Ex Parte GALM et al

Patent Trial and Appeal Board

Aug 28, 2018

14320490 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/320,490 06/30/2014 Andre GALM
76960 7590 08/28/2018
Fay Kaplun & Marcin, LLP
150 Broadway, suite 702
New York, NY 10038
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.
10139/30201 5894
EXAMINER
SHAKER!, HAD!
ART UNIT PAPER NUMBER
3723
MAIL DATE DELIVERY MODE
08/28/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE GALM, STEPHANIE THOMAS, EV A LIETZ, and
MARTIN AEBERHARD
Appeal2017-009398
Application 14/320,490 1
Technology Center 3700
Before JENNIFER D. BAHR, JILL D. HILL, and
JEREMY M. PLENZLER, Administrative Patent Judges.
PLENZLER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
Final Decision rejecting claims 1-5 and 10-15. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the Applicant, DePuy Synthes Products, Inc., identified by the
Appeal Brief as the real party in interest. Appeal Br. 2. Appellant notes that
Johnson & Johnson, Inc. is the parent corporation of Depuy Synthes
Products, Inc. Id.
Appeal2017-009398
Application 14/320,490
CLAIMED SUBJECT MATTER
Claims 1 and 15 are independent, with claims 2-5 and 10-14
depending from claim 1. Claim 1 is representative of the claims on appeal,
and is reproduced below:
1. A screwdriver, comprising:
a handle extending from a proximal end to a distal end and
having a handle channel extending therethrough;
a shaft extending from a proximal end insertable into the
handle channel to a distal end, the distal end of the shaft
including a bit opening sized to receive a proximal portion of a
bit therein;
a locking sleeve coupled to the shaft, the locking sleeve
having a locking sleeve channel slidably receiving the shaft
therethrough, the locking sleeve being positionable over the shaft
distally of the handle;
a spring slidably received within the locking sleeve
channel and over the shaft; and
a coupling member received over the shaft distally of the
locking sleeve, the coupling member being movable from a
biased first configuration in which a locking element protrudes
radially into the bit opening to lockingly engage a bit received
therein and a second configuration in which the coupling
member is retracted proximally to compress the spring and
permit the locking element to move radially out of the bit
opening to permit the bit to be removed therefrom;
wherein the handle, shaft, locking sleeve, spring and
coupling member are removably attached to one another.
REJECTIONS
1. Claims 1, 4, 5, and 15 are rejected under 35 U.S.C. § 102 as being
anticipated by Chiang '452 (US 5,996,452, issued Dec. 7, 1999).
2. Claims 1 and 15 are rejected under 35 U.S.C. § 102 as being
anticipated by Chiang '418 (US 8,505,418 Bl, issued Aug. 13, 2013).
2
Appeal2017-009398
Application 14/320,490
3. Claims 2 and 12 are rejected under 35 U.S.C. § 103 as being
unpatentable over Chiang '452 or Chiang '418 and Heinz (US
2008/0243133 Al, published Oct. 2, 2008).
4. Claims 3 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Chiang '452 or Chiang '418 and Garg (US 6,951,156 B2,
issued Oct. 4, 2005).
5. Claim 11 is rejected under 35 U.S.C. § 103 as being unpatentable over
Chiang '452 or Chiang '418 and Hu '760 (US 6,968,760 B2, issued Nov. 29,
2005).
6. Claims 13 and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Chiang '452 or Chiang '418 and Hu '121 (US 8,876,121
B2, issued Nov. 4, 2014).
OPINION
Anticipation-Chiang '45 2
Appellant argues claims 1, 4, 5, and 15 as a group. Appeal Br. 3---6. 2
We select claim 1 as representative. Claims 4, 5, and 15 stand or fall with
claim 1. See 37 C.F.R. 4I.37(c)(l)(iv).
The Examiner finds that Chiang '452 discloses each element of claim
1. Final Act. 2-3. Figures 1 and 2 of Chiang '452 are reproduced below for
reference.
2 We note that Appellant's arguments in the Reply Brief are essentially the
same as those presented in the Appeal Brief. For simplicity, the decision
cites only to the Appeal Brief.
3
Appeal2017-009398
Application 14/320,490
FIG. 1
Figure 1 of Chiang '452 is a perspective exploded view illustrating a chuck
device. Chiang '452, 1:65---67.
