Ex Parte Parrett et al

Patent Trial and Appeal Board

Jul 31, 2017

11860852 (P.T.A.B. Jul. 31, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/860,852 09/25/2007 David Michael Parrett 57061 7319
27975 7590
ADD&G - 27975
1401 CITRUS CENTER 255 SOUTH ORANGE AVENUE
P.O. BOX 3791
ORLANDO, EL 32802-3791
EXAMINER
AMIRI, NAHID
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
08/02/2017 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):
creganoa @ allendyer. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID MICHAEL PARRETT, TROY NATHAN BOSTON,
ERIC REID LASSITER, and MARK PATRICK MCJUNKIN
Appeal 2015-004874
Application 11/860,852
Technology Center 3600
Before EDWARD A. BROWN, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Michael Parrett et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 1—7 and 14—21.1 We
have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 8—13 and 22—24 have been withdrawn from consideration. Appeal
Br. 41—43, 46-48.
Appeal 2015-004874
Application 11/860,852
INVENTION
Appellants’ invention relates to “a bicycle seat tube clamp for
securing a bicycle seat post within a bicycle frame seat tube.” Spec. 11.
Claims 1, 14, and 18 are independent. Claim 1 is illustrative and
reads as follows:
1. A bicycle seat tube clamp for clamping an open upper
end of a seat tube of a bicycle onto a bicycle seat post
positioned therein, the bicycle seat tube clamp comprising:
a clamp body having an opening therethrough for
receiving the upper end of the seat tube of the bicycle;
at least one radially inwardly extending projection carried
by said clamp body for engaging the upper end of the seat tube;
said clamp body having a separation therein defining first
and second opposing clamp ends;
said first and second opposing clamp ends having
respective first and second aligned fastener shaft-receiving
passageways therein;
said first clamp end further having a nut-receiving
passageway intersecting the first fastener shaft-receiving
passageway, said nut-receiving passageway having at least a
partial cylindrical shape;
said second clamp end further having an enlarged
fastener head-receiving passageway aligned with the second
fastener shaft-receiving passageway; and
a fastener comprising
an enlarged head positioned in the enlarged
fastener head-receiving passageway and having a convex
surface,
a shaft extending outwardly from said enlarged
head and integrally formed with said enlarged head and
defining a monolithic unit therewith, said shaft being
positioned to extend through the first and second fastener
shaft-receiving passageways,
a shaped washer surrounding said shaft and having
a concave upper surface engaging the convex lower
surface of said enlarged fastener head, and
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a nut positioned in the nut-receiving passageway
and engaging said shaft, said nut having at least a
partially cylindrical shape.
Appeal Br. 39-40 (Claims App.).
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1, 2, 4—7, 18, 19, and 21 under
35 U.S.C. § 103(a) as unpatentable over Appellants’ Admitted
Prior Art (“AAPA”), Chen (US 6,896,438 Bl, iss. May 24,
2005), and Mielke (US 3,491,630, iss. Jan. 27, 1970).
II. The Examiner rejected claims 3 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA, Chen, Mielke, and
Messina (US 7,017,238 B2, iss. Mar. 28, 2006).
III. The Examiner rejected claim 14 under 35 U.S.C. § 103(a) as
unpatentable over AAPA and Thomson (US 6,945,135 Bl, iss.
Sept. 20, 2005).
IV. The Examiner rejected claim 15 under 35 U.S.C. § 103(a) as
unpatentable over AAPA, Thomson, and Messina.
V. The Examiner rejected claims 16 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA, Thomson, and Chen.
ANALYSIS
Rejection I
Claims 1 and 18
Against the Examiner’s obviousness determination of claims 1 and 18,
Appellants’ sole challenge is to the scope of the prior art. Appeal Br. 14—18.
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In particular, Appellants argue Mielke is non-analogous art and, therefore,
the Examiner’s reliance thereon was improper. Id. at 15—16. For the
following reasons, this argument is not persuasive.
Criteria for determining whether prior art is analogous
may be summarized as “(T) whether the art is from the same
field of endeavor, regardless of the problem addressed, and (2)
if the reference is not within the field of the inventor’s
endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.”
