Ex Parte Taylor

Patent Trial and Appeal Board

Nov 14, 2016

12434609 (P.T.A.B. Nov. 14, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
912.01 1627
EXAMINER
SHAKERI, HADI
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
12/434,609 05/01/2009
66532 7590
JERRY HAYNES LAW
P.O. BOX 1570
JACKSONVILLE, OR 97530
11/14/2016
James W. Taylor JR.
11/14/2016 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 JAMES W. TAYLOR, JR.
Appeal 2014-008160
Application 12/434,609
Technology Center 3700
Before: LINDA E. HORNER, THOMAS F. SMEGAL, and
GORDON D. KINDER, Administrative Patent Judges.
KINDER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant1 appeals under 35 U.S.C. § 134 the Examiner’s final
rejection of claims 19-23, 25—32, 34—38, 40, 43 and 44. Br. 6. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellant identifies the real party in interest as the inventor, James W.
Taylor, Jr.
Appeal 2014-008160
Application 12/434,609
CLAIMED SUBJECT MATTER
The claims are directed to socket insert adapter. Claim 19,
reproduced below, illustrates the claimed subject matter:
19. A mechanical arrangement for electrically, hydraulically,
or pneumatically tightening, loosening or removing nuts and
bolts of various sizes, the mechanical arrangement comprising:
a socket driver configured to receive and to be rotatively
driven by a torque force from at least one of electrical,
hydraulic, or pneumatic means;
a plurality of hollow-shaped socket insert adapters that
are configured to be rotatively driven by the socket driver, and
to receive the electrical, hydraulic, or pneumatic torque force
via the socket driver, for tightening, loosening, or removing the
nuts and bolts of various sizes, a given one hollow-shaped
socket insert adapter of the plurality of hollow-shaped socket
insert adapters including at least:
an outer configuration having a shape and size to
conform to and to fit into a cavity of a socket driver body of the
socket driver;
and an inner configuration that:
has a shape and size to conform to and to fit on a head
portion of a given nut or bolt to be driven and wherein the
shape of the inner configuration is a closed hollow shape; and
includes a plurality of inner flat walls and a plurality of
rounded inner comers, each inner flat wall of the plurality of
inner flat walls being coupled with another inner flat wall of the
plurality of inner flat walls by a one of the plurality of rounded
inner comers, the inner configuration being shaped to allow the
one or more flat walls of the inner configuration to contact and
engage, and the one or more rounded inner comers to avoid
contacting and engaging, the head portion of the given nut or
bolt to be driven; and
wherein the plurality of inner flat walls and the plurality
of rounded inner comers are configured to increase the ability
of the plurality of hollow-shaped socket insert adapters to
receive the electrical, hydraulic, or pneumatic torque force via
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the socket driver and to transmit the torque force to the given
nut or bolt to be driven.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Cronan US 2,376,575 May 22, 1945
Evans US 3,802,303 April 9, 1974
Rogers US 4,836,067 June 6, 1989
Dobson US 6,354,175 B1 Mar. 12, 2002
Cheng US 7,028,589 B1 April 18, 2006
Abel US 7,287,449 B2 Oct. 30, 2007
REJECTIONS
The Examiner made the following rejections:
1. Claim 40 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor regards as his
invention.
2. Claims 19-23, 25—32, 34—38, 40, 43, and 44 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Dobson, Cronan, and
Abel.
3. Claims 19-23, 25—32, 34—38, 40, 43 and 44 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Dobson, Cronan, Abel,
and Evans.
4. Claims 23 and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dobson, Cronan, Abel, Evans, and Rogers.
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5. Claims 19-23, 25—32, 34—38, 40, 43, and 44 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Evans, Dobson, and
Abel.
6. Claims 23 and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Evans, Dobson, Abel, and Rogers.
7. Claim 28 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Evans, Dobson, Abel, and Cronan.
OPINION
Claims 19 and 29 are the only independent claims on appeal. We
address the issues presented on appeal in the order in which they appear in
Appellant’s Brief.
1. Whether claim 19 is patentable over Dobson in view of Cronan
and evidentiary reference Abel
Appellant challenges the rejection of claim 19 as obvious in view of
the principal reference to Dobson, asserting that Dobson shows “a hand tool,
not a socket driver configured for being driven by power means.” Br. 9. In
support, Appellant relies on the declaration of Dr. Taha (filed May 25, 2011)
and a declaration of Mr. Steven Self (filed May 25, 2011). Id.
