Ex Parte Davidson et al

Patent Trial and Appeal Board

Sep 7, 2018

14263260 (P.T.A.B. Sep. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/263,260 04/28/2014 John B. Davidson
23644 7590 09/11/2018
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
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.
75734-277764 1270
EXAMINER
SHAKER!, HAD!
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
09/11/2018 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):
Patent-ch@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN B. DAVIDSON, C. ROBERT MOON,
and GEORGE F. CHARVAT
Appeal2017-008981
Application 14/263,260
Technology Center 3700
Before ANTON W. PETTING, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
rejections of claims 1-17, 19, and 21-33. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appellants identify the real party in interest as "Joda Enterprises, Inc."
( Appeal Br. 3.)
Appeal2017-008981
Application 14/263,260
STATEMENT OF THE CASE
The Appellants' invention "relates to coupling mechanisms for tools
and, in particular, to mechanisms for altering engagement forces between a
tool and a tool attachment." (Spec. ,r 2.) More particularly, "[t]he claims
relate to an improved torque transmitting tool that might be a wrench, a
ratchet, extension bar, universal joint, T-bar, breaker bar, speeder, or the
like." (Appeal Br. 5; see also Spec. ,r 18.)
Illustrative Claim
1. A tool for detachably engaging a tool attachment
compnsmg:
a drive body having an out-of-round first portion shaped
to fit within an out-of-round recess in a tool attachment, with
the first portion and some of a second portion immediately
adjacent to the first portion having a central longitudinal axis;
an engaging element movable with respect to the drive
body to alter engagement forces tending to hold the out-of-
round portion in the out-of-round recess;
a biasing element developing a biasing force operative to
bias the engaging element toward engagement with the tool
attachment, wherein the biasing element is disposed at least
partially within a guide that is provided in the second portion
and situated entirely on one side of the central longitudinal axis
and wherein the biasing force at the biasing element is oriented
at an oblique angle to a path of travel of a portion of the
engaging element that receives the biasing force.
Hacker
Coren
Roberts
References2
us 4,502,365
us 4,571,113
us 5,911,800
Mar. 5, 1985
Feb. 18, 1986
June 15, 1999
2 Our quotations from these references will omit, where applicable, bolding
and/ or italicization of reference numerals.
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Appeal2017-008981
Application 14/263,260
Rejections3
I. The Examiner rejects claims 1, 6-11, and 13-17 under
35 U.S.C. § 102(b) as anticipated by Hacker. (Final Action 2.)
II. The Examiner rejects claims 1, 6-11, and 13-17 under
35 U.S.C. § 103(a) as unpatentable over Hacker. (Final Action 5.)
III. The Examiner rejects claims 1-14 and 21 under 35 U.S.C.
§ 103(a) as unpatentable over Coren. (Final Action 5.)
IV. The Examiner rejects claims 22-30 under 35 U.S.C. § 102(b)
as anticipated by Coren. (Final Action 2.)
V. The Examiner rejects claims 19 and 33 under 35 U.S.C.
§ 103(a) as unpatentable over "anyone [sic] of Hu, Hacker or Coren in view
of Roberts." (Final Action 8.)
VI. The Examiner rejects claim 32 under 35 U.S.C. § 103(a) as
unpatentable over Coren in view of Hacker. (Final Action 8.)
ANALYSIS
Claims 1 and 22 are the independent claims on appeal, with the rest of
the claims on appeal (i.e., claims 2-17, 19, and 21-33) depending therefrom.
(See Appeal Br., Claims App.) Independent claims 1 and 22 recite "[a] tool
for detachably engaging a tool attachment. (Id.)
In a disclosed embodiment of the Appellants' tool, an end portion 24
of an engaging element 18 is biased, by a spring 62, toward engagement
3 Although the headings for Rejections I-III list claim 18 (see Final
Action 2, 5), "claim 18 has been cancelled" (Appeal Br. 11 ). Also, although
the heading for Rejection III fails to list claims 2-5 and 12 (see Final
Action 5), the Examiner addresses these claims in the body of the rejection
(see id. 6-7).
