Ex Parte Pepka

Patent Trial and Appeal Board

Dec 19, 2016

12710899 (P.T.A.B. Dec. 19, 2016)

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.
12/710,899 02/23/2010 Charles F. Pepka RCSC-1-1005 9633
25315 7590 12/21/2016
LOWE GRAHAM JONES, PLLC
701 FIFTH AVENUE
SUITE 4800
SEATTLE, WA 98104
EXAMINER
RASHID, MAHBUBUR
ART UNIT PAPER NUMBER
3657
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
patentdocketing@lowegrahamjones.com
docketing-patent@lowegrahamjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES F. PEPKA
Appeal 2015-0038611
Application 12/710,8992
Technology Center 3600
Before PHILIP J. HOFFMANN, JAMES A. WORTH, and
KENNETH G. SCHOPFER, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s non-
final rejection of claims 1—13, 15—22, and 24—27. We have jurisdiction
under 35 U.S.C. §§ 134 and 6(b).
We AFFIRM-IN-PART.
1 Our decision refers to the Appellant’s Appeal Brief (“Appeal Br.,” filed
Sept. 22, 2014) and Reply Brief (“Reply Br.,” filed Feb. 4, 2015), and the
Examiner’s Non-Final Office Action (“Non-Final Act.,” mailed Apr. 4,
2014) and Answer (“Ans.,” mailed Jan. 16, 2015).
2 According to Appellant, the real party in interest is Renton Coil Spring
Company (Appeal Br. 4).
Appeal 2015-003861
Application 12/710,899
Introduction
Appellant’s disclosure relates to “mounts for springs and, more
specifically, to end-mounting tension springs.” (Spec. 11).
Claims 1,19, and 24 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A system for securing a first tension spring, the
system comprising:
a first mount body having curved sides and having a
fixture engagement portion extending inwardly from the
curved sides of the first mount body, wherein an opening
is formed in the fixture engagement portion;
grooves arranged in a helical configuration on the
curved sides of the first mount body for engaging the first
tension spring; and a first end fixture being a single
integral unit and having an inner end and an outer end,
the outer end being directly machined into the first end
fixture and configured to extend through the opening in
the fixture engagement portion,
wherein the opening is sized to receive the outer end
but not the inner end of the first end fixture, thereby
securing the first tension spring to the first end fixture.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and Appellant appeals, the following
rejections:
I. Claim 25 stands rejected under 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the
written description requirement.
II. Claim 25 stands rejected under 35 U.S.C. § 112 (pre-
AIA), second paragraph, as being indefinite for failing to
2
Appeal 2015-003861
Application 12/710,899
particularly point out and distinctly claim what the
applicant regards as the invention.
III. Claims 1, 3—13, and 15—22 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Wood
(US 2,248,447, iss. July 8, 1941) and Rogers
(US 3,030,056, iss. Apr. 17, 1962).
IV. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wood, Rogers, and Kalister
(US 3,779,537, iss. Dec. 18, 1973).
V. Claims 24—27 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wood and Kimsey
(US 2,934,336, iss. Apr. 26, 1960).
ANALYSIS
Rejections I, II, and V
Independent claims 24—27
Appellant does not contest the Examiner’s rejections of claim 25
under 35 U.S.C. 112 (pre-AIA), first and second paragraphs, and of claims
24—27 under 35 U.S.C. § 103(a). As such, Appellant’s arguments with
respect thereto are waived. 37 C.F.R. § 41.37(c)(l)(iv). Therefore, we
sustain the rejections of claims 24—27.
Rejection III and IV
Claim 1
The Examiner reasons that “[i]t would have been obvious to one of
ordinary skill in the art at the time the invention was made to modify . . .
one of the units of Wood to be [a] single integral unit [with] the outer end
3
Appeal 2015-003861
Application 12/710,899
being directly machined into the end fixture” as taught by Rogers as an
engineering design choice in order to reduce manufacturing costs by
eliminating multiple parts/elements (Non-Final Act. 5). Based on the
Examiner’s mapping of the elements of Wood {id. at 4—5), the Examiner
