Ex Parte Clark et al

Board of Patent Appeals and Interferences

Sep 30, 2003

09592080 (B.P.A.I. Sep. 30, 2003)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JEFFREY ALLEN CLARK,
BRIAN MICHAEL CURTIS, and
ANDREW JOSEPH WISNIEWSKI
__________
Appeal No. 2003-1828
Application No. 09/592,080
__________
ON BRIEF
__________
Before CAROFF, McQUADE, and NASE, Administrative Patent Judges.
CAROFF, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claims 1-17, all the claims pending in appellants’
involved application.
The claims are directed to an air bag sensor module having a
fastener for securing the base of the module to a vehicle
mounting structure.
Appeal No. 2003-1828
Application No. 09/592,080
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Claim 1, which is one of two independent claims, is
representative of the subject matter encompassed by the claims on
appeal:
1. An air bag sensor module for a vehicle comprising:
a base having an aperture extending therethrough, said
aperture having a retaining portion;
a sensor secured to said base for sensing vibrations caused
by a crash of the vehicle;
a fastener having a shaft with a head and a threaded portion
opposite said head with said threaded portion temporarily
retained within said retaining portion in a shipping position,
said threaded portion having a minor diameter with said shaft
portion having a shaft diameter less than said minor diameter.
The prior art references relied upon by the examiner on
appeal are:
Kuzdak 6,106,207 Aug. 22, 2000
(effective filing date: Aug. 11, 1999)
Metcalf 1,719,301 Jul. 2, 1929
The following two rejections are before us for
consideration:
I. Claims 1-7, 9-15 and 17 stand rejected for obviousness
under 35 U.S.C. § 103 in view of admitted prior art taken with
Kuzdak.
II. Claims 8 and 16 also stand rejected for obviousness
under 35 U.S.C. § 103 in view of the admitted prior art taken
with Kuzdak, and further taken in combination with Metcalf.
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Application No. 09/592,080
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We have carefully considered the record on appeal in light
of the positions taken by the appellants and by the examiner.
Having done so, we shall affirm the examiner’s rejection (I) only
as to claims 1-3, 7, 9-14 and 17, and reverse the rejections (I)
and (II) as to claims 4-6, 8 and 15-16, for the following
reasons:
With respect to claims 1-3, 7, 9-14 and 17, we conclude that
the admitted prior art taken with Kuzdak supports a prima facie
case of obviousness. As indicated in appellants’ specification
(page 1), typically air bag sensor modules are secured to a
vehicle structure using fastening elements. Preferably, the
fastening elements are secured to the vehicle structure only
under the compressive load of a threaded fastener to ensure
optimal crash pulse transmission. This is not in dispute.
Kuzdak relates generally to fastener assemblies, and teaches
that it is desirable for the fastener to be “captured” or
retained on a member to be attached to a support structure so
that the fastener is readily available when needed to effect the
attachment (col. 1, l. 1-15). We agree with the examiner that it
would have been prima facie obvious, within the purview of
35 U.S.C. § 103, to apply the teachings of Kuzdak in the context
of securing on air bag sensor module to a vehicle mounting
Appeal No. 2003-1828
Application No. 09/592,080
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structure in order to obtain the advantages of a captive or
retained fastener as disclosed by Kuzdak. While Kuzdak may
address an additional problem, i.e., preventing the pointed end
portion of a fastener from protruding through the retaining
member (a problem which may or may not be of concern when
securing an air bag sensor module to a vehicle mounting
structure), that has no bearing on the fact that Kuzdak otherwise
provides the requisite motivation for using a captive fastener
arrangement to secure a base member to a support structure. The
motivation arises from the desire to reap the benefit of a
“captive” fastener which is taught by Kuzdak.
With regard to the limitation in claims 1 and 11 that the
diameter of the fastener shaft be less than the minor diameter of
the threaded portion of the fastener, we are of the opinion that
that particular limitation is fairly suggested by Kuzdak (col. 3,
l. 6-11) which indicates that, in the assembled position, the
unthreaded mid-portion (or shaft) of the fastener extends within
the threaded passage (or aperture) in the base member, but is
free of any threaded engagement therewith, as shown in Figure 4.
By implication, therefore, the shaft diameter should be less than
the minor diameter of the threaded aperture and less than the
Appeal No. 2003-1828
Application No. 09/592,080
5
corresponding minor diameter of the threaded portion of the
fastener.
As regards claims 3 and 14, we agree with the examiner that
“self-tapping” threads are patentably indistinguishable from the
fastener threads of Kuzdak since, in essence, “self-tapping” is
not a structural limitation since it depends upon the composition
of the engaged materials.
However, the same cannot be said for the more specific
limitations set forth in claims 4 and 15 which require a
particular juxtaposition of the self-tapping threads and
retaining material within the aperture of the base member, such
that the self-tapping threads cut through the retaining material
when moved from a shipping position to an installed position.
For this reason, we find the limitations of claims 4 and 15 to be
patentably distinguishable from Kuzdak. Accordingly, the
examiner’s rejection of claims 4 and 15, as well as dependent
claims 5 and 6, is reversed.
Additionally, as to the rejection of claims 8 and 16, we
find that the examiner’s reliance upon Metcalf is misplaced.
While Metcalf may show a pocket (8) adjacent a retaining portion
of an aperture in which a fastener is retained, in our opinion
the examiner has failed to establish the requisite motivation for
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Application No. 09/592,080
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one of ordinary skill in the art to use the pocket of Metcalf in
Kuzdak, especially in view of the fact that the retaining portion
of the aperture in Metcalf (oblong opening 3) is fundamentally
different in structure from that shown in Kuzdak (internally
threaded passage 26). Accordingly, we also reverse the
examiner’s rejection of claims 8 and 16.
In closing, we note that appellants have included some web
pages with their reply brief for the purpose of demonstrating
that self-tapping threads are unique. It is inappropriate to
introduce new evidence by way of a reply brief without a showing
of good and sufficient reasons why the evidence was not earlier
presented. In this regard, see 37 CFR § 1.195. Accordingly, we
have not considered the web pages in question. However, even if
we were to consider those web pages, appellants have failed to
indicate how those pages demonstrate that self-tapping threads
are structurally “unique.”
We also note that there is no antecedent basis for “said
self-tapping threads” in claim 15. Apparently, claim 15 may have
been intended to depend from claim 14 rather than claim 10.
Accordingly, an appropriate amendment of claim 15 should be made
to correct the noted defect.
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For the foregoing reasons, the decision of the examiner is
affirmed as to claims 1-3, 7, 9-14 and 17, and reversed as to
claims 4-6, 8 and 15-16.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
MARC L. CAROFF )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
MLC:svt
Appeal No. 2003-1828
Application No. 09/592,080
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INTELLECTUAL PROPERTY LAW DEPARTMENT
186 Wood Avenue South
Iselin, NJ 08830