Ex Parte Truong et alDownload PDFPatent Trial and Appeal BoardApr 22, 201411561027 (P.T.A.B. Apr. 22, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HOI TRUONG and HAROLD G. ERICKSON ____________ Appeal 2012-004548 Application 11/561,027 Technology Center 3600 ____________ Before LYNNE H. BROWNE, ANNETTE R. REIMERS, and THOMAS F. SMEGAL, Administrative Patent Judges. SMEGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Hoi Truong and Harold G. Erickson (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 8, 10-12 and 28, the only claims pending in the application on appeal . We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2012-004548 Application 11/561,027 2 CLAIMED SUBJECT MATTER Claims 8 is the only independent claim on appeal and recites: 8. A receptacle comprising: an outer housing defining a cylindrical internal cavity; and an aperture that opens into the internal cavity; a floating insert positioned within the internal cavity of the outer housing, said floating insert defining an internal cavity having substantially smooth walls that define a single cylindrical surface and configured to receive latching members of a fastener, said floating insert also defining an aperture that opens into the internal cavity of the floating insert, and a cap configured to mate with the outer housing such that, when the fastener is received by the floating insert and the cap is mated with the outer housing, an end of the fastener is enclosed by the outer housing and the cap, wherein one end of the floating insert defines a lip that extends inwardly from an outer wall of the floating insert, the lip being configured to engage the fastener, and wherein said floating insert is sized to be smaller than the internal cavity of the outer housing so as to be movable therewithin and wherein the floating insert is rotatable without limitation within the internal cavity of the outer housing. App. Br. 10, Claims App’x. REJECTION Claims 8, 10-12 and 28 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ricks (US 5,947,509, issued Sep. 7, 1999) and Shimada (US 4,847,959, issued Jul. 18, 1989). Appeal 2012-004548 Application 11/561,027 3 ANALYSIS Claims 8 and 10-12. Appellants argue claims 8 and 10-12 as a group (App. Br. 3-6). We select claim 8 as the representative claim for this group and claims 10-12 stand or fall with claim 8 (37 C.F.R. § 41.37(c) (1) (vii) (2011)). Appellants first contend that “neither Ricks nor Shimada teaches or suggests a cap that can mate with the outer housing so as to partially enclose an end of the received fastener” (App. Br. 3) and continue by arguing that “[t]he configuration of the fastener stud 20 of Ricks is such that the bottom plate 104 necessarily has an opening 105 to allow the enlarged head 30 to pass through, as shown in Fig. 5, for example. Without the opening 105, the snap receptor 102 would be unable to receive the stud 20” (App. Br. 3-4). Appellants also argue “that Shimada simply does not disclose a cap and that a structure that incidentally closes an opening is not necessarily a cap” (App. Br. 4) (underlines omitted). We are not persuaded by Appellants’ arguments that the Examiner failed to establish a prima facie showing of obviousness in rejecting claim 8 over the combination of Ricks and Shimada. A rigid application of the “teaching, suggestion, and motivation” or TSM test for nonobviousness is incompatible with Supreme Court precedent. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Thus, the Examiner need not establish the existence of a “teaching, suggestion, and motivation” in combining teachings from prior art references; rather, the Examiner must provide an articulated reasoning with some rational underpinning to support a legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). The analysis need not seek out precise teachings directed to the specific Appeal 2012-004548 Application 11/561,027 4 subject matter of the claim but can take into account the inferences and the creative steps that a person of ordinary skill in the art would employ. KSR, 550 U.S. at 418. The Examiner acknowledges that while in Ricks “there is a cap 104 to keep the floating insert in the cavity, it doesn’t cooperate with the housing to enclose an end of the fastener when the fastener is received by the [] floating insert” (Ans. 6). However, the Examiner finds that “[i]t is reasonable to review other housings that receive a fastener for guidance in both shape of the housing and alternative sizing of the housing and cap relative to the projection shaped fastener” (id.). The Examiner then concludes that “Shimada establishes that it was well known in the art . . . to have a cap that cooperates with the housing to enclose an end of the fastener 14 when that fastener is secured to an insert within the housing. Therefore, it would have been obvious . . . to use a cap so that the housing and cap enclose the end of a fastener in view of Shimada [] also showing that caps are commonly use[d] to close off an opening in the housing to thereby enclose the end of the fastener” (id.). Thus the Examiner has set forth a reasonable rationale underlying the conclusions of obviousness. Appellants have not provided any persuasive arguments or evidence of error regarding the Examiner’s stated findings or conclusions. Appellants also