Ex Parte Green

Patent Trial and Appeal Board

Aug 27, 2015

10447732 (P.T.A.B. Aug. 27, 2015)

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.
10/447,732 05/29/2003 Kevin J. Green GRN.00005US 2656
44914 7590 08/27/2015
BURGESS LAW OFFICE, PLLC
P. O. BOX 214320
AUBURN HILLS, MI 48321-4320
EXAMINER
PETERSON, KENNETH E
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
08/27/2015 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 KEVIN J. GREEN
____________

Appeal 2012-009853
Application 10/447,7321
Technology Center 3700
____________

Before TERRY J. OWENS, JOSEPH A. FISCHETTI, and
JOHN C. KERINS, Administrative Patent Judges.

FISCHETTI, 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 rejection of claims 1–3, 5–7, 9, and 16–18. Claims 4, 8, 10–15, 19, and
20 are withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 Appellant identifies Kevin J. Green as the real party in interest. App. Br. 1.

Appeal 2012-009853
Application 10/447,732
2
THE INVENTION
Appellant claims a fastener used to fasten a pocket or mounting block
to a cutting wheel of a stump cutting apparatus (Spec. ¶ 1).
Claims 5 and 16 reproduced below, are representative of the subject
matter on appeal.
5. A cutting tool for use with a stump cutting apparatus
including a cutting wheel, said cutting tool comprising:
a first tool holder having a side surface for contacting the
cutting wheel and a bore extending through said first tool holder;
a second tool holder having a side surface for contacting
the cutting wheel and a threaded bore extending through said
second tool holder; and
a fastener, said fastener having a shank portion including a
plurality of threads, an engagement portion located at one end of
said shank portion, and a permanent head portion located at the
other end of said shank portion, with said shank portion having a
solid section between said permanent head portion and said
engagement portion, said permanent head portion having a
configuration suitable for receiving a driving tool, said fastener
extending through said first tool holder, the cutting wheel and
threadably received in said second tool holder to removably
secure said first and second tool holders to the cutting wheel.
16. A cutting tool for use with a stump cutting apparatus
including a cutting wheel, said cutting tool comprising:
a tool holder having a side surface for contacting the
cutting wheel and a threaded bore extending through said tool
holder; and
a fastener, said fastener having a shank portion including
a plurality of threads, an engagement portion located at one end
of said shank portion, and a permanent head portion located at
the other end of said shank portion, with said shank portion
having a solid section between said permanent head portion
and said engagement portion, said permanent head portion
having a configuration suitable for receiving a driving tool, said
fastener extending through the cutting wheel and threadably
received in said tool holder to removably secure said tool
holder to the cutting wheel.
Appeal 2012-009853
Application 10/447,732
3

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Kemper US 3,424,212 Jan. 28, 1969
Manning US 4,974,649 Dec. 4, 1990
Miller US 6,095,736 Aug. 1, 2000

The following rejections are before us for review.
Claims 1–3 are rejected under 35 U.S.C. § 102(b) as being anticipated
by Miller2;
Claims 13, 5, and 16 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Manning; and
Claims 5, 6, 9, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Manning in view of Miller.
Claims 5–7, 9 and 16–18 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Manning in view of Miller and Kemper.

FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on page 6-7
concerning only the rejections made under 35 U.S.C. § 103(a).

2 Claims 1–3, 5–7, 9 and 16–18 stand finally rejected. (Final Action dated
April 13, 2011). The Notice of Appeal is silent as to specific claims being
appealed and the Appeal Brief clearly states that not all of the finally—or
twice-rejected—claims are being pursued. (Appeal Br. 2). We instruct the
Examiner to cancel the nonappealed and rejected claims 1–3 on receipt of
this Decision. Ex Parte Ghuman, 88 USPQ2d 1478 (BPAI 2008)
(precedential).

3 See footnote 2 supra.
Appeal 2012-009853
Application 10/447,732
4
ANALYSIS
35 U.S.C. § 102 REJECTION
We will reverse the rejection of claims 5 and 16 under 35 U.S.C.
§ 102.
We begin by construing the scope of the claims. Each of independent
claims 5 and 16 require, “an engagement portion located on said end of said
shank portion… .”. We find that the ordinary and customary definition of
the term “engage” is: to come together and interlock 4.
Thus, with respect to claims 5 and 16, we construe the term “engagement
portion” to be a portion which comes together with another portion and
interlocks with it.
The Examiner found that Manning discloses an engagement portion
because according to the Examiner,
“one could engage the end of Manning's shaft by
welding a torqueing tool onto it, and therefore it is
‘engageable’. … this flat engagement surface
[also] could be engaged by a tapping tool to
facilitate removal. There are numerous other ways
that it could be ‘engaged’ as well, and thus it is
appropriate to call it an ‘engagement portion.’"
(Answer 5-6).
We disagree with the Examiner. As we found supra, the definition of
engagement is “to come together and interlock”. In the scenarios offered by
the Examiner above, the step of welding a torqueing tool would not meet the
claim limitation because the welded joint is not a mechanical interlock such
as found in intermeshing gears. Likewise, in the proposed scenario of the
tapping tool, the tapping tool must first be tapped into the end of the shank,

