Ex Parte Sollami

Board of Patent Appeals and Interferences

Mar 25, 2009

11132781 (B.P.A.I. Mar. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JIMMIE L. SOLLAMI
____________________

Appeal 2008-3950
Application 11/132,781
Technology Center 3600
____________________

Decided:1 March 25, 2009
____________________

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before: WILLIAM F. PATE, III, JENNIFER D. BAHR and
LINDA E. HORNER, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
18. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a tool assembly having a spring lock
mechanism.
Claim 1 is illustrative of the claimed subject matter and is reproduced
below:
1. A spring lock mechanism for biasing a ground-engaging
tool into a support block, the support block defining a receptor,
the ground-engaging tool defining a bit at a proximal end and a
shank adapted to be received within the support block receptor,
the shank defining an annular groove proximate a distal end
collar, the distal end collar defining a first diameter, a retainer
being provided for being received within the ground-engaging
tool annular groove, said spring lock mechanism being adapted
to be received on the ground-engaging tool shank, exterior to
said support block, and between the support block and the
retainer, the support block being disposed between the proximal
end of the ground-engaging tool and said spring lock
mechanism, said spring lock mechanism defining an opening
for receiving the distal end collar, said opening defining a
second diameter larger than the distal end collar first diameter,
said spring lock mechanism being adapted to bias the ground-
engaging tool into the support block receptor.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

Belleville 65,790 June 18, 1867
Heimann 2,487,802 Nov. 15, 1949
Saler 2,524,273 Oct. 3, 1950
Wrulich 4,247,150 Jan. 27, 1981
Killian 4,692,079 Sept. 8, 1987
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Den Besten 5,018,793 May 28, 1991
Donskov SU 1010265 A Apr. 7, 1983

Standard Handbook of Machine Design (Joseph E. Shigley and Charles R.
Mischke, Editors in Chief, McGraw-Hill 2d ed. 1996) (“Shigley”).

The Examiner issued the following rejections:
1. Claims 1 and 7 under 35 U.S.C. § 102(b) as being anticipated by Den
Besten;
2. Claims 10 and 16 under 35 U.S.C. § 103(a) as being unpatentable over
Den Besten in view of either Donskov and/or Wrulich;
3. Claims 2-5 under 35 U.S.C. 103(a) as being unpatentable over Den
Besten in view of Belleville;
4. Claims 11-14 under 35 U.S.C. 103(a) as being unpatentable over Den
Besten and Donskov and/or Wrulich and further in view of Belleville;
5. Claim 6 under 35 U.S.C. 103(a) as being unpatentable over Den Besten
and Belleville and further in view of Shigley;
6. Claims 15 under 35 U.S.C. 103(a) as being unpatentable over Den Besten
and Donskov and/or Wrulich and Belleville and further in view of
Shigley;
7. Claims 8 and 9 are rejected under 35 U.S.C. 103(a) as being unpatentable
over Den Besten and Belleville and further in view of one of Heimann,
Saler or Killian;
8. Claims 17 and 18 under 35 U.S.C. 103(a) as being unpatentable over Den
Besten and Donskov and/or Wrulich and Belleville and further in view of
one of Heimann, Saler, or Killian;

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Appellant contends that the Examiner erred in making each of the
above rejections. Claims 1 and 7 are argued as a group. Br. p. 11. Appellant
argues that the Examiner erred in rejecting claims 1 and 7 as being
anticipated by Den Besten because Den Besten fails to disclose the spring
lock mechanism exterior to the support block as required by claim 1. Br. p.
11-14. Claims 2-5 are argued as a group. Br. p. 19. Appellant’s arguments
with respect to claims 2-5 are based upon whether it was proper for the
Examiner to combine the Den Besten device with the spring taught by
Belleville to support a finding that claim 2, from which claims 3-5 depend,
was unpatentable over Den Besten in view of Belleville. Br. p. 19-20.
Appellant’s arguments with respect to claim 6 are not based upon the
Examiner’s reliance upon Shigley, but, again, upon whether it was proper
for the Examiner to combine the Den Besten device with the spring taught
by Belleville to support a finding that claim 2, from which claims 6 depends,
was unpatentable over Den Besten and Belleville and further in view of
Shigley. Appellant's arguments with respect to claims 8 and 9 do not allege
any specific finding of fact or conclusion made by the Examiner that is in
error. Appellant instead argues that there is no suggestion or motivation to
combine the references and therefore there is no evidentiary support in the
record to reach a conclusion of obviousness with respect to claims 8 and 9.
Br. p. 24-25. Appellant argues claims 10 and 16 as a group. Appellant’s
argument regarding claims 10 and 16 is based upon whether the Examiner
erred by determining claim 10 was unpatentable over the combination of
Den Besten and either Donskov or Wrulich. Br. p. 15-19. Claims 11-14 are
argued as a group. Br. p. 20. Appellant argues that the Examiner erred by
rejecting claims 11-14 for the same reasons alleged with respect to claim 2,
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which is similar in scope to claim 11. Br. p. 20-21. Appellant argues that the
Examiner erred by rejecting claim 15 for the same reasons alleged with
respect to claim 6, which is similar in scope to claim 15. Br. p. 23-24.
Appellant's arguments with respect to claims 17 and 18 do not allege any
specific finding of fact or conclusion made by the Examiner that is in error.
Appellant instead argues that there is no suggestion or motivation to
combine the references and therefore there is no evidentiary support in the
record to reach a conclusion of obviousness with respect to claims 17 and
18. Br. p. 26-27.

