Ex Parte Love

Patent Trial and Appeal Board

Nov 24, 2014

12019253 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICKEY L. LOVE
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Appeal 2012-009076
Application 12/019,253
Technology Center 3600
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Before: EDWARD A. BROWN, LYNNE H. BROWNE, and
SCOTT A. DANIELS, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1–4 and 7 under 35 U.S.C. § 103(a) as being
unpatentable over DeHaitre (US 5,516,248, iss. May 14, 1996). Claims 5
and 6 are canceled. Claims 8–16 are indicated to be allowable. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are directed to a fastener for an isolation mount. Claim 1,
reproduced below, illustrates the claimed subject matter:
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1. A fastener, comprising:
a threaded shaft;
a cone shaped head portion integrally formed with said
threaded shaft, said cone shaped head portion including a
narrow end and a relatively wider end, said narrow end being
closer to said threaded shaft than said wider end, wherein said
cone shaped head portion has an outer conical surface angled
with respect to an axis of said threaded shaft at an angle of
approximately 30 degrees; and
a tool engaging portion on said head portion.

OPINION
Appellant argues claims 1–4 and 7 together. See Appeal Br. 4–6. We
select independent claim 1 as the representative claim and claims 2–4 and 7
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner determines that DeHaitre discloses all of the limitations
of claim 1 except a “cone shaped head portion [that] has an outer conical
surface angled with respect to an axis of the threaded shaft at an angle of
approximately 30 degrees.” Ans. 4–5. The Examiner further determines
that:
It would have been an obvious matter of design choice to have
modified the angle of DeHaitre by having the outer conical
surface angled at approximately 30 degrees, since appellant has
not disclosed that having the outer conical surface extending at
this specific angle solves any stated problem or is for any
particular purpose and it appears that the cone shaped head
portion would perform equally well with the outer conical
surface angled at any acute angle in order to correspond to the
mating surface.
Id. at 5.
Appellant contends (by marking up a copy of DeHaitre’s Fig. 3) that
in DeHaitre the angle of the conical surface is approximately 55 degrees.
See App. Br. 4; Reply Br. 4. However, Appellant does not direct us to any
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Application 12/019,253
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description in DeHaitre of this numerical value. Appellant’s contention is
not well taken because when the reference does not disclose that the
drawings are to scale and is silent as to dimensions, arguments based on
measurement of the drawing features are of little value. See Hockerson-
Halberstadt, Inc. v. Avia Group Int’l, Inc. 222 F.3d 951, 956 (Fed. Cir.
2000).
Appellant argues that “it would not be obvious to modify the angle of
the conical section of DeHaitre ‘248 to 30 degrees because it would reduce
the holding strength of the wood screw and increase the likelihood of
splitting the wood rather than serving as a sufficient wood screw.” App. Br.
5; see also Reply Br. 3. Appellant’s argument is conclusory in nature and
unsupported by evidence. An attorney’s arguments in a brief cannot take the
place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Moreover, Appellant’s argument is not responsive to the rejection as
articulated by the Examiner. The rejection proposes to modify the screw
disclosed by DeHaitre to correspond to the mating surface with which it is
intended to be used (e.g., an isolation mount as disclosed in Appellant’s
Specification). See Ans. 5. Thus, Appellant’s argument is not persuasive.
Appellant further argues that “the 30 degree angle is clearly critical as
it relates to the disclosed isolation mount of the present application.” Reply
Br. 5. Appellant explains that:
the claimed 30 degree angle of the conical surface does provide
a particular purpose in the disclosed isolation mount by
providing a conical surface against which the elastomeric
member provides an appropriate spring effect while preventing
the bottoming out between the conical surface and an opposing
conical surface of the frame bracket.
App. Br. 5 (emphasis omitted); see also Reply Br. 5.
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In response to this argument, the Examiner correctly notes that the
Specification “discloses that the outer conical surface of the invention can be
angled with respect to an axis of the threaded shaft within a range of
between 15 and 75 degrees.”1 Ans. 6 (citing Spec. 4). The Examiner further
notes that “[t]he use of an approximately 30 degree angle as being a critical
feature was not set forth in the Specification.” Ans. 7. While the
Specification states that “[i]n the embodiment illustrated, the outer conical
surface is angled with respect to the axis of the thread shaft at an angle of
approximately 30 degrees,” the Specification does not attribute any
criticality to this angle as compared to any other angle in the disclosed
range. Spec. 4–5. Where patentability is said to be based upon particular
chosen dimensions or upon another variable recited in a claim, Appellant
must show that the chosen variable is critical. In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990). In view of the Specification, Appellant cannot
make such a showing. Thus, Appellant’s argument is not persuasive.
For these reasons, we sustain the Examiner’s decision rejecting
independent claim 1, and claims 2–4 and 7 which fall therewith.

DECISION
The Examiner’s rejection of claims 1–4 and 7 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

1 We additionally note that claim 1 does not claim an isolation mount.
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AFFIRMED
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