13261539 (P.T.A.B. May. 30, 2018)

Ex Parte Östling et al

Patent Trial and Appeal BoardMay 30, 2018

13261539 (P.T.A.B. May. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/261,539 12/10/2012 2529 7590 MARK P. STONE 400 Columbus A venue Valhalla, NY 10595 06/01/2018 FIRST NAMED INVENTOR Thomas Ostling 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. AC-201 8993 EXAMINER MCMAHON, MATTHEW R ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 06/01/2018 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): stone92349@msn.com aleitner.stonelaw@msn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS OSTLING and LINDA GOTHLIN Appeal2017-009760 Application 13/261,539 Technology Center 3600 Before JAMES P. CALVE, ANNETTE R. REIMERS, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection2 of claims 1, 2, 6-10, 14--20, and 22 under 35 U.S.C. Â§ 103(a) as unpatentable over Appellants' Admitted Prior Art (APA) and Walter (US 1 Appellants identify the real party in interest as ATLAS COPCO ROCK DRILLS AB. Appeal Br. 2. 2 Appeal is taken from the Final Office Action dated October 27, 2016, as supplemented by the Advisory Action dated March 23, 2017. Appeal2017-009760 Application 13/261,539 4,194,581; issued Mar. 25, 1980). 3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm and designate our affirmance as a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. Â§ 4I.50(b). We also enter NEW GROUNDS OF REJECTION, pursuant to our authority under 37 C.F.R. Â§ 4I.50(b), of allowed claims 4, 12, and 13 under 35 U.S.C. Â§ I03(a) as unpatentable over Appellants' APA and Walter, and also of claim 22 under 35 U.S.C. Â§ 112, fourth paragraph, as failing to further limit claim 1 from which claim 22 depends, and under 35 U.S.C. Â§ 112, second paragraph, as indefinite. STATEMENT OF THE CASE Claims 1, 10, and 20 are the independent claims on appeal. Claim 1, reproduced below, is exemplary of the subject matter on appeal. 1. A driver for the transfer of torque and rotation from a rotation chuck to a drill steel, whereby the cross-section of the driver is the same along its length and limited outwards by convex curved sides, joined to form a closed figure, and limited inwards by splines, wherein the figure consists of four sides and four comers, and wherein in the splines consist of a number of spline teeth and spline spaces defined therebetween, the number of spline teeth being divisible by four, 3 The Examiner's objection to the drawings is a petitionable, not appealable, matter (see Final Act. 2-3; see also 37 C.F.R. Â§ 1.181; Ex Parte Frye, 94 USPQ2d 1072,1077-78 (BPAI 2010) (precedential)); and the Examiner's rejection of claims 1, 2, 6-10, 14--20, and 22 under 35 U.S.C. Â§ I03(a) as unpatentable over Appellants' Admitted Prior Art and Gugic (WO 2010/139441 Al; published Dec. 9, 2010) is withdrawn (see Ans. 2; see also Adv. Act. 2). 2 Appeal2017-009760 Application 13/261,539 wherein four of the spline teeth or spline spaces of the splines are symmetrically distributed around lines of symmetry through the figure, and wherein said lines of symmetry extend through the comers. ANALYSIS Independent claims 1, 10, and 20 and dependent claims 2, 6--9, and 14-19 Regarding independent claim 1, the Examiner finds, inter alia, that the Specification discloses, as admitted prior art (AP A), a driver 3 having a constant cross-section, and limited outwardly by convex curved sides 7 joined to form a closed figure 6 with sides 7 and comers 8, and limited inwardly by splines 4, as claimed. Final Act. 13 (citing Spec., Figs. 1, 2). The Examiner also finds that splines 4 consist of spaces 11 and eight teeth 10 (a number divisible by four). Id. (citing Spec., Fig. 1). The Examiner determines that the Specification discloses, as prior art, a closed figure consisting of three comers and three sides, rather than a closed figure consisting of four sides and four comers, as claimed. Id. at 15 ( citing Spec. Fig. 1 ). The Examiner also determines that the Specification fails to disclose, as prior art, that four of the teeth or spaces is symmetrically distributed around lines of symmetry extending through the comers of figure 6, as claimed. Id. The Examiner relies on Walter for teaching "the transfer of torque and rotation between an outer member" (i.e., wear bit 6) and "an inner hub" (i.e., shaft 5), wherein the inner hub "is limited outwards by convex curved sides joined to form a closed figure that consists of four sides and four comers." 