Ex Parte Heinemann et alDownload PDFPatent Trial and Appeal BoardFeb 19, 201612711791 (P.T.A.B. Feb. 19, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 121711,791 02/24/2010 11943 7590 02/23/2016 O""Shea Getz P.C. 10 Waterside Drive, Suite 205 Farmington, CT 06032 FIRST NAMED INVENTOR Kurt R. Heinemann 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. PA-0011078-U 1412 EXAMINER BEEBE, JOSHUA R ART UNIT PAPER NUMBER 3745 NOTIFICATION DATE DELIVERY MODE 02/23/2016 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): uspto@osheagetz.com shenry@osheagetz.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KURT R. HEINEMANN and MARK DAVID RING Appeal2014-001338 Application 12/711,791 Technology Center 3700 Before JILL D. HILL, THOMAS F. SMEGAL, and ERIC C. JESCHKE, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Kurt R. Heinemann and Mark David Ring (Appellants) seek review, under 35 U.S.C. § 134(a), of the Examiner's decision to reject claims 1, 2, 4, 5, 7-11, 13, 14, and 16-22. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The disclosed subject matter "relates to fastener apertures in general, and fastener apertures having an elongated geometry in particular." Spec. i-f 1. Claims 1, 10, and 19 are independent. Claim 1 is reproduced below, with emphasis added: Appeal2014-001338 Application 12/711,791 1. An apparatus, comprising: a substrate having one or more fastener apertures that extend therethrough, each fastener aperture having a centerline and comprising: first and second circular segmented regions, each circular segmented region having a center, a diameter and a segment length that extends along the centerline, wherein the segment length is greater than one-half the diameter; and a central channeled region that extends along the centerline between the first and the second circular segmented regions, which central channeled region has a height that is less than each of the diameters of the first and the second circular segmented regions; wherein each circular segmented region has a wall surface that extends around the center between a first end and a second end, and a chord line plane extending between the first end and second end; wherein the central channeled region has a length that extends along a centerline between the chord line plane of the first segmented region and the chord line plane of the second segmented region, which length is greater than each of the diameters of the first and the second circular segmented regions, and which length is less than the sum of the diameters of the first and the second segmented region. 2 Appeal2014-001338 Application 12/711,791 REJECTIONS ON APPEAL 1. Claims 1, 2, 4, 5, 7-11, 13, 14, and 16-19 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1, 2, 4, 5, 7-11, 13, 14, and 16-19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bussieres (US 2006/0188375 Al, published Aug. 24, 2006) and design choice. 3. Claims 20-22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Bussieres, design choice, and Kalpakjian (Serope Kalpakjian & Steven R. Schmid, Manufacturing Processes for Engineering Materials, pp. 454--55, 466-67 (4th ed. 2003)). DISCUSSION Rejection 1- The rejection of claims 1, 2, 4, 5, 7-11, 13, 14, and 16--19 under 35 U.S. C. § 112, first paragraph The Examiner finds that the Specification does not provide written description support for the limitation, in each of the independent claims, requiring that the length of the "central channeled region" "is less than the sum of the diameters of the first and the second segmented region." See Ans. 3--4; Br. 13 (claim 1 ), 14 (claim 10), 16 (claim 19, which recites "circular apertures" rather than "segmented region"); see also Spec., Fig. 3A (showing length 82 of channeled region 52, diameter 56 of first segmented region 48, and diameter 58 of second segmented region 50), i-f 20. 1 1 Although the Examiner identifies "independent claims 1, 9 and 19" as including these limitations (Ans. 3), claim 10, rather than claim 9, is independent. 3 Appeal2014-001338 Application 12/711,791 For this rejection, Appellants argue the patentability of claim 1 and rely on the same arguments for claims 10 and 19. Br. 7-10. Thus, we address claim 1, with claims 2, 4, 5, 7-11, 13, 14, and 16-19 standing or falling with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv) (2012). Appellants contend that support for the limitation at issue in claim 1 "can be found, for example, in paragraph [0020] and FIG. 3A of the present application." Br. 7. As to paragraph 20, Appellants highlight the following statement: "'In the embodiment shown in FIG. 3A, the channeled region length 82 [of the fastener aperture 36, 37] is greater than the diameters 56, 58 of the first and the second segmented regions 48 and 50. '" Id. (bracketed text from Appellants). As to Figure 3A, Appellants contend that "it is inherent from the present application that FIG. 3A is drawn to scale, because the relative dimensions shown in FIG. 3A are consistent with the relative dimensions