (page 1, left column,
lines 1-33). The examiner has not established that in view of
the applied references, one of ordinary skill in the art would
have expected Wescott’s arced outer wall to provide better
resistance to vibration than Nodière’s wavy hollow shank having
the same cross-sectional area as the core between the deepest
points of the threads, or would have had some other motivation to
depart from Nodière’s required 1:1 cross-sectional area ratio and
instead use Wescott’s arced outer wall.
We therefore conclude that the examiner has not established
a prima facie case of obviousness of the invention claimed in the
appellant’s claims 38, 44 and 50. A further reason why the
examiner has not established a prima facie case of obviousness of
the inventions claimed in the appellant’s claims 38 and 50 is
that, like claim 24 discussed above, they require a fastener that
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is axially hollow completely through the fastener. The examiner
does not rely upon Wescott for any disclosure that remedies the
above-discussed deficiency in Nodière and Taylor as to that claim
requirement. Accordingly, we reverse the rejections of claims
25, 26, 28, 29, 38, 40, 41, 44, 47, 48, 50, 53 and 54. Because
the examiner does not rely upon Costello for any disclosure that
remedies the deficiency in Nodière, Taylor and Wescott as to the
claims from which claims 32, 36, 42, 49, 51 and 52 depend, we
also reverse the rejection of those claims.
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DECISION
The rejections under 35 U.S.C. § 103 of claims 24, 27, 30,
31, 33-35 and 50 over Nodière in view of Taylor, claims 25, 26,
28, 29, 38, 40, 41, 44, 47, 48, 50, 53 and 54 over Nodière in
view of Taylor and Wescott, and claims 32, 36, 42, 49, 51 and 52
over Nodière in view of Taylor, Wescott and Costello, are
reversed.
REVERSED

TERRY J. OWENS
Administrative Patent Judge )
)
) BOARD OF PATENT
) APPEALS
) AND
MURRIEL E. CRAWFORD ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 2007-0023
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