Ex Parte Kovac

Board of Patent Appeals and Interferences

Jun 2, 2011

11444445 (B.P.A.I. Jun. 2, 2011)

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.
11/444,445 06/01/2006 Zdravko Kovac W5734-G 4639
28268 7590 06/02/2011
THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON, MD 21286
EXAMINER
COZART, JERMIE E
ART UNIT PAPER NUMBER
3726
MAIL DATE DELIVERY MODE
06/02/2011 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte ZDRAVKO KOVAC 8
___________ 9
10
Appeal 2010-002348 11
Application 11/444,445 12
Technology Center 3700 13
___________ 14
15
16
Before WILLIAM F. PATE III, JENNIFER D. BAHR, and ROBERT A. 17
CLARKE, Administrative Patent Judges. 18
CLARKE, Administrative Patent Judge. 19
DECISION ON APPEAL 20
Appeal 2010-002348
Application 11/444,445

2
STATEMENT OF THE CASE 1
Zdravko Kovac (Appellant) seeks review under 35 U.S.C. § 134 of the 2
final rejection of claims 52-56, 59-62, 65 and 80-96. We have jurisdiction 3
over the appeal pursuant to 35 U.S.C. § 6(b). 4
We REVERSE. 5
6
THE INVENTION 7
The claims are directed to a method of holding a piece in a bore of a 8
body. Claims 88 and 93, reproduced below with emphasis added, are 9
representative of the subject matter on appeal. 10
88. A method of holding a piece in a bore of a body, comprising 11
providing a piece-holding device including a cylindrical sleeve 12
and a plurality of fins extending longitudinally along an inner surface 13
of the sleeve and projecting inwardly from the inner surface of the 14
sleeve, the fins being spaced apart from one another along the inner 15
surface, wherein the fins are skewed in a same circumferential 16
direction relative to radial planes of the sleeve; 17
inserting the piece in the sleeve of the piece-holding device 18
with the outer surface of the piece engaging tips of the fins and 19
deflecting the fins; and 20
inserting the piece-holding device in the bore with its outer 21
surface pressed into engagement with an inner surface of the bore so 22
that the piece-holding device is held in the bore by the engagement of 23
the outer surface of the piece-holding device with the inner surface of 24
the bore. 25
26
93. A method for holding a piece in a bore of a body, comprising 27
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Application 11/444,445

