Ex Parte Krause et alDownload PDFPatent Trial and Appeal BoardSep 15, 201613593995 (P.T.A.B. Sep. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/593,995 08/24/2012 10291 7590 09/19/2016 FISHMAN STEW ART PLLC 39533 WOODWARD A VENUE SUITE 140 BLOOMFIELD HILLS, MI 48304-0610 FIRST NAMED INVENTOR Roger A. Krause 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 66860-0020 2929 EXAMINER BRAUCH, CHARLES JOSEPH ART UNIT PAPER NUMBER 3747 NOTIFICATION DATE DELIVERY MODE 09/19/2016 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): patentmail@fishstewip.com bhrec@fishstewip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROGER A. KRAUSE, CHRISTOPHER HALL, and DANH. DINU Appeal2014-009182 Application 13/593,995 Technology Center 3700 Before LINDA E. HORNER, THOMAS F. SMEGAL, and ERIC C. JESCHKE, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Roger A. Krause et al. (Appellants)1 seek our review under 35 U.S.C. § 134 of the Examiner's Final Rejection of claims 1--4, 8-14, and 16 under 35 U.S.C. § 102(b) as anticipated by Dodds (US 5,843,532, iss. Dec. 1, 1998); of claim 5 under 35 U.S.C. § 103(a) as unpatentable over Dodds and McCormick (US 4,436,443, iss. Mar. 13, 1984); of claims 6, 7, and 15 under 35 U.S.C. § 103(a) as unpatentable over Dodds and Duffy (US 4,888,214, iss. Dec. 19, 1989); and of claims 17-20 under 35 U.S.C. § 103(a) as 1 According to Appellants, the real party in interest is Mahle International GmbH. Appeal Br. 3 Appeal2014-009182 Application 13/593,995 unpatentable over McCormick and Dodds. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claims 1, 12, and 17 are independent. Claim 1 is reproduced below and illustrates the claimed subject matter, with disputed limitations emphasized. 1. A method, comprising: applying a first coating material on a threaded region of an opening in a multi-piece assembly; inserting at least one fastener to the threaded region, the fastener including a mating thread selectively secured to the threaded region of the opening to create a first friction interface between the fastener and the multi-piece assembly; and tensioning the fastener between a load surface of the multi- piece assembly and a mating thread of the fastener to define a second friction interface between the multi-piece assembly and the fastener, the second friction interface being spaced away from the threaded region such that the first coating material does not influence the second friction interface. ANALYSIS Anticipation of claims 1--4, 8-14, and 16 by Dodds We are persuaded by Appellants' arguments that the Examiner fails to establish anticipation of claims 1-4, 8-14, and 16 by Dodds. See Appeal Br. 10-23 and Reply Br. 2-6. The Examiner first finds that Dodds anticipates independent claims 1 and 12 by disclosing a method comprising, inter alia, "applying a first coating material ... on a threaded region of an opening (36) ... in a multi- piece assembly [and] inserting at least one fastener (112) to the threaded 2 Appeal2014-009182 Application 13/593,995 region." Final Act. 2, 4 (citing Dodds, col. 6, 11. 44--49 and Fig. 7). The Examiner also determines that "we can be confident that coating is being applied on the threads," because although "FIG. 23 illustrates that only the outermost threads are covered by plug 112 and hanger 106[, Dodd explains at column] 10, lines 55-58 [that] 'This arrangement is said to be a distinct improvement over prior art arrangements which threaded a hanger directly into the conduit opening, with damage to the threads or any protective coating thereon."' Id. at 9. The Examiner concluded that this disclosure illustrates that "[t]he threads, the ones inside the openings filled by hanger 106 and plug 112, can have protective coating thereon." Id. The Examiner further augments the final rejection in an Advisory Action dated December 30, 2013, observing that "[v]iewing the handle of Dobbs in Figure 23 at about 200% resolution it is clear that coating (50) is contacting the threads (36) in the handle of the device." Advisory Act. 3. The Examiner also noted that "Figure 23A shows a mounting screw (20), which is a threaded item, being inserted into a fastener hole (22) [that] would be non-functional if the hole (22) failed to have cooperating threads," and concluded that "[a]s Figure 23 illustrates, there is coating (50) all around the threads of the screw (20) and the threads of the hole (22)." Id. In response, Appellants first point out that "it appears that the Examiner has shifted positions [from the final rejection] by making reference to hanger 106 and plug 112 of FIG. 23, and alleging that a coating is on the inside threads, 'the ones inside openings filled by hanger 106 and plug 112."' Appeal Br. 17. However, Appellants explain that "FIG. 23 is merely a cutaway section [where] there is no coating on the threads at either inner location, because threads in conduit openings 34 and 36 are blocked 3 Appeal2014-009182 Application 13/593,995 off and [are] part of the interior of the assembly once hanger 106 and plug 112 are installed." Id. Also, while pointing out that "[t]he Advisory Action no longer alleges '[t]he threads, the ones inside the openings filled by hanger 106 and plug 112, can have protective coating thereon,' as was set forth in the Final Office Action dated September 24, 2013" (id. at 18), Appellants conclude that "Dodds does not teach anything to do with coating a threaded region, into which a fastener is then inserted," because "Dodds instead teaches an assembly where the threaded region is precluded from receiving a coating, in the conduit regions 34, 36, as well as in the threaded holes 24 of body 2" (id. at 23). While acknowledging that "the centerpiece of the Dodds reference is coating the outside," the Examiner still determines that "'coating 50 [of Dodds] is formed into sealing sleeves 52 and 54 which extend beyond the outer ends 56 and 58 of the conduit openings 34 and 36 in the conduit hubs 30 and 32, respectively, and form corrosion resistant and sealing sleeves for a conduit threaded into the conduit hubs 30 and 32."' Ans. 9-10 (again citing Dodds, col. 6, 11. 