essentially proposes to manufacture screw 4’ and plug (inner end) 15 of
Wood as one unit, at one end of the mounting device.
We are unpersuaded by Appellant’s argument that such a modification
would render Wood unsatisfactory for its intended purpose (Appeal Br. 12).
Appellant asserts that the assembly would be unable to be adjusted because,
according to Appellant, inner plug 15 and rod 4 would not move relative to
each other, and that such movement in normal operation allows “the entire
[grip] assembly” to act as a “tumbuckle by which the tension of the spring
can be adjusted” (Appeal Br. 12 (citing Wood, col. 2,11. 57—63); Reply
Br. 1).
Wood discloses two end plugs 15, with one end plug 15 on each end,
and two screw rods 4 and 4’, one on each end (see Wood, col. 2,11. 20-22,
38-40 & Fig. 3). Without the modification, Wood discloses that connecting
member 16 is tied to plug 15, but connecting member 16 may “freely pass”
rod 4 (Wood, col. 2,11. 34—35, 49—50). Nevertheless, we agree with the
Examiner’s finding that, even if Wood’s screw 4’ were modified to be
integral with inner plug 15 at one end, the other end of the assembly still
would be free to rotate (i.e., the other plug 15 would be free to rotate around
screw 4) {see Ans. 3). In other words, the Examiner only proposes to make
integral items 4 and 15 on one end. As such, we disagree with Appellant’s
assertion that inner plug 15 and rod 4 would be unable to move relative to
each other (on the non-integrated end). Accordingly, we are unpersuaded by
4
Appeal 2015-003861
Application 12/710,899
Appellant’s argument that the Wood reference would be rendered
unsatisfactory for its intended purpose of adjusting tension. Rather, we
agree with the Examiner’s conclusion that it would have been obvious to
modify Wood, based on the teachings of Rogers and as a matter of
manufacturing design choice. Therefore, we sustain the Examiner’s
rejection under § 103 of independent claim 1.
Dependent claims 2—13 and 15—18
Appellant does not argue the patentability of claims 2—13 and 15—18,
separately from that of independent claim 1, from which they depend.
Therefore, we sustain the Examiner’s rejection under § 103 of claims 2—13
and 15—18, for similar reasons as for independent claim 1.
Independent claim 19 and dependent claims 20—22
We are persuaded by Appellant’s argument that Rogers fails to
disclose “the outer surface of the first mount body defining third helical
grooves engaging the first tension spring and having an opposite direction to
the first and second grooves,” as recited by independent claim 19 (Appeal
Br. 12—14). In particular, we are persuaded by Appellant’s argument that the
Examiner erred in finding that (a) Figure 3 of Rogers contains a mistake, (b)
Figure 3 of Rogers is inconsistent with the device that the patentee of Rogers
intended to show, and (c) Rogers intended to show the helical direction of
groove 15 to be opposite from that of groove 20 (Appeal Br. 14; Ans. 5—6).
Appellant asserts that Figure 3 of Rogers depicts the back of the coils
and the front of the grooves* and that this explains the direction of the
helices (Appeal Br. 14). We are persuaded by Appellant that such a vantage
point can explain the diagram, and that the Examiner has provided
insufficient support for the finding that Figure 3 of Rogers intended to show
5
Appeal 2015-003861
Application 12/710,899
the helical direction of groove 15 opposite from that of groove 20. In any
event, the Examiner has not provided sufficient evidence or reasoning to
meet the limitation “the outer surface of the first mount body defining third
helical grooves engaging the first tension spring and having an opposite
direction to the first and second grooves,” as recited by claim 19. Therefore,
we do not sustain the Examiner’s rejection under § 103 of independent claim
19 and claims 20—22, which depend therefrom.
DECISION
The Examiner’s decision to reject claims 1—13, 15—18, and 24—27 is
affirmed.
The Examiner’s decision to reject claims 19—22 is reversed.
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
6