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Appeal2017-008981
Application 14/263,260
with a tool attachment. (See Spec. ,r,r 21, 30. 32.) The engaging element's
movement, and the movement-causing biasing force developed by spring 62,
are diagrammed in our below annotated version of the Appellants' Figure 1.
• • ••
--··,-~~tr:~:~~~::,
.... ~
As diagrammed in the drawing above, the Appellants' spring 62 develops a
biasing force that biases engaging element 18 toward engagement with the
tool attachment. As also diagrammed above, this biasing force is oriented at
an oblique angle to the movement (i.e., path of travel) of engaging
element 18. Thus, this biasing force acts in a direction that is non-collinear
with the direction along which the engaging element is movable.
According to the Appellants, independent claim 1 recites a "claimed
biasing force" that "must meet two interrelated conditions." (Appeal
Br. 11.) Specifically, (1) the biasing force must be "operative to bias the
engaging element toward engagement with the tool attachment," and (2) the
biasing force must be "oriented at an oblique angle to a path of travel of a
portion of the engaging element that receives the biasing force." (Id.
at Claims App.) Also, according to the Appellants, independent claim 22
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Appeal2017-008981
Application 14/263,260
similarly recites two conditions (see id. at 19) in that ( 1) the biasing element
must be "operative to bias the engaging element toward engagement with the
tool attachment," and (2) the "biasing forces" must act "along" a direction
that is "non-collinear" with the direction that the engaging element is
movable "along." (Id. at Claims App.)
Rejection I
In this rejection, the Examiner relies upon Hacker to disclose the
biasing force required by independent claim 1. (See Final Action 2.) Hacker
discloses a tool in which a spring 34 "presses against" a slide pin 24 ( and
particularly an attached projection 28 of the slide pin 24), to bias slide pin 24
to a "retracted position." (Hacker, col. 3, 11. 51-5 3.) And, upon movement
of slide pin 24 to this retracted position, a ball 22 is lifted upward to engage
a socket 18. (See id. at col. 3, 11. 5-11.) The movement of slide pin 24, and
the movement-causing biasing force developed by spring 34, are
diagrammed on our below annotated version of Hacker's Figure 1.
24
As diagrammed above, Hacker's spring 34 develops a biasing force that
biases ball 22 toward engagement with socket 18. As also diagrammed
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Appeal2017-008981
Application 14/263,260
above, this biasing force is oriented parallel to the movement (i.e., path of
travel) of slide pin 24.
The Examiner finds that, in Hacker, "[t]he biasing force developed by
the biasing element (spring 34) acting on the projection 28 includes vectors
acting on the bend portion that is oblique to the path of travel." (Answer 10.)
But, as pointed out by the Appellants (see Appeal Br. 11 ), this finding by the
Examiner does not address the other requirement in independent claim 1 that
the biasing force must also be "operative to bias the engaging element toward
engagement with the tool attachment." (Id. at Claims App.) Specifically, the
Examiner does not explain adequately how such a theoretical oblique vector
acting on projection 28 would also bias ball 22 toward engagement with
socket 18. In other words, "the Examiner has not demonstrated that the
hypothetical force actually biases the engaging element toward engagement
with the tool attachment." (Reply Br. 6.)
Thus, we do not sustain the Examiner's rejection of independent
claim 1, and claims 6-11 and 13-17, depending therefrom, under 35 U.S.C.
§ 102(b) as anticipated by Hacker.
Rejection II
In this rejection, the Examiner again relies upon Hacker to disclose
the biasing force required by independent claim 1. (See Final Action 5.)
However, as discussed above, the Examiner does not establish sufficiently
that Hacker shows or suggests the claimed biasing force.
Thus, we do not sustain the Examiner's rejection of independent
claim 1, and claims 6-11 and 13-17, depending therefrom, under 35 U.S.C.
§ 103(a) as unpatentable over Hacker.
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Appeal2017-008981
Application 14/263,260
Rejection III
In this rejection, the Examiner relies upon Coren to disclose the
biasing force required by independent claim 1. (See Final Action 5.) Coren
discloses a tool in which a retainer 20 is "slidable in a guideway 22 and
pressed outwardly by a spring 24" so that the retainer's bottom 32 can
engage a socket 14. (Coren, col. 2, 11. 40-42, 50-53.) The movement of
retainer 20, and the movement-causing biasing force developed by
spring 24, are diagrammed on our below annotated version of Coren's
Figure 1.
