Ex Parte Takasaki

Board of Patent Appeals and Interferences

Aug 21, 2012

11402635 (B.P.A.I. Aug. 21, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SEIICHIROU TAKASAKI
____________

Appeal 2010-002988
Application 11/402,635
Technology Center 3600
____________

Before STEFAN STAICOVICI, MICHAEL C. ASTORINO, and
BRADFORD E. KILE, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Seiichirou Takasaki (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting under 35 U.S.C. § 102(b) claims 8, 11, and
12 as anticipated by Gotoh (US 5,015,134, issued May 14, 1991) and under
35 U.S.C. § 103(a) claims 1-5, 17, and 18 as unpatentable over Dill (US
5,622,464, issued Apr. 22, 1997) and Reinwall (US 4,621,963, issued Nov.
11, 1986); claims 8, 11, and 12 over Lin (US 6,106,208, issued Aug. 22,
2000) and Gotoh; and claim 6 as unpatentable over Gotoh, Dill and
Reinwall, or Lin, Gotoh, Dill, and Reinwall. 1 Claims 13-16 have been
withdrawn and claims 7, 9, 10, and 19 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a screw including a shank 48, a head
38, and a cutter 54 having a curved surface defined between a pair of cutting
ribs 56, 58, 60, 62, 64, 66, 68, 70 such that each curved surface forms a
groove between adjacent pairs of cutting ribs, i.e., groove bounded by ribs
56, 70 and surface 72. Spec. 4, ll. 5-10 and figs. 2, 3 and 5.
Claim 1 is illustrative of the claimed invention and reads as follows:

1 In the After-Final Amendment filed Jun. 4, 2009 (hereafter
“Amendment”) (see Ans. 3), Appellants amended claim 6, from which claim
19 directly depends, to include all of the limitations of claim 19, and claim
19 was canceled. Amendment at 5. Thus, the rejection of claim 6 under 35
U.S.C. § 102(b) as anticipated by Gotoh and under 35 U.S.C. § 103(a) as
unpatentable over Lin and Gotoh is moot. See Final Rejection, mailed Mar.
19, 2008, at 2-3. Since claim 19 was canceled, the rejection of claim 19
under 35 U.S.C. § 103(a) as unpatentable over Gotoh, or Lin and Gotoh,
Dill, and Reinwall is likewise moot. Id. at 4-5.

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1. A screw for creating a countersunk hole as the screw is driven
in, comprising:
a shank;
a head on one end of the shank;
a generally frusto-conical portion disposed between the shank
and the head;
a plurality of cutting ribs disposed on the frusto-conical portion
about the circumference thereof, each of the cutting ribs extending
between the underside of the head at a first radially outer location and
the shank at a second location that is radially inward from the first
location; and
a groove having an inwardly curved surface disposed between
each adjacent pair of cutting ribs, the cutting ribs being defined by the
intersection of adjacent ones of the curved surfaces, which each
extend between the underside of the head and the shank.

SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER NEW GROUNDS OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b) .

ANALYSIS
The Notice of Appeal filed Jun. 3, 2008 states that the final rejection
of claims 1-6, 8, 11, 12, and 17-19 is being appealed. However, in the
Appeal Brief filed Jun. 4, 2009 (hereafter “App. Br.”), Appellant specifically
indicates that only the final rejection of claims 1-6, 17, and 18 is being
appealed. App. Br. 3. Consistent with the holding of BPAI precedential
opinion Ex Parte Ghuman, 88 USPQ2d 1478, 1480 (BPAI 2008), Appellant
may not reserve arguments for some later time. Arguments Appellant could
have made but chose not to make in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).
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Accordingly, we summarily affirm the Examiner’s rejections of
claims 8, 11, and 12 under 35 U.S.C. § 102(b) as anticipated by Gotoh and
under 35 U.S.C. § 103 as unpatentable over Lin and Gotoh.

