Ex Parte Weimer

Patent Trial and Appeal Board

Jun 22, 2016

12950652 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/950,652 11/19/2010
7055 7590 06/24/2016
GREENBLUM & BERNSTEIN, PLC
1950 ROLAND CLARKE PLACE
RESTON, VA 20191
FIRST NAMED INVENTOR
Peter WEIMER
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.
P38771 8167
EXAMINER
SHAKER!, HAD!
ART UNIT PAPER NUMBER
3727
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
gbpatent@gbpatent.com
greenblum.bernsteinplc@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER WEIMER
Appeal2014-002793
Application 12/950,652 1
Technology Center 3700
Before EDWARD A. BROWN, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Weimer (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-24. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellant, the real party in interest is Astrium GmbH.
Appeal Br. 4 (filed August 14, 2013).
Appeal2014-002793
Application 12/950,652
fNVENTION
Appellant's invention relates to "a water hydraulic screw prestressing
device free of torque with integrated ultrasonic prestressing monitoring."
Spec. i12.
Claim 1, reproduced below, is the only independent claim and is
representative of the claimed subject matter:
1. A screw prestressing device comprising:
a piston;
a draw pin structured and arranged to be disconnectably coupled
to an element and movable, via engagement with the piston, to
apply a defined prestressing force in the element;
a cylinder, structured and arranged to guide the piston therein,
having an end positionable around a threaded assembly to be
tightened; and
a pressure chamber formed by the piston and the cylinder and
arranged in the cylinder, which receives a pressure fluid to apply
the defined prestressing force.
Appeal Br. 35 (Claims App.) (emphasis added).
REJECTIONS
The following rejections are before us for review:
I. The Examiner rejected claims 1-14, 21, and 22 under 35 U.S.C.
§ 102(b) as anticipated by Keske (US 4,246,810, iss. Jan. 27,
1981 ).
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Application 12/950,652
II. The Examiner rejected claims 5, 8, 9, 21, and 22, "in the
alternative," under 35 U.S.C. § 103(a) as unpatentable over
Keske and Abbott (US 6,763,570, iss. July 20, 2004). 2
III. The Examiner rejected claims 2 and 12-14 under 35 U.S.C.
§ 103(a) as unpatentable over Keske and Stough (US
2,760,393, iss. Aug. 28, 1956).
IV. The Examiner rejected claims 15-18, 23, and 24 under 35
U.S.C. § 103(a) as unpatentable over Keske and Pagano (US
3,969,810, iss. July 20, 1976).
V. The Examiner rejected claims 19 and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Keske, Stough, and Junkers (US
5,520,076, iss. May 28, 1996).
VI. The Examiner rejected claims 1-24 on the ground of
nonstatutory obviousness-type double patenting over claims 1-
24 of Weiner (US 7,856,909, iss. Dec. 28, 2010).
ANALYSIS
Rejection I
Appellant challenges the Examiner's finding that Keske discloses a
screw prestressing device in which a draw pin is "movable, via engagement
with the piston, to apply a defined prestressing force in the element." See
Appeal Br. 10-14; Reply Br. 2---6. According to Appellant, a proper
2 The Examiner stated, "Keske is considered to meet claims 5 and 8, as
recited." Final Act. 4. We understand the Examiner's position to be that
claims 5 and 8 are anticipated by Keske, and, alternatively, would have been
obvious over Keske, and that claims 9, 21, and 22 would have been obvious
over Keske.
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Application 12/950,652
interpretation of claim 1 requires a piston that is structurally distinct from
the draw pin because the claim specifically describes the piston as moving
the draw pin "via engagement with the piston" and "engagement" indicates
an interaction between distinct parts. Id.
The Examiner disagrees. Final Act. 3, 9-10; Ans. 7-9. Accordingly,
the Examiner relies on two portions of a single structure in Keske to satisfy
the recited piston and draw pin elements of claim 1. Final Act. 3.
Specifically, pointing to piston 24 in Keske, the Examiner relies on the
annular head portion 2 7 for the claimed piston and the lower threaded
portion 25 for the claimed draw pin. Id. The Examiner finds Appellant's
position unpersuasive because,
[i]n defining the term [engagement], Examiner first looks into
the specification as originally filed, and then the broadest
reasonable meaning is applied. In this case, "engagement" as
broadly defined is met by the integral and unitary configuration
of the piston and draw pin of KESKE. Appellant is arguing for
features that are not recited in the rejected claim(s).
Ans. 9. Thus, the dispositive issue presented in this case is a matter of claim
interpretation and whether claim 1 requires separate structures for the recited
piston and draw pin elements.
Claim 1 lists three elements separately: 1) a piston, 2) a draw pin, and
3) a cylinder. Appeal Br. 35 (Claims App.). "Where a claim lists elements
separately, the clear implication of the claim language is that those elements
are distinct components of the patented invention." Becton, Dickinson &
Co. v. Tyco Healthcare Group, LP, 616 F.3d 1249, 1254 (Fed. Cir. 2010)
(citations and quotations omitted). Here, there is nothing in claim 1 to
suggest that the piston and draw pin are the same structure. To the contrary,
the recitation of a draw pin that is "movable, via engagement with the