4
Appeal2017-009398
Application 14/320,490
21
(
\
28
l
202
~0 i 24
!. \ i \ \
\ \
30
FIG. 2
40
\
104
Figure 2 of Chiang '452 is a sectional view illustrating the chuck device
from Figure 1. Id. at 2: 1-2. The Examiner finds, for example, that housing
10 corresponds to the recited "coupling member," follower 20 corresponds
to the recited "shaft," and tube 30 corresponds to the recited "locking
sleeve." Final Act. 2-3.
Appellant does not dispute the majority of the Examiner's findings,
including whether Chiang '452 discloses a "coupling member," a "shaft,"
and a "locking sleeve." Rather, Appellant contends that Chiang '452 does
not disclose additional features of the "shaft" and "coupling member"
required by claim 1, or the recited orientation of the "coupling member"
relative to the "locking sleeve." Appeal Br. 4--6.
With respect to the additional features of the "shaft" and "coupling
member," claim 1 requires that "the distal end of the shaft includ[ es] a bit
opening sized to receive a proximal portion of a bit therein" and that "the
coupling member [is] movable from a biased first configuration in which a
locking element protrudes radially into the bit opening to lockingly engage a
5
Appeal2017-009398
Application 14/320,490
bit received therein." The Examiner cites hole 22 as corresponding to the
recited "bit opening" and ball 24 as corresponding to the recited "locking
element." Final Act. 2-3.
Appellant contends that, in Chiang '452, "[t]he follower 20 includes a
hole 22 formed in the distal end for receiving the driving stem 29 but the
hole 22 does not include any locking element protruding radially therein to
lockingly engage a received bit." Appeal Br. 4--5. The problem with the
rejection, according to Appellant, is that ball 24 in Chiang '452 extends into
hole 22 at a medial portion of follower 20, rather than at a distal end of
follower 20. Id. at 5. Appellant contends that "[o]ne skilled in the art would
understand that the 'distal end' refers to the distal extremity of the shaft and
the bit opening recite[d] in the claim is required to be at the distal-most part
of the shaft," but "the ball 23 of Chiang ['452] is in no way located at the
distal-most part of follower 20 and thus is not at the 'distal end' of the shaft
and cannot protrude radially into a distal opening of the hole 22." Id.
Initially, we note that the claim requires that the "locking element
protrudes radially into the bit opening," not into a distal end of the bit
opening or the distal end of the shaft. As noted above, Appellant
acknowledges that hole 22 in Chiang '452 extends into the distal end of
follower 20. Appeal Br. 4--5. Although hole 22 is not numbered in Figure 2
of Chiang '452, it is clear that hole 22 has an extent into follower 20.
Appellant's proposed reading of claim 1 is not consistent with the plain
language of the claim or with the disclosure in Appellant's Specification.
Appellant's Figure 5 is reproduced below for reference.
6
Appeal2017-009398
Application 14/320,490
164
130
437
190
1.28
FIG. 5
Figure 5 is a sectional view of the shaft and sleeve of Appellant's
screwdriver. Spec. ,r 5. Similar to hole 22 in Chiang '452, Appellant's
channel 137 (the "bit opening") extends a distance into shaft 104 from distal
end 130 and ball 166 (the "locking element") is located inward of distal end
130. Accordingly, because claim 1 does not require that the "locking
element" is located at the distal end of the shaft, and Appellant's arguments
are based on such a requirement, we are not apprised of Examiner error.
As for the orientation of the "coupling member" relative to the
"locking sleeve," claim 1 requires that the "coupling member [is] received
over the shaft distally of the locking sleeve." Appellant's arguments
directed to this limitation are based on "the claim requir[ing] that the portion
of the coupling member that is received over the shaft (i.e., all of this portion
that is received over the shaft) must be located distally of the locking
sleeve." Appeal Br. 6. Appellant contends that this "is supported by the
Specification and Drawings of the present application," without further
explanation. Id. The plain language of the claim does not require that the
entire coupling member is spaced apart from the locking sleeve (i.e., that
7
Appeal2017-009398
Application 14/320,490
there can be no overlap between the parts), nor are we directed to anything
in the Specification that requires such a reading. As seen above in the
reproduced Figure 2 from Chiang '452, a portion of housing 10 (the
"coupling member") is "received over the shaft distally of' tube 30 (the
"locking sleeve"). Accordingly, we are not apprised of Examiner error.
