Ex Parte Scapa

Patent Trial and Appeal Board

Jan 28, 2013

11049341 (P.T.A.B. Jan. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte INO SCAPA
____________

Appeal 2010-005462
Application 11/049,341
Technology Center 3700
____________

Before STEVEN D.A. McCARTHY, PHILLIP J. KAUFFMAN, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ino Scapa (Appellant) seeks our review under 35 U.S.C. § 134 of the
Examiner’s rejection of claims 1, 7, 8, and 20-24. Appellant cancelled
claims 2-4. The Examiner withdrew claims 5, 6, and 9-19 from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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Application 11/049,341

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The Claimed Subject Matter
The claimed subject matter relates to a “hole-filling three-pronged
temporary fastener for more precisely and securely temporarily holding two
or more parts, such as sheet materials, together.” Spec. 1, para. [0001].
Claim 1 (the sole independent claim), reproduced below, is representative of
the subject matter on appeal.
1. A temporary fastener comprising:
an elongated hollow body having a hollow
inner chamber, a lower end, an upper end and an
opening defined in the lower end;
a spreader element disposed at least partially
within the hollow inner chamber, the spreader
element including three substantially evenly
spaced arms each spread approximately 120° apart
and connected together at inner ends thereof; and
three prongs having enlarged heads with
lobes, the prongs being slidably held in the
elongated hollow body on the spreader element
such that each prong lies between a pair of
adjacent arms.

The Rejections
The following Examiner’s rejections, under 35 U.S.C. § 103(a), are
before us for review:
I. claims 1, 23, and 24 as unpatentable over Croxton (US
4,892,449, issued Jan. 9, 1990), McClelland (US 2,241,609, issued May 13,
1941), and Bradley (US 2,340,926, issued Feb. 8, 1944);
II. claims 7, 8, 20, and 21 as unpatentable over Croxton,
McClelland, Bradley, and Jones (US 3,426,399, issued Feb. 11, 1969); and
III. claim 22 as unpatentable over Croxton, McClelland, Bradley,
and Solheim (US 4,596,328, issued Jun. 24, 1986).
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Application 11/049,341

