Ex Parte Heaphy et al

Patent Trial and Appeal Board

Feb 24, 2016

12988494 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/988,494 11/29/2010
29855 7590 02/26/2016
Blank Rome LLP
717 Texas Avenue, Suite 1400
Houston, TX 77002
FIRST NAMED INVENTOR
Paul Lindsay Heaphy
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.
968-0018US 1964
EXAMINER
MASINICK, JONATHAN PETER
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
02/26/2016 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL LINDSAY HEAPHY, CAMERON WAYNE RADEL, and
DEREK ADOLF MULDER1
Appeal2014-002017
Application 12/988,494
Technology Center 3600
Before MICHAEL C. ASTORINO, ROBERT L. KINDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-8. Claim 9 is cancelled. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is "CQMS Pty Ltd (of
Australia)." App. Br. 3.
Appeal2014-002017
Application 12/988,494
STATEMENT OF THE CASE
Appellants' Invention
Appellants' "invention relates to a lock assembly for releasably
securing an excavator tooth to a nose of an excavator." Spec. 1, 11. 5-7.
Claim 1 is the only independent claim and is illustrative of the
claimed subject matter:
1. A lock assembly for releasably securing an excavator
tooth to a nose of an excavator, the lock assembly comprising:
a rigid lock member having a base portion and a retaining
portion extending from said base portion, the base
portion adapted to be located in a retaining cavity of the
nose and the retaining portion adapted to at least partially
extend into a retaining aperture of the wear member; and
a resiliently deformable lock member, in use, adapted to be
located within the retaining cavity of the nose to abut an
upper face of the rigid lock member such that side walls
of the retaining portion of the rigid lock member bear
against complimentary side walls of the retaining
aperture of the wear member to thereby captively retain
the base portion of the rigid lock member in the retaining
cavity and the retaining portion at least partially within
the retaining aperture such that side walls of the retaining
portion of the rigid lock member bear against
complimentary side walls of the retaining aperture of the
wear member and opposed bearing faces of the base
portion of the rigid lock member oppose and engage
respective side walls of the retaining cavity of the nose of
the excavator to thereby releasably secure the wear
member to the nose of the excavator.
App. Br. 10, Claims App'x.
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Application 12/988,494
Examiner's Rejection
The following rejections are before us for review.
I. The Examiner rejected claims 1, 3, 4, and 8 under 35 U.S.C.
§ 102(b) based on Matthews (US 5,806,215, issued Sept. 15, 1998).
Final Act. 2 (mailed Feb. 28, 2013).
II. The Examiner rejected claim 2 under 35 U.S.C. § 103(a) as
unpatentable over Matthews and Beckershoff (US 3,986,779, issued
Oct. 19, 1976). Id. at 4.
III. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Matthews and Banno (US 7 ,226,023 B2, issued
June 5, 2007). Id. at 5.
IV. The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a)
as unpatentable over Matthews, Banno, and Kulle (US 4,235,344,
issued Nov. 25, 1980). Id. at 5.
ANALYSIS
We affirm the Examiner's final rejection of claims 1, 3, 4, and 8 under
35 U.S.C. § 102(b) and claims 2, 5, 6, and 7 under 35 U.S.C. § 103(a). We
adopt as our own the findings and reasons set forth by the Examiner in the
Examiner's Answer in response to Appellants' Appeal Brief. We concur
with the conclusions reached by the Examiner. We further highlight and
address specific findings and arguments for emphasis as follows.
Rejection I
Anticipation of Claim 1 by Matthews
We have considered Appellants arguments but find them
unpersuasive. See App. Br. 5-7; see also Reply Br. 5. Appellants contend
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Application 12/988,494
that Matthews fails to disclose the claim 1 requirement of:
side walls of the retaining portion of the rigid lock member bear
against complimentary side walls of the retaining aperture of
the wear member to thereby captively retain the base portion of
the rigid lock member in the retaining cavity and the retaining
portion.
App. Br. 5 (emphasis omitted). Appellants argue the Examiner has failed to
identify any teaching of Matthews relating to the limitation
requiring that engagement between the side walls of the rigid
lock member and the retaining aperture of the wear member
captively retain the base portion of the rigid lock member with
the retaining portion at least partially within the retaining
aperture.
Id. at 5-6, see also Reply Br. 5---6 (repeating the contention that Matthews
fails to disclose the disputed limitation but not persuasively addressing the
Examiner's Answer). Appellants contend "the recited limitation is
fundamentally and patentably distinct from the way Matthews operates."
Appellants offer two distinct interpretations of how they believe the
Examiner has mapped Matthews to the disputed claim limitations.
With the first interpretation, Appellants contend that "lower face of
flange 29 engages an upper face of nose," and "[t]his upper face is not a side
wall of a retaining aperture." App. Br. 7. Appellants reason that "Matthews
teaches a retaining arrangement in which the captive retainer is effected by
engagement of surfaces that are not within the retaining aperture." Id.
With the second interpretation, Appellants contend that the
"Examiner's rejection is that the central portion of lock member 34, i.e., that
portion located between upper flange 29 and lower flange 33, is the retaining
portion." Id. Under this interpretation, Appellants argue "Matthews lock
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Application 12/988,494
