Ex Parte Tisol et al

Patent Trial and Appeal Board

Apr 23, 2018

14346775 (P.T.A.B. Apr. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/346,775 03/24/2014
151860 7590 04/25/2018
The Small Patent Law Group, LLC
225 S. Meramec Ave.
Suite 725
St. Louis, MO 63105
FIRST NAMED INVENTOR
James S. Tiso! JR.
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
60891 8282
EXAMINER
KIM,YUNJU
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
04/25/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
docket@splglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES S. TISOL JR., BROCK T. COOLEY,
and BENJAMIN H. MOERKE
Appeal2017-007929
Application 14/346, 77 5
Technology Center 1700
Before BRADLEY R. GARRIS, DONNA M. PRAISS,
and MERRELL C. CASHION JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134(a) from a Final Action, dated
August 24, 2016, of claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
Appeal2017-007929
Application 14/346, 77 5
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A system for manufacturing a two-part fastener, the
system comprising:
a fastener-molding housing including a fastener mold
having a first mold section connected to a second mold section
through a flash connection mold section, wherein the fastener
mold is configured to receive fastener-forming material to form
a pre-engaged fastener having a first fastener portion within the
first mold section and a second fastener portion within the second
mold section, wherein the first fastener portion is temporarily
secured to the second fastener portion through a flash connection
portion formed within the flash connection mold section; and
an actuating assembly including a stripper plate, a
connecting member having a distal beam within a retaining
sleeve that is moveably secured to the stripper plate, and at least
one ejection member, wherein the connecting member is
configured to securely retain the first fastener portion, wherein
the stripper plate is configured to be moved relative to the
connecting member in order to drive one of the first or second
fastener portions into the other of the first or second fastener
portions to form a fully-formed fastener, wherein the stripper
plate is positioned around at least a portion of the connecting
member as the stripper plate is moved relative to the connecting
member, and wherein the at least one ejection member is
configured to eject the fully formed fastener from the actuating
assembly.
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Appeal2017-007929
Application 14/346, 77 5
REFERENCES AND REJECTIONS
Appellant 1 requests review of the following rejections maintained by
the Examiner:
I. Claims 1, 3-8, 11, 12, 14--18, and 20 rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Kanie (WO 03/072957 A2, published
September 4, 2003).
II. Claims 2 and 13 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanie and Pye (Pye, R., Assembling Parts in the Mold,
Modern Plastics, McGraw-Hill, Inc., Lausanne, CH, Vol. 47, No. 7, 1 July
1970, pages 90-94).
III. Claims 9, 10, and 19 rejected under 35 U.S.C. § 103(a) as
unpatentable over Kanie and Seidelman et al. (US 2006/0131787 Al,
published June 22, 2006) ("Seidelman").
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner's prior art rejections of claims 1-20
under 35 U.S.C. § 103(a) for the reasons presented by Appellant in the
Appeal and Reply Briefs. We add the following for emphasis.
Independent claim 1 is directed to a system, a device, for
manufacturing a two-part fastener using a single fastener mold having a first
mold section for a first fastener portion (pin) and a second mold section for a
second fastener portion (grommet), wherein the first and second mold
sections are connected through a flash connection mold section. Spec. iii! 6,
10. The claimed invention uses a stripper plate 54 that moves relative to a
1 Appellant is the Applicant Illinois Tool Works Inc., who is also identified
in the Appeal Brief as the real party in interest. App. Br. 4.
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Appeal2017-007929
Application 14/346, 77 5
connecting member to assemble the pin and grommet together. See Spec.
i-fi-140-41 and Figures 1-3.
The Examiner finds Kanie discloses a system for manufacturing a
two-part fastener that differs from the claimed invention in that Kanie does
not disclose a stripper plate (fixed die 31) positioned around the connecting
member (core pin 37) that moves relative to each other to push the pin and
bush together. Final Act. 2-3; Kanie 8-9 and Figures 12 and 14--17. The
Examiner finds Kanie, instead, places the stripper plate 31 above the
connecting member 37. Final Act. 3; Kanie Figures 12, 14. The Examiner
further finds that Kanie discloses "[t]he relationship between the fixed die 31
and the movable die 34 in the following description may be reversed, or the
reference numbers 31 and 34 may indicate a movable die and a fixed die,
respectively." Ans. 2-3; Kanie 7. The Examiner determines that this
disclosure by Kanie would have led one skilled in the art to place the
stripper 31 in a way that it surrounds a portion of the connecting member 3 7,
as claimed. Ans. 3.
Appellant argues that the portion of Kanie relied upon by the
Examiner about the relationship of the dies being reversed does not
expressly or necessarily describe, teach, or suggest positioning the stripper
plate (fixed die) 31 around at least a portion of the connecting member as the
stripper plate is moved relative to the connecting member, as claimed.
Reply Br. 3. Appellant further contends that the Examiner fails to explain
how all of the other components of Kanie would interact if such a reversal of
the dies is made. Id. at 4.
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
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Application 14/346, 77 5
"[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). The
fact finder must be aware "of the distortion caused by hindsight bias and
must be cautious of arguments reliant upon ex post reasoning." KSR, 550
U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966)
(warning against a "temptation to read into the prior art the teachings of the
invention in issue")).
We agree with Appellant that the Examiner has not established a
prima facie case of obviousness. The Examiner's rejection is premised on
reversing the positions of Kanie' s dies 31 and 34 so that "the fixed die (31,
which corresponds to the currently claimed stripper plate) [is] located where
the movable die (34) is shown in Figs 12-17, which is to say [that the fixed
die 31 would then surround] a portion of the core pin [37]" based on Kanie's
disclosure at the bottom of page 7. Ans. 2-3. While the noted portion of
Kanie suggests reversal of the dies, we find no disclosure in Kanie, and the
Examiner directs us to none, that would lead one skilled in the art to effect
the modification of Kanie' s fixed die 31 as proposed by the Examiner. In
fact, the only guidance provided by the noted disclosure of Kanie is that the
fixed die 31 would have a reversed function of being movable while the
movable die 34 would have a reversed function of being fixed. Thus, we
agree with Appellant that the Examiner has not adequately explained why
one skilled in the art would have modified fixed die 31 so as to surround
connecting member 37 as claimed. The Examiner has not adequately
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Appeal2017-007929
Application 14/346, 77 5
explained how Kanie' s limited disclosure on page 7 would have led one
skilled in the art to the claimed stripper plate/connecting member
relationship wherein a stripper plate is positioned around at least a portion of
a connecting member with the stripper plate movable relative to the
connecting member.
Therefore, the Examiner failed to articulate a sufficient reason with
some rational underpinning to support a conclusion that a person having
ordinary skill in the art would have arrived at the claimed invention from the
teachings ofKanie. KSR, 550 U.S. at 418.
Accordingly, we reverse the Examiner's prior art rejections under
35 U.S.C. § 103(a) for the reasons presented by Appellant and given above.
ORDER
The Examiner's prior art rejections of claims 1-20 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
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