Ex Parte DIETER et al

Patent Trial and Appeal Board

May 17, 2018

13313414 (P.T.A.B. May. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/313,414 12/07/2011
67886 7590 05/21/2018
WOODLING, KROST AND RUST
9213 CHILLICOTHE ROAD
KIRTLAND, OH 44094
FIRST NAMED INVENTOR
JONATHAN WAYNE DIETER
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.
8680-COLL-T-NUT 4615
EXAMINER
DESAI, KAUSHIKKUMAR A
ART UNIT PAPER NUMBER
3788
NOTIFICATION DATE DELIVERY MODE
05/21/2018 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):
ken.mitchell@clevepat.com
clevepat@aol.com
clevepat@sbcglobal.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN WAYNE DIETER and
STEPHEN R. SELLE
Appeal2017-005249 1
Application 13/313,414
Technology Center 3700
Before: EDWARD A. BROWN, ARTHUR M. PESLAK, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 5, 11, 19--21, and 32-34,2 which are all of the pending claims. 3 We
have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM.
1 According to Appellants, the real party in interest is Stafast Products, Inc.
Appeal Br. 3.
2 We note that the statement of the rejection in the Final Action does not
include claim 11 but it is included in the body of the rejection. Final Act. 5,
7-9 (dated May 4, 2015). Both the Examiner and Appellants address claim
11. Thus we consider this to be a typographical error and that claim 11 is
included in the rejection.
Appeal2017-005249
Application 13/313,414
CLAIMED SUBJECT MATTER
The disclosure is directed to collated T-Nuts that reside in a steel strip.
Spec. p. 2, 1. 7. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A continuous length of integrally connected T-Nuts,
compnsmg:
a continuous length of deformable metal material which is
generally flat;
said continuous length of deformable metal material
includes first and second side portions, a top portion and a bottom
portion;
a plurality of spaced and generally hollow cylinders
extending vertically from said top portion of said deformable
metal material;
said generally hollow cylinders include interior threads
therein;
a plurality of spaced flanged heads formed from said
deformable metal material, each of said flanged heads associated
with one of said plurality of spaced and generally hollow
cylinders, said flanged heads and said generally hollow cylinders
form said T-Nuts, and, said interior threads of said generally
hollow cylinders extend through said flanged heads;
a carry tab intermediate each of said adjacent T-Nuts; and,
each said carry tab comprises a centrally located weakened
portion affixing adjacent T-Nuts together;
said centrally located weakened portions being frangible
and bendable;
said frangible and bendable centrally located weakened
portions enabling said continuous length of T-Nuts to be coiled;
said frangible and bendable centrally located weakened
portions enabling separation of adjacent T-Nuts.
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Application 13/313,414
REJECTIONS
The Examiner made the following rejection:
Claims 1, 2, 5, 11, 19--21, and 32-34 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Oaks (US 4,752,993, issued June 28,
1988), Nagayama (US 5,195,854, issued Mar. 23, 1993) (hereinafter referred
to as "Nagayama"), and David (US 3,938,657, issued Feb. 17, 1976).
OPINION
As an initial matter, Appellants argue that the disclosure ofNagayama,
US 5,503,596 (hereinafter referred to as "Nagayama '596") should be
considered by the Examiner and the Board. Appeal Br. 23-24. As the
Examiner correctly points out, however, Nagayama '596 is of record in the
application, but is not applied as a reference in the rejection of the claims.
Ans. 2. Thus, there is no action for the Board to take with respect to this
reference because the Board's jurisdiction only extends to appeals of
rejected claims. See 35 U.S.C. § 134(a) ("An applicant for a patent, any of
whose claims has been twice rejected, may appeal from the decision of the
primary examiner to the Patent Trial and Appeal Board."). Appellants'
course of action for review of a discretionary action on the part of the
Examiner would be by way of petition to the Commissioner for Patents. See
Manual of Patent Examining Procedure (MPEP) § 1002.02(c)(3).
Claim 1
The Examiner finds that Oaks discloses, inter alia, a continuous
length of connected T-Nuts that may be arranged on a spool. Final Act. 4.
Each T-Nut includes a flange and an associated generally hollow threaded
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Application 13/313,414
cylinder. Id. The Examiner also finds that Nagayama discloses "an
equivalent T-nut" and determines it would have been obvious to substitute
Nagayama's T-nut for Oak's T-nut "to provide full length association with
the male part." Id. at 5. Further, the Examiner finds that David teaches a
carry tab with centrally located apertures and weakened portions 50, 51. Id.
at 6. The Examiner concludes that in the applied combination of Oaks,
Nagayama and David, it
would have been obvious for one of ordinary skill in the art at
the time the invention was made to substitute Oaks/N agayama
carry tab with carry tab having a centrally located weakened
portion of the David disclosure to provide easy separation of
fastener [that enables the length of T-Nuts to be frangible and
bendable].
Id. The Examiner concludes that it would have been obvious for one of
ordinary skill in the art to modify Oaks, as taught by David, because the
weakened portions provide easy separation of fasteners. Id. at 6.
