Ex Parte Eggert

Patent Trial and Appeal Board

Apr 28, 2017

12247932 (P.T.A.B. Apr. 28, 2017)

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.
12/247,932 10/08/2008 Daniel M. Eggert 25493-463900 8928
27717 7590
Seyfarth Shaw LLP
233 S. Wacker Drive
Suite 8000
Chicago, IL 60606-6448
05/02/2017 EXAMINER
YANG, JIE
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
patentdocket_chi @ seyfarth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL M. EGGERT
Appeal 2016-001946
Application 12/247,9321
Technology Center 1700
Before TERRY J. OWENS, ROMULO H. DELMENDO, and LILAN REN,
Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Primary
Examiner’s decision to reject claims 10, 13—15, and 22—24.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Applicant (hereinafter “Appellant”) states that the real party in interest
is “Snap-on Incorporated” (Appeal Brief filed on July 7, 2015, hereinafter
“Appeal Br.,” 1).
2 Appeal Br. 11—12; Reply Brief filed on December 3, 2015 (hereinafter
“Reply Br.”) 3—6; Final Action (mailed on March 10, 2015; hereinafter
“Final Act.”) 2—6; Examiner’s Answer (mailed on October 23, 2015;
hereinafter “Ans.”) 3—11.
Appeal 2016-001946
Application 12/247,932
BACKGROUND
The subject matter on appeal relates to providing tools with at least
two regions of differentially applied heat treatment and corresponding
materials performance characteristics. Specification, hereinafter “Spec.,”
11. Representative claim 10 is reproduced from page 14 of the Appeal
Brief (Claims Appendix 1), as follows (with limitations most relevant to the
Appellant’s arguments shown in italicized text):
10. A socket extension subjected to a heat treatment process,
comprising:
a stem portion having a first end adapted to couple to a
driver and receive an amount of torque from the driver, the stem
portion being subject to the heat treatment process to a first
depth measured in a radial direction from an external surface of
the stem portion towards a core of the stem portion, wherein the
first depth is comprised substantially of tempered martensite
steel after the heat treatment process;
a shoulder portion extending from the stem portion
opposite the first end and at least partially comprised of a
material including tempered steel created by residual heat from
the heat treatment process, the shoulder portion further being
substantially free of tempered martensite steel after the heat
treatment process;
a working portion extending from the shoulder portion
opposite the stem portion and comprised of a material
substantially free of tempered martensite steel and tempered
steel other than tempered steel formed as a result of residual
heat from the heat treatment process, the working portion
including a recess adapted to receive a device adapted to
engage and apply the amount of torque to a work piece; and
a zero-treatment region extending from the working
portion to an end of the socket driver extension, the zero-
treatment region comprised of a material free of tempered
martensite steel and free of tempered steel and surrounding the
recess only at a portion of the recess proximate the end of the
socket driver extension.
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Appeal 2016-001946
Application 12/247,932
REJECTION ON APPEAL
Claims 10, 13—15, and 22—24 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Emmerich3 in view of Yoshida et al.4
(hereinafter “Yoshida”). Ans. 3; Final Act. 4—6.
The Examiner indicated that rejections under 35 U.S.C. § 112 11, of
claims 23 and 24 (Final Act. 3), and 35 U.S.C. § 112 12, of claim 10 (Final
Act. 3—4), have been withdrawn. Ans. 2. Therefore, these rejections are not
before us.
DISCUSSION
The Appellant’s arguments against the rejection are limited to claim
10; therefore, we confine our discussion to claim 10 pursuant to 37 C.F.R.
§ 41.37(c)(l)(iv).
Claim 10 is directed to a tool having four regions, i.e., a locally heat
treated stem portion, a shoulder portion, a working portion, and a zero-
treatment region. The different regions are comprised of and/or are free of
specified materials. Claim 10 recites a working portion “substantially free
of tempered martensite steel and tempered steel other than tempered steel
formed as a result of residual heat” (emphasis added) and including a recess.
Claim 10 further requires a zero-treatment region “free of tempered
martensite steel and free of tempered steel” surrounding the recess “only at a
portion.”
The Examiner finds Emmerich describes a tool including stem and
shoulder portions, and a portion corresponding to the working portion/zero-
3 US 4,099,585, issued on July 11, 1978.
4 US 5,803,993, issued on September 8, 1998.
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Appeal 2016-001946
Application 12/247,932
treatment region. See Ans. 3. The Examiner acknowledges Emmerich does
not teach locally heat treating the stem portion, thereby obtaining tool
regions comprised of different materials including tempered martensite steel,
tempered steel from residual heat, and non-tempered steel. Id.
To account for this difference, the Examiner relies on Yoshida. Id. at
3—7. The Examiner finds Yoshida teaches locally applying heat to a stem
portion to obtain tool regions of different materials. Id. Specifically, the
Examiner finds Yoshida’s stem portion is heat treated to obtain tempered
martensite steel, a heating gradient/heat effected region, and a working
portion/zero-treatment region free of tempered martensite steel and free of
tempered steel. Id. at 4—5; see also id. at 10-11. The Examiner finds the
working portion and the zero-treatment regions are taught or suggested by