Scientific Plastic Prods., Inc. v. Biotage AB, 766 F,3d 1355, 1359 (Fed. Cir.
2014) (citing in. re Clay, 966 F.2d 656, 658—59 (Fed. Cir. 1992)).
A reference is reasonably pertinent if... it is one which,
because of the matter with which it deals, logically would have
commended itself to an inventor’s attention in considering his
problem. If a reference disclosure has the same purpose as the
claimed invention, the reference relates to the same problem,
and that fact supports use of that reference in an obviousness
rejection.
Innovention Toys, LLCv. MGA Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir.
2011) (citing Clay, 966 F.2d at 659).
In this case, the Examiner finds,
for a threaded fastener problem, one [of] ordinary skill in the art
[would] look to the art subject matter of threaded fasteners . . .
to determine the scope and content of the prior art to see what
may already be taught and available that is capable of reducing
binding and weight, and increasing strength and clamping
efficiency with bicycle seat tube clamp.
Ans. 4. The Examiner finds further Mielke is reasonably pertinent to the
problem of binding, which Appellants’ invention addresses, because it
pertains to bolt connections for overcoming the stresses that cause the failure
thereof. Id.
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Appellants argue,
a person having ordinary skilled in the art would not turn to
Mielke, which is a patent filed in 1968 and directed to a bolt-and-
nut connector for an aircraft in an attempt to combine with a
bicycle seat clamp as in the AAPA and Chen. Indeed, the
knowledge of a person skilled in the art of aircraft connectors is
different from the knowledge of a person skilled in the art of
bicycle seat clamps.
Appeal Br. 15—16. Appellants add, “Mielke is not reasonably pertinent to
the particular problem of reducing binding and weight, and increasing
strength and clamping efficiency with a bicycle seat tube clamp.” Id. at 16.
Mielke instead “addresses the problem of breakage of the bolt-and-nut
connector as it applies to aircraft.” Id. at 17 (citing Mielke col. 1,11. 22—31).
Appellants’ argument is unpersuasive at least because it
mischaracterizes the teachings of Mielke. Rather than narrowly disclosing a
bolt, nut, and washer combination limited to aircraft applications, Mielke
teaches more broadly of a “novel means eliminating several of the common
causes of breakage and failure thereof'1'’ Mielke col. 1,11. 21—25 (emphasis
added). Aircraft construction is an exemplary application for the bolt-and-
nut connector — “[a]s is well known in the art, bolt-and-nut connectors are
subject to breakage and failure for several reasons, and in critical
installations, such as in aircraft construction such failure can have tragic
results.” Id. at col. 1,11. 27—30 (emphasis added). Therefore, we do not find
Mielke supportive of Appellants’ argument that Mielke is directed narrowly
only to aircraft applications.
As noted above, Mielke discusses the “common causes of breakage
and failure” in a general manner. Of particular relevance to this case,
Mielke describes a common cause of problems as occurring when there is a
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misalignment, either between the through hole of two connecting parts or
between the bolt head and abutment surface of the workpiece. Mielke col. 1,
11. 35—50. Because of this misalignment, lateral bending stresses are applied
to the shank as the nut is tightened. Id. Providing a nut-and-bolt connector
that can better handle misalignment is evidence of a common purpose
between Mielke and the problem of binding, which Appellants’ invention
addresses. We find it reasonable in cases such as this, involving relatively
simple everyday-type mechanical concepts, to permit inquiry into other
areas where one of even limited technical skill would be aware that similar
problems exist. In re Heldt, 433 F.2d 808, 812 (CCPA 1970).
Although Appellants argue the problem is more narrowly defined as
binding in a bicycle seat clamp, binding is described in the Specification as
an alignment issue. See Spec. 139. In particular, referring to Figure 7, the
Specification states, “the fastener head 136 becomes cocked during
tightening, thereby tending to dig into the adjacent clamp body portions
resulting fastener binding as the fastener is tightened.” Id. While binding
may occur in the context of a bicycle seat clamp, the general problem facing
a skilled artisan is the stresses on a screw shaft caused by misalignment
between the through hole of two connecting clamp ends and/or between the
bolt head and the abutment surface of the seat clamp. Therefore, a
preponderance of the evidence supports the Examiner’s finding Mielke is
reasonably pertinent to the problem of binding and we sustain the
Examiner’s rejection of claims 1 and 18.