simply does not operate in that fashion," because even if "the face of central
portion 34 may engage with the side wall of the retaining aperture, it is not
this engagement that captively retains the lock member within the aperture."
Id.
The Examiner disagrees with the Appellants' interpretations. Ans. 4.
The Examiner finds "the claim's 'retaining portions' [correspond to] the
upper or lower shouldered/flanged portions of the rigid lock members (29
and 30)." Ans. 5 (referring to annotated Fig. 5). The Examiner further finds
"the claim's 'base portion' [correspond to] the middle portion of the rigid
lock member (29 or 30) without the shoulders/flanges." Id. In response to
Appellants' contention that Matthews fails to disclose the claim requirement
of "side walls of the retaining portion of the rigid lock member bear against
complimentary side walls of the retaining aperture of the wear member,"
(claim 1) the Examiner finds "the disclosure of Matthews clearly states that
'the shoulders 32 and 33 engage the side edges 34 of the opening at the
aperture' in column 4, lines 60-62." Final Act. 7.
The Examiner persuasively establishes that Matthews discloses each
challenged claim element. See Ans. 3---6. Further, we find the Examiner's
annotated Figure 5 (see Ans. 5) and corresponding explanation persuasive as
to how Matthews reads upon the elements of claim 1. See, e.g., Ans. 4
("wherein the side walls (outward-directed surfaces) of the retaining portion
of the rigid lock member (29, 30) bear against complimentary side walls of
the retaining aperture"). We agree with the Examiner's finding "that
inserting the resilient deformable member (31) between the rigid lock
members (29 and 30) captively retains the base portion (middle portion
between the upper and lower flanges) of the rigid lock members in the
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Application 12/988,494
retaining cavity and the retaining portion (upper and lower flanged sections)
at least partially within the retaining aperture." Id. (referring to Matthews
Fig. 5).
Appellants' contention that "the face of central portion 34 [of
Matthews] may engage with the side wall of the retaining aperture, [but] it is
not this engagement that captively retains the lock member within the
aperture" fails to adequately address the findings made by the Examiner.
App. Br. 7. For example, this argument fails to persuasively explain why
Matthews' disclosure "that the shoulders 32 and 33 engage the side edges 34
of the opening at the aperture surrounds and the holding member 29 assumes
its operative attitude" cannot be considered as retaining the base portion of
the rigid lock. Matthews, col. 4, 11. 58---63. The claims require "that the side
walls ... bear against complimentary side walls" to captively retain the base
portion. App. Br. 10, Claims App'x. Matthews' shoulders, or walls,
"engage," which is synonymous with bear against, and we agree with the
Examiner that this engagement aids in the retainment of the base portion.
Although not specifically addressed by Appellants, the fact that other
structures in Matthews also aid in captively retaining the lock in the
retaining cavity does not negate the disclosure that the walls also engage to
form an interference fit. See Matthews, col. 5, 11. 9-13 ("side lugs 36 are
urged into locking apertures 37").
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 1under35 U.S.C. § 102(b). We also sustain the rejection
of claims 3, 4, and 8 under 35 U.S.C. § 102(b). Each of these claims
depends from claim 1 and was not argued separately with specificity.
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Rejections 11-IV
Obviousness of Claims 2 and 5-7
Appellants do not argue claims 2 and 5-7 with specificity, but instead
contend that "[b] ecause [the] rejection [of claim 1] is improper for at least
the reasons set forth above, the obviousness rejection of claim 2 is also
improper." App. Br. 8-9 (making the same argument for each of claims 5-
7).
At page 6 of the Reply Brief, Appellants make new arguments not
previously presented. In particular, Appellants argue with respect to claim 2
the rejection "is improper as the combination of Matthews and Beckershoff
would result in a combination that would be unable to fulfill its intended
purpose." Reply Br. 6. With respect to claim 5, Appellants argue that
rejection "of claim 5 is improper as the combination of Matthews and Banno
can in no way result in a resiliently deformable lock member having at least
one aperture extending from a front face thereof to a rear face of the
resiliently deformable lock member." Id. Appellants failed to raise these
arguments in their initial briefing. Likewise, the Examiner did not raise
these issues in the Answer. See Ans. 6 ("Examiner acknowledges
Appellant's position that the remaining claims are patentable because of
their dependency on claim 1 and notes that the rejections of these claims
have not otherwise been separately argued."). We therefore consider these
arguments waived pursuant to 37 C.F.R. § 41.41(b)(2) because Appellants
have not explained why, nor is it apparent that, these arguments were
necessitated by a new point in the Examiner Answer or any other
circumstance constituting "good cause" for its belated presentation. See also
Ex parte Borden, 93 USPQ2d 14 73, 14 7 4 (BP AI 2010) (Informative)
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Application 12/988,494
("[T]he reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner's
rejections, but were not.").
Accordingly, for the reasons set forth above for claim 1, we sustain
the Examiner's rejection of claims 2 and 5-7 under 35 U.S.C. § 103.
DECISION
We AFFIRM the Examiner's decision to reject claims 1-8.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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