ISSUES
1. Has Appellant established that the Examiner erred in rejecting claim 1,
and therefore, claims 2-9, because Den Besten fails to disclose the spring
lock mechanism exterior to the support block and neither Belleville, as
applied to claims 2-5; Shigley, as applied to claim 6; nor Heimann, Saler
or Killian as applied to claims 8-9 cure this deficiency?
2. Has Appellant established that the Examiner erred in rejecting claim 10,
and therefore, claim 16, as unpatentable over the combination of Den
Besten and either Donskov or Wrulich?
3. Has Appellant established that the Examiner erred in rejecting claim 11,
and therefore claims 12-15 because it was improper to rely upon the
combination of Den Besten and Belleville to support the rejection of
claims 11-14 as being unpatentable over Den Besten and Donskov,
and/or Wrulich and further in view of Belleville, and the rejection of
claim 15 as being unpatentable over Den Besten and Donskov and/or
Wrulich and Belleville and further in view of Shigley?
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4. Has Appellant established that the Examiner erred in rejecting claim 17,
and therefore, claim 18, because there is no suggestion or motivation to
combine the references and therefore there is no evidentiary support in
the record to reach a conclusion of obviousness?

FINDINGS OF FACT
1. Den Besten discloses a ground-engaging tool assembly (col. 1, ll. 8-11;
Fig 4) comprising a support block 3 (“mounting block”) defining a
receptor (bore); a ground-engaging tool defining a bit 2 at a proximal end
and a shank 5 adapted to be received within said support block receptor
(Fig. 3), said shank 5 defining an annular groove (accommodating
retaining clip 18) proximate a distal end collar (portion of 5 below 18 as
viewed in Fig. 3), the distal end collar defining a first diameter; a retainer
18 adapted to be received within said ground-engaging tool annular
groove; and at least one spring lock mechanism 11 received on said
ground-engaging tool shank 5 (at 6), between said support block 3 and
said retainer 18, the support block 3 being disposed between the proximal
end 12 of the ground-engaging tool 2 and said at least one spring lock
mechanism 11, said at least one spring lock mechanism 11 defining an
opening (centrally) for receiving the distal end collar (col. 2, ll. 29-32),
said opening defining a second diameter larger than the distal end collar
first diameter (allowing assembly; see col. 2, ll. 29-32), said at least one
spring lock mechanism 11 being adapted to bias (downwardly as viewed
in Fig. 3) said ground-engaging tool 2 into said support block 3 receptor.
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2. The Examiner has construed the phrase “at least one spring lock
mechanism…exterior to said support block” to exclude the spring lock 11
of Den Besten which is mostly within the support block 3. Ans. p. 4.
3. Wrulich teaches that it is known in the art to provide a spring lock
mechanism 18 (“spring clip”) outside a support block 2 (“holder”) for
resiliently biasing the bit into the block to prevent fluttering (col. 2, ll.
21-24; col. 3, ll. 23-26). Wrulich also teaches the spring lock 18 having a
notch (opening visible in Fig. 2) adapted to receive the shank 6 (“shaft”)
whereby the spring lock 18 is insertable on the shank (at 17) without
requiring removal of a retainer (i.e., insertable in a direction
perpendicular to the longitudinal axis of the shaft while the distal end
flange, which serves as a retainer, remains in place)
4. Donskov also teaches that it is known in the art to provide a spring lock
mechanism 8 exterior to a support block 2-4, in a cutting tool designed
for reducing wear on the cutter 6. Translation of Donskov pp. 1-3.
5. Belleville teaches that it is known in the art to replace ordinary springs
with the frustoconical type depicted therein (p. 2, l. 9).
6. Shigley teaches that it is known in the art to nest (See Fig. 24.33
“Parallel” configuration) Belleville spring washers in order to increase
the load associated with a given deflection (pp. 24.45-24.46).
7. Heimann, Saler and Killian teach examples of open-ended retaining rings
having a deformed portion for grasping which are used to retain a shaft in
a housing.