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OPINION
Rejection I – Obviousness based on Croxton, McClelland, and Bradley
The Examiner finds that Croxton substantially discloses the subject
matter of independent claim 1, except that Croxton fails to disclose: (1) a
third prong; and (2) three substantially evenly spaced arms spread
approximately 120° apart and connected together at inner ends of the
spreader member. Ans. 3-5. To cure Croxton’s first deficiency, the
Examiner turns to either the “well known proposition that the mere
duplication of parts is obvious” or McClelland for its teaching of “a
temporary fastener with three prongs.” Ans. 3-4. To cure Croxton’s second
deficiency, the Examiner turns to either common knowledge that “three
radial members extending from the center and spaced 120 degrees apart
partitions [a] circle into three parts” or Bradley for its teaching of “using
three radial members extending from the center and spaced 120 degrees
apart to partition a circle into 3 parts (Figure 4).” Ans. 5. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to modify Croxton to: (1) have three prongs instead of two by either a
duplication of parts or as taught by McClelland “in order to distribute the
clamping force over three prongs instead of two prongs in order to enhance
the clamping effect”; and (2) have a spreader member with three
substantially evenly spaced arms each spread approximately 120° apart and
connected together at inner ends thereof by either common knowledge or as
taught by Bradley in order to “us[e] uniquely shaped partition members for
partitioning purposes.” Ans. 4-5.
Appellant argues the Examiner has not provided any disclosure or
suggestion showing that the combination of Croxton, McClelland, and
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Bradley renders obvious the claimed “spreader element including three
substantially evenly spaced arms each spread approximately 120° apart and
connected together at inner ends thereof.” Reply Br. 2-4; see also App. Br.,
Clms. App’x. In particular, Appellant notes that the Examiner finds Croxton
discloses “[a] diametrical flat spreader/partition member 40.” Reply Br. 2;
see also Ans. 3. However, Appellants point out that even though
McClelland discloses a clamping device having three prongs (sections 31),
McClelland’s spreader element (pin 30) is round in cross-section and
cylindrical (Reply Br. 3; see also McClelland, Figs. 3 and 4) to refute the
Examiner’s statement that “[o]ne skilled in the art would know that the
shape of a partition or spreader member must be unique and commensurate
with the number of jaws chosen.” Reply Br. 2-3; see also Ans. 4. Finally,
while Bradley’s Figure 4 discloses a section of a conduit 10 having a tubular
body 11 with a Y-shaped partition 21, Appellant further argues that it would
not have been obvious to one of ordinary skill in the art to modify Croxton’s
spreader member 40 to have three arms spaced approximately 120° apart by
the teachings of Bradley because the Examiner’s premise that “[o]ne skilled
in the art would know that the shape of a partition or spreader member must
be unique and commensurate with the number of jaws chosen” contains an
implicit conclusion that is not true. Reply Br. 2.
Croxton discloses a fastener 10 “utilized to hold individual sheets of a
work piece 12 in alignment with one another.” Croxton, col. 5, l. 67 through
col. 6, l.1. The fastener 10 includes a pair of engaging pins 32, 34 which
pass through an opening 36 in the work engaging surface 30 formed in the
body 26 of the fastener 10. Croxton, col. 6, ll. 13-21. Positioned between
the engaging pins 32, 34 is a spreader member 40, which is T-shaped having
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cross portion 42. Croxton, col. 6, ll. 24-30. On the exterior end of each of
the engaging pins 32, 34 are shoulders 38. Croxton, col. 6, ll. 21-23. In
operation, when shoulders 38 on pins 32, 34 engage the spreader member
40, they are spread laterally outwardly such that their effective diameter is
greater than the diameter of the aperture in which they are located. Croxton,
col. 7, ll. 9-13. When the shoulders 38 abut against the outside surface of
the sheet 24 they are locked against this surface since they are of a greater
diameter than the aperture in this surface and this locks fastener 10 to sheets
22, 24 holding the sheets together. Croxton, col. 7, ll. 13-37 and Fig. 3.
McClelland discloses a similar clamping device for aligning and
temporarily securing together structural metal plates in preparation for
permanent joining via rivets and/or welding. McClelland, p. 1, col. 1, ll. 1-5.
A clamping member 26 is substantially cylindrically shaped and has the free
end thereof separated or split into three sections 31. McClelland, p. 1, col. 2,
ll. 44-48 and Fig. 4. The clamping member 26 has a bore extending
therethrough which houses a cylindrical pin 30 having a frusto-conical inner
surface 32 complemental to the end surface of the pin 30. McClelland, p. 1,
col. 2, ll. 48-51 and Fig. 3. In operation, the end of the clamping member 26
is inserted through openings in two engaging plates A, B and adjusting
screw 28 is rotated until the end of pin 30 is driven into the end of the
clamping member 26. McClelland, p. 1, col. 2, l. 52 through p. 2, col. 1, l. 6.
The conical surface of the end of pin 30 moves along the surface 32 of the
bore and spreads the ends of the sections 31 to form an expanded end with a
tapered surface on the end of clamping member 26. McClelland, p. 2, col. 1,
ll. 4-9. Adjusting screw 23 is then rotated and members 15, 26 are gradually
withdrawn into shell 10 until the tapered surfaces of clamping member 26
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cause the plates A, B to be clamped against the end of the sleeve 14 so that
the plates A, B are securely held together by the device. McClelland, p. 2,
col. 1, ll. 9-16.
Bradley discloses a plastic conduit and connectors for joining together
sections thereof to form a continuous conduit. Bradley, p. 1, col. 1, ll. 1-3.
A section of conduit 10 has an annular body 11 and Y-shaped partition.
Bradley, p. 2, col. 1, ll. 13-22, p. 2, col. 2, ll. 63-65, and Fig. 4.
The conduit is formed of dielectric material and possesses good electrical
insulating properties so that the longitudinally extending compartments may
house electrical conductors to be insulated from each other and from contact
outside of the conduit and thus, not need to be provided with a coating of
insulating material or an insulating wrapping as is necessary with usual
metallic conductors. Bradley, p. 2, col. 2, ll. 22-39.
In view of the disclosures of Croxton, McClelland, and Bradley as
discussed supra, we are persuaded by Appellants’ argument that it would not
have been obvious to one of ordinary skill in the art to modify Croxton’s
spreader member 40 to include “three substantially evenly spaced arms each
spread approximately 120° apart and connected together as inner ends
thereof” by either common knowledge or the teaching of Bradley. First,
with respect to common knowledge in the art, we note that official notice
unsupported by documentary evidence should only be taken by the examiner
where the facts asserted to be well-known, or to be common knowledge in
the art are capable of instant and unquestionable demonstration as being
well-known. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (the
notice of facts beyond the record which may be taken by the examiner must
be “capable of such instant and unquestionable demonstration as to defy
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dispute” (citing In re Knapp Monarch Co., 296 F.2d 230 (CCPA 1961)).
Here, even if the Examiner’s statement that “three radial members extending
from the center and spaced 120 degrees apart partitions the circle into 3
parts” is common knowledge capable of instant and unquestionable
demonstration, that common knowledge would not render it obvious to one
of ordinary skill in the art to modify the T-shaped spreader member 40 of
Croxton by making it Y-shaped so that the three arms are spaced
approximately 120° apart. Nothing in modifying Croxton’s T-shaped
spreader member 40 to be Y-shaped is related to partitioning a circle into
three parts.
Second, we also agree that it would not have been obvious to one of
ordinary skill in the art to modify Croxton’s T-shaped spreader member 40
to be Y-shaped by the teaching of Bradley. As discussed supra, Bradley’s
plastic conduit sections 10 function to house electrical conductors 18, 19
within compartments 13, 14 to be insulated from each other and from
contact outside of the conduit; however, as suggested by Appellant,
Bradley’s Y-shaped partition 21 is not movable and cannot be actuated by an
actuator member to extend outside of the annular body 11 in order to spread
apart prongs or anything else located in the compartments. App. Br. 5-6.
Since Bradley’s Y-shaped partition 21 cannot function as a spreader element
within a hollow chamber similar to either Croxton’s spreader member 40 or
McClelland’s spreader (pin 30), Appellant is correct that “the Examiner has
not shown that it would have been obvious to one of skill in the art to
partition the three prongs” by using a Y-shaped spreader element. Reply Br.
3-4.
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Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 23 and 24 dependent thereon, under 35
U.S.C. § 103(a) as unpatentable over Croxton, McClelland, and Bradley.
Rejections II and III – Obviousness based on Croxton/McClelland/
Bradley/Jones and Croxton/McClelland/Bradley/Solheim, respectively
Claims 7, 8, and 20-22 all depend, either directly or indirectly, from
independent claim 1. The Examiner’s rejections of claims 7, 8, and 20-22
rely on the Examiner’s flawed conclusion that it would have been obvious to
one of ordinary skill in the art to modify Croxton’s spreader member 40 to
be Y-shaped by either common knowledge or the teaching of Bradley. For
the reasons discussed supra, we do not sustain the Examiner rejections of
claims 7, 8, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Croxton, McClelland, Bradley, and Jones, and claim 22 under 35 U.S.C.
§ 103(a) as unpatentable over Croxton, McClelland, Bradley, and Solheim.

DECISION
We reverse the Examiner’s decision to reject claims 1, 7, 8, and 20-
24.
REVERSED

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