Claims 2 and 19
Dependent claims 2 and 19 further limit the enlarged head with a
convex lower surface to a spherical shape and the shaped washer with a
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concave upper surface to a conical shape. Appeal Br. 40, 46 (Claims App.).
“Appellants submit that the Examiner mischaracterized Mielke as it fails to
disclose the concave upper surface of the shaped washer having a conical
shape.” Id. at 18. As support, Appellants cite Mielke’s description of the
head washer in Figure 1 as having an outer surface 44 that is spherically
curved to the same radius of curvature as the spherical surface 26 of the bolt
head. Id. (citing Mielke col. 3,11. 9—12).
The Examiner does not dispute Mielke discloses a washer with a
spherical shaped concave upper surface, but determines the term “conical
shape” encompasses a spherical shape. See Non-Final Act. 5, 6; Ans. 5.
Notably, the Examiner offers no evidentiary support for this interpretation
from the claims, nor is the Specification cited demonstrating a skilled artisan
would have understood the term “conical” encompasses a “spherical” shape.
To the contrary, use of the terms “conical” and “spherical” in claims 2 and
19 indicates a skilled artisan would have understood these terms as
describing different shapes. Additionally, Figure 5 of the Specification
illustrates, consistent with the plain meaning, “spherical” describes a surface
(37) with a curved wall and “conical” describes a shape (47) with a straight
wall. See Spec. ]Hf 37—38, Fig. 5. This context leads us to agree with
Appellants that the Examiner applied an unreasonably broad interpretation
for the term “conical.” Therefore, we do not sustain the Examiner’s
rejection of claims 2 and 19 because the Examiner has not shown by a
preponderance of the evidence that Mielke discloses a shaped washer with a
conically shaped concave upper surface.
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Claims 4 and 21
Dependent claims 4 and 21 further limit the first and second shaft­
receiving passageways to being canted with respect to a centerline
therethrough prior to tightening of the fastener. Appeal Br. 40, 46. The
Examiner finds, “Applicants’ admitted prior art (Fig. 7) discloses that the
first and second shaft-receiving passageways (131, 132) are canted with
respect to a centerline therethrough prior to tightening of said fastener.”
Non-Final Act. 5, 6; see also Ans. 5. Appellants contend this finding is
incorrect because Figure 7 discloses a clamp after the fastener has been
tightened. Appeal Br. 20—22. The Examiner does not dispute Figure 7
shows a clamp after tightening, but asserts the fastener still can be tightened
further and, therefore, it also shows a clamp shaft-receiving passageways
that are canted prior to tightening the fastener. Ans. 5.
Appellants respond that the Examiner applies an unreasonably broad
interpretation of the phrase, “prior to tightening.” Reply Br. 5. We agree.
The plain meaning of “prior to tightening” means before tightening — i.e.,
before any force is applied to the fastener to bring the opposing clamp ends
together. Even if additional force can be applied to the fastener to bring the
clamp ends closer together, this is still tightening that only occurs after some
tightening has already occurred. The Examiner has not provided any
support from the claims, or Specification, that a skilled artisan would have
understood “prior to tightening” to encompass additional tightening after the
initial tightening has already occurred. Because the Examiner relies solely
on what Figure 7 illustrates, which shows the position of the end clamps
after tightening, a preponderance of the evidence fails to support the
Examiner’s finding that Figure 7 (AAPA) discloses canted clamp ends prior
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to tightening the fastener. Therefore, we do not sustain the Examiner’s
rejection of claims 4 and 21.
Claim 5
For claim 5, the Examiner determines,
[i]t would have been obvious to one of ordinary skill in the art at
the time of invention was made to provide the first and second
clamp ends of Applicants’ admitted prior art with a respective
inferior relief area in order to define a respective discontinuity
with adjacent portion of the clamp body.