The Examiner found that Dobson meets most of the limitations of
claim 19 (Final Act. 3; Ans. 3), reproducing Dobson’s Figure 3 showing the
socket end of Dobson’s tool 10 with nut 16 inside so as to be driven by tool
10. Id. This means that the hexagonal shank, the left portion as viewed in
Figure 2, is the end through which torque is provided to tool 10 in order to
turn nut 16. As the Examiner noted, the left end of tool 10 shown in Figure
2 of Dobson is identical to the corresponding end of the tool shown in Abel.
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Final Act. 5. The shank portion, according to Abel, “can be fitted into a
standard chuck of an electric screwdriver or the like.” Abel 6:32—33. As
further support for the Examiner’s finding, Figures 1-3 of Cheng show a
similar chuck of a power tool engaged with an identical hexagonal shank.
Final Act. 12. We find that the Examiner’s determination that Dobson’s tool
is configured to receive and be rotatively driven by a torque force from at
least one of electrical, hydraulic, or pneumatic means is supported by a
preponderance of the evidence. For the reasons that follow, the evidence
submitted by Appellant does not persuade us otherwise.
Dr. Taha’s declaration is not convincing. Dr. Taha states in a
conclusory fashion that “Dobson is a low torque hand driven or operated
device.” Taha Dec. 3. Dr. Taha does not explain how he came to that
conclusion or what structural features, if any, support his conclusion. Dr.
Taha identifies no structural feature which would prevent the tool of Dobson
from being “configured to receive and to be rotatively driven by a torque
force from at least one of electrical, hydraulic, or pneumatic means” as
required by claim 19. Br. 29 (Claims App.). Nor does Dr. Taha address the
limitation in claim 19 that the claimed socket driver is configured to be
driven by “a torque force.” Claim 19 does not include a limitation that the
torque force be greater than a specified torque force. Indeed, claim 19 does
not specify how much torque the socket driver is configured to receive, and
one of ordinary skill in the art would recognize that electrical, hydraulic, and
pneumatic tools could provide a range of torques from a little torque to a
large torque.
The declaration of Steven Self is not persuasive at least because it is
not directed to any particular language in claim 19. In particular, Mr. Self
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identifies no structural feature which would prevent the tool of Dobson from
being “configured to receive and to be rotatively driven by a torque force
from at least one of electrical, hydraulic, or pneumatic means” as required
by claim 19. Br. 29 (Claims App.). Nor does Mr. Self address the limitation
in claim 19 that the claimed socket driver is configured to be driven by “a
torque force.”
The declarations of Mr. Self and Dr. Taha do not persuade us that
Dobson’s tool 10 is not “configured to receive and to be rotatively driven by
a torque force from at least one of electrical, hydraulic, or pneumatic means”
as required by claim 19.
Appellant next contends that the Examiner must be relying on
inherency or personal knowledge in finding that Dobson is configured to be
driven by power means. Br. 9-10. However, contrary to the Appellant’s
contention, the Examiner relies on two evidentiary references, Abel and
Cheng, which show and describe a hexagonal shank with an annular recess
identical to Dobson’s and cooperation of such a shank with a quick release
chuck in a power tool or hand tool driver. Final Act. 5, 10. Appellant’s own
declaration about which end of Dobson receives torque (whether from a
hand operated device or a power device) is not credible in light of Abel and
Cheng. Br. 11-12 (citing Second Declaration of James W. Taylor, Jr., paras.
10-11 (filed May 18, 2012)). The Examiner found Appellant’s opinion
“erroneous” (Final Act. 12), and we agree.
Indeed, Appellant admits later in his brief that the end of Dobson’s
tool having central bore 14 receives hex head 16. Br. 25:3—4 (arguing that
“Fig[ure] 3 of Dobson . . . shows hex head 16 . . . clearly . . . disposed within
central bore 14”). Dobson describes his socket 10 as including “a wall 12
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which defines a central bore 14. The central bore 14 has a polygonal shape,
preferably a hexagon, to receive fastener hex heads 16.” Dobson 2:21—23.