44--49). Based on the foregoing excerpt, the Examiner reasons that Dodds "discloses coating being/ ormed into the sealing sleeves 52 and 54 and therefore [the coating] must be going inside."2 Id. at 10. 2 While not being relied upon, for the first time the Examiner also observes that "the Dodds reference itself discloses other patents owned by the same assignee of the present invention ... which undeniably teach placing coating on both the internal and external threads." Ans. 9. However, in an appeal under 35 U.S.C. § 134(a), it is the Examiner's final rejection that we review. See In re Webb, 916 F.2d 1553, 1556 (Fed. Cir. 1990). 4 Appeal2014-009182 Application 13/593,995 In response, Appellants first point out that "with respect to the terms 'formed into,' Figure 6 shows a cross-section of the perspective view of Figure 2," where "sleeve materials 52 and 54 [are] formed of coating material 50 [that] is clearly external of the original assembly." Reply Br. 4. We agree with Appellants that "the Examiner has misunderstood the terms 'formed into,"' and that "[a]s can be clearly seen in Figures 2 and 6 [of Dodds], the sleeves 5 2 and 54 are made of the coating material and are formed in the process of adding the coating, and thus the coating 50 is 'formed into' the sleeves 52, 54." Id. at 4-5; see also Dodds, col. 6, 11. 44- 51. We further agree with Appellants' characterization that what "Dodds teaches [is] that there is 'no thread coat damage' (that is, no damage to the threads by coating getting into them)." See id. at 5-6. Further, in response to the Examiner's findings as to fastener hole 22 having internal threads, Appellants point to the description in Dodds of the assembly of cover 12 and tooling plate 70, and assert that fastener hole 22 is "a through-hole, through which screw 20 passes to threaded hole 24 of body 2." Appeal Br. 22 (citing Dodds, col. 8, 11. 30-38). Appellants assert that "the coating is precluded from entering the threaded region 24 because the screw 20 is present therein." Id. at 23. We are persuaded by Appellants' argument. Even though Figure 23A appears to show coating 50 on the inside of fastener hole 22, Dodds does not describe fastener hole 22 as threaded, and based on the description of the assembly provided in Dodds, fastener hole 22 is not necessarily threaded, and could be a through-hole, as posited by Appellants. Thus, there is inadequate disclosure in Dodds to support a finding by a preponderance of the evidence that Dodds discloses coating 50 applied on a threaded region, as claimed. Further, we agree with 5 Appeal2014-009182 Application 13/593,995 Appellants that the disclosure in Dodds supports a finding that due to the presence of screw 20 within threaded region 24 at the time the coating is applied, coating 50 would be precluded from entering threaded region 24 on body 2. Thus, we find the positions taken by the Examiner to be unsupported by the evidence of record. In particular, we do not agree with the Examiner that Dodds discloses "applying a first coating material on a threaded region of an opening in a multi-piece assembly," as recited in claims 1 and 12. [U]nless a reference discloses within the four comers of the document not only all of the limitations claimed but also all of the limitations arranged or combined in the same way as recited in the claim, it cannot be said to prove prior invention of the thing claimed and, thus, cannot anticipate under 35 U.S.C. § 102. Net MoneyIN, Inc., v. VeriSign, Inc., 545 F.3d 1359, 1371 (Fed. Cir. 2008). For the foregoing reasons, we do not sustain the Examiner's decision rejecting claims 1-4, 8-14, and 16 as anticipated by Dodds. Obviousness of claim 5 over Dodds and McCormick; of claims 6, 7, and 15 over Dodds and Dujjj;; and of claims 17-20 over McCormick and Dodds. Regarding the claims 5-7, 15, and 17-20, each of the Examiner's rejections is based on the same unsupported findings discussed above with respect to the disclosure of Dodds. 3 See generally Final Act. 6-8. The 3 Independent claim 17 is directed to "[a] connecting rod assembly, comprising ... a connecting rod portion ... defining an opening having a first thread, the first thread having a coating material applied thereon." Appeal Br. 30 (Claims App.). For the rejection of claim 17, the Examiner relies on Dodds to "teach [] coating materials for threaded holes." Final Act. 7. 6 Appeal2014-009182 Application 13/593,995 addition of McCormick or Duffy does not remedy the deficiencies of Dodds, as discussed supra. Accordingly, for similar reasons as discussed above for claim 1, we do not sustain the Examiner's decision rejecting claim 5 over Dodds and McCormick; claims 6, 7, and 15 over Dodds and Duffy; and claims 17-20 over McCormick and Dodds. DECISION The Examiner's prior-art rejections are reversed. REVERSED 7 Copy with citationCopy as parenthetical citation