Non-Final Act. 5 (emphasis added). The Examiner notably does not provide
any evidentiary support, or technical reasoning, to show a skilled artisan
would have wanted the interior surface of the clamp body to define a
respective discontinuity with adjacent support portion of the clamp body.
Appellants argue persuasively that the Examiner’s rationale is
evidence of hindsight because the only evidence of this reasoning is found in
Appellants’ Specification, which describes the same reasoning almost
verbatim. Appeal Br. 25—26 (citing Spec. 143). Specifically, the
Specification states, “[ejach of the relief areas 46 defines a respective
discontinuity with adjacent portions of the clamp body 23.” Spec. 143. “To
imbue one of ordinary skill in the art with knowledge of the invention in
suit, when no prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a hindsight
syndrome wherein that which only the inventor taught is used against its
teacher.” W.L. Gore &Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553
(Fed. Cir. 1983). Therefore, because the Examiner’s rationale is only
supported by Appellants’ Specification, we do not sustain the Examiner’s
rejection of claim 5.
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Claim 6
Dependent claim 6 further limits the radially inwardly extending
projection to “a ring having a separation therein aligned with the separation
in [the] clamp body.” Appeal Br. 41 (Claims App.). Finding Chen discloses
the claimed projection in Figure 1, the Examiner determines,
[i]t would have been obvious to one of ordinary skill in the art at
the time of invention was made to provide each clamp ends of
Applicants’ admitted prior art (Fig. 7) with at least one radially
extending projection as taught by Chen in order to hold and
maintain the clamp to the end portion of the tube.
Non-Final Act. 5—6 (emphasis added). Appellants challenge the Examiner’s
rationale because “the Chen clamp already ‘clamps to the end portion of the
tube’ without a radially inwardly extending projection.” Appeal Br. 26.
This challenge is persuasive because the Examiner does not identify
any evidence the projection Chen discloses holds and/or maintains the clamp
to the end portion of the tube, nor does the Examiner explain why a skilled
artisan would recognize the projection as performing that function. In fact,
the recess Chen discloses is described as providing a recess for a pad 30
insert, which, when inserted, eliminates the projection. Chen col. 2,11. 37—
52, Figs. 2—6. Furthermore, Chen criticizes having a clamp with a
separation in the surface clamping to a tube because it does not allow the
clamping forces to be distributed uniformly. Id. col. 1,11. 12 41. As a
result, the Examiner’s reason for combining Chen with AAPA and Mielke
lacks a rational underpinning. Therefore, we do not sustain the Examiner’s
rejection of claim 6.
Claim 7
Relying on AAPA (Figure 7 of the Specification), the Examiner finds
it “discloses that the nut-receiving passageway (not shown with a reference
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Application 11/860,852
number by it corresponds to reference numeral of 33 of the Fig. 1) comprises
a blind opening.” Non-Final Act. 6. Appellants argue persuasively that
Figure 7 does not disclose a blind hole and support this argument by noting a
blind hole is represented in the other figures by a dashed line. Appeal Br. 28
(citing Spec. Figure 2); see also Spec. 1 33. Having considered Figure 7 and
Appellants’ Specification as a whole, we agree Figure 7 fails to establish
proof by a preponderance of the evidence that using a blind hole with a seat
clamp body was known. Therefore, we do not sustain the Examiner’s
rejection of claim 7.
Rejection II
Dependent claims 3 and 20 further limit the opening through the
clamp body to being, “offset from a center defined by the circular perimeter
so that said first and second clamp ends each has an enlarged thickness.”
Appeal Br. 40, 46 (Claims App.). The Examiner finds Messina discloses a
clamp with this configuration in Figure 2. Non-Final Act. 6—7. Appellants
do not dispute the Examiner’s finding. See Appeal Br. 29-30. Instead,
Appellants challenge the Examiner’s determination it would have been
obvious to combine the teachings of AAPA, Chen, and Mielke with the
clamp of Messina to provide a “clamp body with a sufficient mass at the
clamp ends for insuring correct and proper seating of the fastener.” Id. at 29
(quoting Non-Final Act. 7). More specifically, Appellants contend there is
no support for the Examiner’s rationale because the Messina reference does
not describe any reason for why the clamp in Figure 2 has an offset from a
center defined by the circular perimeter so that each of said first and second
clamp ends has an enlarged thickness. Id.
