Ex Parte Smolarek

Board of Patent Appeals and Interferences

Feb 23, 2007

10257576 (B.P.A.I. Feb. 23, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HANNA MARIA SMOLAREK
____________

Appeal 2006-2838
Application 10/257,576
Technology Center 3600
____________

Decided: February 23, 2007
____________

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and LINDA E.
HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellant appeals the Examiner’s final rejection of claims 39-54, 57,
60-70, and 73-80, and 821 under 35 U.S.C. § 134 (2002). We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellant invented a washer and threaded fastener assembly for
securing a work piece in position (Specification 1: 4-5). The assembly opposes
unintentional loosening or unthreading, and allows for proper fastener preloading
(Specification 1: 6-9). Claims 39 and 63, reproduced below, are representative of
the subject matter on appeal.

39. A spring action joint having at least two parts comprising,
a threaded part having a body with two opposed sides and a circular series of
ramp structures on at least one of the two opposed sides, and

1 Claims 1-38 are canceled, and claims 55, 56, 58, 59, and 72 are objected to as
being dependent on a rejected base claim. Although claims 71 and 81 are listed in
both the Appellant’s Brief (Br. 2) and the Final Office Action (p. 1) as being
rejected, the Examiner has not provided any statutory basis for the rejection of
these claims in the Final Office Action or Examiner’s Answer. As such, we find
that these claims have not been finally rejected and thus are not before us for
review.
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a first washer having a body with two opposed sides, an outer periphery, a
central aperture, and a circular series of ramp structures in the form of ratchet teeth
on at least one of the two opposed sides of the first washer, the body of the washer
being resiliently deformable at least up to when it is subjected to a joint preloading
force created by tightening the joint up to a preloaded state.

63. A tool that can engage a plurality of spring action joints according to
claim 39, so that the plurality of spring action joints can be torqued simultaneously.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Durbin US 612,490 Oct. 18, 1898
McCoy US 910,712 Jan. 26, 1909
Thompson US 1,159,131 Nov. 2, 1915
Walton US 5,222,849 Jun. 29, 1993
Junkers US 5,934,853 Aug. 10, 1999
The following rejections are before us for review.
1. Claims 39, 40, 45, 47, 49, 51-53, 61, 62, 66, 67, 69, 75-79, and 82 stand
rejected under 35 U.S.C. § 102(b) as being anticipated by Thompson.
2. Claims 75-79 and 82 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Durbin.
3. Claims 41-44, 46, 48, 50, 60, 64, 65, 68, 70, 73, 74, and 80 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Thompson and McCoy.
4. Claims 54 and 57 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Thompson and Walton.
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5. Claim 60 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Thompson, McCoy, and Walton.
6. Claim 63 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Thompson and Junkers.
7. Claim 64 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Thompson, McCoy, and Junkers.

FIRST ISSUE
The Appellant contends claims 39, 40, 45, 47, 49, 51-53, 61, 62, 66, 67, 69,
75-79, and 82 are not anticipated by Thompson, and claims 41-44, 46, 48, 50, 54,
57, 60, 63, 64, 65, 68, 70, 73, 74, and 80 are not rendered obvious by Thompson in
combination with other prior art references, because Thompson fails to teach or
suggest a washer that is resiliently deformable (Brief 8-14). The Examiner
contends Thompson discloses that element 10 is a “spring washer,” and therefore it
must have elastic properties (Answer 10). The Examiner further contends that
Thompson’s washer 10 will elastically deform as it move towards the nut 4 when
the teeth 13 of the nut 4 interact with the teeth 12 of the washer 10 (Answer 10-
11). The issue before us is whether the Appellant has shown that the Examiner
erred in finding that Thompson teaches or suggests a washer that is resiliently
deformable at least up to when it is subjected to a joint preloading force created by
tightening the joint up to a preloaded state.

