Ex Parte Kanflod et al

Board of Patent Appeals and Interferences

Aug 2, 2010

10539148 (B.P.A.I. Aug. 2, 2010)

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.
10/539,148 06/16/2005 Morgan Kanflod AC-100 9266
7590 08/02/2010
Mark P. Stone
Attorney at Law
50 Broadway
Hawthorne, NY 10532
EXAMINER
MACARTHUR, VICTOR L
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
08/02/2010 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 MORGAN KANFLOD, FREDRIK OBERG,
and BERTIL STENBERG
____________

Appeal 2009-006604
Application 10/539,148
Technology Center 3600
____________

Before RICHARD TORCZON, SALLY C. MEDLEY and
MICHAEL P. TIERNEY, Administrative Patent Judges.

MEDLEY, 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 on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Atlas Copco Rock Drills AB (“Atlas”), the real party in interest, seeks
review under 35 U.S.C. § 134(a) of a Final Rejection of claim 1. We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a new ground
of rejection.
BACKGROUND
Atlas discloses, referring to Atlas’ figure 2 below [numbers from
figure 1 inserted], a coupling sleeve for coupling a threaded rock bolt [1] to
a rock drilling machine [2]. The coupling sleeve includes internal threads
(not numbered) and a locking device [7]. Spec. ¶¶ 1, 6.
Atlas’ figure 1 is below:

Figure 1 depicts a coupling sleeve, a bolt and drilling machine.
Claim 1 is illustrative:
Coupling sleeve connecting a threaded rock bolt (1) to an
impact rock drilling machine (2), said coupling sleeve
comprising a first part (3) provided with an internal thread (4)
for connection of the rock bolt (1), and a second part (5)
provided with an internal thread (6) for connection of the rock
drilling machine (2), characterized in that the second part (5)
comprises a locking device (7) arranged substantially
transversely to a longitudinal axis (9) of the coupling sleeve,
said locking device cooperating with a region (8) on the rock
drilling machine (2) for preventing separation of the coupling
sleeve and the rock drilling machine (2), wherein percussion
energy is transmitted from the rock drilling machine to the rock
bolt during a percussion operation when the locking device is
unloaded, and said locking device retains the rock drilling
machine connected to the coupling sleeve when said rock bolt
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is disconnected from said coupling sleeve by rotation of said
rock drilling machine in a direction for disconnecting said first
part of said coupling sleeve from said rock bolt for reinforcing a
rock with said rock bolt.

The Examiner relies on the following prior art references:
Sanderson 1,994,792 Mar. 19, 1935
Ponto 1,701,985 Feb. 12, 1929
Atlas appeals the following rejections:
1. Claim 1 under 35 U.S.C. § 102(b) as anticipated by Sanderson;
2. Claim 1 under 35 U.S.C. § 102(b) as anticipated by Ponto; and
3. Claim 1 under 35 U.S.C. § 103(a) as unpatentable over Sanderson and
Ponto.
ISSUE
Has Atlas shown that the Examiner incorrectly found that Sanderson,
Ponto or the combination of Sanderson and Ponto describe a coupling sleeve
and a locking device that cooperates with a region on a drilling machine,
such that the locking device is unloaded during a percussion operation but
retains the drilling machine connected to the coupling sleeve when a bolt is
disconnected from the coupling sleeve?
FINDINGS OF FACT
Sanderson
1. Sanderson describes, referring to Sanderson’s figure 2 below
[numbers from figure 2 inserted], a drill tool including a rope socket
[2] secured by a threaded stud [3] to an upper end of a drill tool body
[1] and a cutting tip [4] secured to the lower end of the drill tool body
[1] by a pair of threaded studs [5]. P. 2, col. 1, ll. 13-18, 34-39, 58-75.
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Sanderson’s figure 2 is below:

Figure 2 depicts a drill tool.
2. Dowel [15] prevents loosening of the rope socket [2] from the drill
tool body [1] due to relative movement between the socket [2] and
body [1]. P. 2, col. 1, ll. 55-58.
3. Sanderson depicts the dowel [15] arranged transverse to the
longitudinal axis of the drill tool body [1] and cooperating with the
threaded stud [3] of the rope socket [2].
4. The rope socket connection is particularly strong so as to remain
secure for all types of service. P. 2, col. 2, ll. 63-66.
Ponto
5. Ponto describes, referring to Ponto’s figure 2 below [numbers from
figure 2 inserted], sucker rods [1], [2], [3], [4] including threaded pins
[5], [6] screwed into a box [7] and a coupling sleeve [11] fitted over
box [7]. LL. 34-50.
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Ponto’s figure 2 is below:

Figure 2 depicts two sucker rods coupled together.
6. The lock is provided so that the sucker rods can not unscrew. LL. 7-9.
7. Locking pin [14] is provided to prevent upward movement of the
sleeve [11]. LL. 54-55.
8. The joint may be uncoupled by removing the pin [14] and sleeve [11].
LL. 10-11, 59-61.
ANALYSIS
The Examiner finds that the claim recitation “wherein percussion
energy is transmitted from the rock drilling machine to the rock bolt during a
percussion operation when the locking device is unloaded, and said locking
device retains the rock drilling machine connected to the coupling sleeve
when said rock bolt is disconnected from said coupling sleeve by rotation of
said rock drilling machine . . .” is functional and that Sanderson and Ponto
each describe structure that is inherently capable of performing the claimed
function. Ans. 3-8, 10.
Atlas argues that the structural arrangement and cooperation of the
components and coupling sleeve defined by claim 1 requires the locking
device to be: 1) unloaded (unlocked) when percussion energy is transmitted
from the drilling machine to the bolt; and 2) loaded (locked) when the drill is
rotated in a direction for disconnecting the bolt from the coupling sleeve.
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App. Br. 8-9, 11; Reply Br. 2. Atlas argues that neither Sanderson’s nor
Ponto’s components are structurally arranged or cooperate in the manner
claimed, but rather cooperate to operate in the opposite manner, e.g., that
both their locking devices are loaded during drilling (operation). App. Br. 8-
10, 13-14; Reply Br. 3-4, citing Sanderson p. 2, ll. 13-18, 55-61 and Ponto p.
1, ll. 45-50, 54-55.
Claim 1 requires cooperation between the coupling sleeve and the
drilling machine such that the locking device is unloaded when percussion
energy is transmitted to the bolt during percussion operations, and the
locking device retains the drilling machine connection to the coupling sleeve
(i.e., is loaded) when the bolt is disconnected from the sleeve by rotation of
the drilling machine in a direction for disconnection.
Based on the record before us, the Examiner has failed to establish
that either Sanderson or Ponto anticipate claim 1. Sanderson’s described
elements do not cooperate to function as claimed. Sanderson’s dowel [15] is
loaded during drilling operations so as to prevent loosening of rope socket
member [2] from tool body [1] during drilling operations. P. 2, col. 1, ll. 55-
58, col. 2, ll. 63-66. Ponto’s described elements also do not cooperate to
function as claimed. Ponto’s locking pin [14] is loaded during drilling
operations so as to prevent upward movement of the sleeve [11] and
unscrewing of the sucker rods [1], [2], [3], [4]. LL. 1-10, 45-55. We have
considered the Examiner’s rationale that either Sanderson’s or Ponto’s
described elements are inherently capable of performing the claimed
function. The Examiner’s rationale is not persuasive because it narrowly
focuses on whether the functional claim language implies a particular
structure that is distinguishable over the prior art structure. As in this case,
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functional language can also implicitly require a particular arrangement or
cooperation of the claimed structure that is necessary for performing that
function.
In determining that claim 1 would have been obvious over Ponto in
view of Sanderson, the Examiner again finds that Ponto describes the
claimed structure that is inherently capable of performing the claimed
function. Ans. 6-8, 13-15. As applied by the Examiner, the combination of
Ponto and Sanderson does not overcome the noted deficiencies of Ponto.
For all these reasons, we do not sustain the rejections of claim 1 as
anticipated by Sanderson, anticipated by Ponto, and obvious over Ponto in
view of Sanderson. Nonetheless, the claimed invention would have been
obvious over the prior art of record, and accordingly we enter a new ground
of rejection.
NEW GROUND OF REJECTION
Claim 1 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Arvidsson2 (WO 02/057591) in view of Sanderson. Arvidsson
describes, referring to Arvidsson’s figures 1 and 2 below [numbers from
figures 1 and 2 inserted], a coupling sleeve comprising a first part [3] with
an internal thread [4] for connection of a bolt [1], a second part [5] with an
internal thread [6] for connection of a drilling machine [2] and a clamping
means [8] arranged transversely to the coupling sleeve longitudinal axis and
cooperating with a region on the drilling machine [2]. ¶ 5.
Arvidsson’s figures 1 and 2 are below:

2 Arvidsson, published 25 July 2002, was cited in Atlas’ Information
Disclosure Statement filed 16 June 2005.
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Figures 1 and 2 depict a coupling sleeve.
Arvidsson further describes that percussion energy is transmitted from the
drilling machine [2] to the bolt [1] during a percussion operation when the
clamping means [8] is unloaded, and the clamping means [8] retains the
drilling machine [2] connected to the coupling sleeve when the bolt [1] is
disconnected from the coupling sleeve by rotation of the drilling machine
[2]. ¶ 5. Arvidsson’s also describes that the joint which should be more
difficult to loosen by means of a mechanical joint (i.e., clamping means [8])
is prevented from loosening when the drilling machine and bolt are
separated. ¶ 3. However, Arvidsson does not describe a locking device.
Sanderson describes a drill tool including a drill tool body [1]
connected to a rope socket [2] by a threaded stud [3] on one end and
connected to a tip [4] by a pair of threaded studs [4] on the other end of the
drill tool body [1]. P. 2, col. 1, ll. 13-18, 34-39, 58-75. A locking device in
the form of a dowel [15] is arranged transversely to the longitudinal axis of
the drill tool body [1] and cooperates with a portion of the socket [2] (i.e.,
the threaded stud [3]). Fig. 2. The dowel [15] prevents loosening of the
socket [2] from the body [1] due to relative movement therebetween. P. 2,
col. 1, ll. 55-58.
It would have been obvious to one with ordinary skill in the art at the
time the invention was made to modify Arvidsson’s coupling sleeve by
substituting a dowel as taught by Sanderson for the clamping means since
both are known for preventing the loosening of a joint. The predictable
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result of the substitution would be the prevention of loosening of
Arvidsson’s drilling machine [2] from the coupling sleeve. When a structure
already known in the prior art is altered by the substitution of one element
for another known in the field, the combination is obvious when it does no
more than yield a predictable result. KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007).
DECISION
We REVERSE the rejection of claim 1 under 35 U.S.C. § 102(b) as
anticipated by Sanderson.
We REVERSE the rejection of claim 1 under 35 U.S.C. § 102(b) as
anticipated by Ponto.
We REVERSE the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Sanderson and Ponto.
We ENTER a new ground of rejection for claim 1.
TIME PERIOD
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

ORDER
REVERSED
New Grounds of Rejection - 37 C.F.R. § 41.50(b)

Mark P. Stone
Attorney at Law
50 Broadway
Hawthorne, NY 10532