3 Appeal2017-009760 Application 13/261,539 Id. at 14 (citing Walter, Fig. 2). 4 The Examiner reasons that it would have been obvious to modify the polygonal profile of the closed figure of Appellants' APA (i.e., as depicted in Figures 1 and 2 of the Specification) to have the four-sided, four-cornered polygonal profile discloses in Walter "for the purpose of forming a non-rotatable connection between the members and, for example, to evenly distribute rotational forces on the sides so as to avoid stress concentrations in the driver." 5 Id. at 14. The Examiner further determines that the modification would result in the claimed symmetry, as depicted in the Examiner's annotated Figure 1 of the Specification, reproduced below. Id. at 14--15. 4 Indeed, Walter discloses that a four-sided, four-cornered closed figure (i.e., a standard PC4 profile) is a known polygonal profile for transmitting torque. See Walter 2: 14--22; see also id., 9: 1-9 ("shaft 58 of the drill steel also passes ... through the ring[] 62 ... with a polygonal section [ such that] all axial movements are accompanied by a rotating following movement whenever a rotating movement is transmitted to the drill hammer 1 by a drilling motor (not shown) via a rod (also not shown)", Fig. 2). 5 The Examiner's proposed modification is a simple substitution of one known element (i.e., the APA's triangular-shaped torque transmitting polygonal profile) for another (i.e., Walter's standard square-shaped torque- transmitting polygonal profile) to yield predictable results. See KSR, at 417 (holding that the simple substitution of one known element for another is likely to be obvious if H does no more than yidd predictable results). 4 Appeal2017-009760 Application 13/261,539 Figure 1 of the Specification "shows a reduced section of a prior art gear housing 1 of a rock drilling machine," as annotated by the Examiner to depict a four-sided, four-cornered polygonal profile of the driver and lines of symmetry extending through the comers, such that the teeth or spaces of the splines of the driver are symmetrically distributed around lines of the symmetry, as claimed. Spec. 1: 15-16. The Examiner also determines that if the device of [Appellant's AP A] is modified in view of Walter such that the closed figure of the outer surface of the driver consists of four sides and four comers, the internal splines/spline spaces can only be distributed in one of two possible arrangements ( either symmetrically or asymmetrically) as it relates to [lines of symmetry extending through] the comers of the closed figure. Ans. 6 ( emphasis omitted). Appellants do not dispute that Walter discloses that shaft 5 has the claimed four-sided, four-cornered closed figure. Rather, Appellants argue that Walter's shaft 5 corresponds to a drill steel, and not a driver, as claimed. Appeal Br. 5 ( citations omitted). Appellants submit that Walter's ring 62 corresponds to the claimed driver, and therefore, Walter "does not teach a 5 Appeal2017-009760 Application 13/261,539 driver having splines and spline spaces in accordance with the driver," as claimed. Appeal Br. 5 ( citations omitted); see also Reply Br. 1. We are not persuaded of Examiner error by Appellants' argument, because the Examiner does not rely on Walter for disclosing a driver with the claimed four-sided, four-cornered closed figured, or for disclosing splines. Rather, as set forth supra, the Examiner relies on Walter for disclosing that it is known to transmit torque between components by using a four-sided, four-cornered closed figure. The Examiner proposes modifying the driver depicted in Figure 1 of the Specification (the APA), in view of Walter's teaching, to result in a driver having a driver limited outwardly by a four-sided, four-cornered closed figure and inwardly by splines. Therefore, Appellants' argument does not address the rejection, as articulated by the Examiner, and thus does not apprise us of error in the Examiner's findings or reasoning. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references."). Appellants also argue that neither Walter nor Figure 1 of the Specification (the APA) "teach[es] or suggest[s] the specific structural relationship between the spline teeth, the spline spaces, the comers of the closed figure, and the lines of symmetry through the closed figure," as required by claim 1. Appeal Br. 6; see also Reply Br. 3-6. Appellants submit that Walter and the AP A also "fail to recognize or address the specific problems to which [Appellants'] invention is directed," and that the Specification specifically criticizes the AP A. Appeal Br. 6-7. Appellants 6 Appeal2017-009760 Application 13/261,539 conclude that the Examiner improperly relied on hindsight. Id. at 7; see also Reply Br. 2. Appellants' argument does not apprise us of error in the Examiner's determination that modifying the AP A's triangular-shaped torque transmitting closed figure with Walter's square-shaped torque transmitting closed figure is a simple substitution that results in either four teeth or four spaces of the splines of driver 3 of the APA having either a symmetrical6 distribution around7 the lines of symmetry8 (which are inherent to Walter's known square-shaped profile) or an asymmetrical distribution. Notably, the Specification discloses that both arrangements are advantageous. For example, the Specification states that "[t]he polygonal profile and the splines are arranged in the present invention in an innovative manner that reduces the loads and distributes them symmetrically in the driver" (Spec. 2:24--26; see independent claims 1, 10, 20) and also that "[t]he spline teeth 10 and 6 An ordinary definition of "symmetry" consistent with the Specification is "correspondence in size, shape, and relative position of parts on opposite sides of a dividing line." www.merriam-webster.com/diciontary/symmetry (last visited May 25, 2018). 7 In view of the Specification, and consistent with Appellants' argument, we construe claim 1 as requiring each of four teeth, or each of four spaces, to be symmetrically distributed "around," or "on all or various sides," of one of the lines of symmetry. www.merriam-webster.com/dictionary/around (last visited May 25, 2018); see, e.g., Spec., Fig. 3 (depicting each of one of four spline teeth 10 being distributed symmetrically "around" or on either side of a line of symmetry). 8 An ordinary definition of a "line of symmetry" consistent with the Specification is "a line that divides a figure into two corresponding parts, each of which is the mirror image of the other." www.reference.com/math/ shapes-lines-symmetry-a02e002c2155f0b4 (last visited May 25, 2018). 7 Appeal2017-009760 Application 13/261,539 spline spaces 11 of the splines 4 can be arranged also asymmetrically around the lines 9 of symmetry through the comers 8," wherein "[t]he driver 3 [is] assembled such that it acquires the specified direction of rotation" (Spec. 4:1-7; see independent claims 4, 12, 13). We do not agree with the Examiner that the proposed modification results in a patentable invention (allowed claims 4, 12, 13) if applied to result in asymmetrical splines distributed around lines of symmetry through the figure, but in an unpatentable (obvious) invention if applied to result in symmetrical splines, as claimed. See Ans. 6. Our reviewing court guides that a finding of obviousness under the "obvious to try" standard "does not require absolute predictability of success ... all that is required is a reasonable expectation of success." In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (quoting In re O'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)). See also Manual of Patent Examining Procedure (MPEP) Â§ 2143(I)(E) ("'Obvious to try'-- choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success"). Here, the Examiner has identified two possible approaches, and Appellants have not pointed to any evidence of record that shows combining the AP.A and \VaHer to result in the claimed subject matter would have been "uniquely challenging or difficult for one of ordinary skill in the art" or would have "represented an unobvious step over the prior art." Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). According1y, we sustain the Exarniner's rejection of independent claim 1. To the extent we rely on reasoning that is not relied on by the Examiner in the rejection as stated, we designate our affirmance as a NEW 8 Appeal2017-009760 Application 13/261,539 GROUND OF REJECTION to provide Appellants with a fair opportunity to respond. Appellants chose not to present separate arguments for the patentability of independent claims 10 and 20, and claims 2, 6-9, and 14-19, and therefore, for the same reasons stated supra, we also sustain the Examiner's rejection of these claims, designating their affinnance as a new ground of rejection. For the same reasons, we