Ex Parte Luepke

Patent Trial and Appeal Board

Aug 22, 2018

13963421 (P.T.A.B. Aug. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/963,421 08/09/2013 Richard A. Luepke
23399 7590 08/24/2018
REISING ETHINGTON P.C.
755 W. Big Beaver Road
Suite 1850
TROY, MI 48084
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.
7134.3063.002 7798
EXAMINER
ESTREMSKY, GARY WAYNE
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
08/24/2018 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):
docketing@reising.com
USPTOmail@reising.com
USPTOmail@gmx.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD A. LUEPKE
Appeal 2018-000991 1
Application 13/963,421 2
Technology Center 3600
Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
SCHOPPER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
3-10, 13-15, 17, 20, 22, and 23. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
1 Our decision references the Appeal Brief ("Appeal Br.," filed May 22,
2017), the Reply Brief ("Reply Br.," filed Nov. 8, 2017), the Examiner's
Answer ("Ans.," mailed Sept. 8, 2017), and the Final Office Action ("Final
Act.," mailed Jan. 23, 2017).
2 According to Appellant, the real party in interest is "Lockheed Martin
Corporation." Appeal Br. 2.
Appeal2018-000991
Application 13/963,421
BACKGROUND
According to Appellant, the "application relates generally to a plug
insert for a fastener hole in a panel." Spec. ,r 1.
CLAIMS
Claims 9, 13, and 1 7 are the independent claims on appeal. Claim 9 is
illustrative of the appealed claims and recites:
9. A plug insert comprising:
a shank removably receivable in a fastener hole in a
panel, in a position where an outer end of the plug insert is
disposed adjacent an outer surface of the panel;
a longitudinal cavity disposed within the shank;
an annular cap molded in-place on an outer end of the
shank and having an axial through-hole axially aligned with the
longitudinal cavity; and
a web extending across and sealing off the longitudinal
cavity.
Appeal Br. 1 7.
REJECTIONS
1. The Examiner rejects claims 3, 6-10, 13-15, 20, and 22 under 35 U.S.C.
§ 102( a)( 1) as anticipated by Dettfurth. 3
2. The Examiner rejects claims 3-10, 14, 17, 22, and 23 under 35 U.S.C.
§ 103 as unpatentable over Dettfurth.
3 Dettfurth et al., US 4,509,308, iss. Apr. 9, 1985.
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Application 13/963,421
DISCUSSION
Anticipation
Claims 3, 6-10, 14, and 22
Because our conclusion below regarding the obviousness rejection is
dispositive regarding these claims and addresses Appellant's arguments
regarding these claims, we do not reach the anticipation rejection of claims
3, 6-10, 14, and 22.
Claim 13
With respect to claim 13, the Examiner finds that Dettfurth discloses a
plug insert with a shank, longitudinal cavity, and annular cap as claimed.
Final Act. 2--4. More specifically, in relevant part, the Examiner identifies
Dettfurth's bore 49 as the claimed "at least one off-axis through hole-shaped
and positioned to receive molten shank material when the cap is molded in
place with [sic the] shank." Id. at 4.
We agree with Appellant that Dettfurth's bore 49 is not positioned as
required by the claim. Appellant asserts that the "'shaped and positioned to
receive' limitation describes structure (shape and position) according to
function and is thus a functional structural limitation." Appeal Br. 12.
Appellant contends that "Dettfurth neither discloses nor suggests that the
bore 49 is or might be positioned where it would be capable of receiving
molten shank material." Id. at 13. We agree. We find that the functional
language claimed, i.e., "to receive molten shank material when the cap is
molded in place with [ sic the] shank," requires a specific arrangement
between the cap, through-hole, and shank such that the hole is located on the
cap in a position that is required to form the shank element of claim 13. The
Examiner has not established that Dettfurth's bore 49 is a bore in the cap
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Application 13/963,421
with the specific arrangement required. More specifically, the Examiner
does not explain how the bore 49 is "positioned" to achieve the functioned
claimed. Although bore 49 may be capable of passing molten shank
material, we find that this capability is not sufficient to show the hole is also
positioned as claimed. Accordingly, we are persuaded of reversible error
and we do not sustain the rejection of claim 13.
Claim 15
Claim 14 depends from claim 9 and further requires, inter alia, that
"the plug insert includes a head." Appeal Br. 18. Claim 15 depends from
claim 14 and requires that "the head is formed with the shank as a single
unitary piece." Id. Although the Examiner makes findings regarding claim
14, the Examiner neither refers to claim 15 specifically in the body of the
rejection nor does the Examiner make a finding that Dettfurth discloses a
head and shank that are formed as a unitary piece. See Final Act. 2-5. The
Examiner does not appear to remedy this deficiency in the rejection in either
the Final Action or the Answer. Accordingly, the Examiner has not
established that Dettfurth discloses a head and shank that are "a single
unitary piece," and thus, we do not sustain the rejection of claim 15.
Claim 20
Claim 20 depends from claim 9 and, similar to claim 13, requires that
"the cap comprises at least one off-axis through-hole shaped and positioned
to receive molten shank material when the cap is molded in place with the
shank." Appeal Br. 19. For the reasons set forth above with respect to claim
13, we do not sustain this rejection.
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Application 13/963,421
Obviousness