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FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
Thompson discloses an apparatus for effectively locking a nut upon a bolt to
prevent the accidental disassociation of the nut and bolt (Thompson, p. 1, ll. 9-11).
Thompson’s apparatus includes a rectangular plate 5 made of spring material
with beveled edges 6 that engage a work piece 2 (Thompson, p. 1, ll. 59-66).
Thompson also discloses a “spring ring or washer member” 10 having its
inner face formed with lugs 11 (Thompson, p. 1, ll. 82-84).
Thompson’s lugs 11 are adapted to be received within pockets 9 in
rectangular plate 5 (Thompson, p. 1, ll. 84-85).
The inner face of nut 4 has teeth 14 which ratchet over teeth 12 on the outer
face of Thompson’s washer 10, when the nut 4 is screwed on a threaded shank of a
bolt 3 (Thompson, p. 1, ll. 85-98).
As teeth 14 ratchet over teeth 13, the beveled edges 6 of plate 5 are forced
tightly against the angular walls of the work piece 2, which causes the central
portion of plate 5 to bulge outwardly, thereby forcing washer 10 toward the nut to
bind the teeth 13 of the washer 10 and teeth 14 of the nut 4 (Thompson, p. 1, ll. 98-
107).
The movement of Thompson’s washer 10 toward the nut 4 is a translational
movement along the shank of bolt 3.
Thompson’s description does not indicate that the washer member 10 bulges
towards the nut 4 along with the bulging rectangular plate 5. If the washer member
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10 were to bulge towards the nut, then the teeth 13 on the washer would not
properly engage the teeth 14 on the nut.
Claims 63 and 64 recite a tool that can engage a plurality of spring action
joints according to claims 39 and 41, respectively, so that the plurality of spring
action joints can be torqued simultaneously.
Neither claim 39 nor 41 describes a particular configuration for the outer
peripheries of the claimed threaded part or of the claimed washers.
The specification describes, “The fasteners are depicted with double-hex
configuration on their periphery 213, 493, although hexagonal and other tool
engaging shapes are equally possible” (Specification, as amended, p. 22).
Junkers discloses a tool 7 that simultaneously provides torque to a plurality
of joints 4, 6 (Junkers, Figure 5 and col. 3, ll. 3-10).
The joints of Junkers include gears 6 and the tool 7 has a plurality of teeth 8
corresponding to the teeth of the gears 6 (Junkers, col. 2, ll. 42-43).
The tool disclosed in Junkers is capable of engaging a plurality of spring
action joints, such as those recited in claims 39 and 41.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).

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ANALYSIS
Although Thompson describes element 10 as a “spring ring or washer
member,” in practice, the flat washer member 10 shown in Thompson is not
elastically deformable as the nut 4 is tightened on the bolt 3. Instead, when the nut
4 is tightened on the bolt 3, Thompson’s rectangular plate 5, formed of a spring
material, deforms as it bulges outwardly. This deformation causes the washer
member 10 to move along a longitudinal axis of the bolt 3 toward the nut 4 so that
the ratchet teeth 13 and 14 engage one another. Contrary to the Examiner’s
reading of Thompson (Answer 11), we do not find Thompson’s description to
indicate that the washer member 10 bulges towards the nut 4 along with the
bulging rectangular plate 5. If the washer member 10 were to bulge towards the
nut, as suggested by the Examiner, then the teeth 13 on the washer would not
properly engage the teeth 14 on the nut. As such, Thompson does not disclose a
washer that is resiliently deformable when it is subjected to a joint preloading
force. Accordingly, claims 39 and 75, and their respective dependent claims 40,
45, 47, 49, 51-53, 61, 62, 66, 67, 69, 76-79, and 82, are not anticipated by
Thompson.
The Examiner did not rely upon McCoy or Walton for the teaching of a
washer that is resiliently deformable. Further, we find that neither of these
references cures the deficiency of Thompson. Accordingly, claims 41-44, 46, 48,
50, 60, 64, 65, 68, 70, 73, 74, and 80 are not rendered obvious by Thompson in
combination with McCoy. Further, claims 54 and 57 are not rendered obvious by
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Thompson in combination with Walton, and claim 60 is not rendered obvious by
Thompson in combination with McCoy and Walton.
Claims 63 and 64 recite a tool that can engage a plurality of spring action
joints according to claims 39 and 41, respectively, so that the plurality of spring
action joints can be torqued simultaneously. We interpret these claims as
independent claims requiring only a tool capable of engaging a plurality of spring
action joints according to claims 39 and 41 to apply simultaneous torque to the
joints. Neither claim 39 nor 41 recites a particular configuration for the outer
peripheries of the claimed threaded part or of the claimed washers. The
specification does not limit the shape of the outer periphery of the fasteners. As
such, any tool capable of applying torque to the spring action joint of claims 39
and 41 would anticipate claims 63 and 64.
Junkers discloses a tool 7 that simultaneously provides torque to a plurality
of joints 4, 6 (Junkers, Figure 5 and col. 3, ll. 3-10). The joints of Junkers include
gears 6 and the tool 7 has a plurality of teeth 8 corresponding to the teeth of the
gears 6 (Junkers, col. 2, ll. 42-43). Thus, the tool disclosed in Junkers is capable of
engaging a plurality of spring action joints, such as those recited in claims 39 and
41. Accordingly, claims 63 and 64 are anticipated by Junkers. Since anticipation
is the epitome of obviousness, we sustain the Examiner’s rejection of claims 63
and 64 under 35 U.S.C. § 103(a). See In re Pearson, 494 F.2d 1399, 1402, 181
USPQ 641, 644 (CCPA 1974); and In re Fracalossi, 681 F.2d 792, 794, 215
USQPQ 569, 571 (CCPA 1982).