described, for example, in paragraph [0020] of the present application." Id. at 7-8. According to Appellants, based on the sentence from paragraph 20 identified above, "the present application provides at least inherent support for" the limitation at issue in claim 1. Id. at 8. Appellants contend that the Specification discloses that "there can be significant advantages to providing fastener apertures with relative dimensions such as shown in FIG. 3A. For example, paragraph [0023] of the present application describes that the relative dimensions of the fastener apertures can result in certain stress concentrations in material proximate the fastener aperture." Id. Appellants' arguments do not apprise us of error. As to the sentence from paragraph 20 of the Specification, we see no error in the Examiner's position that that statement does not provide written description support for 4 Appeal2014-001338 Application 12/711,791 the limitation at issue-which requires that the length of the "central channeled region" "is less than the sum of the diameters of the first and the second segmented region"-and, instead, supports that the length of the "channeled region is greater than the individual diameters" of the "first and second segmented regions." See Ans. 17. 2 Further, Appellants provide no legal support for the proposition that Figure 3A in the Specification is inherently drawn to scale because it is allegedly consistent with the related description. Br. 7-8. Where, as here, the specification does not indicate that a drawing is to scale, we will not presume it to be so. See In re Olson, 212 F.2d 590, 592 (CCPA 1954) (affirming new matter rejection, stating "[o]rdinarily drawings which accompany an application for a patent are merely illustrative of the principles embodied in the alleged invention claimed therein and do not define the precise proportions of elements relied upon to endow the claims with patentability" and, quoting the affirmed Board decision, "' [i]t is well known that Patent Office drawings are not normally drawn to scale, with the dimensions and sizes of parts shown to exact measurements as are shop drawings'"). 3 As to paragraph 23 of the Specification, the issue here is not whether the Specification discloses "advantages to providing fastener apertures with relative dimensions such as shown in FIG. 3A" (Br. 8), but, rather, whether 2 In addition to the limitation at issue, claim 1 also recites that length of the "central channeled region" "is greater than each of the diameters of the first and the second circular segmented regions." Br. 13 (Claims App.). 3 Even if Figure 3A were drawn to scale, Appellants have not identified record evidence showing that the precise dimensions in that Figure support the limitation at issue. See Ans. 18. 5 Appeal2014-001338 Application 12/711,791 the Specification provides written description support for the limitation at issue. To the extent paragraph 23 may describe purported advantages of the configuration shown in Figure 3A, for the reasons discussed above, Appellants have not persuasively shown that Figure 3A provides written description support for the limitation at issue. Appellants also contend that "where, as here, there is support for a genus of ranges, and a species within that genus, and there is disclosure regarding advantages of at least the species, there is sufficient support in the specification for the subgenus in which the species is included." Br. 9.4 On the record here, Appellants have not persuasively demonstrated that the limitation at issue represents a "species" within a "genus" for which the Specification provides support. Further, for reasons discussed above, we do not agree with Appellants that the Specification provides a "disclosure regarding advantages of at least the species," i.e., the limitation at issue. See Ans. 19 (emphasis omitted). For these reasons, we sustain the decision to reject claim 1. Claims 2, 4, 5, 7-11, 13, 14, and 16-19 fall with claim 1. Further, based on their dependence from claim 19, claims 20-22 also lack written description support. We view the failure to include these claims in the rejection as an oversight. See Ans. 3, 4 (rejecting independent claim 19 and also stating that "[c]laims 2, 4, 5, 7, 8, 10, 11, 13, 14, and 16-18 are rejected due to their dependence from independent claim 1 or 9, respectively"). Accordingly, we 4 Although Appellants contend that the Examiner made certain statements relating to these issues in an interview (Br. 9), such alleged statements are not found in the rejections on appeal. 