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providing a piece-holding device including a cylindrical sleeve 1
and a plurality of fins extending longitudinally along an inner surface 2
of the sleeve and projecting inwardly from the inner surface of the 3
sleeve, wherein the dimension [of] the fins along the direction of their 4
inward projection is substantially greater than the thicknesses of the 5
fins; 6
inserting the piece in the sleeve of the piece-holding device 7
with the outer surface of the piece engaging tips of the fins and 8
deflecting the fins; and 9
inserting the piece-holding device in the bore with its outer 10
surface pressed into engagement with an inner surface of the bore so 11
that the piece holding device is held in the bore by engagement of the 12
outer surface of the piece-holding device with the inner surface of the 13
bore. 14
The Examiner relies upon the following prior art: 15
Braun US 6,623,226 B2 Sep. 23, 2003
16
REJECTIONS 17
Claims 88, 90 and 92 are rejected under 35 U.S.C. § 102(b) 18
as being anticipated by Braun. Ans. 3. 19
Claims 52-56, 59-62, 65, 80-83, 89, 91 and 93-96 are rejected 20
under 35 U.S.C. § 103(a) as being unpatentable over Braun. Ans. 21
4. 22
23
ISSUES 24
The first issue is whether Braun teaches at least two fins that are 25
skewed in a same circumferential direction relative to radial planes of the 26
sleeve. The second issue is whether modification of the fins of Braun so 27
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that the dimension of the fins along the direction of their inward projection is 1
substantially greater than the thicknesses of the fins would have been 2
obvious to one of ordinary skill in the art as a matter of design or common 3
sense. 4
5
FINDINGS OF FACT 6
We find that the following enumerated findings are supported by at 7
least a preponderance of the evidence. 8
1. Braun discloses “[a] method of holding a piece in a bore of a 9
body.” See Braun, col. 2, l. 64 – col. 3, l. 10. 10
2. In particular, Braun discloses a piece (3) in a bore (17) of a body 11
(2). Braun, col. 7, ll. 24-29 and ll. 59-64. 12
3. Braun discloses providing piece-holding device (18) including a 13
cylindrical sleeve and plurality of fins (27) extending 14
longitudinally along an inner surface of the sleeve and projecting 15
inwardly from the inner surface of the sleeve. Braun, col. 11, ll 7-16
13 and figs 13 and 14. 17
4. Braun discloses fins 27 that, prior to insertion of screw (3) and the 18
pressure of the screw against the fins, are skewed downwardly 19
relative to the radial planes of the cylinder and are directed 20
inwardly from the edge of the cylinder towards the center of the 21
cylindrical space within the sleeve. Braun, figs. 7-14, col. 9, ll. 8-22
16, and col. 10, l. 50 – col. 11, l. 13. 23
5. Braun discloses providing fins that may be elastically deformed in 24
a radial direction when the screw is inserted into the piece holding 25
device. Braun, col. 6, ll. 15-17 and col. 9, ll. 8-11. 26
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6. Braun discloses that the outer surface of the piece holding device is 1
held in the bore by engagement of the outer surface of the piece 2
holding device with the inner surface of the bore by either 3
frictional or form fit. Braun, col. 5, ll. 48-67. 4
5
ANALYSIS 6
Claims 88, 90 and 92. 7
The Examiner found that Braun anticipates each limitation of claim 8
88. Ans. 3. In particular, the Examiner found that the disclosure in Braun of 9
inward facing and downwardly skewed fins (27) that are spaced 10
circumferentially around the interior surface of the sleeve anticipates 11
Appellant’s recitation that the fins are skewed in a same circumferential 12
direction relative to radial planes of the sleeve. Ans. 8. The Examiner also 13
found that the fins (27) of Braun were spaced along the interior surface of 14
the sleeve. Ans. 8. Finally the Examiner found that the fins need not all be 15
skewed in a circumferential direction. Ans. 8. 16
Appellant raises the dispositive issue of whether the Examiner 17
improperly interprets the phrase “fins are skewed in a same circumferential 18
direction relative to radial planes of the sleeve.” In particular, Appellant 19
argues downward skewing of fins, while being a teaching of skewing, is not 20
a teaching of circumferential skewing. Appeal Br. 12. Appellant adds that 21
the findings that the fins (27) of Braun were spaced along the interior surface 22
of the sleeve and that not all of the fins need be skewed in a circumferential 23
direction is not relevant to the rejection as neither cures the deficiency that 24
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Braun fails to teach any fins skewed in a circumferential direction as 1
claimed. Reply Br. 9. 2
We agree with Appellant that skewing of fins in a circumferential 3
direction requires that at least two fins are skewed in a circumferential 4
direction rather than a downward or longitudinal direction from the radial 5
plane. While we note that fins of some embodiments of Braun are 6
elastically deformed after insertion of the screw, the recitation that fins are 7
skewed in a same circumferential direction relative to radial planes of the 8
sleeve in the context of claim 88 defines the orientation of the fins prior to 9
insertion of the piece to be held. 10
"[T]he examiner bears the initial burden, on review of the prior art or 11
on any other ground, of presenting a prima facie case of unpatentability." In 12
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). 13
"[A]nticipation of a claim under § 102 can be found only if the prior 14
art reference discloses every element of the claim . . . ." In re King, 801 15
F.2d 1324, 1326 (Fed. Cir. 1986) (citing Lindemann Maschinenfabrik 16
GMBH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1457 (Fed. Cir. 1984)). 17
"[A]bsence from the reference of any claimed element negates anticipation." 18
Kloster Speedsteel AB v. Crucible, Inc., 793 F.2d 1565, 1571 (Fed. Cir. 19
1986). 20
Here, the Braun reference does not teach any fins being skewed in a 21
same circumferential direction relative to radial planes of the sleeve. 22
The absence of the recited element that the fins are skewed in a same 23
circumferential direction relative to radial planes of the sleeve negates 24
anticipation. Therefore, we reverse the anticipation rejection of claim 88 25
