Ex Parte Hagan

Board of Patent Appeals and Interferences

Jan 12, 2011

11082002 (B.P.A.I. Jan. 12, 2011)

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.
11/082,002 03/16/2005 Todd A. Hagan 0275A-000986 6638
27572 7590 01/12/2011
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
NASH, BRIAN D
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
01/12/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TODD A. HAGAN
____________

Appeal 2009-009157
Application 11/082,002
Technology Center 3700
____________

Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

Appeal 2009-009157
Application 11/082,002

2
STATEMENT OF THE CASE
Todd A. Hagan (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 14-16, 18-21, and 23 under
35 U.S.C. § 102(b) as anticipated by Weinstein (U.S. Patent No. 5,558,264,
issued Sep. 24, 1996). The Examiner objected to claims 8-10, 17, and 22 as
being dependent upon a rejected base claim, but as otherwise allowable if
rewritten in independent form to include the subject matter of the base claim
and any intervening claims. On Jan. 12, 2009, the Examiner issued an
Examiner’s Amendment cancelling claims 1-7 and 11-13 pursuant to an
Order Returning Undocketed Appeal to Examiner mailed Dec. 24, 2008. In
addition, the Examiner withdrew the nonstatutory obviousness-type double
patenting rejection in consideration of the filing of a Terminal Disclaimer.
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to a fastening tool including a housing
assembly and a magazine assembly. The housing assembly includes a
nosepiece. The magazine assembly is coupled to the housing assembly and
includes a canister configured to hold a plurality of collated fasteners.
Claims 14 and 19, reproduced below in pertinent part and with
emphasis added, are representative of the subject matter on appeal.
14. A fastening tool comprising:
. . . . ; and
a feeder pawl assembly coupled to the
magazine assembly and including a feed pawl and
a spreader pawl, the feed pawl movable to engage
a first fastener of the collated fasteners and
advance the first fastener into the nosepiece during
a feed motion, the spreader pawl locating between
a pair of subsequent fasteners of the collated
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Application 11/082,002

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fasteners and at least partially inhibiting movement
of one of the subsequent fasteners toward the
nosepiece during the feed motion.

19. A fastening tool comprising:
. . . .
a plurality of collated fasteners;
. . . .; and
a feeder pawl assembly coupled to the
magazine assembly and comprising:
a feed pawl having a feed tooth for locating
a feed tooth width between a first pair of adjacent
fasteners, the feed tooth operable in a feed
direction to advance a fastener of the first pair
toward the nosepiece during a feed motion; and
a spreader pawl having a spreader tooth
adapted to locate between a first gap defined
between a second pair of adjacent fasteners, the
first gap being smaller than the feed tooth width,
the spreader pawl resisting movement of an
engaged fastener of the second pair in the feed
direction during the feed motion and thereby
defining a second gap between the second pair of
adjacent fasteners, the second gap having a space
suitable to accept the feed tooth width of the feed
tooth therebetween.

OPINION
Issues
The determinative issues in this appeal are:
(1) Did the Examiner err in interpreting Weinstein to disclose a
“spreader pawl . . . at least partially inhibiting movement of one of the
subsequent fasteners toward the nosepiece during the feed motion” (App.
Br., Claims App’x.) as recited in claim 14?
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Application 11/082,002

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(2) Did the Examiner err in interpreting Weinstein to disclose a
“spreader pawl resisting movement of an engaged fastener of the second pair
in the feed direction during the feed motion and thereby defining a second
gap between the second pair of adjacent fasteners, the second gap having a
space suitable to accept the feed tooth width of the feed tooth therebetween”
(App. Br., Claims App’x.) as recited in claim 19?
Analysis
Issue 1
Appellant contends that the spreader pawl or holding claw 250 of
Weinstein does not satisfy claim 14’s language of “at least partially
inhibiting movement of one of the subsequent fasteners toward the
nosepiece during the feed motion” (App. Br., Claims App’x.) because “the
holding claw (250) simply pivots out of the way of the nails (N) that are
advanced in the feed direction.” App. Br. 7. More particularly, Appellant
contends that “[t]he holding claim [sic: claw] (250) only engages a fastener
at FIGS. 4 and 5 to resist movement of the nail (N) in a direction opposite
the feed direction; and at FIG. 6 when it ramps over the same fastener being
fed (i.e. not a subsequent fastener as provided in claim 14).” 2nd Reply Br.
2.2