6 Appeal2014-001338 Application 12/711,791 sustain the decision to reject claims 1, 2, 4, S, 7-11, 13, 14, and 16-22 under 3S U.S.C. § 112, first paragraph. Rejection 2-The rejection of claims 1, 2, 4, 5, 7-11, 13, 14, and 16--19 under 35 U.S.C. § 103(a) For this rejection, Appellants argue the patentability of claim 1 and rely on the same arguments for claims 10 and 19. Br. 10-11. Thus, we address claim 1, with claims 2, 4, S, 7-11, 13, 14, and 16-19 standing or falling with claim 1. See 37 C.F.R. § 41.37 (c)(l)(iv). Addressing claim 1, the Examiner relies on Bussieres for various limitations, but states that it "does not explicitly teach: Wherein the length of the central channeled region (32) ... is less than the sum of the diameters of the two circular segmented regions." Ans. S. The Examiner relies on modification based on design choice to address the limitation at issue. Id. at S-7 (providing, on page 7, an annotated version of Figure SC of Bussieres ). Appellants "acknowledge that the dimensions of the opening 32 in Bussieres can vary and are not limited to the embodiment shown in FIG. SC" (quoting Bussieres i-f 39), 5 but argue that "Bussieres does not contemplate that the length of the alleged channelled [sic] region could be less than the sum of the diameters of the alleged first and second segmented regions, for at least the reasons set forth in [Appellants'] response filed January 24, 2013." Br. 10. In that filing, Appellants argued as follows: If the length of the alleged channelled region were less than the sum of the diameters of the alleged first and second segmented regions, the blades 221-2210 could not be coupled to the hub 20 as described in Bussieres. Referring to FIG. 2D, for example, 5 Appellants' citation to "column 6, lines 1-7" (Br. 10) appears to relate to the issued version ofBussieres-U.S. Patent No. 7,214,03S B2. 7 Appeal2014-001338 Application 12/711,791 Bussieres discloses that the blades 221-2210 each include an end portion 38 having a groove 40 and a threaded part 42. The end portion 38 of each blade 22i fits within a cavity 28i in the hub 20, and the threated part 42 of the end portion 38 engages a threaded part 30 of the cavity 28i. A constraint element 44 is inserted into the opening 32i so that it engages the groove 40 in the end portion 38 of the blade 22i. In order to reduce the length of the alleged channelled region, a circumferential length of the cavity 28i would need to be reduced also. If the length of the alleged channelled region were less than the sum of the diameters of the alleged first and second segmented regions, the cavity 28i would be so small that the blade 22i could not be coupled to the hub 20 as described above; e.g., referring to FIG. 5C of Bussieres, there would be insufficient space for the end portion 38 of the blade 22i between the constraint element 44 and the threaded part 30 of the cavity 28i. Response to Non-Final Office Action 7 (filed Jan. 24, 2013) ("Resp."). In response, the Examiner, referring to Bussieres, Fig. 2E, states that "the channeled region 28 intersects the holes created by the fastener, but does not limit them." Ans. 20. According to the Examiner, the dashed lines shown in Figure 2E, which represent the edges of fasteners 44, "end well within the circle circumscribed by 28." Id. at 20-21. The Examiner states that because "the inner side of the fastener already falls within the channeled portion circumscribed by 28," "moving these sides closer together to more tightly grip the blade would not be impossible." Id. at 21. The Examiner also states that "the only restraint on the inner size of the fastener is the size of the groove 40 of the blade, best seen in Figure 2D." Id. We are not apprised of error based on Appellants' arguments because we are not persuaded that, to perform the proposed modification of Bussieres based on design choice, "a circumferential length of the cavity 28i would need to be reduced also." Resp. 7. For the reasons discussed by the 8 Appeal2014-001338 Application 12/711,791 Examiner as set forth above, the length of the identified "central channeled region[ s ]" (see Ans. 7) can be decreased-as all or part of a modification satisfying the limitation at issue (see id. at 5-7, 21 }-without also decreasing the diameters of the set of cavities 28i. And, because a decrease in the diameters of the set of cavities 28i is not required in the proposed modification, the alleged problem of the decreased-diameter cavities 28i not accepting the "unmodified" (and thus, too large) end portions 38 (see Bussieres, Fig. 2D) does not occur. Because Appellants have not shown error in the findings or conclusions as to obviousness of claim 1 (Ans. 4--7, 20-21 ), we sustain the decision to reject claim 1 as unpatentable over the combined teachings relied upon by the Examiner. Claims 2, 4, 5, 7-11, 13, 14, and 16-19 fall with claim 1. Rejection 3-The rejection of claim 20--22 under 35 U.S.C. § 103(a) Because Appellants do not separately argue claims 20-22 (Br. 11 ), which depend from claim 19, we sustain the decision to reject claims 20-----22. DECISION We AFFIRM the decision to reject claims 1, 2, 4, 5, 7-11, 13, 14, and 16-22 under 35 U.S.C. § 112, first paragraph, and AFFIRM the decision to reject claims 1, 2, 4, 5, 7-11, 13, 14, and 16-22 under 35 U.S.C. § 103(a). 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 cdc 9 Appeal2014-001338 Application 12/711,791 10 Copy with citationCopy as parenthetical citation