argue that “Ricks does not teach or suggest ‘a cap configured to mate with the outer housing such that, when the fastener is received by the floating insert and the cap is mated with the outer housing, an end of the fastener is enclosed by the outer housing and the cap,’ as recited in Claim 8” (App. Br. 4). However, Appellants provide no evidence that the cap of Ricks would perform any differently than the cap recited by Appeal 2012-004548 Application 11/561,027 5 claim 8. The mere existence of differences between the prior art and the claim does not establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976). Furthermore, claim 8 merely recites a receptacle with an intended use, i.e., “configured to receive latching members of a fastener,” which is consistent with Appellants’ Specification at page 6, paragraph [0040] that discloses “prior to mating the cap 22 with the outer housing 12, the floating insert 34 may be inserted into the internal cavity 14. The cap 22 may then be mated with the outer housing 12 to at least partially close the internal cavities 14, 35 and to retain the floating insert 34 therewithin.” Thus, the disclosed purpose of cap 22 is “to retain the floating insert 34 in cavity 14”. However, this purpose is also taught by Ricks where capture bracket 104 retains snap receptor 102 in the internal cavity formed with outer housing 108; see Ricks at Figures 7-9 and column 6, lines 17-23. It has long been acknowledged that the manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself. In re Casey, 370 F.2d 576, 580 (CCPA 1967). A statement of intended use does not qualify or distinguish the structural apparatus claimed over the reference. In re Sinex, 309 F.2d 488, 492 (CCPA 1962). Furthermore, a functional limitation does not impose any structural limitation on the claimed apparatus that differentiates the claimed apparatus from a prior art reference otherwise disclosing the structural limitations of the claim. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (Appellant’s contention that the claimed structure will be used to perform a function not taught by the prior art reference does not have patentable weight if the structure is already known). Appeal 2012-004548 Application 11/561,027 6 Appellants also argue that “[n]either Ricks nor Shimada teaches or suggests a floating insert with an end defining a lip that extends inwardly from an outer wall of the floating insert” and that “Ricks teaches away from defining the lip at one end of the shell 112,” because Ricks “necessitates that the snap receptor 102 be ‘embedded in a shell 112’ at some distance from either end” (App. Br. 5)(underline omitted). However, Appellants’ argument is not commensurate with the scope of claim 8, which does not exclude a snap receptor “at some distance from either end,” but merely recites that “one end of the floating insert defines a lip that extends inwardly from an outer wall of the floating insert, the lip being configured to engage the fastener” (App. Br. 10, Claims App’x.). We agree with the Examiner that this limitation of claim 8 is met “by the lip being defined in the structure of Ricks by both the top surface of the shell 112 and the ring 110 extending inwardly from an outer wall of the floating insert shell 112 and defines a surface 116 extending radially inwardly and is configured to engage the fastener (col. 6, lines 7-8)” (Ans. 9). We also agree with the Examiner’s finding that “the claim limitation fails to preclude a multi-part integral lip, which has a polymer top surface extending inwardly from an outer wall of the floating insert and a metal lower surface such as that found in the teachings of Ricks” (Ans. 9). Appellants have not provided any persuasive arguments or evidence to the contrary. Moreover, although we appreciate Appellants’ position that the shell 112 and ring 110 of Ricks define a stud-receiving opening 114 that is “preferably counterbored at the top thereof” (see App. Br. 5 (citing to Ricks, col. 6, ll. 5-7)), we do not agree that “Ricks teaches away from defining the Appeal 2012-004548 Application 11/561,027 7 lip at one end of the shell 112” (App. Br. 5). To teach away, a reference must actually criticize, discredit, or other discourage the claimed solution. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). In this case, Ricks does not “criticize, discredit or otherwise discourage” defining a lip at one end of the shell 112, as Appellants contend, but merely expresses a preference for the stud-receiving opening 114, defined by the shell 112 and the ring 110, to be counterbored at the top. See Ricks, col. 6, ll. 5-6. We agree with the Examiner that “the device [of Ricks] doesn’t require the counterbore as indicated by the use of the term ‘preferably’, [and the device of Ricks] would still function without the counterbore” (Ans. 10). Therefore, we find that the disclosure of Ricks does not teach away from the subject invention. Appellants further contend that “[t]he Examiner, by reading the term ‘lip’ so broadly, however, is not only failing to consider the meaning of the term lip as defined in Applicant[s’] specification, but is also disregarding the wording of Claim 8 itself” (Reply Br. 2). However, Appellants do not identify any formal definition or clear disclaimer or other disclosure in the Specification, which might give the term “lip” as used in claim 8 a meaning other than its ordinary meaning.1,2 As discussed above, the Examiner finds that “the lip [is] defined in the structure of Ricks by both the top surface of the shell 112 and the ring 110 extending inwardly from an outer wall of the 1 Appellants’ Specification describes that “[t]he aperture 37 is typically defined by a lip 38 proximate one end of the floating insert 34 that extends inwardly from the outer wall 36 of the floating insert 34 and circumferentially about the aperture 37.” Spec. para. [0039]; figs. 6A-6C, 7. 