Ex Parte Smith et alDownload PDFPatent Trial and Appeal BoardMay 31, 201612121132 (P.T.A.B. May. 31, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/121, 132 05/15/2008 27316 7590 06/01/2016 MA YBACK & HOFFMAN, PA 5846 S. FLAMINGO ROAD #232 FORT LAUDERDALE, FL 33330 FIRST NAMED INVENTOR Kevin Smith 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 ATTORNEY DOCKET NO. CONFIRMATION NO. Syn/8972 6281 EXAMINER SALONE, BAY AN ART UNIT PAPER NUMBER 3726 MAILDATE DELIVERY MODE 06/01/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KEVIN SMITH, MATTHEW PALMER, DEREK DEVILLE, KOREY KLINE, and CARLOS RIVERA Appeal2014-004437 Application 12/121, 132 Technology Center 3700 Before MICHAEL L. HOELTER, MARK A. GEIER, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants, Kevin Smith et al., 1 appeal under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1, 3, 5-7, and 15-20.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appellants identify the real party in interest as Syntheon, LLC. Appeal Br. 2. 2 Claims 2 and 4 are cancelled, and claims 8-14 are withdrawn from consideration. Appeal Br. 22-28 (Claims App.). Appeal2014-004437 Application 12/121, 132 THE CLAIMED SUBJECT MATTER The claims are directed to a "torque-transmitting, locking instrument holder [and] method for operating the instrument holder." Spec. i-f 3. Claims 1 and 15 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A torque-transmitting, locking instrument holder, compnsmg: a hollow body having a proximal end shaped to receive an instrument therethrough, a distal end shaped to permit protrusion of the instrument therefrom, and a handle to be gripped by an operator; and a device operable to lock said handle to and unlock said handle from the instrument, the device including an actuator at least partly disposed within said hollow body to be activated by the operator, said device including a clamping plate disposed within said actuator and being moved radially inward against the instrument and radially outward away from the instrument by activating the actuator. REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Johnson Boyle us 5,011,344 US 6,347,914 Bl REJECTIONS The Examiner made the following rejections: Apr. 30, 1991 Feb. 19,2002 1. Claims 1, 5-7, and 15 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Johnson. 2 Appeal2014-004437 Application 12/121, 132 2. Claims 1, 3, 15, and 16 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Boyle. 3. Claims 16-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Johnson and Boyle. Appellants seek our review of the three rejections. OPINION Rejection 1: Claims 1, 5-7, and 15 Appellants argue claims 1, 5-7, and 15 as a group. Appeal Br. 7-12. We select claim 1 as the representative claim, and claims 5-7, and 15 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015). Appellants present essentially identical arguments with respect to the rejection of independent claims 1and15.3 See Appeal Br. 7, 12-13. As such, the following analysis applies equally to claims 1 and 15. The Examiner finds that Johnson discloses all of the limitations of claim 1, including the limitation reciting "a proximal end shaped to receive an instrument therethrough." Final Act. 1-3 (emphasis added). The Examiner states that Johnson discloses "a hollow body (14) having a proximal end (34) shaped to receive an instrument (12) there-through." Final Act. 8. Referring to Figures 3 and 4 of Johnson, the Examiner also states: [T]he instrument/tap (12) passes through the hollow body (14), its tip (24) protruding from the tool holder distal end ( 44) and its 3 In footnote 1 of the Appeal Brief, Appellants assert that the Examiner did not address claim 15 in the July 13, 2012 Final Office Action. The Examiner addressed claim 15 in the January 18, 2013 Final Office Action. Final Act. 2-9. 3 Appeal2014-004437 Application 12/121, 132 tail end (22) passing there-through to the proximal end (34) and resting within counter-bore (5 0). The Examiner construes this to be equivalent to the tail end (22) passing there-through to the proximal end (34). There is no recitation in claims 1, 5-7 and 15, that states the instrument must extend through the proximal end of the instrument holder and protrude from the proximal end externally of the instrument holder. Ans. 8 (emphasis added); see also Final Act. 8. In response, Appellants state that the "body 14 of the holding or adapter device in Johnson 'has a bore in it ... , into which the [tool] tap 12 [or bit] fits and is held."' Appeal Br. 10 (citing Johnson 3: 11-13). Appellants also state that: [I]t is clear by the text and a visual inspection of the figures in Johnson that tap 12 is inserted into and protrudes out from the same end of body 14 and is prevented from passing "therethrough" the cylindrical portion 34 such that it cannot be accessed by the operator at a proximal end opposite from the working end of tap 12 .... Unlike Appellants' claimed invention, the tap 12 in Johnson is not received "therethrough" the proximal end of the body, meaning that the tap 12 is not exposed at the proximal end to thereby allow the operator access to the tap from the proximal end of the body. Appeal Br. 10-11. Referring to column 3, lines 32--40 of Johnson, Appellants also argue that: The body 14 has an extending cylindrical part 44 of smaller diameter, and this part has a bore 46 therein which extends upwardly within the body 44, terminating in a counterbore 50 of a smaller diameter, there being a square shoulder 52 between the bore and counterbore, and the square shoulder 26 on the tap may come into engagement with the shoulder 52 with the square 4 Appeal2014-004437 Application 12/121, 132 end 22 extending up into the counterbore 50, as may be seen in FIGS. 3 and 4. Appeal Br. 10. Appellants' argument, however, does not address the claim 1 limitation which only requires that the proximal end is "shaped to" receive an instrument therethrough and not that the instrument actually extends therethrough. Contrary to Appellants' arguments, Appellants recognize that tap 12 extends "up into counterbore 50" and tap 12 fits in and is held by bore 50. See, e.g., Appeal Br. 10-11. Thus, bore 50 must be "shaped