Ex Parte Green

Board of Patent Appeals and Interferences

Sep 19, 2007

10447732 (B.P.A.I. Sep. 19, 2007)

The opinion in support of the decision being entered 1
today is not binding precedent of the Board. 2
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UNITED STATES PATENT AND TRADEMARK OFFICE 5
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BEFORE THE BOARD OF PATENT APPEALS 8
AND INTERFERENCES 9
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Ex parte KEVIN J. GREEN 12
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Appeal No. 2007-2875 15
Application No. 10/447,732 16
Technology Center 3700 17
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Decided: September 19, 2007 20
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Before WILLIAM F. PATE, III, TERRY J. OWENS, and JOSEPH A. 23
FISCHETTI, Administrative Patent Judges. 24
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PATE, III, Administrative Patent Judge. 26
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DECISION ON APPEAL 29
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STATEMENT OF THE CASE 32
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This is an appeal from the final rejection of claims 1-9 and 16-20. Claims 34
10-15 stand withdrawn from consideration. We have jurisdiction under 35 U.S.C. 35
§§ 134 and 6. 36
Appeal 2007-2875
Application 10/447,732

2

The claimed invention is directed to an extractable fastener that includes a 1
head portion, a shank portion with threads thereon, and an engagement portion 2
formed in the end of the shank portion. A cutting head for use in a stump cutting 3
apparatus which utilizes the extractable fastener is also claimed. 4
Claim 1 reproduced below is further illustrative of the claimed subject 5
matter: 6
1. An extractable faster comprising: 7
a permanent head portion, said permanent head portion having a 8
configuration suitable for receiving a driving tool; 9
a shank portion, having an end; 10
a plurality of threads on said shank portion; and 11
an engagement portion located on said end of said shank portion, said 12
engagement portion configured to cooperate with a tool used to engage and 13
extract said fastener. 14
15
The references of record relied upon the Examiner as evidence of 16
anticipation and obviousness are: 17
Manning US 4,974,649 Dec. 4, 1990 18
Grünbichler US 5,713,705 Feb. 3, 1998 19
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Claims 1-9 and 16-20 stand rejected under 35 U.S.C. § 112, first paragraph, 21
as failing to comply with the written description requirement. 22
Claims 1-4 stand rejected under 35 U.S.C. § 102(b) as anticipated by 23
Grünbichler. 24
Claims 5-9 and 16-20 stand rejected under 35 U.S.C. § 103 as unpatentable 25
over Manning in view of Grünbichler. 26
ISSUES 27
The issues for our consideration in this appeal are whether the Appellant has 28
established the Examiner erred in rejecting claims 1-9 and 16-20 under 35 U.S.C. § 29
Appeal 2007-2875
Application 10/447,732

3

112, first paragraph; whether the Appellant has established that the Examiner erred 1
in rejecting claims 1-4 under 35 U.S.C. § 102(b); and whether the Appellant has 2
established that the Examiner erred in rejecting claims 5-9 and 16-20 under 35 3
U.S.C. § 103. 4
FINDINGS OF FACT 5
The following are our findings of fact with respect to the scope and content 6
of the prior art and the differences between the prior art and the claimed subject 7
matter. Grünbichler discloses a tamper-proof bolt. As shown in Figure 1, 8
Grünbichler shows a permanent head portion 2, a threaded shaft section or shank 1 9
and an engagement portion 6 located on the end of the shank portion. Grünbichler 10
also discloses a torque head formed on the permanent clamping head of the 11
fastener. The torque head 3 is supplied with a circular hole 5 that extends down 12
through the torque head. As the fastener is tightened the torque head 3 detaches 13
from the permanent head 2 leaving the permanent head which is shaped so as to 14
prevent the permanent head from being tampered with or removed with pliers or 15
the like. (Grünbichler, col. 3, ll. 11-25). When it is desired to remove the tamper-16
proof fastener, a drill bit is placed in the slight indentation left from the removal of 17
the cylindrical aperture 5 of torque head 3 and a hole is drilled through the shank 18
portion whereby a tool engages the engagement portion 6 and the fastener is 19
removed. (Grünbichler, col. 3, ll. 26-28). 20
We note the specific language of Grünbichler which states that a torque head 21
is “formed on the permanent clamping head” (Grünbichler, col. 2, l. 7 or col. 5, l. 22
46). 23
Manning discloses a stump cutting machine having a circular cutting wheel 24
12. Cutting teeth 42, 44 are placed along the periphery of the cutting wheel. The 25
cutting teeth are held in position by first and second holder members 46 and 48 26
Appeal 2007-2875
Application 10/447,732

