10784066 (B.P.A.I. Mar. 16, 2012)

Ex Parte Jackson

Board of Patent Appeals and InterferencesMar 16, 2012

10784066 (B.P.A.I. Mar. 16, 2012)

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. 10/784,066 02/20/2004 Roger P. Jackson 10,207 2610 7590 03/16/2012 John C. McMahon PO Box 30069 Kansas City, MO 64112 EXAMINER COMSTOCK, DAVID C ART UNIT PAPER NUMBER 3733 MAIL DATE DELIVERY MODE 03/16/2012 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 ROGER P. JACKSON ____________ Appeal 2010-011356 Application 10/784,066 Technology Center 3700 ____________ Before TONI R. SCHEINER, DONALD E. ADAMS, and STEPHEN WALSH, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL 1 This appeal under 35 U.S.C. § 134 involves claims 1-20 (App. Br. 3). We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The claims are directed to a closure for setting engagement with a structural member. Claim 1 is representative and is reproduced in the “CLAIMS APPENDIX” of Appellant‟s Brief (App. Br. 24-25). 1 This Appeal is related to Appeal No. 2011-001384, Application No. 10/783,889. Appeal 2010-011356 Application 10/784,066 2 Claims 1-20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Schäfer 2 and Jackson. 3 We affirm. ISSUE Does the preponderance of evidence on this record support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Examiner finds that Schäfer suggests a device as set forth in Appellant‟s claim 1, including a guide flange that extends helically around the outside of a cylindrical surface, but fails to suggest “a closure comprising a bore with a left handed thread or an installation head with a breakaway region” (Ans. 4-5). FF 2. Examiner finds that “[t]he translation provided by Appellant in the reply filed 05 November 2007 . . . teaches not only that the device has threads but that the anti-splay grub screw is screwed in” (Ans. 6; see also id., citing, Schäfer Translation (PTO 10-3621) 7: 6-14). FF 3. Examiner finds that Schäfer suggests that the closure is a setscrew that forms a friction lock with the undercut and lug of the tread of the head (Ans. 7). FF 4. Schäfer „7494 distinguishes between a “bayonet joint” that is “closed merely in one rotational direction” and a “set screw” that “is screwed into [a] . . . threaded bore” (Schäfer „749, col. 3, ll. 17-20). 2 Schäfer, DE 298 10 798 U1, published February 12, 1999, as translated in PTO 10-3621 (May 2010). 3 Jackson, US 6,004,349, issued December 21, 1999. 4 Schäfer et al., US 6,540,749 B2, issued April 1, 2003. Appeal 2010-011356 Application 10/784,066 3 FF 5. Examiner relies on Jackson to suggest “a closure . . . for a similar device [to that of Schäfer] wherein the closure comprises a bore with a left handed thread . . ., an installation head . . ., and a breakaway region” (Ans. 5). ANALYSIS The claims have not been argued separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 1 is representative. Based on the combination of Schäfer and Jackson, Examiner concludes that, at the time of Appellant‟s claimed invention, it would have been prima facie obvious to provide Schäfer‟s device “with a closure comprising a bore with a left handed thread and an installation head with a breakaway region” as suggested by Jackson “in order to allow the closure to be tightened to an optimal predetermined torque and prevent overtightening and to allow the use of an easy out tool for removal of the closure” (Ans. 5). While Appellant recognizes that Schäfer speaks in terms of a device that is “screwed in”; Appellant contends that with respect to Schäfer‟s first embodiment, “the term screw can mean simple rotation into something” (App. Br. 13). In this regard, Appellant contends that Schäfer‟s use of the term “screwed in” refers to “a push down and twist structure” (id.). Appellant contends that their “interpretation is supported by the Schafer specification and is consistent with other [unidentified] devices that Schafer patented and produced” (App. Br. 13-14.). In addition, Appellant contends that “a structure that mates upon rotating 90° can be called a grub screw and rotation or twisting can be interpreted and translated from the German into English as being „screwed in‟” (App. Br. 19). We are not persuaded (FF 1- Appeal 2010-011356 Application 10/784,066 4 2; Ans. 6-7). In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by counsel cannot take the place of evidence). Appellant contends that Schäfer‟s second embodiment “neither shows or teaches a closure” (App. Br. 15). We are not persuaded (FF 3). In addition, Appellant contends that Schäfer‟s figure 2 does not illustrate a pitch to the tiers, of the treads, and therefore “it is impossible for such tiers to be helically wound” (App. Br. 15; see also 16-18). We are not persuaded. As Examiner explains, given the “very small portion of the entire circumference of the threads” illustrated in Schäfer‟s figure 2, a conclusion cannot be drawn as to the pitch of the threads. Instead, one must consider Schäfer‟s disclosure and “Appellant‟s argument runs counter to the express teaching of Schafer” (Ans. 7; see FF 2). Appellant directs attention to Schäfer „749 to support the contention that Schäfer‟s device is limited to a push down and twist structure (App. Br. 19-21). We are not persuaded for the reasons provided by Examiner (Ans. 8-9; FF 4). Appellant contends that Jackson is “directed to a set screw (not a closure)” that “was not heavily torqued” (App. Br. 21). We are not persuaded. Schäfer suggests the use of a set screw closure, but fails to suggest “a closure comprising a bore with a left handed thread or an installation head with a breakaway region” (FF 1 and 3). Jackson was relied upon to suggest a left handed thread and an installation head with a breakaway region (FF 5). CONCLUSION OF LAW The preponderance of evidence on this record supports a conclusion of obviousness. The rejection of claim 1 under 35 U.S.C. § 103(a) as Appeal 2010-011356 Application 10/784,066 5 unpatentable over the combination of Schäfer and Jackson is affirmed. Because they are not separately argued claims 2-20 fall together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED alw