Ex Parte Giraldo et alDownload PDFPatent Trial and Appeal BoardMay 29, 201813303645 (P.T.A.B. May. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/303,645 11/23/2011 Luis Giraldo 18227 7590 05/31/2018 Cantor Colburn LLP - Raytheon 20 Church Street 22nd Floor Hartford, CT 06103 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. 11-1939-US-NP 9479 EXAMINER TECCO, ANDREW M ART UNIT PAPER NUMBER 3721 NOTIFICATION DATE DELIVERY MODE 05/31/2018 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): USPTOPatentMail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LUIS GIRALDO, BENJAMIN DOLGIN, JOHN RY AN, MICHAEL MILLSPAUGH, and EDWARD EDEZELICK1 Appeal 2017-001195 Application 13/303,645 Technology Center 3700 Before JILL D. HILL, LISA M. GUIJT, and PAUL J. KORNICZKY, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Luis Giraldo et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1-9, 11-16, and 18-20. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellant identifies the Real Party in Interest as Raytheon Company. Appeal Br. 1. Appeal 2017-001195 Application 13/303,645 BACKGROUND Independent claims 1, 8, and 14 are pending. Claim 1, reproduced below, illustrates the claimed invention, with certain limitations italicized. 1. An impact element, comprising: a single body drivable into an external element by force acting on a piston head, the single body comprising: a head; and a shaft having a first end integrally coupled to the head, a second end opposite the first end and a central portion interposed between the first and second ends, the second end of the shaft being operatively connectable with the piston head to define a joint located remotely from the head,and the first end of the shaft having a trailing portion with an exterior diameter equal to the exterior diameter of the central portion, a leading portion with an exterior diameter smaller than that of the rear end of the head to form a radially oriented axial face at the rear end of the head and a taper with a singular concave curvature from the trailing portion to the leading portion. REJECTIONS I. Claims 1 and 5-7 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Brennan (US 7,814,822 B2, pub. Oct. 19, 2010) and Krumrei (US 2009/0199613 Al, pub. Aug. 13, 2009). Final Act. 3. II. Claim 2 stands rejected under 35 U.S.C. § I03(a) as unpatentable over Brennan, Krumrei, and Bell (US 5,884,978, pub. Mar. 23, 1999). Final Act. 8. III. Claims 3, 4, 8, 11-14, and 18-20 stand rejected under 35 U.S.C. § I03(a) as unpatentable over Brennan, Krumrei, and Nagai (JP 5- 104457 A, pub. April 1993). Final Act. 8. 2 Appeal 2017-001195 Application 13/303,645 IV. Claims 9, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Brennan, Krumrei, Nagai, and Bell. Final Act. 19. ANALYSIS Rejection I- Claims 1 and 5-7 The Examiner finds that Brennan discloses, inter alia, a single body 104 drivable into an external element by force acting on a piston 108, the single body comprising a shaft integrally coupled to a head 106 and operatively connected with the piston 108. Final Act. 3 (citing Brennan, 3 :9-12 ("impactor element 104 includes a piston 108 and an impactor head 106 for illustrative purposes, although persons skilled in the art will recognize that impactor element 104 can be a unitary member"). Referring to the annotated portion of Brennan's Figure 1 below, the Examiner further finds that the first end of Brennan's shaft has (i) a trailing portion with a diameter equal to an exterior diameter of its central portion, and (ii) a leading portion with an exterior diameter smaller than that of the rear end of the head to form a radially oriented, axial face at the rear end of the head and a taper with a singular concave curvature from the trailing portion to the leading portion. Id. 3 Appeal 2017-001195 Application 13/303,645 106 Id. at 4. The Examiner's annotated Figure 1 of Brennan depicts one end of a breaching apparatus, wherein the Examiner has identified a rear end of a head ( and an exterior diameter thereof), a leading portion with an axial face, a taper, and a trailing portion (with a diameter thereof). Brennan 1 :51-52. The Examiner also finds that, if Brennan is considered to not disclose a second end of the shaft being operatively connected to the piston 108, Krumrei discloses a shaft 36 operatively connectable to a piston 32 to define a joint that is remote from the head 34. Final Act. 5. The Examiner concludes that it would have been obvious to "modify the piston and shaft connection of Brennan with the operatively connectable piston and shaft connection of Krumrei" to "allow a user to easily assemble/disassemble the tool." Id. Appellants argue claims 1 and 5-7 as a group. Appeal Br. 5. We select claim 1 as the representative. Claims 5-7 stand or fall with claim 1. 37 C.F.R. § 4I.37(c)(l)(iv). 4 Appeal 2017-001195 Application 13/303,645 Appellants argue that the Examiner erred in finding that Brennan's impactor 104 is unitary and includes the structure annotated on the portion of Brennan's Figure reproduced above. Appeal Br. 5; Reply Br. 1-3. According to Appellants, the structure of Brennan's Figure 1, depicted above as annotated by the Examiner, is "very clearly likely to have been formed as a peculiar consequence of the impactor 104 being formed of separate parts (i.e., the head 106 and the piston 108)," because the portion labeled by the Examiner above as the "trailing portion" of the shaft's first end is "almost certainly a feature formed when the central bore of the head was opened to make room for the piston 108" and shaft. Id. According to Appellants, it follows that the labeled "trailing portion" would not be created unless the central bore was opened up, and therefore would not be created if the impactor element 104 was a "single body" as claimed. Id. The Examiner responds that, although Brennan's impact element 104 has a composite construction, Brennan explicitly states that "persons skilled in the art will recognize that impactor element 104 can be a unitary member," and does not disclose or suggest that the impact element's shape would differ if the impact element was unitary. Ans. 2 ( citing Brennan 3 :9- 12 (emphasis added)). The Examiner's finding that Brennan discloses the claimed tapered trailing portion and that the impact element can be unitary is supported by a preponderance of the evidence. Appellants' argument that making Brennan's impact element unitary would change its shape such that it would lack a tapered trailing portion is mere attorney argument, as it is not supported by evidence. Arguments of counsel cannot take the place of factually supported objective evidence. See In re Huang, 100 F.3d 135, 139- 40 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). 