Therefore Dobson’s hexagonal shank must be the part that receives torque,
and the central bore is the part that engages the work piece. Accordingly,
we find that the socket of Dobson (the right hand portion shown in Figure 2)
engages the work piece (fastener hex heads), and the hexagonal shank (the
left hand portion shown in Figure 2) is engaged by the tool which causes the
socket to rotate. In light of these findings by the Examiner, with which we
agree, and the explicit teachings of the cited references, we do not agree with
Appellant’s characterization that the Examiner is taking official notice or
relying on personal knowledge. Cf Br. 13.
The Examiner found that Dobson, when viewed in conjunction with
Abel and Cheng, shows a socket driver “configured to receive and to be
rotatively driven by a torque force from at least one of electrical, hydraulic
or pneumatic means” as required by claim 19. Appellant has not persuaded
us this finding was in error. Therefore, we sustain the rejection of claim 19
as unpatentable over Dobson, Cronan, and evidentiary reference Abel.
2. Whether Claim 19 is patentable over Dobson in view of Cronan
and Evans and evidentiary reference Abel
Appellant argues that that Evans fails to recite or suggest at least
“each inner flat wall of the plurality of inner flat walls being coupled with
another inner flat wall of the plurality of inner flat walls by a one of the
plurality of rounded inner comers,” as recited in claim 19. Br. 14. This
argument is not persuasive because the Examiner relied on Dobson for
teaching rounded comers (Final Act. 6) and Evans for teaching socket
inserts nested within each other with comers corresponding to that of the
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socket. Id. Appellant’s argument thus does not address the findings of the
Examiner that formed the basis of the rejection. In addition, claim 19 does
not require that all inner flat walls be coupled with another flat wall by a
rounded comer. Rather, claim 19 requires only a plurality of flat walls (two
or more), each of which is coupled with another by one of a plurality of
rounded comers, and Evans shows two flat walls coupled to each other by a
rounded comer at least in Figures 1 and 2.
Next, Appellant asserts that Evans fails to recite or suggest at least,
“wherein the plurality of inner flat walls and the plurality of rounded inner
comers increase the ability of the plurality of hollow shaped socket insert
adapters to receive the electrical, hydraulic, or pneumatic torque force via
the socket driver and to transmit the torque force to the given nut or bolt to
be driven,” as recited by claim 19. Br. 14—15. Specifically, Appellant
argues that Evans does not discuss using arcuate recesses to increase the
ability of the Evans wrench to receive high torque. Br. 15. This argument
does not address the combination found by the Examiner to render claim 19
obvious. The Examiner found that Dobson discloses rounded inner comers
for relieving stress (and thus increasing the transmissible torque) (see, e.g.,
Dobson, col. 1,11. 28-37), and the only relied-on teaching from Evans is to
provide nested inserts with rounded comers to match the socket driver.
Final Act. 4; Ans. 14. Appellant’s argument fails to address the Examiner’s
combination and so does not persuade us the Examiner erred.
Appellant also alleges there is no motivation to modify Dobson in
light of Evans as the Examiner found would have been obvious. Br. 15.
There is no argument in the Brief supporting this allegation, and we do not
address it. See Ex Parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010)
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(precedential) (“[i]f an appellant fails to present arguments on a particular
issue ... the Board will not, as a general matter, unilaterally review those
uncontested aspects of the rejection”).
Accordingly, we sustain the rejection of claim 19 as unpatentable over
Dobson, Cronan, Abel, and Evans.
3. Whether Claim 19 is patentable over Evans in view of
Dobson and evidentiary reference Abel
In response to the rejection of claim 19 over Evans, Dobson, and
Abel, Appellant first argues that Dobson does not show a socket driver
configured to be driven by a power tool. Br. 15. We have considered this
argument above and find it not persuasive.
Next, Appellant argues that Figure 5 of Evans does not show inserts
with rounded inner comers (Br. 16) and that modifying Evans would defeat
Evans’ ability to use his wrench in difficult to reach places. Br. 17. The
Examiner responds that “providing rounded comers does no[t] eliminate the
gripping teeth 78, only the comers would be rounded to relieve stress but the
apex of flat walls would still define teeth.” Ans. 15. In view of the
Examiner’s Answer, we are not persuaded that providing rounded comers to
relieve stress would defeat the function or advantages of Evans’ tool.