4 http://www.merriam-webster.com/dictionary/engage (last visited
8/13/2015).
Appeal 2012-009853
Application 10/447,732
5
and thus it is not engagement ready to interlock with the tap without first
being drilled into the end to perform the interlocking. We thus agree with
the Appellant that, “engagement portion”, means something that cooperates
with a tool such that “[w]hen the tool is moved into position, the tool
engages the engagement portion (66) located on the end (64) of the shank
portion (54) with the engagement portion (66) configured to cooperate with
the tool to engage and extract a broken fastener.” (Appeal Br. 9).
Claims 5, 6, 9, 16, and 17 rejected under 35 U.S.C. § 103(a)
We will sustain the rejection of claims 5, 6, 16, and 17 under 35
U.S.C. § 103.
Appellant argues that the obviousness rejection using Manning in
view of Miller is in error asserting, inter alia:
It is apparent from FIG. 2 that a downward facing
shoulder (52) of the housing (12) prevents the stud
(14) – by way of the upward facing shoulder (90) -
from being removed in an axial direction at the
upper opening (32) of the housing (12). If the stud
(14) was able to be removed, the system would not
be able to fasten components together, as
continuous rotation of the stud (14) would result in
the stud (14) merely backing out of the housing
(12) through the upper opening (32) and not
exhibiting the tensile force required to fasten the
components together.
(Appeal Br. 11–12).
The Examiner however maintains that:
Miller can be backed out in just one direction, the
same as Manning and the same as Appellant.
Miller’s bolt head lip (90) abuts the recess lip (52)
in the same way that Manning’s does (see recess
lip in figure 12) and the same way that Appellant’s
does (see recess lip 46). Furthermore, if one was
concerned by Miller’s complexity, one could
Appeal 2012-009853
Application 10/447,732
6
employ only some of Miller’s features, such as by
just adding Miller’s recess (98) to the end of
Manning’s bolt, in order to be able to engage the
bolt from either side (Miller’s lines 31-33, column
1), thus yielding a bolt that is just one piece and
thus not overly complex.
(Answer 9).
We agree with the Examiner that to the extent that Appellant’s claims
do not require removal in two directions, the dual direction characteristic,
along with attendant structure, of Miller’s bolt is superfluous. The Examiner
found, and we agree, that it would be obvious to add only “…Miller's recess
(98) to the end of Manning’s bolt, in order to be able to engage the bolt from
either side… .” Id. Appellant’s argument is thus not persuasive because it
seeks an explanation of how Miller’s bolt would be bodily incorporated into
the system disclosed by Manning, which is not the test for obviousness, nor
is it what the Examiner proposed. See In re Keller, 642 F.2d 413, 425
(CCPA 1981). Since the Examiner only relied on Miller for the teaching of
adding a recess to the opposite end of the bolt in Manning (Answer 6), this
would not require the entirety of the bolt mechanism disclosed by Miller.
We further disagree with Appellant’s argument that the Examiner’s
motivation to combine is deficient (Appeal Br. 11 ) because we find the
findings made by the Examiner in this regard, set forth on pages 6 through 7
of the Answer, to be reasonable.
Claims 5–7, 9, and 16–18
Appellant argues that: “[t]he disclosure of Kemper merely adds a slot
to the head (18) of the screw (13). This would be analogous to adding a slot
to the head of the bolt (132) of Manning (‘649), which is not Applicant's
invention.” (Appeal Br. 16).
Appeal 2012-009853
Application 10/447,732
7
We disagree with Appellant because claim 7 differentiates the shaped
recess of claim 6 as a slot. The Examiner, by citing to Kemper, is properly
meeting the more narrow scope of the dependent claim 7 by citing to the slot
shape of Kemper. The doctrine of claim differentiation “is based on the
common sense notion that different words or phrases used in separate claims
are presumed to indicate that the claims have different meanings and scope.”
Karlin Tech. Inc. v. Surgical Dynamics, Inc. 177 F.3d 968, 971–972 (Fed.
Cir. 1999).
We are also not persuaded by Appellant’s argument that a
“specialized tool (14) with its blade portion (41) and hex portion (42) would
be required to remove/replace the bolt system” (Appeal Br. 16), because
Kemper nevertheless discloses the required slot 23 located in an end face of
the fastener and is provided for the purpose of cooperating with a tool used
to engage and extract the fastener.
New Matter
We will not render a decision on the new matter issue in the record
because there is no rejection of the claims before us on this issue. See
MPEP § 2163.06

CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 5 and 16 under
35 U.S.C. § 102.
We conclude the Examiner did not err in rejecting claims 5–7, 9, and
16–18 under 35 U.S.C. § 103.

Appeal 2012-009853
Application 10/447,732
8
DECISION
The Examiner’s rejection of claims 5–7, 9, and 16–18 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)(1)(iv).
AFFIRMED

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