Ex Parte Kernosky

Board of Patent Appeals and Interferences

Feb 14, 2012

11161462 (B.P.A.I. Feb. 14, 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.
11/161,462 08/04/2005 Stephen Kernosky 81122844 2461
28395 7590 02/14/2012
BROOKS KUSHMAN P.C./FGTL
1000 TOWN CENTER
22ND FLOOR
SOUTHFIELD, MI 48075-1238
EXAMINER
LOW, LINDSAY M
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
02/14/2012 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 STEPHEN KERNOSKY
____________________

Appeal 2010-001035
Application 11/161,462
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, LINDA E. HORNER, and
JOHN C. KERINS, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Stephen Kernosky (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 20, 24, 26, 28, and 36 under
35 U.S.C. § 102(b) as anticipated by Falcioni (US 4,133,096, iss. Jan. 9,
1979), claims 21 and 38 under 35 U.S.C. § 103(a) as unpatentable over
Falcioni, Bradshaw (US 3,685,623, iss. Aug. 22, 1972), and Steggles
(US 3,554,427, iss. Jan. 12, 1971), claim 22 under 35 U.S.C. § 103(a) as
unpatentable over Falcioni and Travis (US 5,810,530, iss. Sep. 22, 1998),
and claim 231 under 35 U.S.C. § 103(a) as unpatentable over Falcioni and
Marko (US 6,325,584 B1, iss. Dec. 4, 2001). We have jurisdiction under 35
U.S.C. § 6(b).
We REVERSE.
THE INVENTION
The claims are directed to “a system for driving a self pierce rivet into
a plurality of workpieces.” Spec. 1, para. 3. Claims 20 and 36, reproduced
below, are illustrative of the claimed subject matter.
20. A system for driving a self pierce rivet into a plurality of
workpieces, the system comprising:
a fixture having an aperture;
a first die comprising:
an anvil disposed along an axis, the anvil
comprising:
a first portion disposed in the aperture, and

1 Appellant withdrew the appeal as to claims 29 and 30, which were rejected
by the Examiner under 35 U.S.C. § 103(a) as unpatentable over Falcioni and
Marko. App. Br. 2, 3; Fin. Rej. 3. We suggest that the Examiner cancel
these claims upon return of jurisdiction of this application to the Examiner.
See Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008) (precedential).
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a second portion coaxially disposed with the
first portion and extending away from the aperture;
and
a collar disposed in direct contact with the anvil
and disposed about the axis, wherein the collar and anvil
are provided as separate pieces
wherein a groove is defined in a surface of the anvil, the
groove being disposed between the anvil and the collar to
partially separate an interior surface of the collar from the anvil;
a second die; and
an actuator disposed proximate the fixture, the actuator
being configured to move the second die in an axial direction
between a retracted position and an advanced position to axially
drive the self pierce rivet such that the first die is spaced apart
from the self pierce rivet;
wherein the anvil and collar cooperate to reduce stresses
and inhibit breaking of the first die.

