13728085 (P.T.A.B. Jun. 20, 2017)

Ex Parte Hirano

Patent Trial and Appeal BoardJun 20, 2017

13728085 (P.T.A.B. Jun. 20, 2017)

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. 13/728,085 12/27/2012 Akinori HIRANO MNL-2018-3049 9256 23117 7590 06/22/2017 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER NGUYEN, XU AN LAN T ART UNIT PAPER NUMBER 3657 NOTIFICATION DATE DELIVERY MODE 06/22/2017 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): PTOMAIL@nixonvan.com pair_nixon @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AKINORIHIRANO Appeal 2016-003985 Application 13/728,085 Technology Center 3600 Before DEBRA K. STEPHENS, JOSEPH P. LENTIVECH, and DAVID J. CUTITTAII, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1, 2, and 9-14.1 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER According to Appellant, the claims are directed to a spring load adjusting apparatus and manufacturing method thereof (Abstract; Spec. 1 The Examiner has indicated claims 3—8 and 15—18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims (Final Act. 6). Thus, these claims are not before us. Appeal 2016-003985 Application 13/728,085 § Technical Field). Claim 1, reproduced below, is exemplary of the claimed subject matter: 1. A spring load adjusting apparatus comprising: a female-threaded member that has a female thread, which is formed in an inner peripheral surface of the female- threaded member; and an adjust screw that adjusts a spring load of a spring, which is placed in an inside of the female-threaded member, wherein: the adjust screw has a male thread, which is formed in an outer peripheral surface of the adjust screw and is threadably engaged with the female thread; the female-threaded member has at least one protrusion that is formed integrally with the rest of the female-threaded member and is urged against a head of the adjust screw toward the spring in an axial direction to urge the male thread against the female thread and thereby to provide a predetermined degree of sealing between the male thread and the female thread, and the at least one protrusion is urged against the head of the adjust screw in the axial direction so that the at least one protrusion limits rotation of the adjust screw in both of a tightening direction and a loosening direction of the adjust screw. The prior art relied upon by the Examiner in rejecting the claims on REFERENCES appeal is: Oishi Morise US 2007/0023722 A1 Feb. 1, 2007 US 2012/0049097 A1 Mar. 1, 2012 Morise ’216 WO 2010/134216A1 Nov. 25, 2010 2 Appeal 2016-003985 Application 13/728,085 REJECTIONS Claims 1, 2, and 11—14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Morise (Final Act. 2—5). Claim 9 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Morise and Oishi (Final Act. 5). Claim 10 stands rejected under 35 U.S.C. §103(a) as being unpatentable over Morise and Appellant’s Admitted Prior Art (Final Act. 5— 6). 35 U.S.C. § 103(a): Claims 1, 2, and 11—14 Appellant contends their invention as recited in claims 1, 2, and 11— 14, is patentable over Morise (App. Br. 6). A dispositive issue presented by the arguments is: Has the Examiner shown Morise teaches or suggests “the at least one protrusion is urged against the head of the adjust screw in the axial direction so that the at least one protrusion limits rotation of the adjust screw in both of a tightening direction and a loosening direction of the adjust screw,” as recited in claim 1 and “at least one protrusion that is urged against a head of the adjust screw toward the spring in an axial direction so that the protrusion limits rotation of the adjust screw in both of a tightening direction and a loosening direction of the adjust screw,” as recited in claim 13? ANALYSIS Appellant contends that even if Morise were modified by crimping the edge of the “alleged female-threaded member (cylindrical valve housing 40) of Morise against the smooth planar end surface of the head of the alleged adjust screw (lid body 52) as proposed by the Examiner, the crimping edge 3 Appeal 2016-003985 Application 13/728,085 of the cylindrical valve housing 40” does not limit rotation of the lid body 52 in the tightening direction (App. Br. 9; Reply Br. 4—5). Thus, according to Appellant, Morise would require more than crimping to limit rotation in the tightening direction (App. Br. 9). We agree with Appellant’s contention. The Examiner has set forth the combination of the whirl-stop 56 formed integrally with the female-threaded member 40 teaches the “at least one protrusion that is formed integrally with the rest of the female-threaded member” (Ans. 3—4). We are persuaded by Appellant that the Examiner has not shown nor explained how the modification limits rotation of the lid body 52 in the tightening direction. Because we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. Accordingly, we are persuaded the Examiner fails to show Morise teaches or suggests the disputed limitation as recited in independent claim 1 and commensurately recited in independent claim 13. Claims 2, 11, 12, and 14 depend from independent claims 1 and 13, and thus, stand with their respective independent claims. Therefore, we do not sustain the rejection of claims 1, 2, and 11—14 under 35 U.S.C. § 103(a) as being unpatentable over Morise. Claims 9 and 10 depend from independent claim 1. The Examiner has not shown either Oishi or Appellant’s Admitted Prior Art cures the deficiencies of Morise. Thus, claims 9 and 10 stand with independent claim 1. It follows, we do not sustain the Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Morise and Oishi and claim 10 under 35 U.S.C. § 103(a) as being unpatentable over Morise and Appellant’s Admitted Prior Art. 4 Appeal 2016-003985 Application 13/728,085 DECISION The Examiner’s rejection of claims 1, 2, and 11—14 under 35 U.S.C. §103 (a) as being unpatentable over Morise is reversed. The Examiner’s rejection of claim 9 under 35 U.S.C. § 103(a) as being unpatentable over Morise and Oishi is reversed. The Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) as being unpatentable over Morise and Appellant’s Admitted Prior Art is reversed. REVERSED 5