Ex parte Palusis et al.

Board of Patent Appeals and Interferences

Aug 31, 1999

08726978 (B.P.A.I. Aug. 31, 1999)

Application for patent filed October 7, 1996. According1
to appellants, the application is a division of Application
08/360,937, December 21, 1994, now U.S. Patent no. 5,592,814,
issued January 14, 1997.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MARK E. PALUSIS, CARLOS G. FIGUEROA,
DANIEL C. FRIEDBERG, GARY D. JONES and GUNTHER
EICHHORN
__________
Appeal No. 99-0650
Application 08/726,9781
___________
ON BRIEF
___________
Before ABRAMS, STAAB, and McQUADE, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the rejection of claims
1-3, 7 and 8, which claims have been twice rejected by the
Appeal No. 99-0650
Application 08/726,978
Our understanding of this French language reference is2
derived from a translation thereof submitted by appellants
during prosecution of the instant application. As indicated
by the translation, this patent appears to have been filed in
the French Patent Office on behave of the inventor by K.A.C.
Limited. In order to avoid confusion as to the reference
intended, we will continue to use the designation French ‘899
used by the examiner in referring to this reference.
2
examiner. Claims 4-6, the only other claims remaining in the
application, have been indicated by the examiner as being
allowable if rewritten in independent form to include all the
limitations of base claim 1 and any intervening claim.
Appellants’ invention pertains to a fastener for
insertion through aligned holes in two composite sheets to
hold the sheets together. Independent claim 8, a copy of
which can be found in an appendix to appellants’ brief, is
illustrative of the appealed subject matter.
The references relied upon by the examiner in support of
rejections under 35 U.S.C. § 102(b) and 35 U.S.C. § 103 are:
Cramer Jr. et al (Cramer) 4,790,683 Dec. 13,
1988
K.A.C. Limited 1,167,899 Dec. 2,2
1958
Claims 1-3 and 8 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by French ‘899.
Appeal No. 99-0650
Application 08/726,978
3
Claim 7 stands rejected under 35 U.S.C. § 103 as being
unpatentable over French ‘899 in view of Cramer.
The rejections are explained in the second office action
(Paper No. 9) and the examiner’s answer (Paper No. 17).
The opposing viewpoints of appellants are set forth in
the brief (Paper No. 15).
Considering first the § 102 rejection of claims 1-3 and
8, anticipation under 35 U.S.C. § 102(b) is established only
when a single prior art reference discloses, either expressly
or under the principles of inherency, each and every element
of a claimed invention. See In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997); In re Paulsen, 30
F.3d 1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994); In
re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990); and RCA Corp. v. Applied Digital Data Sys., Inc., 730
F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984). However,
the law of anticipation does not require that the reference
teach specifically what an appellant has disclosed and is
claiming but only that the claims on appeal “read on”
Appeal No. 99-0650
Application 08/726,978
4
something disclosed in the reference, i.e., all limitations of
the claim are found in the reference. See Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983), cert. denied, 465 U.S. 1026 (1984).
Appellants disclose several embodiments of the claimed
invention. Each embodiment includes a bolt having a shank
portion and a head, a journal bearing for insertion into the
bore of the composite sheets, resilient means between the
shank portion of the bolt and the bore, and a nut on the bolt
for compressing the composite sheets between the head of the
bolt and the nut.
Independent claim 1 is directed to the Figures 2 and 4
embodiment of appellants’ invention and calls for resilient
means in the form of “a plurality of circumferentially
disposed hollow resilient springs supporting the bolt mounted
between said journal and said shank portion” (emphasis added).
According to appellants’ disclosure, these springs comprise “a
plurality of hollow, thin-walled, springs 28 (bearing tubes)
radially support[ing] the bolt 20” (specification, page 6).
Figure 4 shows these hollow tubes 28 disposed in a
Appeal No. 99-0650
Application 08/726,978
5
circumferential array for placement about the shank portion of
the bolt. The examiner contends that the springs 4 and 19 of
French ‘899 respond to this claim limitation; however, we do
not agree. From our perspective, the examiner’s position
constitutes an improper and strained reading of the claim
language, especially when that language read in light of
appellant’s disclosure. While springs 5 and 19 of French ‘899
certainly constitute a plurality of springs, they are not
collectively circumferentially disposed about the shank
portion of the bolt. Rather, they are axially disposed along
the shank. In light of the above, we will not sustain the
standing § 102 rejection of claim 1 as being anticipated by
French ‘899.
Independent claim 2 is directed to the Figure 3
embodiment of appellants’ invention and calls for resilient
means in the form of “a plurality of[] resilient annular
springs in a stack that extends between the ends of the
journal” (emphasis added). According to appellants’
disclosure, “[t]hese springs 42, appearing as small, hollow,
metal o-rings, are actually made of a tightly wound helical
Appeal No. 99-0650
Application 08/726,978
6
spring that is formed to be circular in plan and cross section
(as shown)” (specification, page 7). As with the examiner’s
position with respect to the resilient means limitation of
claim 1, the examiner contention here that the springs 4
and/or 19 of French ‘899 respond to the resilient means
limitation of claim 2 once again is based on an improper and
strained reading to the claim language in question. In our
view, one of ordinary skill in the art would not consider the