Claims 1-5, 17, and 18
Independent claim 1 requires “a groove having an inwardly curved
surface disposed between each adjacent pair of cutting ribs.” Similarly,
independent claim 4 requires “an inwardly curved surface disposed between
each pair of adjacent ribs, each rib pair and associated surface defining a
groove.” App. Br., Claims Appendix.
The Examiner found that Dill discloses all the limitations of
independent claims 1 and 4 with the exception of “grooves having a curved
cross-section.” Ans. 5. The Examiner further found that “Reinwall
discloses a screw with grooves with a curved cross-section (24′) between
raised ribs (23′).” Id. The Examiner concluded that:
[I]t would have been obvious for one of ordinary
skill in the art to make the grooves of Dill curved
in cross-section as disclosed in Reinwall because
Dill discloses the shape of the grooves is not
critical and they can be made in different shapes
(column 5, line 15-18) and Reinwall simply
discloses one of a finite group of alternative
shapes.
Id.
According to the Examiner,
Dill makes it clear that the grooves are not limited
to the V-shape shown and that other shapes can be
used so long as they meet the requirement of
increased driving resistance. . . . [T]he skilled
artisan would find i[t] “obvious to try” other
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shapes for the grooves in Dill which would include
a curved shape since there is only a finite number
[of] possible shapes and the results would be
predictable in that with the grooves having a
curved shape instead of a V-shape the ribs would
maintain the edge as seen in Reinwall and Dill
which in turn would maintain the predictable result
of the increased driving resistance by the edge
facilitating engagement with the sheet metal.

Ans. 10.
The Examiner further opines that, “the simple substitution of the V-shaped
grooves with curved grooves would similarly yield the same predictable
results.” Id. Emphasis added.
The crux of the Examiner’s position appears to rest on Dill’s
disclosure that “the shape of the grooves is not critical and [that] they can be
made in different shapes (column 5, lines 15-18).” Ans. 5.
In column 5, lines 15-18, Dill discloses that, “[o]f course, other
shapes and spacings which provide increased driving resistance are also
suitable.” Emphasis added. While the Examiner correctly looks to apply a
broadest reasonable interpretation of the claim terms under examination, it is
also necessary for the Examiner to properly construe what the applied
reference fairly teaches or discloses. See, e.g., In re Fracalossi, 681 F.2d
792 (CCPA 1982). In this case, in the immediately preceding two sentences
of the same paragraph, Dill specifically discloses that the ridges 30 are V-
shaped and are spaced at equally divided regular angular intervals. Dill, col.
5, ll. 11-14. Dill further discloses in the next two paragraphs that variation
of ridge size, ridge numbers, and ridge orientation affect the amount of
additional resistance provided. Dill, col. 5, ll. 22-30. Hence, in contrast to
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the Examiner’s interpretation, we read the passage in column 5, lines 15-18
of Dill to mean that the ridge shape and the ridge spacing are not critical, not
that the shape of grooves between the ridges is not critical. For example,
Dill specifically discloses the use of radiused ridges as an alternative to
triangular ridges. See Dill, col. 5, l. 18. Thus, we do not agree with the
Examiner’s finding that Dill discloses that the shape of the grooves is not
critical and that they can be made in different shapes. See Ans. 5. At most,
we find that in Dill the ridge shape and the ridge spacing are not critical. We
could not find any portion of Dill that discloses that the planar shape of the
grooves is not critical and that the grooves can be made in different shapes.
In contrast to independent claims 1 and 4 which require that the
surface between adjacent ribs (ridges) be “inwardly curved,” Dill discloses
that the surface between adjacent ridges 30 is inwardly planar (similar to
Figure 1 of Appellant’s Drawings). See Dill, fig. 2. Although we appreciate
that Reinwall’s groove has a curved shape, given that Dill does not disclose
the non-criticality of the groove shape, we find the Examiner’s reasoning to
make the grooves of Dill “inwardly curved,” as per Reinwall, lacking
rational underpinning. Therefore, the reason proposed by the Examiner to
explain why one of ordinary skill in the art would have combined the
teachings of Dill and Reinwall is inadequate to support the conclusion of
obviousness. Without a persuasive articulated rationale based on rational
underpinning for modifying the reference as proposed, the Examiner’s
rejection appears to be the result of hindsight analysis. See In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. 398, 418 (2007)) (“rejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
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must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness”). Absent impermissible
hindsight, we fail to see why one having ordinary skill in the art would have
been led by Reinwall to replace the planar surfaces between Dill’s ridges
with curved surfaces, as the Examiner proposes.
In conclusion, for the foregoing reasons, the rejection of independent
claims 1 and 4, and their respective dependent claims 2, 3, 5, 17, and 18
under 35 U.S.C. § 103 as unpatentable over Dill and Reinwall cannot be
sustained. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an
independent claim is nonobvious under 35 U.S.C. § 103, then any claim
dependent therefrom is nonobvious).

