Ex Parte Webjorn

Patent Trial and Appeal Board

Feb 12, 2013

10515030 (P.T.A.B. Feb. 12, 2013)

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.
10/515,030 01/31/2005 Mats Webjorn P / 4447-4 9952
2352 7590 02/13/2013
OSTROLENK FABER LLP
1180 AVENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
EXAMINER
SAETHER, FLEMMING
ART UNIT PAPER NUMBER
3677
MAIL DATE DELIVERY MODE
02/13/2013 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 MATS WEBJORN
____________

Appeal 2011-005428
Application 10/515,030
Technology Center 3600
____________

Before STEVEN D.A. McCARTHY, STEFAN STAICOVICI, and
BARRY L. GROSSMAN, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/515,030

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STATEMENT OF THE CASE
Mats Webjorn (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting claims 15-17, 19-21, 23, 24, 26-28, 30,
31, and 33-35 under 35 U.S.C. § 112, second paragraph, for being indefinite
and under 35 U.S.C. § 103(a) as unpatentable over Ward (EP 1 182 366 A1,
published February 27, 2002). Claims 1-14, 18, 22, 25, 29, 32, and 36 have
been canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6.

THE INVENTION
Appellant’s invention relates to a bolted joint including a first part
having an internal thread and a second part having an external thread,
wherein when the parts are tightened together the threads are machined to
provide an additional play in the axial direction without altering the play in
the radial direction. Spec., Abstract and fig. 4.
Claim 15 is illustrative of the claimed invention and reads as follows:
15. A bolted joint having two thread-provided parts, the
bolted joint comprising:
an internal thread-provided part of the two thread-
provided parts comprising an internal thread comprising a
plurality of turns; and
an external thread-provided part of the two thread-
provided parts comprising an external thread having a plurality
of turns, the internal thread and the external thread configured
such that in screwing the internal thread-provided part and the
external thread-provided part together the external thread-
provided part is inside the internal thread-provided part, the
thread of a first thread-provided part of the two thread-provided
parts conforming to a characteristic profile configured to
provide play in both a radial direction and an axial direction
when the two thread-provided parts are screwed together and
are unstressed, the external thread-provided part being
configured to be prestressed with an axial tensile force,
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wherein the characteristic profile provides an additional
play Sa between the two thread-provided parts only in the axial
direction for every turn of the plurality of turns compared to a
standard profile while the play in the radial direction is
unaltered compared with the standard profile and provides a
thread coverage length between the internal thread and the
external thread unchanged compared with the standard profile,
wherein a second thread-provided part of the two thread-
provided parts conforms to the standard profile, and
wherein the standard profile is within the definition of at
least one of the ISO or the American Unified standard basic
profile.

SUMMARY OF DECISION
We AFFIRM.

ANALYSIS
The indefiniteness rejection
The Examiner states that:
[I]t is unclear what are the intended meets and bounds of the
characteristic profile threads because they are claimed in a first
configuration as having a certain play in both the radial and
axial direction (claim 15, lines 11-13) and then are claimed in
the second configuration as having an “additional play” and
since both configurations cannot co-exist it is unclear which
structure applicant intends.
Ans. 3-4. According to the Examiner, the claimed “additional play” cannot
be determined “without the original play also being claimed.” Ans. 6-7.
Moreover, the Examiner contends that, “the claimed ‘play’ or ‘additional
play’ does not impart any structural limitations to the article.” Ans. 7.
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
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Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted). Claims must “particularly point-out and distinctly claim[] the
subject matter which the applicant regards as his invention.” 35 U.S.C.
§ 112, para. 2. In this case, we agree with Appellant that independent claims
15, 23, and 30 “define the additional play provided by the characteristic
profile as being play in addition to the play provided by a standard profile.”
Reply Br. 2; see also App. Br., Claims App’x. Since independent claims 15,
23, and 30 define the “standard profile” as “within the definition of at least
one of the ISO or the American Unified standard basic profile,” we agree
with Appellant that “the term ‘additional play’ is play or clearance in
addition to the play provided by the standard profile.” Reply Br. 2. Hence,
the claimed “characteristic profile” includes an “additional play . . . in the
axial direction” when compared to the axial play of a standard profile, which
is known to be “at least one of the ISO or the American Unified standard
basic profile.”
In conclusion, because the claimed “characteristic profile” is
reasonably clear and no further detail is necessary to know the metes and
bounds of the claims, we shall not sustain the indefiniteness rejection of
claims 15-17, 19-21, 23, 24, 26-28, 30, 31, and 33-35 under 35 U.S.C.
§ 112, second paragraph.