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Application 12/950,652
piston" reinforces the implication that the piston and draw pin are distinct
components. Appeal Br. 35 (Claims App.). The Specification likewise
illustrates the piston and draw pin as distinct components; moreover, it
consistently describes the piston as the component used to apply a moving
force to the draw pin component for prestressing the screw coupled to the
draw pin. See, e.g., Spec. i-fi-f 17, 38, 50, Fig. 1.
Although the Examiner concludes "engagement" broadly defined
covers an integral and unitary configuration of the piston and draw pin, the
Examiner provides neither a definition nor an analysis supporting such a
scope. See Ans. 9. "The broadest-construction rubric ... does not give the
PTO an unfettered license to interpret claims to embrace anything remotely
related to the claimed invention." In re Suitco Surface, Inc., 603 F.3d 1255,
1260 (Fed. Cir. 2010). "Since it would be unreasonable for the PTO to
ignore any interpretive guidance afforded by the applicant's written
description ... the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in the applicant's
specification." In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Evidence of how a skilled artisan would generally understand particular
words can also come from the prior art. "Prior art references may be
'indicative of what all those skilled in the art generally believe a certain term
means ... [and] can often help to demonstrate how a disputed term is used
by those skilled in the art."' In re Cortright, 165 F.3d 1353, 1358 (Fed. Cir.
1999) (quoting Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 1584
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Application 12/950,652
(Fed. Cir. 1996)). "Accordingly, the PTO's interpretation of claim terms
should not be so broad that it conflicts with the meaning given to identical
terms in other patents from analogous art." Id.
Appellant, in the Specification, uses the term "engagement"
consistently to describe interaction between two distinct components - e.g.,
"the nut drive unit is structured and arranged to maintain the nut of the
threaded assembly in a constant engagement during a tightening operation."
Spec. i-fi-129, 39, 53. While the Specification does not use the term
"engagement" to describe the interaction between the draw pin and the
piston, its use elsewhere is instructive of the meaning a skilled artisan would
attribute to the term. In addition, the cited Keske and Stough references
utilize repeatedly the term "engagement" and "engage" to describe the
interaction between distinct components - e.g., "[a] socket member 36a is
formed to fit on hex nut 15 in driving engagement therewith ... "(Keske
4:29-31 ); "[i]t will be appreciated that the pressure within cylinder space 20
urges cylinder member 18 upwardly into engagement with the adjustable
abutment 16 .. . "(Stough 2:65-70). See Keske 2:41--48, 54--58, 4:29-31,
5:27--41, 57---61; Stough2:33-36, 45--49, 65-70, 2:71-3:2, 3:13-17, 26-32,
4: 1---6. Consistent with the Specification and its ordinary usage within
Appellant's field of art, the term "engagement" connotes an interaction
between two distinct components. As a result, we do not agree with the
Examiner, in this case, that the broadest reasonable interpretation of
"engagement" is met by the integral and unitary configuration of the piston
and draw pin of Keske.
Thus, Examiner has not demonstrated Keske discloses every element
of claim 1 by a preponderance of the evidence. The Examiner's analysis of
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Application 12/950,652
the dependent claims 2-14, 21, and 22 does not cure the above deficiencies.
Therefore, we do not sustain the Examiner's anticipation rejection of claims
1-14, 21, and 22.
Rejections 11-V
Each of the Examiner's obviousness rejections of dependent claims 2,
5, 8, 9, and 12-24 relies on the Examiner's finding Keske discloses each
element of independent claim 1. See Final Act. 4---6. The Examiner does not
rely on any of the other references (i.e., Abbott, Stough, Pagano, or Junkers)
to cure the deficiencies discussed above regarding claim 1 (see supra,
Rejection I). Therefore, we do not sustain the Examiner's obviousness
rejections of dependent claims 2, 5, 8, 9, and 12-24.
Rejection VI
Appellant does not provide any substantive arguments against the
Examiner's final rejection of claims 1-24 under the ground of nonstatutory
obviousness-type double patenting over claims 1-24 of Weiner. See Appeal
Br. 9-10; Final Act. 6-8. Although Appellant requests that we "hold the
double patenting rejection of claims 1-24 in abeyance at this time,"
Appellant fails to provide any authority supporting such an action.
Consequently, Appellant has not apprised us of any basis on which to find
the Examiner's decision to issue a final nonstatutory double patenting
rejection was in error. Therefore, we summarily sustain the Examiner's
rejection.
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Application 12/950,652
DECISION
We reverse the Examiner's anticipation and obviousness rejections of
claims 1-24.
We affirm the Examiner's nonstatutory obviousness-type double
patenting rejection of claims 1-24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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