Appellants argue that "Oaks does not teach or disclose integrally
connected T-Nuts in the first place." Appeal Br. 25 (boldface omitted).
Further, Appellants argue that the applied combination4 is "structurally
different than the claimed invention." Id. at 26. Furthermore, Appellants
argue that "the use of the two piece construction of [Oak's] fastener ... does
not involve routine skill in the art." Id. Appellants contend that Oaks
teaches away from the desirability of a one piece construction. Id.
Appellants appear to misapprehend the Examiner's rejection. In
discussing the continuous length of integrally connected T-Nuts, the
Examiner refers to the disclosure at Oaks "6:9--14, fig 7-8." Final Act. 4.
4 In the Appeal Brief, Appellants refer to Oaks, N agayama, and David as D 1,
D2, and D3 respectively. Appeal Br. 19.
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Application 13/313,414
The portions of Oaks cited by the Examiner disclose a one piece
construction and thus Appellants' arguments to the contrary are not
persuasive. A copy of Oaks' Figures 7 and 8 is provided below with
annotation by the Board.
42 Fig. 7
12
4-
12 42 12
Fig. 8
"FIG. 7 is a top view of a multiplicity of fasteners according to FIGS.
1 and 2, connected together in a strip; [and] FIG. 8 is a top view of a
multiplicity of fasteners according to FIGS. 4 and 5 connected together in a
strip." Oaks 4:36-41. Also in discussing Figures 7 and 8, Oaks states that
for "the fasteners 2 and 4, connecting members 42 may be used to join the
fasteners to one another in strips." Id. at 6:9--11. Further, Oaks states that
"the strips of fasteners 2 and 4, may be fed into an automated assembly unit
from a dispenser, such as a spool feeder." Id. at 6:12-14. Thus, the
Examiner correctly finds that Oaks teaches a strip of integrally connected
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Application 13/313,414
fasteners and, Appellants' teaching away argument does not persuade us of
Examiner error.
The Examiner finds that Oaks, when combined with Nagayama,
teaches that the hollow cylinder is threaded from the flanged end all the way
to the other end of the cylinder. Thus, Nagayama teaches that the threads
provide a full length of association of the T-Nut with the male part. Final
Act. 5. In response, Appellants argue that "[t]he words 'full length of
association' are not understood." Appeal Br. 26.
When considering obviousness of a combination of known
elements, the operative question is thus "whether the improvement is more
than the predictable use of prior-art elements according to their established
functions." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Accordingly, Appellants' argument is not persuasive because the
Examiner reasons that threading the full length of the hollow cylinder is a
simple substitution for the equivalent structure formed by threading a partial
length of the hollow cylinder. See Final Act. 5 ("An express suggestion to
substitute one equivalent component or process for another is not necessary
to render such substitution obvious."). Appellants' argument does not
address the Examiner's position and thus does not apprise us of error in the
Examiner's rejection.
Further, Appellants argue that David "does not disclose a carrier that
is capable of being separated on a rivet by rivet basis." Id. at 28. The
Examiner relies upon the combination of teachings from Oaks, Nagayama,
and David to teach that the T-Nuts are frangible and bendable. See Final
Act. 6 (cited supra). Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
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of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Therefore, Appellants' arguments against David alone do
not apprise us of error in the Examiner's rejection of claim 1.
We have considered each of Appellants' arguments and determine
they fail to persuasively apprise us of error in the Examiner's factual
findings or rationale, discussed above, for the combination of Oaks,
Nagayama and David, which we determine to be reasonable and supported
by rational underpinnings. Accordingly, we sustain the rejection of claim 1.
Claims 2 and 5
Appellants present arguments against the rejections of claims 2 and 5,
which depend from claim 1, together as a group. Appeal Br. 30-31. We
select claim 2 as representative, and claim 5 stands or falls with claim 2. See
37 C.F.R. § 41.37(c)(l)(iv).
Claim 2 recites that "a prong is formed on each of said flanged
heads." Appeal Br. 43, Claims App'x. Appellants argue that Oaks "doesn't
disclose a prong instead it is clinched to the sheet metal substrate." Id. at 30.
Thus, the issue before us is the proper construction of the claim term
"prong." "[D]uring examination proceedings, claims are given their
broadest reasonable interpretation consistent with the specification." In re
Hyatt, 211F.3d1367, 1372 (Fed. Cir. 2000).
Appellants' arguments do not point us to any discussion in the
Specification that would illuminate the meaning of the term "prong." See
Appeal Br. 30. While the specification should be used to interpret the
meaning of a claim, it is improper to confine the claims to the embodiments
found in the specification. In re Trans Texas Holdings Corp., 498 F. 3d
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1290, 1299 (Fed. Cir. 2007)(citations omitted). In addition to the
specification, dictionary definitions are also pertinent in this analysis. Id.