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Appellants notably do not dispute the Examiner’s reason for why a
skilled artisan would have known to make the claimed combination; only
that it lacks evidentiary support. We disagree because Figure 2 of Messina
is itself sufficient evidence. The Examiner’s “analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim,” but can rely on the inferences and creative steps that a person of
ordinary skill in the art would employ. KSR Int 7 Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007). Figure 2 of Messina discloses, indisputably, a clamp
with recited structure of claims 3 and 20 and a reasonable inference supports
the Examiner’s finding that a skilled artisan would recognize from the
structure of the illustrated clamp that it teaches a clamp body with a
sufficient mass at the clamp ends for insuring correct and proper seating of
the fastener. Put more simply, Figure 2 of Messina //.sW/ provides sufficient
support for the Examiner’s reasoning, even without any written
representations from the Specification. Therefore, we sustain the
Examiner’s rejection of claims 3 and 20.
Rejection III
The Examiner finds AAPA discloses the limitations of claim 14,
expect it “fails to disclose that the first and second-receiving passageways
being canted with respect to a centerline therethrough at an initial position
prior to tightening of the fastener, and being aligned with respect to the
centerline therethrough at a tightened position subsequent to tightening.”
Non-Final Act. 8. Finding Thomson discloses this missing canted
configuration, the Examiner determines,
[i]t would have been obvious to one of ordinary skill in the art at
the time of invention was made to have the first and second-
receiving passageways of [Appellants’] admitted prior art (Fig.7)
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as being canted with respect to centerline ... in order for the
fastener to be tightened with less likelihood of binding as the
clamp members engage the tube and the clam[p] members are
being drawn together.
Id. at 9. Appellants argue the Examiner’s obviousness determination is
improper because Thomson relates to a bicycle handlebar clamp and “simply
will not perform as a bicycle seat tube clamp.” Appeal Br. 31.
Appellants’ argument is unpersuasive. Although Thomson relates to
handlebar clamps, it shares the problem of binding with seat clamps.
Thomson teaches, “canting allows the fasteners to be tightened with less
likelihood of binding.” Thomson, col. 7,11. 29—30. And the Supreme Court
has held, “if a technique has been used to improve one device, and a person
of ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond that person’s skill.” KSR Int 7 Co., 550 U.S. at 401.
Appellants offer no evidence, or technical explanation, why a skilled artisan
would have viewed the problem of binding in handlebar clamps as unrelated
to the problem of binding in seat clamps, even if the applications in which
the binding problem occurs is different. Moreover, Appellants have not
identified any record evidence suggesting a skilled artisan would not have
recognized that the canting technique Thomson discloses would also protect
against binding in a seat clamp. The evidence furthermore firmly supports a
skilled artisan could easily implement the canting technique in a seat clamp
application, and Appellants offer no evidence to the contrary. Therefore, we
sustain the Examiner’s rejection of claim 14.
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Rejection IV
The limitations of claim 15 are the same as in claims 3 and 20, except
claim 15 depends from claim 14. See Appeal Br. 40, 44, 46. Appellants
also make the exact same arguments made for claims 3 and 20. See id. at 29-
30, 32—33. Therefore, for the same reasons discussed above (see supra
Rejection II), we sustain the Examiner’s rejection.
Rejection V
For dependent claims 16 and 17, the Examiner relies on the same
reasoning as articulated for claim 5 for why a skilled artisan would have
combined the prior art references. See Non-Final Act. 5, 10. In particular,
the Examiner finds a skilled artisan would have made the claimed
combinations “to define a respective discontinuity with adjacent portion of
the clamp body.” Id. As discussed above for claim 5 (see supra Rejection
I), the Examiner’s reasoning evidences hindsight. Therefore, we do not
sustain the Examiner’s rejection of claims 16 and 17.
DECISION
We affirm the Examiner’s decision to reject claims 1, 3, 14, 15, and
20 and reverse the Examiner’s decision to reject claims 2, 4—7, 16—19, and
21.
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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