Appellant argues further that providing rounded comers is an
adaptation for high torque applications and that Evans does not have a goal
of high torque applications. Br. 17. In response, the Examiner finds that
“the tool of Evens [sic], whether or not intended for high torque[,] would be
improved by Dobson in preventing marring the work piece, which may
occur with soft work pieces (made of brass) even in low torque transfer.”
Ans. 15—16. Moreover, claim 19 merely recites that the walls and rounded
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inner comers increase the torque transmitting ability of the tool set, and does
not require any particular level of torque. Appellant’s declaration that the
inserts of Evans are not for high torque applications is not persuasive
because there is not claim limitation that defines or requires a high level of
torque. Accordingly, we are not persuaded that the Examiner erred in
rejecting claim 19 as obvious over Evans in view of Dobson and Abel.
Therefore, we sustain the rejection of claim 19 as unpatentable over Evans,
Dobson, and Abel.
4. Whether claim 29 is patentable for same reasons as claim 19
Appellant argues that claim 29 is patentable for the same reasons as
argued in connection with claim 19. Br. 18. We have not been persuaded of
any error in the rejection of claim 19, and likewise find none in the rejection
of claim 29 based on the arguments presented in connection with claim 19.
In particular, we note that claim 29, like claim 19, does not recite any claim
limitation that defines or requires a high level of torque.2 In view of the
foregoing, we sustain each of the rejections under 35 U.S.C. § 103(a) of
independent claim 29.
5. Whether dependent claims 20—23, 25—28, 30—32, 34—38, 40,
and 43—44 are patentable at least because of dependency from
one of claims 19 or 29
Appellant argues that the dependent claims are patentable for the same
reasons that the claims from which they depend are patentable. As we find
2 Appellant refers to claim 40 on page 19 of the Appeal Brief in the section
addressing claim 29. We understand this reference to claim 40 to be a
typographical error.
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no error in Examiner’s rejection of claims 19 and 29 (the only independent
claims), we likewise find no error in this basis for rejecting the dependent
claims. Accordingly, we sustain each of the rejections under 35 U.S.C. §
103(a) of dependent claims 20-23, 25-28, 30-32, and 34-38. We further
address below additional arguments directed to the separate patentability of
dependent claims 40, 43, and 44.
Appellant argues that Rogers, cited in two additional grounds of
rejection against claims 23 and 32, does not cure the alleged defects in the
rejection of claims 19 and 29, respectively, from which these two claims
depend. Br. 19. As we find no error in the rejection of claims 19 and 29, we
do not find the argument that claims 23 and 32 are patentable persuasive.
Therefore, we sustain the two additional grounds of rejection under 35
U.S.C. § 103(a) of dependent claims 23 and 32 based on Dobson, Cronan,
Abel, Evans, and Rogers and separately based on Evans, Dobson, Abel, and
Rogers.
Appellant makes the argument that claim 28 is patentable for the same
reasons as claim 29 [sic] from which it depends. Br. 19. Whether Appellant
meant that claim 28 depends from 29 (which it does not) or from claim 19
(which it does), we have been shown no error in the rejection of claim 28 for
the same reasons we found no error in the rejection of the claim from which
it depends. Therefore, we sustain the rejection of claim 28 as unpatentable
over Evans, Dobson, Abel, and Cronan.
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6. Whether claim 40 is indefinite
Claim 40 depends from claim 19 and adds that “the electrical,
hydraulic or pneumatic torque force is greater than a torque force that can be
applied manually by a human being.” Br. 34 (Claims App.). The Examiner
rejects this claim under 35 U.S.C. § 112, second paragraph, because “[t]he
torque that can be applied by human being is not defined or clearly described
in the specification as originally filed to set a closed boundary to what
defines or encompasses said torque force of said electric, hydraulic or
pneumatic means and since different human beings can apply different
torque forces.” Final Act. 2.
Appellant does not contend that the Specification contains any
disclosure relating to the strength of human beings or the torque force
human beings can apply. Instead Appellant contends that one of ordinary
skill in the art would know the limits of human strength. Br. 21.
Importantly, Appellant argues as if the claim limitation read: “greater than a
torque force that can be applied manually by the strongest human being.”