PRINCIPLES OF LAW
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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 (Fed. Cir. 1987).
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Supreme Court in KSR International Co. v. Teleflex Inc., 550
U.S. 398, ___, 127 S. Ct. 1727, 1741 (2007) noted that the analysis
supporting a rejection under 35 U.S.C. § 103 should be made explicit. The
Federal Circuit has stated that “rejections on obviousness grounds cannot be
sustained with mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR, 550 U.S. at ___, 127 S. Ct. at 1741.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR, 127 S. Ct. at 1739. A prima facie conclusion of obviousness may be
supported by a showing that the claims are directed to a process, machine,
manufacture, or composition of matter already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, and such modification yields a predictable result. See id. (citing United
States v. Adams, 383 U.S. 39, 40). The Supreme Court further stated that:
[I]f a technique has been used to improve one device, and a
person of ordinary skill in the art would recognize that it would
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improve similar devices in the same way, using the technique is
obvious unless its actual application is beyond his or her skill.

KSR, 550 U.S. at ___,127 S. Ct. at 1740. When considering obviousness of a
combination of known elements, the operative question is thus “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” Id.

ANALYSIS
Initially, with respect to claim 1, Appellant argues that the limitation
requiring the spring lock mechanism to be “disposed on the exterior of the
support block, and between the support block and the retainer” be afforded
patentable weight. Br. p. 12 (emphasis in original). The Examiner opines this
phrase should be regarded merely as an intended use limitation since the
claim is directed to the subcombination of the spring lock mechanism and
not to the combination of the spring lock mechanism, the support block and
the ground-engaging tool. While the preamble, which recites “[a] spring lock
mechanism for…” supports the Examiner’s construction, the body of the
claim and Appellant’s remarks do not. Claim 1 requires “the support block
being disposed between the proximal end of the ground-engaging tool and
said spring lock mechanism.” This limitation does not suggest an intended
use of the spring lock mechanism but instead requires the spring lock
mechanism to be disposed on a side of the support block opposite the
proximal end of the ground engaging tool. Requiring a specific positional
relationship between the spring lock, support block and ground engaging
tool is indicative that the claim is directed not simply to the spring lock but
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to the combination of the spring lock, support block and ground engaging
tool.
To anticipate claim 1, Den Besten must disclose the spring lock
mechanism capable of being received on the ground engaging tool shank,
exterior to the support block, and between the support block and the retainer
while the support block is disposed between the proximal end of the ground-
engaging tool and the spring lock mechanism. The Examiner’s interpretation
that this limitation is met by Den Besten “before installation” (Ans. p. 4) as
show in Figure 2 (Ans. p. 10) neglects the second half of the limitation
essentially requiring an assembled configuration. It would appear that at
least a portion of the spring lock mechanism is capable of being received
exterior to the support block (Fact 1), however, the Examiner has reasonably
construed such a configuration to fall outside the scope of this same
limitation with respect to claim 10 (Fact 2). Adopting the Examiner’s
construction of the term “exterior to said support block,” Den Besten does
not disclose this limitation and therefore does not disclose each and every
element of claim 1. For this reason the Examiner erred by rejecting claims 1
and 7 under 35 U.S.C. § 102(b) as being anticipated by Den Besten. Since
Belleville, as applied to claims 2-5, does not cure this deficiency of Den
Besten, the Examiner also erred by rejecting claims 2-5 under 35 U.S.C.
§ 103(a) as being unpatentable over Den Besten in view of Belleville. Since
Shigley, as applied to claim 6, also does not cure this deficiency, the
Examiner also erred by rejecting claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Den Besten and Belleville and further in view of Shigley.
Since neither Heimann, Saler nor Killian, as applied to claims 8-9 cure this
deficiency, the Examiner also erred by rejecting claims 8 and 9 under 35
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U.S.C. § 103(a) as being unpatentable over Den Besten and Belleville and
further in view of one of Heimann, Saler or Killian. Since Appellant has
established that the Examiner erred by rejecting claims 1-9 (Issue 1),
Appellant’s remaining arguments pertaining to claims 2-9 are moot and are
not addressed herein.
Regarding the rejection of claim 10 under 35 U.S.C. § 103(a) as being
unpatentable over Den Besten in view of either Donskov and/or Wrulich,
combining Wrulich or Donskov with Den Besten involves the substitution of
one spring, and spring location, for another in order to yield the predictable
result of resiliently retaining the bit with respect to the housing (Facts 3-4).
This simple substitution of known elements would have been obvious to one
having ordinary skill in the art. Regarding the rejection of claims 11-15,
Belleville provides an express suggestion to substitute the disclosed spring
for any ordinary spring (Fact 5). This express suggestion of Belleville would
have rendered obvious the substitution of the Den Besten spring with the
type of spring washer taught by Belleville. Regarding the rejection of claim
15, Shigley teaches that nesting Belleville springs is a known technique
which yields the predictable result of increasing the load for a given
deflection (Fact 6). It would have been obvious to one having ordinary skill
in the art to apply this known technique in order to optimize the deflection
resulting from the applied load. Regarding the rejection of claims 17-18, use
of the known retaining rings taught by Heimann, Saler, or Killian (Fact 7),
involves merely the simple substitution of known elements in order to yield
the predictable result of enabling application to a shaft from a radial
direction and therefore would have been obvious to one having ordinary skill
in the art.
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With respect to the rejection of claim 10, Appellant argues, citing the
claims of Wrulich, that it is improper to rely on Wrulich, because Wrulich is
not directed to the manner in which the bit is secured in the housing. Br. p.
18. In making a determination of obviousness, consideration is given not just
to the claims of a prior art reference but to what the entire disclosure of a
prior art reference would have taught or suggested to one of ordinary skill in
the art. Appellant further argues that,
Wrulich fails to teach the inclusion of a spring lock mechanism
of the present invention that defines an opening larger than the
diameter of the shaft, such that the spring lock mechanism is
received over the distal end of the shaft to engage the bit block,
after which the retainer is inserted in order to maintain the
spring lock mechanism in place.