The Oxford Dictionary provides a definition of "prong" as "1.1 [a]
projecting part on various other devices."
https://en.oxforddictionaries.com/definition/prong (last accessed May 9,
2018). The Examiner interprets "prong" to be a projecting part from the T-
Nuts. See Ans. 7 ("Appellant has not claimed structural limitations of
prongs or defines no structural features or particular characteristics in and of
itself. Therefore, due to lack of further structural limitations, the applied
prior art Oaks elements [ 12, fig 1] was deemed to read on the claimed
prongs."). Therefore, we determine that the Examiner's interpretation of the
term "prong" is consistent with the broadest reasonable interpretation that
one of ordinary skill in the art would give to that term in light of the
Specification. Applying this construction of "prong to claim 2," Appellants'
contentions do not persuade us that the prongs of Oaks do not correspond to
the claimed prongs. Accordingly, for the reasons stated supra, the rejection
of claims 2 and claim 5 is sustained.
Claims 11
Independent claim 11 recites a continuous length of integrally
connected T-Nuts comprising, inter alia, a "first and second prong" and a
"third and fourth prong." Appeal Br. 44, Claims App'x. The Examiner
relies upon Nagayama as teaching "a first and second prong [15, 16, fig 1]"
and "a third and fourth prong [17, 18, fig 1]." Final Act. 8. Appellants
argue that Oaks, Nagayama, and David "individually, and/or in combination,
do not disclose a T-nut that has centrally located carry tabs 194A, 194B
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oriented opposite each other 90° with respect to the first 169A, 169B and
second 169C, 169D pairs of prongs." Appeal Br. 33. We are not persuaded
by Appellants' argument because it effectively merely points out what the
claim recites and, as such, will not be considered an argument for separate
patentability of the claim. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011). Hence, Appellants' argument does not apprise us of any error in the
Examiner's findings and reasoning with respect to claim 11. See Final Act.
7-9. Accordingly, the rejection of claim 11 is sustained.
Claims 19 and 32
For independent claims 19 and 32, Appellants rely on the arguments
presented supra for the rejection of claims 1 and 11, which, as discussed above, we
have found unpersuasive. See App. Br. 35-37.
Therefore, for the foregoing reasons, we also sustain the Examiner's
rejection of independent claims 19 and 32 over Oaks, Nagayama, and David.
Claim 20 and 33
Appellants argue that Oaks, Nagayama, and David "teach away from
[the] use of a prong." Appeal Br. 3 8. We understand this argument to
pertain to the applied combination. Appellants' argument is unconvincing
because "teaching away" requires that the reference "criticize, discredit, or
otherwise discourage" the use of other alternatives. See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004). We will not read into a reference a
teaching away from a proposed combination when no such language exists.
See Dystar Textilfarben GmbH & Co. Deutsch/and KG v. CH Patrick Co.,
464 F.3d 1356, 1364 (Fed. Cir. 2006). Appellants argue that Oaks "doesn't
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Application 13/313,414
disclose a pawl instead it is clinched to the sheet metal substrate" and David
"is a rivet holder ... but there is no hint or disclosure of a use with a prong
or pawl." Appeal Br. 38. Appellants use the term prong and pawl
interchangeably. See, e.g. Spec. 1 :32-33 ("Thereafter, prongs (pawls) of the
[sic] are formed on the T-Nuts and the individual T-Nuts are severed from
the band or metal strip."); Spec. 3:1-2 ("Dies also create other features such
as prongs (pawls) and apertures."); and Spec. 28:3 ("169A, 169B, 169C,
169D- prongs (pawls), Figs. 14--19"). Consistent with Appellants'
Specification, the Examiner does not distinguish between the two terms,
much the same as Appellants. Thus, neither of Appellants' observations
identifies a teaching away because the Examiner relies upon Oaks to
disclose the pawls and thus no modification of Oaks is necessary for this
feature. Accordingly, Appellants do not show that Oaks, Nagayama and/or
David teach( es) away from the claimed invention.
Further, Appellants argue, but do not persuasively explain or provide
evidence, to show that there would be no reasonable expectation of success
and predictability of the combination proposed by the Examiner. Appeal Br.
3 8. In this regard, Appellants have not shown persuasively that the result of
the Examiner's proposed modification "to substitute Oaks T-nut with the T-
nut as disclosed by Nagayama to provide securing mechanism" would have
been unpredictable. In this regard, absolute predictability that the
substitution will be successful is not required rather, all that is required is a
reasonable expectation of success. See In re 0 'Farrell 853 F.2d 894, 903-
04 (Fed. Cir. 1988). Appellants' statement without more does not establish
that there would not be a reasonable expectation of success. Accordingly,
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we also sustain the Examiner's rejection of claims 20 and 33 over Oaks,
Nagayama, and David.
Claims 21 and 34
For claims 21 and 34, which respectively depend from claims 19 and 32,
Appellants rely on arguments similar to those presented for claim 11 supra, which
we have found unpersuasive. Compare App. Br. 33 with Appeal Br. 39.
Therefore, for the foregoing reasons, we also sustain the Examiner's
rejection of claims 21 and 34 over Oaks, Nagayama, and David.
DECISION
The Examiner's decision to reject claims 1, 2, 5, 11, 19-21, and 32-
34 under 35 U.S.C. § 103 is affirmed.
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)(l )(iv).
AFFIRMED
11