Instead, the limitation is: “greater than a torque force that can be applied
manually by a human being”, a point made by the Examiner. Final Act. 2,
(citing Br. 34 (Claims App.) (emphasis added)); see also Ans. 17.
Appellant’s argument is thus not commensurate in scope with the claim and
so is not persuasive.
Appellant relies on the Declaration of Dr. Taha that ratchet box
wrenches (such as that disclosed in Cronan) are designed for low or mid­
range torque values, i.e. from 8 ft./lbs. to 432 ft./lbs. Br. 21 (citing Taha
Dec., pp. 5-6). Dr. Taha opines that “[hjuman arm/hand strength in hand
tool usage will be of low torque limits. That is, roughly in the range of 200
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ft[.]/lbs. and less. In most cases, hand wrenches are designed to operate with
human force inputs of 100 ft[.]/lbs[.] or less.” Taha Dec., p. 3, para. 3.a.
Appellant likens this case to Orthokinetics, Inc. v. Safety Travel Chairs, Inc.,
806 F.2d 1565, 1576 (Fed. Cir. 1986), where the court found the challenged
claim to be “as accurate as the subject matter permits since automobiles are
of different sizes.” Here, Appellant cannot meet the Orthokinetics test,
because his own declarations assert that the upper limit of human strength in
a hand tool application is less than 200 ft./lbs. Br. 21. Thus, the subject
matter admitted of more precise claiming, but such claims are not pending in
this appeal.3
For these reasons, Appellant has not demonstrated error in the
rejection of claim 40 as being indefinite and we sustain the rejection of claim
40 under 35 U.S.C. § 112, second paragraph.
7. Whether claim 40 is independently patentable over Dobson in
view of Cronan and/or Evans and evidentiary reference Abel
Appellant first urges error in that claim 40 was not singled out for
rejection. Br. 21. The Examiner replies that claim 40 was included in the
numerous rejections of claim 19, from which it depends. Ans. 18. We are
not persuaded of Examiner error given the explicit reference to claim 40 in
the Final Action in at least six different places. Final Act. 2, 3, 5, 6, 7, and
9.
3 Dr. Taha’s declaration also fails to address the fundamental mechanics of
applying torque with a wrench: regardless of the strength of the human
operator, the resulting torque is in direct proportion to the length of the
wrench. .
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Beyond the general assertion of patentability of claim 40 because its
parent claim, claim 19, is asserted to be patentable, Appellant has not
challenged the rejection of claim 40 over Dobson in view of Cronan and
evidentiary reference Abel found in the Final Action, page 3. Nor has
appellant challenged the rejection of claim 40 under Dobson in view of
Cronan, Evans, and evidentiary reference Abel found in the Final Action on
page 6. For the reasons discussed above, we have found no error in the
Examiner’s rejection of claim 19 in view of these references and for the
same reasons find no error in the rejection of claim 40 over these references,
and we sustain the rejections of claim 40 under 35 U.S.C. § 103(a) as
unpatentable over Dobson, Cronan, and Abel and over Dobson, Cronan,
Evans, and Abel.
8. Whether claim 40 is independently patentable over Evans in
view of Dobson and evidentiary reference Abel
Appellant next urges error in rejecting claim 40 over Evans in view of
Dobson because Evans does not suggest a torque force greater than can be
applied manually by a human being. Br. 22. Regardless of the breath of
claim 40, we find no error because Evans was not relied upon for such a
teaching. Dobson was relied upon for teaching a “nut setter that is capable
of being driven by an electric, hydraulic or pneumatic means.” Final Act. 8.
This finding is without limitation as to the applied torque and therefore
includes electric, hydraulic, or pneumatic instruments that are able to apply
torque greater or less than a given human being may be able to do. Final
Act. 18. Accordingly, the alleged failure of Evans to disclose a tool
configured to receive and be rotatively driven by a torque force greater than
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a torque force that can be applied manually by a human being does not
address the Examiner’s rejection of claim 40 which is based on finding the
Dobson teaches a tool configured to be driven either by hand or by power
means. Accordingly, we sustain the rejection of claim 40 under 35 U.S.C.
§ 103(a) as unpatentable over Evans, Dobson, and Abel.