2 An ordinary and customary meaning of the term “lip” is “4 a : the edge of a hollow vessel or cavity.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (11th Ed. 2005). Appeal 2012-004548 Application 11/561,027 8 floating insert shell 112 and defines a surface 116 extending radially inwardly and is configured to engage the fastener” (Ans. 5, 9 (citing Ricks, col. 6, ll. 7-8)). The Examiner’s interpretation is consistent with the plain meaning of the term, in our view, and does not appear inconsistent with its usage in the Specification. Appellants have not provided any persuasive arguments or evidence to the contrary. For the foregoing reasons, we sustain the Examiner’s rejection of claims 8 and 10-12 as being obvious over Ricks and Shimada. Claim 28 Appellants argue that dependent claim 28 is patentable because “neither of the cited references teaches or suggests a floating insert configured such that the lip of the floating insert is flush against a first rim of the outer housing when the floating insert is in engagement with the fastener, as recited in Claim 28” (App. Br. 7). Appellants contend that it is clear from Fig. 8 of Ricks . . . that the lip 116 (even if such lip is defined to include both the shell 112 and the ring 110) would not be flush against the top panel 130 of the upper plate 108 because the “lip” as defined by the Office Action includes an angled surface (the tapered inner surface of the shell 112) and a vertical surface (the inner surface of the ring 110), neither of which can physically be flush with the top of the upper plate 108. If the Office Action considers the engagement of the top, horizontal surface of the shell 112 with the top of the upper plate 108 (shown in Fig. 8) as providing “flush” engagement of the lip, then the term “flush” has been rendered devoid of meaning, as any contact of any surface of a “lip” with a “rim” would be read as satisfying the recitation of Claim 28 Appeal 2012-004548 Application 11/561,027 9 (Id.). Appellants further contend that the Examiner is broadly interpreting the recitation “the lip of the floating insert is flush against the first rim of the outer housing when the floating insert is in engagement with the fastener” to mean that the lip 116 (or rather, any intermediate structure connected to the lip 116) merely contacts the surface of the upper plate 108 (as long as the contact is something more than “point contact.”) Accordingly, the Examiner is . . . changing the ordinary meaning of claim terms (such as “flush”) to force the cited art to read on the recitations of the claims (Reply Br. 3). Appellants’ arguments are not persuasive. At the outset, as discussed above, we agree with the Examiner that Ricks merely expresses a preference for the stud-receiving opening 114, defined by the shell 112 and the ring 110, to be counterbored at the top (See Ans. 10-11). We further agree with the Examiner that the term “flush”3,4 “means immediately adjacent” (Ans. 11). We also agree with the Examiner’s findings and conclusions that the device of Ricks is constructed so that any pull on the fastener to disengage it from the housing won't pull the floating insert 102 out through the aperture 132 in the rim 130 but instead the top 3 An ordinary and customary meaning of the term “flush” is “4 b : directly abutting or immediately adjacent.” MERRIAM WEBSTER’S COLLEGIATE DICTIONARY (11th Ed. 2005). 4 Appellants do not identify any formal definition or clear disclaimer or other disclosure in the Specification, which might give the term “flush” as used in claim 28 a meaning other than its ordinary meaning. See Spec., generally. Appeal 2012-004548 Application 11/561,027 10 surface of the shell 112 that together with the ring 110 defines the lip comes into contact with the rim 130 and thus meets the language of the claim. They [i.e., the lip and the rim 130] are immediately adjacent, which means flush . . . There are no protrusions extending between the top surface of the shell 112 of the floating insert and inner surface of the rim of the housing that would provide for point contact for the device of Ricks thereby creating non-flush engagement rather than surface contact and flush engagement when the fastener is pulled (Ans. 11-12). Appellants have not provided any persuasive arguments or evidence of error regarding the Examiner’s stated findings or conclusions. For the foregoing reasons, we sustain the Examiner’s rejection of claim 28 as being obvious over Ricks and Shimada. DECISION We AFFIRM the rejection of claims 8, 10-12 and 28 under 35 U.S.C. § 103(a) as unpatentable over Ricks and Shimada. 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 llw Copy with citationCopy as parenthetical citation