to" receive tap 12, as recited in claim 1. Furthermore, Figures 3 and 4 of Johnson, for example, disclose that both ends of bore 50 in the cylindrical portion 34 (i.e., the proximal end) are open so that, if necessary, portion 34/bore 50 are also "shaped to" receive tap 12 between both ends, and permit tap 12 to protrude out of portion 34/bore 50. Thus, Appellants have not shown any error in the Examiner's finding that Johnson discloses a "proximal end (34) shaped to receive an instrument (12) there-through," and Appellants' argument is not persuasive. Finally, Appellants' argument that Johnson does not disclose "a 'handle' in the true sense of the word that may be gripped by the hand of an operator" is not persuasive. Appeal Br. 12. During the use of the Johnson device by an operator, the operator must grip cylindrical portion 34 in order to use, assemble and disassemble the device. We sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Johnson. Claims 5-7 and 15 fall with claim 1. 5 Appeal2014-004437 Application 12/121, 132 Rejection 2: Claims 1, 3, 15, and 16 Appellants argue claims 1, 3, 15, and 16 as a group. Appeal Br. 13- 19. We select claim 1 as the representative claim, and claims 3, 15, and 16 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015). Appellants present essentially identical arguments with respect to the rejection of independent claims 1 and 15. See Appeal Br. 13, 19. As such, the following analysis applies equally to claims 1 and 15. The Examiner finds that Boyle discloses all of the limitations of claim 1, including the limitation reciting "a proximal end shaped to receive an instrument therethrough." Final Act. 3--4 (emphasis added). The Examiner explained that: Boyle further discloses that the bit holder (14, 3 8) may be disposed in the socket (20) such that one of the first or second bits (50, 52) extend from the tool holder for operative engagement with a workpiece (Col. 3, Lines 39-43). The Examiner construes from the aforementioned disclosure that in the event the second bit (52) of the instrument protrudes/extends from the distal end (26) of the tool holder, the first bit (50) of the instrument (14) inherently passes through the proximal end (20) of the tool holder into and through socket (22). Ans. 9 (emphasis added). Boyle also discloses that "passage 22 (FIG. 3) extend[s] through socket 20 and shank 18." Boyle 3:24--25. Appellants' response to the Examiner's findings does not address the claim 1 limitation which only requires that the proximal end is "shaped to" receive an instrument therethrough. To the contrary, Appellants argue that "tool holder 12 includes a passage 22 (FIG. 3) extending through the socket 20 and shank 12" and that "[b]it assembly 14 enters just a portion of tool holder 12 and does not extend through the portion of passage 22 at the proximal end, i.e., socket 20 and shank 18, of tool holder 12." Appeal 6 Appeal2014-004437 Application 12/121, 132 Br. 17. Thus, Appellants recognize that socket 20 and shank 18 having passage 22 is "shaped to" receive the bit assembly 14 (i.e., bits 50, 52). Appellants' argument that "nothing can be coming through the end of shank 18" (Appeal Br. 18) is unsupported attorney argument. Finally, in response to the Examiner's finding that Boyle discloses a handle (i.e., socket 20) (Final Act. 3--4), Appellants' argue that Boyle does not disclose "the tool 10 as having a 'handle' in the true sense of the word that may be gripped by the hand of an operator." Appeal Br. 18. Appellants' argument is not persuasive because, during an operator's use of the Boyle device, the operator must grip socket 20 in order to use, assemble and disassemble the device. We sustain the Examiner's rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Boyle. Claims 3, 15, and 16 fall with claim 1. Rejection 3: Claims 16-20 Appellants argue claims 16-20 as a group. Appeal Br. 19-20. We select claim 16 as the representative claim, and claims 1 7-20 stand or fall with claim 16. 37 C.F.R. § 41.37(c)(l)(iv) (2015). The Examiner finds that Johnson discloses all of the limitations of claim 16, except for a "bobbin" which is disclosed by Boyle. Final Act. 5-6. The Examiner reasons that it: [W]ould have been obvious to one of ordinary skill in the art at the time of invention to utilize the bobbin of Boyle with the actuator of Johnson to provide a more user friendly gripping surface for an operator to switch the tool holder between the locking and unlocking positions. Final Act. 5-6. 7 Appeal2014-004437 Application 12/121, 132 First, Appellants argue that the "combination of the two, Johnson and Boyle, still fails to satisfy these significant elements of the present invention discussed above [with respect to claim 15 in Rejections 1 and 2]." Appeal Br. 19-20. For the reasons discussed above in Rejections 1 and 2, Appellants' argument is not persuasive. Second, Appellants summarily assert, without explanation, that "there is no teaching, no suggestion, and no motivation found in Johnson in view of Boyle, to arrive at each and every element of claims 16-20." Appeal Br. 19. Appellants, however, do not address the Examiner's reasoning for combining Johnson and Boyle and thus, do not show how it lacks an articulated reasoning with rationale underpinnings. KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (Obviousness rejections "require some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness."). Thus, Appellants' argument does not show any Examiner error and is not persuasive. We sustain the Examiner's rejection of claim 16 under 35 U.S.C. § 102(b) as anticipated by Johnson. Claims 17-20 fall with claim 16. DECISION For the above reasons, the Examiner's rejection of claims 1, 5-7, and 15 under 35 U.S.C. § 102(b) as being anticipated by Johnson is AFFIRMED. The Examiner's rejection of claims 1, 3, 15, and 16 under 35 U.S.C. § 102(b) as being anticipated by Boyle is AFFIRMED. The Examiner's rejection of claims 16-20 under 35 U.S.C. § 103(a) as being unpatentable over Johnson and Boyle is AFFIRMED. 8 Appeal2014-004437 Application 12/121, 132 No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv) (2015). AFFIRMED 9 Copy with citationCopy as parenthetical citation