...._J£
40
20
2Z
30
32
,, 28
~-..."-,-),,..1"·," ·- -------11
As diagrammed above, Coren's spring 24 develops a biasing force that
biases retainer 20 toward engagement with socket 14. As also diagrammed
above, this biasing force is oriented collinear with the movement (i.e., path
of travel) of retainer 20.
The Examiner finds that, in Coren, "the biasing force acting on the flat
end surface contacting the spring" defines "forces acting along x and y
axes," and these are "oblique to the path of travel." (Answer 11.) But, as
pointed out by the Appellants (see Appeal Br. 1 7-18), this finding by the
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Appeal2017-008981
Application 14/263,260
Examiner does not address the other requirement in independent claim 1 that
the biasing force also must be "operative to bias the engaging element
toward engagement with the tool attachment" (id. at Claims App.).
Specifically, the Examiner does not explain adequately how the alleged x-y
forces in Coren bias retainer 20 toward engagement with socket 14. In other
words, "the Examiner has not demonstrated that the biasing force exerted by
[Coren' s] spring, if it did not set straight, would bias the engaging element
toward engagement with the tool attachment." (Reply Br. 8.)
Thus, we do not sustain the Examiner rejection of independent
claim 1, and claims 2-14 and 21 depending therefrom, under 35 U.S.C.
§ 103(a) as unpatentable over Coren (Rejection III).
Rejection IV
In this rejection, the Examiner relies upon Coren to disclose the
biasing force required by independent claim 22. (See Final Action 2.) More
specifically, the Examiner relies upon Coren to disclose a biasing force that
"acts along" a direction that is "non-collinear with" the direction "along"
which the engaging element is "movable." (Appeal Br., Claims App.)
However, as discussed above, the Examiner does not explain adequately
how an allegedly non-collinear biasing force in Coren is "operative to bias
the engaging element toward engagement with the tool attachment," as
recited in independent claim 22. (Id. )4
4 Additionally or alternatively, independent claim 22 requires the biasing
forces to act along a direction that is "more nearly parallel to the axis of
rotation" than the movement direction of the engaging element. ( Appeal
Br., Claims App.) The Examiner does not address adequately how a biasing
"vector in the Y direction" (Answer 10) would be "more nearly parallel to
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Appeal2017-008981
Application 14/263,260
Thus, we do not sustain the Examiner rejection of independent
claim 22, and claims 23-30 depending therefrom, under 35 U.S.C. § 102(b)
as anticipated by Coren.
Rejection V
In this rejection, the Examiner relies upon "Hu, Hacker, or Coren" to
"meet[] all of the limitations" except for "a second biasing element biasing
the engagement element away from engagement." (Final Action 8.)
However, as discussed above, the Examiner does not establish sufficiently
that Hacker discloses the biasing force required by independent claim 1; and
the Examiner does not establish sufficiently that Coren discloses the biasing
force required by either independent claim 1 or independent claim 22. As
for the "Hu reference," as noted by the Appellants, "it is not identified or
discussed." (Appeal Br. 12.)
Thus, we do not sustain the Examiner's rejection of dependent
claim 19 ( which depends from independent claim 1) and dependent claim 3 3
(which depends from independent 22) under 35 U.S.C. § 103(a) as
unpatentable over any one of Hu, Hacker, or Coren, in view of Roberts.
Rejection VI
In this rejection, the Examiner relies upon Coren to disclose "all of the
limitations" except for "a retaining element to limit the axial movement of
the collar." (Final Action 8.) However, as discussed above, Coren does not
disclose the biasing force required by independent claim 22.
the axis of rotation" than a movement "vector in the Y-direction" of the
retainer 20.
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Appeal2017-008981
Application 14/263,260
Thus, we do not sustain the Examiner rejection of dependent claim 32
(which depends ultimately from independent claim 22), under 35 U.S.C.
§ 103(a) as unpatentable over Coren in view of Hacker.
DECISION
We REVERSE the Examiner's rejections of claims 1-17, 19, and 21-33.
REVERSED
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