The obviousness rejection
Appellant argues the rejection under 35 U.S.C. § 103(a) of claims 15-
17, 19-21, 23, 24, 26-28, 30, 31, and 33-35 together as a group. App. Br. 6,
11. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2011), we
have selected claim 15 as the representative claim to decide the appeal, with
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claims 16, 17, 19-21, 23, 24, 26-28, 30, 31, and 33-35 standing or falling
with claim 15.
Pointing to Figures 2 and 4 of Ward, the Examiner found that Ward
discloses a bolted joint in which an “inner thread-provided part has a
different thread profile than an outer thread-provided part.” Ans. 4.
According to the Examiner, because the pitch diameter of a first thread-
provided part (shown at the right side of Ward’s Figures 2 and 4) has a
characteristic profile in which the pitch diameter is reduced relative to the
pitch diameter of the other thread-provided part shown on the left side of
Ward’s Figures 2 and 4, the distance between mating flanks increases
“which in turn increases the ‘play’ in the axial direction.” Id. Furthermore,
the Examiner opines that “since the distance between the crest of the
characteristic profile and the root of the thread of the other thread[ed] part [is
unchanged] the radial ‘play’ would not be [a]ffected.” Id. Moreover, “since
the height remains unchanged and in turn the radial extent of the flanks
remains unchanged [] the thread coverage also remains unchanged.” Ans. 4-
5.
Appellant argues that, “Ward does not disclose or suggest additional
clearance only in the axial direction while clearance in the radial direction is
unaltered.” App. Br. 7; see also Reply Br. 4. Furthermore, according to
Appellant, “Ward does not disclose or suggest changing the pitch diameter
such that the thread coverage length between the internal thread and the
external thread is unchanged compared with the standard profile.” App. Br.
8.
At the outset, we agree with the Examiner that Ward discloses
increasing thread clearance between mated external (i.e., screw) and internal
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(i.e., nut) threads by either increasing the pitch diameter (mean diameter) of
the internal thread or by decreasing the pitch diameter of the external thread,
and hence, increasing the distance between the pitch diameters of the screw
and the nut. Ans. 8; see also Ward, paras. [0017] and [0018]. Similarly,
Appellant’s Specification describes obtaining an additional axial play
between a screw 1 and a nut 2, while maintaining the radial play and the
thread coverage length unchanged, by increasing the distance between
“mean diameter D2′ of the nut [2] and the mean diameter d2 of the screw 1.”
Spec. 6, ll. 13-21; see also Appellant’s figs. 2 and 4. We further note the
similarity between Appellant’s Figure 5 and Ward’s Figure 4. Just as in
Appellant’s threaded connection where only one flank of a thread profile is
machined in order to decrease the width of the thread ridge, and hence
obtain an additional axial play without altering the radial play and the thread
coverage length, in Ward’s Figure 4, one flank of a thread profile is likewise
machined. Compare Spec. 7, ll. 5-13 and Ward, para. [0027]; see also Ans.
9.
Thus, because a thread profile in Ward’s threaded connection is
modified in a similar manner as the claimed thread profile, i.e., machining
one flank of a thread of a threaded connection to increase the distance
between the pitch diameters of the internal and external threads, we find that
the threaded connection of Ward would likewise have an additional axial
play while maintaining the radial play and the thread coverage length so as
to shift the burden to Appellant to show that this is not the case. In re
Spada, 911 F.2d 705, 708 (Fed Cir. 1990) (“[W]hen the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not.”); see also
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In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Here, Appellant has not
come forward with any persuasive evidence to satisfy this burden.
Appellant’s argument that in Ward’s Figure 2 “the teeth as a whole, is
moved back toward the central axis of the threaded part” (see Reply Br. 4) is
not persuasive because Ward specifically compares the embodiment of
Figure 2 to the embodiment of Figure 4 in which one flank of a tooth of an
internal thread is machined. See Ward, para. [0016] (“FIG. 2 illustrates . . .
an increased clearance . . . that is 200% in relation to the clearance illustrated
in FIG.4.”). What a reference teaches a person of ordinary skill is not
limited to what a reference specifically “talks about” or what is specifically
“mentioned” or “written” in the reference. Syntex (U.S.A.) LLC v. Apotex,
Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). Since Ward specifically
compares the embodiments of Figure 2 and 4, we agree with the Examiner
that Ward reasonably discloses that upon machining one flank of an internal
thread (as in Ward’s Figure 4), the pitch diameter of the internal thread
increases and thus the thread clearance increases (as in Ward’s Figure 2),
that is, the axial play increases. Furthermore, although we appreciate
Appellant’s argument that Figures 2 and 4 of Ward are not drawn to scale
(see Reply Br. 5), nonetheless, a drawing teaches all that it reasonably
discloses and suggests to a person of ordinary skill in the art. In re Aslanian,
590 F.2d 911, 914 (CCPA 1979). In this case, we agree with the Examiner
that upon machining the one flank shown in Ward’s Figure 4, the pitch
diameter of the internal thread in Ward’s Figure 2 has increased. See Ans. 8.
We further agree with the Examiner that Figure 4 of Ward does not show
any change in the thread height because only the flank of the thread is
machined and as such, because the radial spacing between the threads of the
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threaded connection remains unchanged the radial play is not affected. See
Ans. 10.
Lastly, we are not persuaded by Appellant’s position that because
Ward discloses an “asymmetric flank configuration,” Ward does not disclose
providing an additional play “for every turn of the plurality of turns,” as
called for by independent claim 15. App. Br. 10. Here, Ward specifically
discloses a “thread having an asymmetric flank configuration.” Ward, para.
[0027]. Since the term “asymmetric” modifies the term “flank,” and not the
term “thread,” and because only one flank of a tooth is machined in Ward’s
Figure 4, the resulting tooth only has a flank configuration that is
“asymmetric.” Thus, we agree with the Examiner that the entire thread of
Ward’s Figure 2 has a reduced flank (“asymmetric flank configuration”) and
as such, Ward discloses an additional axial play “for every turn of the
plurality of turns,” as called for by independent claim 15. Ans. 11.
In conclusion, for the foregoing reasons, we sustain the rejection of
independent claim 15, and claims 16, 17, 19-21, 23, 24, 26-28, 30, 31, and
33-35 standing or falling with claim 15 as unpatentable over Ward.

SUMMARY
The Examiner’s decision to reject claims 15-17, 19-21, 23, 24, 26-28,
30, 31, and 33-35 under 35 U.S.C. § 112, second paragraph, as being
indefinite, is reversed.
The Examiner’s decision to reject claims 15-17, 19-21, 23, 24, 26-28,
30, 31, and 33-35 under 35 U.S.C. § 103(a) as unpatentable over Ward is
affirmed.
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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

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