Br. p. 18. Wrulich is relied upon for the teaching of locating the spring lock
mechanism exterior to the support block. It is unclear how Appellant’s
assertion supports the argument that it was improper for the Examiner to rely
on Wrulich for this teaching. Appellant is apparently analogizing the spring
clip 18 of Wrulich to the claimed retainer instead of the claimed spring lock
mechanism in order to conclude that Wrulich does not disclose or teach a
spring lock mechanism at all. This argument is without merit. Wrulich uses a
permanent retainer in the form of a flange on the shaft 6 that is analogous to
the claimed retainer. Wrulich is not relied upon for this teaching, however,
since the claimed retainer is already disclosed in Den Besten. The spring clip
18 of Wrulich is analogous to the claimed spring lock mechanism, not the
claimed retainer. Wrulich provides the teaching of locating such a
mechanism exterior to the support block (Fact 3).
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Appellant further argues, with respect to claim 10, that because
Donskov’s design has not proved successful in actual use, it would not have
been obvious to apply the teachings of Donskov to the design of Den Besten.
Br. p. 17. Firstly, there is no factual support of record to support Appellant’s
assertion that the Donskov design has not proved successful. Secondly, the
fact the design disclosed in Donskov has not experienced widespread
success does not necessarily mean that Donskov could not be relied upon for
its teachings to support a rejection under 35 U.S.C. § 103(a), because the
relevant inquiry is what a reference would have suggested to one having
ordinary skill in the art. Appellant further argues that the Donskov springs
are within the bracket guide and not exterior to it. The fact that the Donskov
spring 8 lies laterally between projecting frame members 3 and 4 of bracket
2-4 does not preclude the spring from being “exterior” to the support block
within the broadest reasonable interpretation of that term, since the spring is
exterior to the U-shaped boundary of the support block.
Appellant further argues, with respect to the rejections of claim 10,
claims 11-14, and claim 15 that there is no motivation or suggestion to
combine Den Besten with Wrulich (Br. p. 18), Belleville (Br. p. 21) or
Shigley (Br. p. 23-24), respectively. While the presence of a motivation or
suggestion to combine prior art references may provide helpful insight in
making an obviousness determination, an express motivation or suggestion
need not be found in the prior art in order to sustain a rejection under 35
U.S.C. § 103(a). See KSR 550 U.S. at ___,127 S. Ct. at 1741.
Appellant further argues, with respect to the rejections of claim 10,
claims 11-14, and claim 15 that there is no reasonable expectation of success
in making the proposed combinations because the recess of Den Besten
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would cause any apparatus arising from the combined teachings of Wrulich,
Belleville and Shigley to be non-functional. Br. p. 19-23. This argument is
not persuasive. The recess of Den Besten accommodating coil spring 11
serves only that purpose. The presence or depth of the recess is a detail of
construction that is a function of the spring employed. One of ordinary skill
in the art would know how to apply the teachings of Den Besten, Wrulich,
Belleville and Shigley in order to arrive at a functional apparatus, for
example, by not providing the recess, as is done by Wrulich. The relevant
inquiry in an analysis under 35 U.S.C. § 103(a) is what a prior art reference
would have suggested to one of ordinary skill in the art. Combining the
teachings of prior art references does not necessarily require the ability to
combine the specific structures disclosed therein. Further, “a person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at ___, 127 S. Ct. at 1742.
For these reasons, Appellant has not established the Examiner erred in
rejecting claim 10, and therefore, claim 16, as unpatentable over the
combination of Den Besten and either Donskov or Wrulich (Issue 2).
Appellant also has not established that the Examiner erred in rejecting claim
11, and therefore claims 12-15 because it was improper to rely upon the
combination of Den Besten and Belleville to support the rejection of claims
11-14 as being unpatentable over Den Besten and Donskov and/or Wrulich
and further in view of Belleville, and the rejection of claim 15 as being
unpatentable over Den Besten and Donskov and/or Wrulich and Belleville
and further in view of Shigley (Issue 3).
Appellant contends that the rejection of claims 17 and 18 lacks the
proper evidentiary support because the Examiner relied upon common
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knowledge to provide a motivation for the proposed combination. Br. p. 27.
Specifically, the Examiner regards the desirability of being able to apply the
spring lock mechanism without removal of the retainer as knowledge
generally available to one of ordinary skill in the art. Ans. pp. 8 and 15. The
prior art cited by the Examiner supports this assertion. For example, in
Killian, part 74 is the equivalent of a permanent retainer fixed to the shaft in
the form of a flange. It is noted that Wrulich has a similar feature. Using a
retaining element that is part of the shaft has the advantage of simplifying
assembly. It also encourages the use of a spring element that may be applied
to, and removed from, the shaft in a radial direction so that the retaining
element does not interfere with application and/or removal of the spring
element. A notch is provided in the spring elements of Killian and Wrulich
so that the spring element may be applied and/or removed in this fashion.
Thus, providing a notch in the spring lock mechanism amounts to applying a
known technique to obtain the predictable result of enabling application or
removal of the spring lock mechanism regardless of the presence of a
retaining element and therefore would have been obvious to one having
ordinary skill in the art. For these reasons Appellant has not established that
the Examiner erred in rejecting claim 17, and therefore, claim 18, because
there is no suggestion or motivation to combine the references and therefore
there is no evidentiary support in the record to reach a conclusion of
obviousness (Issue 4).