Although the Examiner initially relies on anticipation in rejecting
claim 9, the Examiner alternatively relies on an obviousness rejection over
Dettfurth. With respect to the obviousness rejection, the Examiner finds that
Dettfurth discloses a plug insert as claimed, except that Dettfurth "does not
explicitly describe [annular cap] 42 being molded in-place on the end of
[shank] 58." Final Act. 7-8. Regarding this claim requirement, the
Examiner concludes:
However, it would have been an obvious design choice or
manufacturing expedient for one of ordinary skill in the art to
insert mold, [i.e.,] 'mold in-place' parts 41, 42, and 58[,] in the
arrangement shown in order to manufacture the particular
geometry illustrated, for [ sic the] function as described. One of
ordinary skill in the art would have more than [ sic a] reasonable
expectation of success since the proposed manufacture by insert
molding both of parts 42, 58 within 41 would not otherwise
affect function of the assembly as disclosed.
Id. at 8.
As discussed below we are not persuaded of reversible error with
respect to the Examiner's obviousness rejection of claim 9.
With respect to this rejection, Appellant argues that the "proposed
modification of Dettfurth does not satisfy the molded in-place" limitation
because Dettfurth discloses that the outer shank 58 is molded in place on the
cap, rather than the opposite arrangement as required by the claim. Appeal
Br. 14. This argument is consistent with Appellant's arguments raised with
respect to the anticipation rejection of claim 9. Specifically, with respect to
the anticipation rejection, Appellant argues that the limitation "an annular
cap molded in-place on an outer end of the shank"
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requires that the comparative material properties of, and the
structural relationship between, the cap and shank be consistent
with the cap having been in a solid state when introduced into a
mold, and having maintained its shape and solid state when the
shank was subsequently introduced into the same mold in a
molten state.
Appeal Br. 8. Appellant also argues that the limitation is not a product-by-
process limitation and requires a specific structural arrangement "consistent
with the cap having been molded in-place on the shank" as set forth above.
Id. at 10-11. Thus, Appellant argues that Dettfurth's disclosure of providing
a shank and then molding a cap onto that shank is not consistent with the
meaning of the term "molded in-place" as required by claim 9 and is a
disclosure of the opposite configuration.
However, Appellant's argument does not persuade us of reversible
error in the obviousness rejection. Even if we were to agree with
Appellant's proposed interpretation of the "molded in-place" limitation, the
obviousness rejection makes clear that the "molded in-place" limitation is a
design choice that does not affect the function of the assembly and that one
of ordinary skill in the art would have "more than [a] reasonable expectation
of success" in creating an insert with a cap that is "molded in-place" as
required by the claim based on Dettfurth's disclosure. Final Act. 8. We find
that the Examiner's findings and conclusions are applicable to both molding
the shank in place on the cap and molding the cap in place on the shank.
Further, Appellant argues that Dettfurth teaches away from the
claimed configuration because Dettfurth allegedly discloses a shank molded
in-place instead of a cap molded "in-place." Appeal Br. 14. Thus,
Appellant asserts that providing a cap that is molded in-place as claimed,
"would require re-ordering of Dettfurth's manufacturing process, as well as
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a redesign of Dettfurth's components to compensate for a complete reversal
as to which of Dettfurth's parts holds which other part or parts in place." Id.
We disagree. First, we note that it is generally not sufficient to
establish teaching away where a reference merely discloses an alternative
embodiment to that which is claimed. See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference
does not teach away [ ... ] if it merely expresses a general preference for an
alternative invention[.]"). Further, we disagree that Dettfurth's
manufacturing process would need to be re-ordered or completely reversed.
Although Dettfurth does disclose a process by which the shank [insert 58] is
provided and the cap [ dowel body 41] is injected molded onto the shank,
Dettfurth also discloses an alternative arrangement in which "the dowel
body 41 is made by pressure molding" such that "insert 58 is pressed into
the dowel body 41 subsequently to the pressure molding." Dettfurth col. 6,
11. 15-26. Thus, Dettfurth discloses both a process whereby the cap is
molded onto the shank and a process whereby the shank is molded onto the
cap. Therefore, we cannot agree that Dettfurth's disclosure of molding the
cap onto the shank teaches away from the opposite arrangement.
Based on the foregoing, we are not persuaded of reversible error with
respect to the obviousness rejection of claim 9. Accordingly, we sustain this
rejection. Appellant relies on the same arguments with respect to claim 17
and Appellant does not raise separate arguments with respect to the
dependent claims addressed in this rejection. Thus, we also sustain the
rejection of claims 3-8, 10, 14, 17, 22, and 23 as obvious.
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CONCLUSION
We REVERSE the rejection of claims 13, 15, and 20 under 35 U.S.C.
§ 102(a)(l). We AFFIRM the rejection of claims 3-10, 14, 17, 22, and 23
under 35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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