portions of Yoshida’s mouth rolling part (23), id. at 11, which the Examiner
finds is shown in Yoshida’s Figure 2, reproduced below:
FIG. 2
(Figure 2 of Yoshida depicts a stem portion (part (20) to part (22)) and a
working portion/zero-treatment region (mouth rolling part (23)) surrounding
a recess.)
The Appellant urges a construction of claim 10 such that the zero
treatment region is the only claimed portion/region lacking both tempered
martensite steel and any tempered steel. See Appeal Br. 12. The Appellant
asserts the claimed working portion, unlike the zero-treatment region, is not
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Application 12/247,932
free of tempered steel formed as a result of residual heat. See Reply Br. 2—3.
The Appellant further asserts the zero-treatment region corresponds to the
entire mouth rolling part (23) of Yoshida, which the Appellant
acknowledges is free of tempered martensite steel and any tempered steel.
See Appeal Br. 12; see also Reply Br. 4. Based on the forgoing, the
Appellant principally argues the zero-treatment region surrounding a recess
“only at a portion” is not taught or suggested by Yoshida’s part (23), which
surrounds the entire recess rather than only a portion. Appeal Br. 12.
We are not persuaded. The Appellant’s argument is based on the
incorrect construction that claim 10 requires the working portion and zero-
treatment region to be comprised of different materials. Contrary to the
Appellant’s assertion that the zero-treatment region is the sole region free of
any tempered steel, the Examiner correctly concludes that the language “free
of’ does not exclude the working portion from being of the same steel as the
zero-treatment region. Ans. 11. For the reasons discussed further below, we
agree with the Examiner that the working portion and zero-treatment region
can be the same, i.e., both free of tempered martensite steel and any
tempered steel.
Specifically, we interpret the phrase “substantially free” in the claim
to include free, as the Appellant admits that the working portion of the
invention includes “absolutely no tempered martensite steel.” Reply Br. 3.
Accordingly, the claimed working portion can be entirely free of tempered
martensite steel and entirely free of tempered steel formed by any means
other than by residual heat.
Further, we note claim 10 does not define what material is present in
the working portion. Instead, claim 10 employs a negative limitation to
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Appeal 2016-001946
Application 12/247,932
indicate what materials are absent from the working portion. Claim 10
neither requires nor precludes a working portion being comprised of
tempered steel formed by residual heat. Therefore, we interpret the language
“free of. . . tempered steel other than tempered steel formed as a result of
residual heat” to mean that the working portion must not include tempered
steel (formed by any means other than by residual heat), and that the
working portion may include, but does not necessarily include, tempered
steel formed by residual heat. Said differently, the working portion can be
free of tempered steel formed by residual heat.
This interpretation is consistent with the Appellant’s Specification,
which states “at least two regions” of different materials (as opposed to the
four claimed regions: stem portion, shoulder portion, working portion, and
zero-treatment region). Spec. 11 (emphasis added). Also, the Specification
states “the heat bleed and far field effects may extend though a substantial
portion of the working end 14.” Id. 137 (emphasis added).
Under the broadest reasonable interpretation consistent with the
Specification, the working portion can be free of both tempered martensite
steel and free of any tempered steel. The zero-treatment is also free of
tempered martensite steel and free of any tempered steel, as clearly recited in
claim 10. Thus, the working portion and zero-treatment region can be of the
same material.
As pointed out by the Examiner, claim 10 does not provide specific
definitions for either the zero-treatment region or the working portion/recess.
Ans. 11. As discussed above, the claim permits the working portion and the
zero-treatment region to be the same material. As such, the Examiner’s
reasonably finds that Yoshida’s mouth rolling part (23) encompasses both
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Application 12/247,932
the working portion and the zero-treatment region. Id. Contrary to the
Appellant’s assertion that the claimed zero-treatment region reads on the
entire mouth rolling part (23) of Yoshida, the zero-treatment region
corresponds to a first portion of mouth rolling part (23) extending from the
proximate end of the socket driver extension and including only a portion of
the recess. The claimed working portion corresponds from a second portion
of mouth rolling part (23) extending between the zero-treatment region and
the shoulder/stem portions and includes the recess. Thus, both the zero-
treatment region and the working portion surround/include the recess only at
portions of the recess.
For the forgoing reasons, the Appellant has not persuaded us that
claim 10, including a zero-treatment region surrounding a recess only at a
portion, is not taught or suggested by Emmerich and Yoshida. Accordingly,
we sustain the Examiner’s rejection.
SUMMARY
The Examiner’s decision to reject claims 10, 13—15, and 22—24 under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Emmerich in view of
Yoshida 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)(l)(iv).
AFFIRMED
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