2 On Apr. 24, 2008, Appellant filed a Reply Brief (1st Reply Br.) in response
to the Examiner’s Answer (1st Ans.) mailed Feb. 28, 2008. On Dec. 24,
2008, an Order Returning Undocketed Appeal to Examiner (Order) was
mailed requiring the Examiner to cancel claims in accordance with Ex parte
Ghuman and to consider a Terminal Disclaimer filed on Nov. 29, 2007. The
Examiner responded to the Order with an Examiner’s Amendment mailed
Jan. 12, 2009 and a second Examiner’s Answer (2nd Ans.) mailed Mar. 30,
2009. On May 5, 2009, Appellant filed a second Reply Brief (2nd Reply Br.)
in response to the second Examiner’s Answer.
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Application 11/082,002

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The Examiner’s position is that Weinstein anticipates claim 14 and
points to column 5, lines 25-40 as providing support for the language of “the
spreader pawl locating between a pair of subsequent fasteners of the collated
fasteners and at least partially inhibiting movement of one of the subsequent
fasteners toward the nosepiece during the feed motion.” 2nd Ans. 4. As
noted above, Appellant argues that Weinstein does not perform the same
function as the claimed invention. See App. Br. 7. The Examiner argues
that Weinstein clearly shows all of the recited structural features including a
spreader pawl “clearly capable of resisting or partially inhibiting movement
of one of the adjacent fasteners toward the nosepiece in a feed direction
during the feed operation.” 2nd Ans. 5. The Examiner then posits that
“[w]hile it is noted that the device of Weinstein may not perform the same
function or in the same manner as [Appellant’s] invention, it is deemed that
the claims are not restrictive to such device.” Id.
A patent applicant is free to recite features of an apparatus either
structurally or functionally. See In re Swinehart, 439 F.2d 210, 212 (CCPA
1971) (“[T]here is nothing intrinsically wrong with [defining something by
what it does rather than what it is] in drafting patent claims.”). As stated in
Swinehart, 439 F.2d at 213:
[W]here the Patent Office has reason to believe
that a functional limitation asserted to be critical
for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of
the prior art, it possesses the authority to require
the applicant to prove that the subject matter
shown to be in the prior art does not possess the
characteristic relied on.

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Nevertheless, before an applicant can be put to this burdensome task, the
examiner must provide sufficient evidence or scientific reasoning to
establish the reasonableness of the Examiner’s belief that the functional
limitation is an inherent characteristic of the prior art. The fact that a certain
result or characteristic may occur or be present in the prior art is not
sufficient to establish the inherency of that result or characteristic. In re
Rijckaert, 9 F.3d 1531, 1534 (Fed. Cir. 1993).
Weinstein discloses a fastener-driving tool 10 designed to drive
fasteners, such as nails N, from a coiled strip S. Col. 3, ll. 20-24. The tool
10 includes a generally hollow housing structure 12 mounting a fastener-
feeding mechanism 20 for feeding nails N into the tool 10. Col. 3, ll. 38-44.
The tool includes a cylinder body 30 mounted within the housing structure
12. Col. 3, ll. 50-52. The tool 10 includes a nosepiece 50 mounted to the
cylinder body 30 and to which the feeding mechanism 20 is mounted. Col.
4, ll. 1-4. The nosepiece functions for receiving a nail N from the feeding
mechanism 20 and for guiding the nail N as it is driven by a driving blade
42. Col. 4, ll. 5-8. The fastener-feeding mechanism 20 includes a canister
200 having a fixed portion 202 fixed to the housing structure 12 and the
nosepiece 50 and a pivotable portion 204 which may be pivoted to an open
position for loading a coiled strip S into the canister 200. Col. 4, ll. 31-41.
The fastener-feeding mechanism 20 includes a feeding claw 240 mounted to
a piston pin 242 so as to be movable between withdrawn and advanced
positions by a feeding piston 230. Col. 4, ll. 63-66. The feeding claw 240
has notched end fingers 246 adapted to engage one of the nails N of the strip
S to advance the strip S when the feeding claw 240 is moved from the
withdrawn position to the advanced position. Col. 5, ll. 8-14. The fastener-
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feeding mechanism 20 also includes a holding claw 250 which is biased in
an engaging position as shown in Figs. 4 and 5 and a disengaging position as
shown in Fig. 6. Col. 5, ll. 23-31. The holding claw 250 has distal end
fingers 260 adapted to fit between two nails N of the strip S to engage the
preceding nail N and to hold the engaged nail N so that the strip S including
the engaged nail N does not move with the feeding claw 240 when the
feeding piston 230 moves from the withdrawn position to the advanced
position. Col. 5, ll. 31-39.
We agree with Appellant that Weinstein’s spreader pawl or holding
claw 250 does not function to “at least partially inhibiting movement of one
of the subsequent fasteners toward the nosepiece during the feed motion” as
recited in claim 14. The Examiner’s position that Weinstein is “clearly
capable of resisting or partially inhibiting movement of one of the adjacent
fasteners toward the nosepiece in a feed direction during the feed operation”
(Ans. 3) is flawed because the above-quoted language of claim 14 is not a
recitation of intended use that the reference only needs be capable of
performing. Rather, the language is functional language and the Examiner
has failed to provide sufficient evidence or scientific reasoning to establish
the reasonableness of the belief that the functional limitation is an inherent
characteristic of the prior art. Indeed, the Examiner has admitted in the
Response to Arguments section of the Examiner’s Answer, that Weinstein’s
fastener-driving tool 10 may not perform the same function or in the same
manner as Appellant’s claimed invention. Accordingly, we are not
convinced that there is a sufficient disclosure in Weinstein and evidence or
scientific reasoning from the Examiner to support a finding that Weinstein
inherently performs the recited function to anticipate claim 14.
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Application 11/082,002