9. Whether claims 43 and 44 are patentable over Dobson in view
of Cronan and evidentiary reference Abel
Appellant challenges the rejection of claims 43 and 44, asserting
Cronan’s insert 34 (Cronan, Fig. 8) does not have rounded outer comers to
match the socket driver (Cronan, Fig. 4). Br. 23. Appellant argues, “Even if
both a socket driver and a socket insert had rounded inner comers, there is
therefore nothing that would require the socket insert to have rounded outer
comers to match the inner rounded comers of the socket driver.” Br. 25.
This argument does not address the Examiner’s rejection. The
Examiner found that Cronan shows an insert in Figure 8 that has rounded
outside comers. Answer 3—4, and 19. The Examiner found it obvious to
modify Dobson in light of Cronan to provide Dobson’s insert with Cronan’s
rounded inside comers in order to protect workpieces (such as hex head 16
(Dobson, Fig. 3)) from stress. Answer 3—4, 19.
The inventor’s Declaration states that he believes that the outside of
an insert need not be congment with the driver in which it is received.
Taylor Declaration filed May 18, 2012, para. 16. This declaration is not
persuasive because it does not address the Examiner’s finding that it would
be obvious “to modify the invention of Dobson et al. with the plurality of
insert adapters as taught by Cronan [and] ... to modify the combination of
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Dobson et al. and Cronan with inserts having rounded inner comers as
taught by Dobson to reduce stress and provide a context surface with an
enhanced mechanical advantage.” Ans. 4. Appellant also argues that the
Examiner must be relying on inherency. We find no such reliance. Because
Cronan shows an insert with rounded outer comers to match the driver and
Dobson teaches rounding the inner comers to reduce stress, we are not
persuaded of error. In view of the foregoing, we sustain the rejection of
claims 43 and 44 as unpatentable over Dobson, Cronan, and Abel.
10. Whether claims 43 and 44 are patentable over Dobson in view
of Cronan and evidentiary reference Abel in further view of
Evans
Appellant cites Figure 2 of Evans and asserts that the Examiner has
not found that Evans teaches rounded outer comers. Br. 26. The Examiner
responds that the embodiment of Figure 3 in Evans shows all outer comers
to be rounded. Answer 19. Because we agree with the Examiner’s finding
concerning Evans’ Figure 3, we are not persuaded the Examiner erred.
Next, Appellant urges that the one sharp outer comer in Evans
prevents the Examiner’s proposed combination from meeting the limitation
that “each outer flat wall of the plurality [be] coupled with another outer flat
wall of the plurality of outer flat walls by a given one of the plurality of
rounded outer corners.” Br. 26 (citing Br. 34—35 (Claims App.)). This
argument is not persuasive because claims 43 and 44 do not require all flat
walls to be coupled by rounded outer comers. So long as two or more flat
walls are joined by rounded outer comers, this claim limitation is met.
Appellant next argues that there is no motivation to modify Dobson in
view of Evans. Br. 27. Appellant asserts there is no teaching in Evans that
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Evans’ arcuate recesses “are designed for high torque applications.” Br. 27.
However, as the Examiner found, Dobson discloses avoiding sharp comers
to prevent the comers from “contacting and engaging [] the head portion of
the given nut or bolt to be driven.” Final Act. 4. That Evans may have
provided curved inserts for a different purpose does not undermine the
Examiner’s combination. The Supreme Court, in KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398 (2007), rejected the rigid requirement of a teaching or
suggestion or motivation to combine known elements in order to show
obviousness. KSR, 550 U.S. at 415. The Court noted that an obviousness
analysis “need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”
Id. at 418. Moreover, the Court instmcts us that “familiar items may have
obvious uses beyond their primary purposes.” Id. at 420.
For over a half century, the Court has held that a “patent
for a combination which only unites old elements with no change
in their respective functions . . . obviously withdraws what
already is known into the field of its monopoly and diminishes
the resources available to skillful men.” Great Atlantic & Pacific
Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152—
153 (1950). This is a principal reason for declining to allow
patents for what is obvious. The combination of familiar
elements according to known methods is likely to be obvious
when it does no more than yield predictable results.
Id. at 415—16. Thus, Appellant’s argument is unconvincing.
Appellant next argues that because Evans does not state that its
arcuate recess are designed for high torque applications, the functional
description of the plurality of outer flat walls and plurality of outer rounded
comers to “increase the ability ... to receive . . . torque force” would not be
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met by the proposed modification of Dobson in view of Cronan and Evans.