36. A system for driving a self pierce rivet into a plurality of
workpieces, the system comprising:
a fixture having an aperture;
a first die comprising:
a one piece anvil disposed along an axis and
including a first portion disposed in the aperture and a
second portion disposed adjacent to the first portion and
extending away from the aperture, and
a one piece collar disposed adjacent to the anvil
and disposed about the axis;
a second die; and
an actuator that moves at least one of the first and second
dies between a retracted position and an advanced position to
upset the self pierce rivet;
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wherein the first die further comprises a groove disposed
between the anvil and the collar that receives a solder material
for joining the anvil and the collar.
OPINION
Claims 36 and 38
We do not sustain the rejection of independent claim 36 as anticipated
by Falcioni. We agree with Appellant that claim 36 requires solder material
received in the groove between the anvil and the collar. Reply Br. 4. The
Examiner erred by construing the language “a groove . . . that receives a
solder material” as merely intended use. See Ans. 7. The Examiner did not
find that Falcioni comprises solder material. Rather, the Examiner merely
found that “the groove (in the vicinity of bushing 30) is capable of receiving
a solder material for joining the collar 34 to the anvil 24.” Ans. 3.
Therefore, the Examiner has not established that Falcioni anticipates the
subject matter of claim 36.
In rejecting claim 38, which depends from claim 36, as unpatentable
over Falcioni, Bradshaw, and Steggles, the Examiner does not articulate any
reason why it might have been obvious to modify Falcioni to provide a
solder material in a groove between the anvil and the collar. Thus, the
Examiner has not established that Falcioni, Bradshaw, and Steggles render
obvious the subject matter of claim 38. We do not sustain the rejection.
Claims 20-24, 26, and 28
Claim 20 and its dependent claims require “a collar disposed in direct
contact with the anvil” and a groove “defined in a surface of the anvil, the
groove being disposed between the anvil and the collar to partially separate
an interior surface of the collar from the anvil.” The Examiner read the
claimed “anvil” on Falcioni’s die 24 and the claimed “collar” on the flange
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34 of Falcioni’s mandrel 32. Ans. 3. The Examiner read the claimed
“groove” on the reduction in diameter of Falcioni’s anvil defining the
projection 28. See Fin. Rej. 4 (annotated drawing of Falcioni’s 24); Ans. 5.
The Examiner asserted that this groove, in which bushing 30 resides,
partially separates the collar from the anvil, because “the smaller diameter
portion of the anvil 24 is separated from any part of the collar 34, including
an interior surface of the collar.” Ans. 5-6. The Examiner further found that
Falcioni’s “anvil 24 is in direct contact with the collar via bushing 30, which
is fixed to the first die 32.” Ans. 6. Additionally, the Examiner found that
“[t]he anvil 24 appears to have the same diameter as the bushing 30.
Therefore, as the anvil rests against the bushing 30, the edges of the anvil 24
are in direct contact with the collar.” Id.
On the basis of these findings, we agree with Appellant that the
structural elements on which the Examiner read the claimed “anvil,”
“collar,” and “groove” do not fully satisfy the requirements in claim 20 of “a
collar disposed in direct contact with the anvil” and a groove “defined in a
surface of the anvil, the groove being disposed between the anvil and the
collar to partially separate an interior surface of the collar from the anvil.”
See App. Br. 6. Specifically, in order for the reduction in diameter of
Falcioni’s die 24 to constitute a groove partially separating the interior
surface of the flange 34 (i.e., the “collar”) from the anvil (i.e., die 24),
bushing 30 cannot be considered to be part of either the “anvil” or the
“collar.” In other words, the requirement that the collar be disposed “in
direct contact with the anvil” is not satisfied by contact via the bushing. The
Examiner’s finding that the edges of the anvil (die 24) are in direct contact
with the collar (flange 34) requires speculation as to the precise relative
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diameters and heights of the die 24, bushing 30, and mandrel 32. “[I]t is
well established that patent drawings do not define the precise proportions of
the elements and may not be relied on to show particular sizes if the
specification is completely silent on the issue.” Hockerson-Halbertstadt,
Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000) (citation
omitted) (Where a patent was devoid of any indication that the drawings
were to scale, the drawings could not be relied upon to construe whether the
term “central longitudinal groove” required that the width of the groove be
less than the combined width of the fins).
Therefore, the Examiner has not established, by a preponderance of
the evidence, that Falcioni comprises “a collar disposed in direct contact
with the anvil” and a groove “defined in a surface of the anvil, the groove
being disposed between the anvil and the collar to partially separate an
interior surface of the collar from the anvil,” as called for in claim 20.
Accordingly, we do not sustain the rejection of claim 20 and its dependent
claims 24, 26, and 28 as anticipated by Falcioni.
In the remaining rejections of claims 21-23, the Examiner does not
articulate any reasoning that would remedy the deficiency in the rejection of
claim 20 discussed above. Thus, we do not sustain the rejections of claim 21
as unpatentable over Falcioni, Bradshaw, and Steggles, of claim 22 as
unpatentable over Falcioni and Travis, and of claim 23 as unpatentable over
Falcioni and Marko.
DECISION
For the above reasons, the Examiner’s decision is reversed.

REVERSED
nlk