and of claims 90 and 92, which depend therefrom. 26
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1
Claims 52-56, 59-62, 65, 80-83, 89, 91 and 93-96. 2
Claims 52 and 80, like claim 88 above, recite that the fins are skewed 3
in a same circumferential direction relative to radial planes of the sleeve. 4
Appellant argues that the Examiner’s conclusion of obviousness 5
regarding increasing the dimension of the fins 27 of Braun along the 6
direction of their inward projection so that that dimension is substantially 7
greater than the thicknesses of the fins of the subject matter of claims 52 and 8
80 does not remedy the deficiency in Braun as to the skewing of the fins in 9
the same circumferential direction relative to radial plans of the sleeve. 10
Appeal Br. 14. We agree as discussed above. 11
Thus, for the same reasons set forth supra regarding claim 88, we 12
reverse the rejection of claims 52 and 80 and the claims dependent 13
therefrom. 14
15
Claims 93-96. 16
Appellant argues claims 93-96 as a group. Appeal Br. 14. We select 17
claim 93 as representative, and claims 94-96 stand or fall with claim 93. See 18
37 C.F.R. § 41.37(c)(1)(vii). 19
The Examiner found that Braun discloses every limitation of claim 93 20
except for the limitation wherein the dimension [of] the fins along the 21
direction of their inward projection is substantially greater than the 22
thicknesses of the fins or to insert the piece of Braun in the piece-holding 23
device and then insert the device and the piece into the bore. The Examiner 24
reasons that the claimed configuration of the fin 25
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would have been an obvious matter of design choice … 1
because Applicant has not disclosed that the dimension of each 2
fin along the direction of its inward projection is substantially 3
greater than the thickness of the fin, … is used for any 4
particular purpose, or solves a stated problem. One of ordinary 5
skill in the art, furthermore, would have expected Applicant’s 6
invention to perform equally well … to dimension the fin of 7
Braun according to the figures and description of Braun 8
because the piece holding device of Braun effectively holds the 9
piece within the bore. 10
(Ans. 7-8). The Examiner also reasoned in the Answer that selection 11
of a longer length than thickness is not a patentable concept because 12
no unexpected result is obtained, that it is conventional and well 13
known as well common sense that if the length of a member is 14
substantially increased greater than its thickness then that member 15
will encounter a large amount of deflection when subjected to a 16
load/force. The examiner specifically points to col. 9, ll 10-16 for a 17
recognition of expansion of the fins of Braun. Ans. 9. 18
Appellant argues that providing the fins with a substantially greater 19
dimension along the direction of their inner projection compared to their 20
thickness allows the fins to have flexibility and be readily deflected. Appeal 21
Br. 14-15, Reply Br. 12. Moreover, Appellant argues that the Examiner’s 22
Answer did not comment on the ease of deflection of the fins, but rather 23
focused on the amount of deflection. Appellant then reasons that the amount 24
of deflection would be dependent on the diameter of the part being inserted 25
in Braun’s bush, not the relative length of the fins. Reply Br. 13. Finally 26
Appellant argues that the Examiner has not explained why greater deflection 27
would be desirable, particularly in Braun. 28
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With regard to the rationale of the Examiner, the predecessor of our 1
reviewing court has stated that design choice is inapplicable in a rejection 2
where the use of the claimed feature solves a stated problem. See In re 3
Kuhle, 526 F.2d 553,555 (CCPA 1975)(use of claimed feature solves no 4
stated problem and presents no unexpected result and “would be an obvious 5
matter of design choice within the skill of the art” ). Appellant’s 6
specification makes clear that providing fins having a dimension along the 7
direction of their inward projection that is substantially greater than the 8
thickness of the fins is for the purpose of providing fins that are readily 9
deflected. Spec. 6. Since this feature of Appellant’s claim 93 solves the 10
stated problem that Appellant raises in the Specification, it is inappropriate 11
for the Examiner to dismiss this portion of the claim as a simple matter of 12
design choice. 13
We agree with the Examiner that it is conventional and well known 14
that the amount of deflection of Braun’s fins would increase if the length of 15
fins were increased in comparison with the thickness of the fins. We also 16
agree with the Examiner that Braun teaches that some deflection of the fins 17
of Braun will occur when a piece is inserted. We also agree with Appellant 18
that the additional reasoning of the Examiner in the Answer fails to provide 19
a reason why one of ordinary skill in the art would find greater deflection of 20
the fins of Braun desirable. The issue before us is whether the Examiner has 21
provided a reason with rational underpinning for providing fins having a 22
dimension along the direction of their inward projection that is substantially 23
greater than the thickness of the fins. See In re Kahn, 441 F.3d 977,988 24
(Fed. Cir. 2006)(cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 25
U.S. 398, 418 (2007)). The underpinning of the Examiner’s conclusion of 26
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obviousness is the desirability of increased amounts of deflection of the fins. 1
The Braun reference, however, teaches that only slight deflection of the fins 2
would be observed when the piece is inserted and retained. Braun, col. 9, ll. 3
12-14. Moreover, the Examiner did not provide any reason why increasing 4
the amount of deflection of the fins would be considered desirable. In short, 5
on the basis of the record before us, the Examiner’s articulated reason for 6
providing Braun with fins having a dimension along the direction of their 7
inward projection that is substantially greater than the thickness of the fins is 8
not supported by rational underpinning. 9
The rejection of claims 93-96 is reversed. 10
11
DECISION 12
For the above reasons, we reverse the Examiner’s decision to reject 13
claims 52-56, 59-62, 65, and 80-96. 14
15
REVERSED 16
17
18
mls 19