Br. 27 (quoting Br. 34 (claim 35, Claims App.); claim 44 is similar). The
Examiner finds that Dobson discloses rounded inner comers “to reduce
stress.” Ans. 19. Reducing stress in the driver and driven components
would allow more torque to be transmitted between them without deforming
either, as would be readily apparent to one of ordinary skill in the art.
Accordingly, we are not persuaded the Examiner erred.
Appellant further relies on his own declaration and that of Dr. Taha.
Br. 27. The reliance on these declarations is misplaced. The Appellant’s
second declaration (filed May 18, 2012) addresses the Evans reference, but
not the combination proposed by the Examiner. Therefore it is not
persuasive. Dr. Taha’s declaration provides no explanation for his
conclusion that there is no reason to modify Dobson with the claimed inserts
and says nothing about Evans Dr. Taha’s assertion that rounded comers are
a high torque modification undermines Appellant’s arguments about Evans
because Evans shows rounded inside and outside comers. If rounded
comers are in fact a high-torque adaptation as Dr. Taha states (Taha Dec. 1
3a.), then Evans teaches the claimed stmcture as shown in Evans’s Figure 3.
Because the stmcture of Evans when combined with Dobson and Cronan as
the Examiner found obvious, would achieve the claimed function, we are not
persuaded that the Examiner erred. For these reasons we are not persuaded
by Dr. Taha’s unsupported conclusion, and we sustain the rejection of claims
43 and 44 as unpatentable over Dobson, Cronan, Abel, and Evans.
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11. Whether claims 43 and 44 are patentable over Evans in view of
Dobson and evidentiary reference Abel
Appellant first argues this rejection should be reversed because Evans
does not teach “each outer flat wall of the plurality [of outer flat walls]
being coupled with another outer flat wall of the plurality of outer flat walls
by a given one of the plurality of rounded outer corners.” Br. 28. We
have already addressed Appellant’s effort to read “each of the plurality of
[]walls” as “all the walls,” and find it not persuasive. Br. 26.
Appellant next argues that Evans modified in view of Dobson fails to
show “‘rounded outer comers configured to increase the ability of the
plurality of hollow-shaped socket insert adapters to receive . . . torque force’.
. . . because Evans is not directed at achieving high torque.” Br. 28. No new
argument is offered to support this conclusion, and the Examiner found that
“the insert of the combination applied also [would] have rounded outer
comers which would also meet the narrative functional language of increase
the ability to receive and transfer the force.” Ans. 18. Moreover, we have
already found, above, that claim 19 and claim 29 are not limited to any
particular torque. Accordingly, on the record presented we are not
persuaded of Examiner error.
Appellant next argues that there is no motivation to modify Evans in
view of Dobson because the arcuate recesses in Evans are intended for
“reverse slippage of the wrench head,” citing Evans 3:62—65. Br. 28. We
have already addressed the issue of motivation to combine prior art
teachings as illuminated by the KSR decision. We refer back to that
discussion and find no error in the Examiner’s modification of Evans in
view of Dobson.
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Appellant contends that the inserts of Evans are unsuitable for high
torque work, and therefore that the combination of Evans and Dobson does
not render claims 43 and 44 obvious. Br. 28. As we found above, the
claims are not limited to any particular torque, and therefore we find this
argument not persuasive.
Finally, Appellant complains the Examiner has not explained how the
modification of Evans inserts “to rounded outer comers that are configured
for high type torque work would still be consistent with Evans design goals
of [sic] “allow slippage of the wrench head 14.” Br. 29 (citing Evans 3:63—
65). We have reviewed all the evidence, and we find the combination relied
on by the Examiner compliant with the requirements of KSR. “[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.” In re Sneed, 710 F.2d 1544,
1550 (Fed. Cir. 1983). The relevant inquiry is whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. See In re Keller, 642 F.2d
413, 425 (CCPA 1981). Appellant has not persuaded us of error, and we
sustain the rejection of claims 43 and 44 as unpatentable over Evans,
Dobson, and Abel.
DECISION
For the above reasons, the Examiner’s adverse decision rejecting
claims 19-23, 25—32, 34—38, 40, 43 and 44 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)(l)(iv).
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AFFIRMED
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