CONCLUSIONS OF LAW
On the record before us, Appellant has established that the Examiner
erred in rejecting claims 1 and 7 under 35 U.S.C. § 102(b) as being
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anticipated by Den Besten; claims 2-5 under 35 U.S.C. § 103(a) as being
unpatentable over Den Besten in view of Belleville; claim 6 under 35 U.S.C.
§ 103(a) as being unpatentable over Den Besten and Belleville and further in
view of Shigley; and claims 8 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Den Besten and Belleville and further in view of one of
Heimann, Saler or Killian. Appellant has not established that the Examiner
erred in rejecting claims 10 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Den Besten in view of either Donskov and/or Wrulich;
claims 11-14 under 35 U.S.C. § 103(a) as being unpatentable over Den
Besten and Donskov and/or Wrulich and further in view of Belleville; claim
15 under 35 U.S.C. § 103(a) as being unpatentable over Den Besten and
Donskov and/or Wrulich and Belleville and further in view of Shigley;
claims 17 and 18 under 35 U.S.C. § 103(a) as being unpatentable over Den
Besten and Donskov and/or Wrulich and Belleville and further in view of
one of Heimann, Saler, or Killian.

DECISION
For the above reasons, the Examiner's rejection of claims 1-9 is
reversed and the Examiner’s rejection of claims 10-18 is affirmed.
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) (2007).

AFFIRMED-IN-PART

Vsh
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