determine that independent claims 4, 12, and 13, which recite, in relevant part, "wherein the spline teeth or spline spaces of the splines are asymn1etrically distributed around lines of symmetry through the figure," are a1so obvious in view of the APA and \Valter, as applied to cfaim l supra, and in view of the "obvious to try" reasoning set forth supra. Because the Examiner allowed claims 4, 12, and 13, we enter a NEvV GROUND OF REJECTION of claims 4, 12, and 13 under 35 U.S.C. Â§ 103(a) as unpatentable over the APA and \Valter. See Final Act 20----22. Dependent claim 22 Claim 22, which depends from claim 1, recites, in relevant part, wherein the spline spaces have bottorn surfaces defined between adjacent spline teeth, and wherein the bottom surfaces of the spline spaces and the adjacent spline teeth are arranged such that a chamber of sufficient volume is defined between the bottom surface of the spline space and the top of a drill steel when said drill steel is received in the spline space to prevent burrs frorn being pressed against root radii of the spline teeth. Appeal Br. 4 (Cfaims App.). The Examiner finds that Figure 2 of the Specification (APA), as modified by Walter with respect to claim 1, discloses the limitations of claim 22. Final Act. 18 (citing Spec., Fig. 2 (depicting a chamber between the bottom surface of a spline space 11 and a top of a drill steel 2)). The Examiner also determines that the drill steel "is 9 Appeal2017-009760 Application 13/261,539 recited functionally and is not positively required as paii of the claimed 'driver."' Ans. 7. Appellants argue that the limitations recited in claim 22 solve a particular problem that is not addressed by the prior art driver depicted in Figures l and 2 of the Specification (AP A). The Examiner correctly determines that claim 1 recites "a driver" and that the reference in claim 22 to "a drill steel" is not a structural limitation of the claimed driver. Claim 22 does not recite the driver in combination with a drill steel. Thus, claim 22 fails to limit the driver of claim 1. Accordingly, we enter a New Ground of Rejection of claim 22 under 351J.S.C. Â§ 112, fourth paragraph, as failing to further limit the driver recited in claim 1, pursuant to our authority under 37 C.F.R. Â§ 41.50(b). In other words, the statement of intended use (i.e., use with a drill steel to form a chamber) does not further limit the structure of the claimed driver. Accordingly, the Examiner's rejection of claim 22 under 35 U.S.C. Â§ 103 is moot. Moreover, the recitation of "a chamber of sufficient volume ... to prevent burrs from being pressed against root radii of the spline teeth" is indefinite under 35 U.S.C. Â§ 112, second paragraph, because the claim language fails to inform the person of ordinary skill in the art what would or would not infringe the claim, i.e., what is a "szifficient volume." See Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003) ("A claim is indefinite if, when read in light of the specification, it does not reasonably apprise those skiHed in the art of the scope of the invention."). In this regard, Appellants' Figure 2 shows a prior art driver 3 with spline space 11 that contains burr 13 without chamfered dri11 steel 2 contacting/pressing that burr 13 against root radii 12 even though the Specification describes this 10 Appeal2017-009760 Application 13/261,539 gap as inadequate to prevent pressing of burrs 13. Spec. 2:5----20. Accordingly, we enter a New Ground of Rejection of claim 22 under 35 U.S.C. Â§ 112, second paragraph, as indefinite, pursuant to our authority under 37 C.F.R. Â§ 4I.50(b). DECISION The Examiner's decision rejecting claims 1, 2, 6-10, and 14--20 under 35 U.S.C. Â§ 103(a) is AFFIRMED, and designated as a NEW GROUND OF REJECTION. We enter a NEW GROUND OF REJECTION of claims 4, 12, and 13 under 35 U.S.C. Â§ 103(a) as unpatentable over Appellants' APP and Walter. The Examiner's decision rejecting claim 22 under 35 U.S.C. Â§ 103(a) is moot, in view of our NEW GROUNDS OF REJECTION of claim 22 under 35 U.S.C. Â§ 112, fourth paragraph, and also under 35 U.S.C. Â§ 112, second paragraph. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 4I.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to 11 Appeal2017-009760 Application 13/261,539 the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining ProcedureÂ§ 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). AFFIRMED; 37 C.F.R. Â§ 4I.50(b) 12