Ex parte Sheahan

Board of Patent Appeals and Interferences

Mar 19, 1999

08380112 (B.P.A.I. Mar. 19, 1999)

Application filed January 30, 1995. According to appellant, the application1
is a continuation of 08/027,382, filed March 8, 1993, now abandoned.
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publication in a law journal and (2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JAMES P. SHEAHAN
_____________
Appeal No. 98-1199
Application 08/380,1121
______________
ON BRIEF
_______________
Before COHEN, ABRAMS, and McQUADE, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claim 29.
Claims 7 through 13, 15, 16, 18, 19, 21, 26 and 28, the only
other claims remaining in the application, stand withdrawn
from further consideration by the examiner, as being drawn to
Appeal No. 98-1199
Application 08/380,112
2
a nonelected species, pursuant to 37 CFR 1.142(b).
Appellant’s invention relates to a penetration device
which is a mechanical fastener for piercing decks. A further
understanding of the invention can be derived from a reading
of claim 29, a copy of which appears in “APPENDIX A” of the
substitute brief (Paper No. 16).
As evidence of anticipation, the examiner has applied the
document specified below:
Lemke 4,834,600 May 30, 1989
Claim 29 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Lemke.
The examiner's rejection of claim 29 and response to the
argument presented by appellant can be found in the final
rejection and answer (Paper Nos. 12 and 17), while the
argument of appellant appears on pages 4 and 5 of the brief
(Paper No. 16).
Appeal No. 98-1199
Application 08/380,112
3
OPINION
In reaching our conclusion on the anticipation issue
before us, this panel of the board has carefully assessed
appellant’s specification and claim 29, the patent to Lemke,
and the viewpoints of appellant and the examiner,
respectively. As a consequence of our review, we make the
determination which follows.
We reverse the rejection of claim 29.
As disclosed by appellant (specification, pages 5 and 6),
the diameter of the cutting point for a self-tapping screw,
the shank diameter, and the thread diameters can be adjusted
to allow an opening between the hole in the deck and the shank
of the screw to allow passage of limited amounts of water and
air. Self-tapping screws are called piercing screws, owing to
the fact that they do not usually require pre-drilled holes
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Application 08/380,112
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for use because they pierce the metal deck of the roof and
make their own hole for entry. The self tapping
characteristics of the screw mean they can be installed in one
operation.
Claim 29 is drawn to a penetrating device which is a
mechanical fastener for piercing decks comprising, inter alia,
a screw having a driveable head, a piercing lower end, at
least one opening extending from the piercing lower end to a
point short of the driveable head, with the piercing lower end
being a self tapping screw point having a cutting edge.
As perceived by the examiner (final rejection, page 2),
Fig. 2 of the Lemke document shows a lower end being a screw
point with a cutting edge. Further, the examiner explains
that, as the edges of slot 28 are capable of cutting, each
edge is qualified as a cutting edge (final rejection, page 2
and answer, page 4).
Appellant, on the other hand, argues that “[n]owhere in Lemke
is it taught to have a self tapping screw point having a
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Application 08/380,112
5
cutting edge” (brief, pages 4 and 5).
We find that the Lemke patent teaches (column 3, line 46
to column 4, line 4) a hole 42 pre-drilled through membrane
18, insulation 16 and roof deck 20. Nut 12 is retained on tip
portion 50 of bolt 14 so that the entire assembly 10 may be
inserted through the pre-drilled hole 42. With the nut 12 in
the hole in deck 20, a tool is utilized to rotate bolt 14 in a
clockwise direction causing lower leg portions 41 to flare
slightly and enhance the frictional fit between nut 12 and
hole 42. The continued rotation of the bolt causes further
outward flaring of lower legs 41 which prevents removal of nut
12 and provides the entire assembly 10 with superior holding
power. As explained by the patentee (column 3, lines 1
through 3), the use of resilient material in the manufacture
of nut 12 combined with slots 28 allows legs 26 to resiliently
move outwardly on experiencing the necessary force.
Based upon our above findings relative to the overall
teaching of the Lemke reference, it is quite apparent to us
that one versed in the art would not have understood the
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Application 08/380,112
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structure of the fastener bolt of the Lemke reference as
including a self tapping screw point having a cutting edge, as
now claimed. This viewpoint is buttressed by Lemke’s
teaching, as set forth, supra, of a pre-drilled hole through
which the fastener bolt is simply intended to pass. It
follows, of course, that we are not in accord with the
examiner’s view that the slots 28 (between resilient legs 28)
of Lemke present opposite cutting edges. Since the Lemke
patent does not address every limitation of claim 29, the
claim is not anticipated by this prior art reference. It is
for this reason that the rejection under 35 U.S.C. § 102(b)
must be reversed.
In summary, this panel of the board has reversed the
examiner’s rejection of claim 29.
REVERSED
)
Appeal No. 98-1199
Application 08/380,112
7
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
ICC/kis
Robert L. McKellar
3031 Lois Avenue
Midland, MI 48640
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Application 08/380,112
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