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which clamp the allochiral cutting teeth 42 and 44 to the respective sides of the 1
cutting wheel 12. Each holder 46, 48 has two through bores with one bore being 2
threaded and the other bore being countersunk for the reception of a bolt head of 3
bolt 130, 132. Manning makes no provision for the removal of a broken bolt 130 4
or 132. Presumably, if only the bores in the holder are threaded, when one bolt 5
130 or 132 is sheared, the other bolt can be removed and the two holders would 6
come away from the wheel. However, there would be no mechanism to remove 7
the fastener 130 from the holder 46 or 48. Manning differs from the prior art in 8
that it does not show an engagement portion located at the end of the shank portion 9
of bolts 130 and 132 to cooperate with a tool used to engage and extract the bolt 10
130 or 132. 11
PRINCIPLES OF LAW 12
Whether a specification complies with the written description 13
requirement of § 112, ¶ 1, is a question of fact, which we review for clear 14
error on appeal from a bench trial. Vas-Cath Inc. v. Mahurkar, 935 F.2d 15
1555, 1563, 19 USPQ2d 1111, 1116 (Fed.Cir.1991); Ralston Purina Co. v. 16
Far-Mar-Co, Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 17
(Fed.Cir.1985). To fulfill the written description requirement, a patent 18
specification must describe an invention and do so in sufficient detail that 19
one skilled in the art can clearly conclude that “the inventor invented the 20
claimed invention.” Lockwood v. American Airlines, Inc., 107 F.3d 1565, 21
1572, 41 USPQ2d 1961, 1966 (1997); In re Gosteli, 872 F.2d 1008, 1012, 22
10 USPQ2d 1614, 1618 (Fed.Cir.1989) (“[T]he description must clearly 23
allow persons of ordinary skill in the art to recognize that [the inventor] 24
invented what is claimed.”). Thus, an applicant complies with the written 25
description requirement “by describing the invention, with all its claimed 26
limitations, not that which makes it obvious,” and by using “such descriptive 27
means as words, structures, figures, diagrams, formulas, etc., that set forth 28
the claimed invention.” Lockwood, 107 F.3d at 1572, 41 USPQ2d at 1966. 29
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Regents of Univ. of Cal. v. Eli Lilly and Co., 119 F.3d 1559, 1566, 43 USPQ2d 31
1398, 1404 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089 (1998). 32
Appeal 2007-2875
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It is important to note that "[t]he invention is, for purposes of the ‘written 1
description’ inquiry, whatever is now claimed.” Vas-Cath, 935 F.2d at 1564, 19 2
USPQ2d at 1117. 3
The prior art may anticipate a claimed invention, and thereby render it 4
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig., 301 F.3d 5
1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 U.S. 907 6
(2003). Express anticipation occurs when the prior art expressly discloses each 7
limitation (i.e., each element) of a claim. Id. In addition, “[i]t is well settled that a 8
prior art reference may anticipate when the claim limitations not expressly found in 9
that reference are nonetheless inherent in it.” Id. 10
In Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 11
(1966), the Supreme Court set out a framework for applying the statutory language 12
of § 103: 13
[T]he scope and content of the prior art are to be determined; differences 14
between the prior art and the claims at issue are to be ascertained; and the 15
level of ordinary skill in the pertinent art resolved. Against this background 16
the obviousness or nonobviousness of the subject matter is determined. Such 17
secondary considerations as commercial success, long felt but unsolved 18
needs, failure of others, etc., might be utilized to give light to the 19
circumstances surrounding the origin of the subject matter sought to be 20
patented.” [Id., at 17-18, 148 USPQ at 467.] 21
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“While the sequence of these questions might be reordered in any particular case, 23
the factors continue to define the inquiry that controls. If a court, or patent 24
examiner, conducts this analysis and concludes the claimed subject matter was 25
obvious, the claim is invalid or unpatentable under § 103.” See KSR Int’l v. 26
Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1391 (2007). “To facilitate 27
review this analysis should be made explicit.” Id. at 1741, 82 USPQ2d at 1396. It 28
can be important to identify a reason that would have prompted a person of 29
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ordinary skill in the relevant field to combine the elements in the way the claimed 1
invention does. This is so because inventions in most, if not, all cases rely upon 2
building blocks long since uncovered. Id. 3
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ANALYSIS 5
Turning first to the rejection based on 35 U.S.C. § 112, for lack of written 6
description support, we agree that one of ordinary skill would clearly conclude 7
from Appellant’s Specification that Appellant was in possession of the subject 8
matter of a fastener with a head that was not intended to be removed from the 9
shank. That circumstances exist in which the head is removed due to unintended 10
consequences of use does not show that Appellant lacks written descriptive support 11
for a permanent fastener head. The rejection of claims 1-9 and 16-20 under § 112, 12
first paragraph, is reversed. 13
Turning to the anticipation rejection of claims 1-4, we quoted the language 14
from the Grünbichler patent which states that Grünbichler has a permanent 15
clamping head 2 with a torque head 3 being “formed” thereon. It is noted that 16
Appellant’s claims refer to a permanent head portion having a “configuration” 17
suitable for receiving a drive tool. Appellant’s Specification does not define the 18
term “configuration.” Accordingly, we give this term its broadest reasonable 19
interpretation. As such, in our view “configuration” is extremely broad in that it 20
refers to something that has been configured, shaped, or formed. We believe that 21
the torque head shown by Grünbichler has been configured or formed and can be 22
considered a “configuration”, since Grünbichler states the permanent head portion 23
has a torque head suitable for receiving a driving tool “formed” thereon. 24
Consequently, we find that Grünbichler anticipates claims 1-4. 25
Appeal 2007-2875
Application 10/447,732