Claim 6
The rejection of independent claim 6 under 35 U.S.C. § 103 as
unpatentable over Gotoh, Dill and Reinwall, or Lin, Gotoh, Dill and
Reinwall is based on the combined teachings of Dill and Reinwall to show a
“groove having an inwardly curved surface disposed between each adjacent
pair of cutting ribs,” as called for by claim 6. See App. Br., Claims
Appendix. See also, Ans. 6-7. The addition of Gotoh, or the combination of
Lin and Gotoh, does not remedy the deficiencies of Dill and Reinwall as
described supra. Accordingly, the rejection of independent claim 6 likewise
cannot be sustained.

NEW GROUND OF REJECTION
We make the following new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
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Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Appellants’ Admitted Prior Art (hereafter “AAPA”).
Figure 1 of AAPA discloses a screw for creating a countersunk hole
including all the limitations of independent claim 1 with the exception of “a
groove having an inwardly curved surface disposed between each adjacent
pair of cutting ribs.” App. Br., Claim Appendix. See also, Spec. 3, ll. 9-12.
AAPA and the claimed invention are both directed to solving the
same problem of forming a countersunk hole into the upper portion of a
bore. See Spec. 3, ll. 9-11 and Spec. 5, ll. 3-5 and figs. 1 and 11. AAPA and
the claimed invention both solve the problem in the same manner by
providing a plurality of cutting ribs (corners) and grooves disposed on a
frusto-conical portion. The difference between AAPA’s cutting corners and
grooves and the claimed cutting ribs and grooves is that AAPA’s grooves
are inwardly planar, while the claimed grooves are “inwardly curved.” See
Appellants’ Drawings, figs. 1 and 5.
AAPA gives a person of ordinary skill in the art a clear indication that
when desiring to form a countersunk hole into the upper portion of a bore, a
screw requires a plurality of cutting corners (ribs) and grooves disposed on a
frusto-conical portion between the shank and the head of the screw.
Appellant’s Specification does not indicate the significance of the shape of
the claimed grooves, i.e.,“inwardly curved,” when desiring to form a
countersunk hole into the upper portion of a bore. See In re Dailey, 357
F.2d 669 (CCPA 1966). See also, In re Kuhle, 526 F.2d 553, 555 (CCPA
1975) (use of claimed feature solves no stated problem and presents no
unexpected result and “would be an obvious matter of design choice within
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the skill of the art”(citing Graham v. John Deere Co., 383 U.S. 1 (1966) and
In re Gazda, 219 F. 2d 449 (1955))).
Therefore, it would have been obvious for a person of ordinary skill in
the art to make the grooves of AAPA “inwardly curved” because “[w]hen
there is a design need or market pressure to solve a problem and there are a
finite number of identified, predictable solutions, a person of ordinary skill
has good reason to pursue the known options within his or her technical
grasp.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Although
we appreciate that in addition to forming a countersunk hole into the upper
portion of a bore, the claimed “inwardly curved” grooves allows cutting
resulting from the scraping of the ribs against the bore to fall therethrough, it
appears that the inwardly planar grooves of AAPA would function in a
similar manner. See Spec. 5, ll. 5-6. “If [pursuing known options] leads to
the anticipated success, it is likely the product not of innovation but of
ordinary skill and common sense.” See id. at 421.
Although we decline to reject every claim under our discretionary
authority under 37 C.F.R. § 41.50(b), we emphasize that our decision does
not mean the remaining claims are patentable. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP
§ 1213.02.

SUMMARY
The decision of the Examiner is affirmed as to claims 8, 11, and 12,
and reversed as to claims 1-6, 17, and 18.
We enter new grounds of rejection of claim 1 under 35 U.S.C.
§ 103(a) as unpatentable over AAPA.
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Regarding the affirmed rejection(s) that have not been denominated as
new grounds of rejection, 37 C.F.R. § 41.52(a)(1) provides “Appellant[s]
may file a single request for rehearing within two months from the date of
the original decision of the Board.”
In addition to affirming the Examiner’s rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
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If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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