5 Appeal 2017-001195 Application 13/303,645 Appellants next argue that the "taper" recited in claim 1 has a "singular" concave curvature from the trailing portion to the leading portion, which differs from Brennan's taper and "step-wise feature." Appeal Br. 5. The Examiner responds that Brennan's stepped transition is being modified with Bell's smooth transition "to show how the already existing single concave curvature of the taper of the unitary impact member Brennan could be further modified with a non-step-wise and smooth transitioning curvature as shown in Bell at 31 in figs. 3 and 13." Ans. 4. According to the Examiner "[ t ]hat Bell may have a convex curvature closer to the face of the head is completely irrelevant as it is the concave feature of Brennan that is being modified by the concave curvature of Bell," because the Examiner "is not relying on other disclosed features in Bell." Id. Appellants' argument does not apprise us of error in the Examiner's determination that if Brennan's concave and stepped portions are replaced with the smooth, non-stepped concave portion of Bell, the resulting taper would be a singular concave curvature from the trailing portion to the leading portion. In the Reply Brief, Appellants argue that "Brennan discloses at best a first end of a shaft having a trailing portion with an exterior diameter that is larger than the exterior diameter of the central portion." Reply Br. 3. This argument is not persuasive, because the Examiner proposes to replace the stepped head-to-shaft transition of Brennan with the smooth and non-stepped head-to-shaft transition of Bell. We, therefore, sustain the rejection of Claim 1. Claims 5-7 fall with claim 1. Re} ection II - Claim 2 6 Appeal 2017-001195 Application 13/303,645 Claim 2 depends from claim 1 and recites "the taper with the singular concave curvature of the first end of the shaft is a curvilinear taper that provides for a non-stepwise, smooth and continuous transition from the exterior diameter of the central portion to the exterior diameter of the leading portion." Appeal Br. 7 (Claims App.) ( emphasis added). The Examiner finds that Brennan discloses a taper ( see above annotated portion of Brennan's Figure 1) with a singular concave curvature from the trailing portion to the leading portion, but does not disclose the taper being "curvilinear" or providing a "non-stepwise" transition. Final Act. 8. The Examiner finds, however, that Bell "teaches that it is known to have a curvilinear taper [31] on the back side of the impact element head [30]" as it transitions to a shaft 22. Final Act. 8 (citing Bell Figs. 3, 13; 3 :31-39). The Examiner concludes that it would have been obvious to modify Brennan's taper with the smooth, curvilinear, non-stepwise transition of Bell to "ensure that there were no sharp angular faces where stress could concentrate during impact." Id. Appellants argue that the suggested combination of Brennan and Bell is improper because the claimed invention relates to a taper with the singular concave curvature, and "Bell's teachings relate to a transitional section with both a concave curvature and a convex curvature," such that Bell "cannot be relied upon to modify Brennan given that Bell is silent as to a transitional section with a singular concave curvature" and "lack a singularity in its hybridized structure of multiple structural elements." Appeal Br. 6. As noted above, Brennan's stepped transition is being modified with Bell's smooth transition "to show how the already existing single concave curvature of the taper of the unitary impact member Brennan could be further modified with a non-step-wise and smooth transitioning curvature as 7 Appeal 2017-001195 Application 13/303,645 shown in Bell at 31 in figs. 3 and 13," and "it is the concave feature of Brennan that is being modified by the concave curvature of Bell" (Ans. 4) to create a singular concave curvature of the first end of the shaft that is a curvilinear taper "provid[ing] for a non-stepwise, smooth and continuous transition from the exterior diameter of the central portion to the exterior diameter of the leading portion." Ans. 4. Thus, Appellants' argument does not apprise us of error in the Examiner's determination that if Brennan's concave and stepped portions are replaced with the smooth, non-stepped concave portion of Bell, the resulting taper would be a singular concave curvature providing for a non- stepwise, smooth and continuous transition from the exterior diameter of the central portion to the exterior diameter of the leading portion. We sustain Rejection II. Rejections III and IV- Claims 3, 4, 8, 9, 11-16, and 18-20 Appellants present no separate argument for independent claims 8 and 14, or dependent claims 3, 4, 9, 11-13, 15, 16, and 18-20. Thus, Appellants make no argument that claims 3, 4, 9, 11-13, 15, 16, and 18-20 would be patentable over the cited references if claims 1 is not patentable over Brennan and Krumrei and claim 2 is not patentable over Brennan, Krumrei, and Nagai. Accordingly, for the reasons explained above, we sustain rejections III and IV. DECISION We affirm the rejection of claims 1 and 5-7 under 35 U.S.C. § 103(a) as unpatentable over Brennan and Krumrei. We affirm the rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Brennan, Krumrei, and Bell. 8 Appeal 2017-001195 Application 13/303,645 We affirm the rejection of claims 3, 4, 8, 11-14, and 18-20 under 35 U.S.C. § 103(a) as unpatentable over Brennan, Krumrei, and Nagai. We affirm the rejection of claims 9, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Brennan, Krumrei, Nagai, and Bell. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 9 Copy with citationCopy as parenthetical citation