Ex Parte Lutkus

Board of Patent Appeals and Interferences

Mar 22, 2010

10116454 (B.P.A.I. Mar. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WILLIAM J. LUTKUS
____________

Appeal 2009-005774
Application 10/116,454
Technology Center 3600
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Decided: March 22, 2010
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Before: LINDA E. HORNER, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William Lutkus (Appellant) seeks our review under 35 U.S.C. § 134
(2006) of the Examiner’s decision rejecting claims 9-20 and 22-30, which
are all of the claims on appeal. We have jurisdiction under 35 U.S.C. § 6(b)
(2006).

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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant’s claimed invention relates to coated fastener inserts and a
method for plating fastener inserts intended to prevent galvanic corrosion in
fastener assemblies. Spec. 1, para. 0001. Claim 23, reproduced below, is
representative of the subject matter on appeal.
23. A fastener assembly comprising a metallic fastener, a
metallic fastener insert, and a substrate for receiving said
fastener insert, wherein the insert comprises:
a generally cylindrical body of helically wound wire
defining a bore and including an outer surface, the bore
operable to receive the fastener, the outer surface including a
metal alloy plating, said plating having an emf potential similar
to that of the substrate to which the fastener is coupled.

THE REJECTION
Appellant seeks review of the Examiner’s rejection of claims 9-20 and
22-30 under 35 U.S.C. § 103(a) as unpatentable over European Patent
Application 1 070 861 A2 to Lutkus (published Jan. 24, 2001) and U.S.
Patent 4,802,807 to Offenburger (issued Feb. 7, 1989).

ISSUES
It is uncontested that Lutkus discloses a metallic fastener, a metallic
fastener insert having a fluoropolymer coating to reduce galvanic corrosion,
and a substrate for receiving the fastener insert. Ans. 3; App. Br. 7-8. It is
uncontested that Lutkus fails to disclose the insert having a metal alloy
plating with an emf potential similar to that of the substrate. Ans. 3; App.
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Br. 9 (chart). It is also uncontested that Offenburger discloses plating a
fastener with a metal alloy in order to increase corrosion resistance and
reduce torque load when driving the fastener. Ans. 3-4, 8; App. Br. 8-9.
The dispute in this case does not focus on the scope and content of the prior
art; rather, the dispute in this case focuses on the rationale for combining the
references and whether the references, if combined, would result in the
claimed invention.
The Examiner concluded a person of ordinary skill in the art would
have found it obvious to substitute Offenburger’s metal alloy plating in place
of the fluoropolymer coating on Lutkus’s fastener insert to provide corrosion
resistance and reduce torque load when driving the fastener. Ans. 3-4, 9.
Appellant argues claims 9-20 and 22-30 as a group. App. Br. 6-14.
We select claim 23 as the representative claim, and claims 9-20, 22, and 24-
30 stand or fall with claim 23. 37 C.F.R. § 41.37(c)(1)(vii) (2009).
Appellant makes two contentions that the proposed combination is
based upon an insufficient reason to combine the references. First,
Appellant argues the references contain no motivation to use Offenburger’s
fastener plating on a fastener insert, that such motivation is only found in
Appellant’s claimed invention. App. Br. 10-12. Second, Appellant argues
the references “work in different ways” in that Offenburger reduces the
torque load for driving a self-tapping fastener, while Lutkus’s insert is not
self-tapping and is designed to remain in place once in the substrate. App.
Br. 12-14.
Appellant further argues that Offenburger teaches to plate the fastener
with a metal alloy, and that if such teaching were applied to Lutkus’s
fastener, the resulting combination does not meet each limitation because
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claim 9 recites that the insert, not the fastener, is coated with a metal alloy.
App. Br. 6-10.
The issues before us are:
Did the Examiner provide a sufficient reason with a rational
underpinning to explain why a person of ordinary skill in the art would have
substituted Offenburger’s metal alloy fastener plating for Lutkus’s
fluoropolymer coating on the fastener insert?
Would the combined teachings of Offenburger and Lutkus result in
the fastener insert having metal alloy plating, as called for in claim 23?

ANALYSIS
Claim 23 is directed to a metallic fastener assembly comprising: a
metallic fastener, a metallic fastener insert having a metal alloy plating, and
a substrate for receiving the fastener insert, where the insert plating has an
emf potential similar to that of the substrate.
As stated in the Issues section, supra, it is uncontested that Lutkus
discloses a metallic fastener, a metallic fastener insert having a
fluoropolymer coating to reduce galvanic corrosion, and a substrate for
receiving the fastener insert, and that Offenburger discloses plating a
fastener with a metal alloy in order to increase corrosion resistance and
reduce torque load when driving the fastener. Ans. 3-4; App. Br. 7-9.
Replacing Lutkus’s corrosion resistant coating for a fastener insert
with Offenburger’s corrosion resistant plating for a fastener to reach the
subject matter of claim 23 involves only the simple substitution of one
known corrosion resistant layer for another. A prima facie conclusion of
obviousness may be supported by a showing that the claims are directed to a
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process, machine, manufacture, or composition of matter already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, and such modification yields a predictable result.
See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (citing United
States v. Adams, 383 U.S. 39, 40 (1966)).
Thus, the rejection does not rely upon impermissible hindsight, but
rather relies on the knowledge of one of ordinary skill in the art at the time
of the invention to recognize the predictable result that a corrosion resistant
metal alloy plating for a fastener would similarly protect a fastener insert.
Appellant has provided no evidence that such a modification produces an
unexpected result or was uniquely challenging or difficult for one of
ordinary skill in the art.
We are also unpersuaded by Appellant’s contention that the references
“work in different ways” in that Offenburger reduces the torque load for
driving a self-tapping fastener, while Lutkus’s insert is not self-tapping and
is designed to remain in place once in the substrate. App. Br. 12-14.
Assuming, arguendo, this contention is true, it fails to address the other
rationale provided by the Examiner for the modification, namely, that
substituting Offenburger’s metal alloy plating in place of Lutkus’s
fluoropolymer coating would provide corrosion resistance (Ans. 3-4).
Appellant has failed to show that the rationale for the proposed combination
is insufficient.
Appellant’s assertion that the combined teachings of Offenburger and
Lutkus would not result in the claimed fastener insert is based on the
premise that one having ordinary skill in the art would blindly follow the
teaching of Offenburger to bodily incorporate its metal plating onto the
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fastener of Lutkus (App. Br. 6-10). The artisan is not compelled to blindly
follow the teaching of one prior art reference over the other without the
exercise of independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp.,
733 F.2d 881, 889 (Fed. Cir. 1984). As the Court in KSR recognized, “[a]
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.
Appellant has failed to demonstrate error in the rejection of claim 23.
Claims 9-20, 22, and 24-30 fall with claim 23.

CONCLUSIONS
The Examiner provided a sufficient reason with a rational
underpinning to explain why a person of ordinary skill in the art would have
substituted Offenburger’s metal alloy plating in place of Lutkus’s coating for
a fastener insert.
The combined teachings of Offenburger and Lutkus would result in
the fastener insert having metal alloy plating, as called for in claim 23.

DECISION
We AFFIRM the Examiner’s decision to reject claims 9-20 and 22-30.
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) (2007).

AFFIRMED

Vsh

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