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In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 14-16 and 18 under 35 U.S.C. § 102(b) as anticipated by
Weinstein.
Issue 2
Appellant contends that the spreader pawl or “holding claw 250 of
Weinstein merely rides over the same fastener N that is engaged by the feed
pawl 240 … [and] does not locate between a second pair of adjacent
fasteners to resist movement of an engaged fastener of the second pair
creating a second gap.” App. Br. 9. Appellant also contends that when the
spreader pawl or holding claw 250 is in the position illustrated in Fig. 6 of
Weinstein, the holding claw 250 is directly engaged with the same fastener
as the feed pawl 240 so that the holding claw 250 cannot define a second gap
between a second pair of adjacent fasteners during movement of the feed
pawl 240 in the feed direction as required by claim 19. App. Br. 9-10.
Appellant also contends that as shown in Figs. 4-6 of Weinstein, the gaps
between all fasteners N never change during the sequence. 2nd Reply Br. 3.
The Examiner’s position is that Weinstein anticipates claim 19 since
the holding claw or spreader pawl 250 has a spreader tooth 260 “capable of
locating a gap between a second pair of adjacent fasteners (see sequence of
Figs[.] 4-6) and clearly capable of resisting movement of an engaged
fastener in a feed direction during the feed operation and wherein the gap
located by the spreader tooth is suitable to accept the width of the feed tooth
(246).” 2nd Ans. 4. As with claim 14, the Examiner also posits that “[w]hile
it is noted that the device of Weinstein may not perform the same function or
in the same manner as [Appellant’s] invention, it is deemed that the claims
are not restrictive to such device.” 2nd Ans. 5.
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Weinstein is discussed supra.
We agree with Appellant that Weinstein does not meet claim 19’s
functional language of the spreader pawl “resisting movement of an engaged
fastener of the second pair in the feed direction during the feed motion and
thereby defining a second gap between the second pair of adjacent fasteners,
the second gap having a space suitable to accept the feed tooth width of the
feed tooth therebetween.” The Examiner has failed to provide sufficient
evidence or scientific reasoning to establish the reasonableness of the belief
that the functional limitation is an inherent characteristic of the prior art.
Again, the Examiner has admitted in the Response to Arguments section of
the Examiner’s Answer that Weinstein’s fastener-driving tool may not
perform the same function or in the same manner as Appellant’s claimed
invention. As such, we are not convinced that there is a sufficient disclosure
in Weinstein and evidence or scientific reasoning from the Examiner to
support a finding that Weinstein inherently performs the recited function to
anticipate claim 19.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 19-21 and 23 under 35 U.S.C. § 102(b) as anticipated by
Weinstein.
CONCLUSIONS
The Examiner erred in interpreting Weinstein to disclose a “spreader
pawl . . . at least partially inhibiting movement of one of the subsequent
fasteners toward the nosepiece during the feed motion” as recited in claim
14.
The Examiner erred in interpreting Weinstein to disclose a “spreader
pawl resisting movement of an engaged fastener of the second pair in the
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Application 11/082,002

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feed direction during the feed motion and thereby defining a second gap
between the second pair of adjacent fasteners, the second gap having a space
suitable to accept the feed tooth width of the feed tooth therebetween” as
recited in claim 19.

DECISION
We reverse the Examiner’s decision to reject claims 14-16, 18-21, and
23 under 35 U.S.C. § 102(b) as anticipated by Weinstein.

REVERSED

Klh

HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303