For the reasons discussed above, we are not apprised of Examiner
error in the rejection of claims 1, 4, 5, and 15.
Obviousness-Combinations based on Chiang '452
Claims 2, 3, and 10-14 depend from claim 1 and Appellant's
contentions related to those claims rely on the unpersuasive arguments
presented in connection with claim 1. Appeal Br. 9-11. Accordingly, we
are not persuaded of Examiner error in the rejection of claims 2, 3, and 10-
14.
Anticipation-Chiang '418
Appellant argues claims 1 and 15 as a group. Appeal Br. 7-9. We
select claim 1 as representative. Claim 15 stands or falls with claim 1. See
37 C.F.R. 4I.37(c)(l)(iv).
The Examiner finds that Chiang '418 discloses each element of claim
1. Final Act. 3--4. Figure 4 of Chiang '418 is reproduced below for
reference.
8
Appeal2017-009398
Application 14/320,490
FI (i-. 4
Figure 4 of Chiang '418 is a partial exploded sectional view illustrating a
combination tool or tool extension. Id. at 4:5---6. The Examiner finds, for
example, that shaft 20/50 corresponds to the recited "shaft" and sleeve 30/40
corresponds to the recited "locking sleeve." Final Act. 3--4.
Appellant does not dispute the majority of the Examiner's findings,
including whether Chiang '418 discloses a "shaft" and a "locking sleeve."
Rather, Appellant contends that "neither sleeve 30 nor tubular member 40
engage with or are coupled to the shaft 20" because "neither element[]
contact[ s] the shaft 20 in any way" and "the housing 10 completely
surrounds the shaft 20 so that it is only coupled thereto." Appeal Br. 7.
Appellant contends that "the actuator 49 is only sometimes in contact
with the detent 18, which is only sometimes in contact with the shaft 20" and
"[t]his selective engagement between three different components in no way
equates to a coupling between the tubular member 40 and the shaft 20."
Appeal Br. 8. Appellant proposes a construction of "couple" as "to fasten or
9
Appeal2017-009398
Application 14/320,490
join together" and contends that "member 40 is never coupled to detent 18 as
the two elements are never fastened or joined together" and "[b ]ecause the
member 40 is not coupled to the detent 18, it is in no way coupled to the
shaft 20." Id. Appellant further contends that "[e]ven if the member 40
were coupled to detent 18 ... one skilled in the art would not consider the
member 40 to be coupled to the shaft 20 as there is always a component
disposed between the member 40 and the shaft 20." Id.
Appellant's contentions do not apprise us of Examiner error. We
agree with the Examiner, and find that, in Chiang '418, sleeve 30/40 is
coupled to shaft 20. Initially, we agree with the Examiner that claim 1 does
not require direct contact between the recited "locking sleeve" and "shaft,"
only that the "locking sleeve [is] coupled to the shaft" in some unspecified
manner, which is met by Chiang's indirect coupling. There is no dispute
that, in Chiang '418, sleeve 30 is coupled to housing 10. Nor is there any
dispute that housing 10 is coupled to shaft 20. See Appeal Br. 7 ("the
housing 10 completely surrounds the shaft 20 so that it is only coupled
thereto"). Because sleeve 30 is coupled to housing 10, and housing 10 is
coupled to shaft 20, sleeve 30 is at least indirectly coupled to shaft 20.
Appellant provides no persuasive explanation, based on the actual
requirements of claim 1, to the contrary.
For the reasons discussed above, we are not apprised of Examiner
error in the rejection of claims 1 and 15.
Obviousness-Combinations based on Chiang '418
Claims 2, 3, and 10-14 depend from claim 1 and Appellant's
contentions related to those claims rely on the unpersuasive arguments
presented in connection with claim 1. Appeal Br. 9-11. Accordingly, we
10
Appeal2017-009398
Application 14/320,490
are not persuaded of Examiner error in the rejection of claims 2, 3, and 10-
14.
DECISION
We AFFIRM the Examiner's decision to reject claims 1-5 and 10-15.
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
11