axially spaced helical springs 4 and/or 19 of French ‘899 as
corresponding to the requirement of claim 2 that the springs
comprise a plurality of resilient annular spring arranged in a
stack, especially when appellants’ claim language is read in
light of the underlying specification. Accordingly, we will
not sustain the standing § 102 rejection of claim 2, or claim
3 that depends therefrom, as being anticipated by French ‘899.
We reach an opposite conclusion with respect to the
anticipation rejection of claim 8, which more broadly claims
the resilient means. French ‘899 discloses a composite
structure comprising two sheets 9, 23 held together by a
fastener inserted through a bore in each sheet, with the
Appeal No. 99-0650
Application 08/726,978
With respect to the requirement of claim 8 that the3
means for resiliently supporting the bolt is constructed of
metal, we note that appellants have not argued this limitation
as a distinction over the applied reference. Thus, it will be
assumed that this limitation is met by French ‘899. Cf. In re
Baxter Travenol Labs, 952 F.2d 388, 391, 21 USPQ2d 1281, 1285
(Fed. Cir. 1991) (“It is not the function of this court to
7
fastener comprising a bolt 1 having a shank portion 3 and a
head 2. The French ‘899 device further includes a journal
bearing 5 inserted into the bore in each sheet for receiving
the bolt, resilient means, in the form of a helical spring 4,
mounted between the shank portion and the journal bearing for
resiliently supporting the bolt in the journal bearing, and a
nut 13 on the bolt. The spring 4 transversely supports the
bolt, at least to some extend. The nut 13 compresses the
sheets between the nut and the head, with the tapered portion
of the head 2 bearing against a complementary surface on the
journal bearing. Based on the above, we consider that claim 8
“reads on” the French ‘899 device. It follows that we simply
do not agree with appellants’ argument on pages 6-7 of the
brief that French ‘899 does not disclose (1) a nut for
compressing the sheets between the nut and the head against
the journal bearing, or (2) a journal bearing as claimed. In3
Appeal No. 99-0650
Application 08/726,978
examine the claims in greater detail than argued by an
appellant, looking for nonobvious distinctions over the prior
art.”); In re Wiseman, 596 F.2d 1019, 1022, 201 USPQ 658, 661
(CCPA 1979) (arguments must first be presented to the Board).
8
light of the foregoing, we will sustain the standing § 102
rejection of claim 8 as being anticipated by French ‘899.
Independent claim 7 is directed to the Figure 5
embodiment of appellants’ invention and calls for resilient
means in the form of “a wave spring . . . for supporting the
bolt.” The examiner acknowledges that French ‘899 lacks a
wave spring, but has taken the position that “Cramer teaches
the use of a wave spring 10 in a joint for the purpose of
providing a device for absorbing differences in tolerance
between a shaft and an opening” (second office action, page
3). Based on these teachings, the examiner concludes that it
would have been obvious “to modify the device of French ‘899
as taught by Cramer for the purpose of absorbing differences
in tolerance between the shaft and an opening” (second office
action, page 3).
Initially, it is not clear to us precisely how the
examiner proposes to modify the device of French ‘899 in view
of Cramer. Specifically, it is not clear whether the examiner
Appeal No. 99-0650
Application 08/726,978
9
proposes to add one or more wave springs to the French ‘899
device at, for example, the location(s) of the helical coil
springs 4 and/or 19, or whether the examiner proposes to
replace one or more of the springs 4 and 19 of the French ‘899
device with wave springs. In any event, regardless of the
intended modification, the examiner’s position is not well
taken.
The structure of Cramer that the examiner refers to as a
wave spring is actually a tolerance ring 10 comprising a
spring steel cylinder 14 having corrugations 16. The Cramer
device is intended to compensate for radial play between inner
cylindrical member 18 and the hole 20 in a surrounding
structure. It would not have been obvious to the ordinarily
skilled artisan to replace either of the helical coil springs
of French ‘899 with a tolerance ring of the type taught by
Cramer because Cramer’s tolerance ring would not be capable of
providing the axial biasing forces French ‘899 intends the
springs to provide. See Ex parte Rosenfeld, 130 USPQ 113, 115
(Bd. App. 1961) (modification that renders apparatus
unsuitable for its intended purpose cannot be said to have
Appeal No. 99-0650
Application 08/726,978
10
been obvious to one of ordinary skill in the art). Likewise,
the addition of one or more tolerance rings to the French ‘899
device at the location called for by claim 7 would not have
been obvious because the added elements would not appear to
serve any useful purpose in the French ‘899 device. In this
regard, based on the teaching of the applied references alone,
and without the benefit of hindsight knowledge acquired by
first reading appellants’ disclosure, there is no cogent
reason for compensating for radial play between the various
components of the French ‘899 device. We therefore will not
sustain the standing § 103 rejection of claim 7.
Summary
The rejection of claims 1-3 and 8 as being anticipated by
French ‘899 is reversed as to claims 1-3, but is affirmed as
to claim 8.
The rejection of claim 7 as being unpatentable over
French ‘899 in view of Cramer is reversed.
The decision of the examiner is affirmed-in-part.
Appeal No. 99-0650
Application 08/726,978
11
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Neal E. Abrams )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Lawrence J. Staab )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
John P. McQuade )
Administrative Patent Judge )
Appeal No. 99-0650
Application 08/726,978
12
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