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With respect to the rejection of the claims on obviousness grounds, we note 1
the argument of the Appellant that it would not have been obvious to use the 2
fastener of Grünbichler in the stump cutter of Manning. We agree. As noted 3
above in our Findings of Fact, Grünbichler is directed to a tamper-proof or 4
inherently non-removable bolt or screw. It is unclear to us why a person of 5
ordinary skill would use such a tamper-proof or non-removable fastener in the 6
stump cutter disclosed in Manning. The bolts 132, 134 are provided in Manning so 7
that the cutters 42, 44 may be exchanged when they become dull or broken. The 8
use of a tamper-proof or non-removable bolt simply makes this procedure more 9
cumbersome or inconvenient to the user. For this reason, it is our view that one of 10
ordinary skill would not have found it obvious to replace the conventional bolt of 11
Manning with the tamper-proof, non-removable bolt or screw disclosed by 12
Grünbichler. Accordingly, we reverse the rejection of claims 5-9 and 16-20 under 13
35 U.S.C. § 103. 14
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CONCLUSION 16
The rejection of claims 1-9 and 16-20 under 35 U.S.C. § 112 is reversed. 17
The rejection of claims 1-4 under 35 U.S.C. § 102(b) as anticipated by 18
Grünbichler is affirmed. 19
The rejection of claims 5-9 and 16-20 under 35 U.S.C. § 103 as unpatentable 20
over Manning in view of Grünbichler is reversed. 21
Appeal 2007-2875
Application 10/447,732

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No time period for taking any subsequent action in connection with this 1
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006). 2
AFFIRMED-IN-PART 3
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