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SECOND ISSUE
The Appellant contends claims 75-79 and 82 are not anticipated by Durbin,
because Durbin discloses a washer with pawls instead of ratchet teeth (Brief 34-
37). The Examiner contends that Durbin’s pawls constitute the claimed ratchet
teeth (Answer 15). The issue before us is whether the Appellant has shown that
the Examiner erred in finding that Durbin anticipates claims 75-79 and 82 under 35
U.S.C. § 102(b). More particularly, the issue before us is whether the Appellant
has shown that the Examiner erred in finding that Durbin discloses a washer
having ratchet teeth on at least one side.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
Claim 75 requires that one of the two opposed sides of the washer have
ratchet teeth.
A ratchet generally refers to “[a] wheel, usually toothed, operating with a
catch or a pawl so as to rotate in only a single direction.” McGraw-Hill Dictionary
of Scientific and Technical Terms, 1653 (5th ed. 1994) (Attachment 1).
A pawl generally refers to “[t]he driving link or holding link of a ratchet
mechanism [that] permits motion in one direction only.” McGraw-Hill Dictionary
of Scientific and Technical Terms, 1459 (5th ed. 1994) (Attachment 2).
It is clear that persons skilled in the art recognize a mechanical difference
between ratchet teeth, disposed on a wheel or other component of a ratchet
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mechanism, and a pawl, which catches the ratchet teeth to permit motion in one
direction only.
Durbin discloses a nut-and-bolt lock whereby the nut is prevented from
unscrewing on the bolt (Durbin, p. 1, ll. 11-14).
Durbin discloses that the nut-and-bolt lock includes a washer 4, which is
constructed of thin sheet spring metal (Durbin, p. 1, ll. 34-35).
Durbin discloses that the washer 4 has pawls 5 that are constructed by
cutting radial-shaped slits in the face of the washer and then slightly turning the
free end outwardly (Durbin, p. 1, ll. 35-39).
The nut 7 of Durbin’s nut-and-bolt lock has ratchet teeth 10 provided on its
flange portion 9 (Durbin, p. 1, ll. 44-46).
When the nut 7 is screwed on the bolt, the ratchet teeth 10 are brought into
engagement with the pawls 5 on the washer 4 to lock the device (Durbin, p. 1, ll.
53-57).
Durbin discloses pawls on the washer. Durbin does not disclose ratchet
teeth on the washer.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2
USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
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We determine the scope of the claims in patent applications “not solely on
the basis of the claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75
USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004)).

ANALYSIS
Claim 75 requires that the washer have ratchet teeth on at least one opposed
side. Although pawls are conventionally a component of a ratchet mechanism,
those skilled in the art would not consider the pawls 5 on Durbin’s washer to be the
claimed “ratchet teeth” because pawls, rather than being teeth themselves, are
considered in the art to be a portion of the ratchet mechanism, i.e., a “link” or
“catch,” that engages the teeth and permits motion in one direction only. As such,
Durbin does not disclose a washer with ratchet teeth. Accordingly, claim 75, and
its dependent claims 76-79 and 82, are not anticipated by Thompson.

CONCLUSIONS OF LAW
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 39, 40, 45, 47, 49, 51-53, 61, 62, 66, 67, 69, 75-79, and 82 under
35 U.S.C. § 102(b) as anticipated by Thompson. We further concluded that the
Appellant has shown that the Examiner erred in rejecting claims 41-44, 46, 48, 50,
60, 64, 65, 68, 70, 73, 74, and 80 under 35 U.S.C. § 103(a) as being unpatentable
over Thompson and McCoy, erred in rejecting claims 54 and 57 under 35 U.S.C.
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§ 103(a) as being unpatentable over Thompson and Walton, and erred in rejecting
claim 60 under 35 U.S.C. § 103(a) as being unpatentable over Thompson, McCoy,
and Walton. We further conclude that the Appellant has shown that the Examiner
erred in rejecting claims 75-79 and 82 under 35 U.S.C. § 102(b) as being
anticipated by Durbin. We also conclude that the Appellant failed to show that the
Examiner erred in rejecting claims 63 and 64 under 35 U.S.C. § 103(a) as
unpatentable over Thompson and Junkers.

DECISION
The decision of the Examiner to reject:
- claims 39, 40, 45, 47, 49, 51-53, 61, 62, 66, 67, 69, 75-79, and 82
under 35 U.S.C. § 102(b) as anticipated by Thompson;
- claims 41-44, 46, 48, 50, 60, 64, 65, 68, 70, 73, 74, and 80 under 35
U.S.C. § 103(a) as being unpatentable over Thompson and McCoy;
and
- claims 54 and 57 under 35 U.S.C. § 103(a) as being unpatentable
over Thompson and Walton; and
- claim 60 under 35 U.S.C. § 103(a) as being unpatentable over
Thompson, McCoy, and Walton; and
- claims 75-79 and 82 under 35 U.S.C. § 102(b) as being anticipated
by Durbin
is not sustained.
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The decision of the Examiner to reject claims 63 and 64 under 35 U.S.C.
§ 103(a) as unpatentable over Thompson and Junkers is sustained.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART

)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JENNIFER D. BAHR ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal 2006-2838
Application 10/257,576

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HANNA SMOLAREK
6 AURIOL COURT
CARINE 6020 AUSTRALIA