Ex Parte Gardstam

Patent Trial and Appeal Board

Sep 29, 2014

11788508 (P.T.A.B. Sep. 29, 2014)

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.
11/788,508 06/05/2007 Johannes Gardstam BGEE 200110US01 5813
27885 7590 09/29/2014
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
DELISLE, ROBERTA S
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
09/29/2014 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 JOHANNES GARDSTAM
____________________

Appeal 2012-006613
Application 11/788,508
Technology Center 3600
____________________

Before JOHN C. KERINS, STEFAN STAICOVICI, and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Johannes Gardstam (“Appellant”) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 29–31, 33, 34, 36–38, 52, 53, and 56.
Reply Br. 2. Claims 1–28, 32, 35, 39–51, 54, and 55 have been cancelled.
Appeal Br. 2.1 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In the Answer, the Examiner withdrew rejections to claims 57, 64, and 65
under 35 U.S.C. § 112, ¶2, as being indefinite, and withdrew rejections to
claims 57–72 under 35 U.S.C. § 103(a), as being unpatentable. Answer 4–5.
Appeal 2012-006613
Application 11/788,508

2
CLAIMED SUBJECT MATTER
The Appellant’s invention is directed to a pierce nut. Independent
claim 29 is illustrative and is reproduced below with emphasis on the
determinative claim limitation.
29. A pierce nut for punching through and attachment to
a plastically deformable metal sheet, said pierce nut
comprising:
a pilot having an end surface that defines a portion of a
front end of said pierce nut, said end surface of said pilot
designed to engage and punch through the metal sheet to form
an opening in the metal sheet when said end surface is forced
against the metal sheet, said end surface positioned about a hole
in said pilot, said end surface lies in an end surface plane;
an abutment surface spaced rearwardly of said end
surface, said abutment surface defines an outer edge portion of
said front end of said pierce nut, said abutment surface design
to abut against the metal sheet after said end surface punches
through the metal sheet, said abutment surface having a face
that lies in an abutment surface plane, said abutment surface
plane parallel to said end surface plane;
a first groove positioned between said pilot and said
abutment surface, said first groove having a first wall, a second
wall and a transition surface connected between said first and
second wall, an outer peripheral edge of said end surface
terminating at said first wall, said first wall sloped downwardly
from said end surface and toward a central axis of said pilot,
said transition surface having an arcuate shape, said second wall
sloped upwardly from said transition surface and away from
said central axis of said pilot; and,
a second groove which is positioned between said
abutment surface and said first groove and at least partly
surrounds the first groove, said second groove positioned
rearwardly of said end surface of said pilot, said second groove
having a first wall, a second wall and a transition surface
connected between said first and second wall, said first wall of
said second groove terminating at said second wall of said first
groove, said first wall of said second groove sloped
Appeal 2012-006613
Application 11/788,508

3
downwardly from said abutment surface plane, said transition
surface of said second groove having an arcuate shape, said
second wall of said second groove sloped upwardly from said
transition surface of said second groove and away from said
central axis of said pilot and terminating at said abutment
surface.

THE REJECTION
The Examiner has rejected claims 29–31, 33, 34, 36–38, 52, 53, and
56 under 35 U.S.C. § 103(a) as being unpatentable over Babej (US
6,986,629 B2, issued Jan. 17, 2006). Answer 5–12.

ANALYSIS
The Examiner found that Babej discloses a pierce nut including, inter
alia, first groove (conical recess) 240 and second groove 225.2 Answer 6.
The Examiner also relied on Babej’s Figure 9B for disclosing the first wall
of second groove 225 terminating at the second wall of first groove 240. Id.
at 7.

2 Parenthetical nomenclature refers to Babej.
App
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06613
/788,508
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Appeal 2012-006613
Application 11/788,508

5
second wall of “first groove” 240 and first wall of “second groove” 225. See
Babej, Figs. 9A and 9E.
For this reason, we agree with the Appellant that the “landing”
between Babej’s first groove 240 and second groove 225 prevents the first
wall of second groove 225 from terminating at the second wall of the first
groove 240, as recited in claim 29. We find that the Examiner’s findings
related to claim interpretation do not account for the presence of the landing,
and is therefore not supported by the preponderance of the evidence.
Therefore, we do not sustain the rejection of claim 29 under 35 U.S.C.
§ 103(a) as unpatentable over Babej. Claims 30, 31, 33, 34, 36–38, 52, 53,
and 56 depend from claim 29 and the rejection of these claims is also not
sustained.

SUMMARY
The Examiner’s decision to reject claims 29–31, 33, 34, 36–38, 52,
53, and 56 under 35 U.S.C. § 103(a) as unpatentable over Babej is reversed.

REVERSED

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