Ex Parte Wente et al

Patent Trial and Appeal Board

Feb 20, 2013

11650403 (P.T.A.B. Feb. 20, 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.
11/650,403 01/05/2007 Steve R. Wente 25493-462900 8241
27717 7590 02/20/2013
SEYFARTH SHAW LLP
131 S. DEARBORN ST., SUITE 2400
CHICAGO, IL 60603-5803
EXAMINER
ALEXANDER, MELANIE P
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
02/20/2013 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 STEVE R. WENTE and DANIEL M. EGGERT
____________

Appeal 2010-010919
Application 11/650,403
Technology Center 3700
____________

Before CHARLES N. GREENHUT, MICHAEL C. ASTORINO, and
MICHAEL L. HOELTER, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-10, 13, 15, 16, 18, and 22. Claims 11, 12,
14, 17, 19, 20, and 21 are cancelled. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2010-010919
Application 11/650,403

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Claimed Subject Matter
Claims 1, 13, and 22 are the independent claims on appeal. Claim 13,
reproduced below, is illustrative of the subject matter on appeal.
13. An adjustable tool extender comprising:
a wrenching device;
a sleeve defining a receptacle having an interior surface,
the sleeve having an attachment end for cooperation with the
wrenching device;
an extension member having a first end integral with a
second end, the extension member being a single substantially
solid component, said second end being slidable within said
receptacle of said sleeve, said extension member having an
intermediate portion between said first and second ends and
having a cross-sectional area substantially less than that of
either of said first and second ends; and
a bias member disposed between said sleeve and said
extension member and biasing said extension member to the
fully extended position, wherein said sleeve has a crimped end
to capture said second end of said extension member in said
receptacle and prevent said first end from entering the
receptacle, and wherein said bias member selectively expands
and contracts responsive to a compressive force applied by a
user from the wrenching device to the attachment end.

Rejections
Claims 1-10, 13, 15, 16, 18, and 22 are rejected under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
Claims 13, 15, 16, and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ybarra (US 6,971,290 B1, iss. Dec, 6, 2005), Lin (US
6,155,144, iss. Dec, 5, 2000), and Brown (US 2,733,885, iss. Feb. 7, 1956).
Appeal 2010-010919
Application 11/650,403

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Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ybarra, Lin, Brown, and Varnell (US 3,987,807, iss. Oct. 26, 1976).
Claims 1-3, 5-7, 9, and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ybarra and Middleton (US 4,470,527, iss. Sept. 11, 1984).
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ybarra, Middleton, and Varnell.
Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Ybarra, Middleton, and Brown.
OPINION
Rejection of claims 1-10, 13, 15, 16, 18, and 22 as failing to comply with the
written description requirement
The Examiner finds that “the extension member being a single
substantially solid component” as recited in claims 1, 13, and 22 was not
reasonably conveyed to one of ordinary skill in the art, at the time the
invention was filed, because “the extension member is not a ‘single’
component” as it includes a detent ball 111 and a spring 113. Ans. 3-4;
Spec. 8, para. [0041]. The Examiner supports his finding by pointing to
Figures 4 and 5, which according to the Examiner depicts the detent ball 111
and the spring 113 as part of the extension member. Ans. 7.
The Appellants contend that “the extension member 102 is a single
solid part and that the detent ball 111 and spring 113 are separate parts.”
Reply Br. 4. See App. Br. 8. The Appellants correctly point out that the
Specification does not describe that the extension member 102 and the
detent ball 111 and spring 113 as a single component. See Reply Br. 4.
Additionally, the Appellants correctly point out that the cross-sectional view
of the extension member in Figures 4 and 5 depict the extension member
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102 as a single substantially solid component. See Id. Notably, in Figures 4
and 5 the extension member 102, the detent ball 111, and the spring 113 are
identifiable by different fill patterns. More specifically, the extension
member 102 is filled in with a first type of cross-hatching line pattern, the
detent ball 111 is filled in with a second type of cross-hatching line pattern,
and the spring 113 is not filled in by any type of pattern, i.e., it is blank. As
such, the originally filed written description conveys with reasonable clarity
to those skilled in the art that, as of the filing date sought, that the Appellants
were in possession of “the extension member being a single substantially
solid component” since the claimed “extension member” is not understood
to include the detent ball 111 and/or the spring 113. See also Vas-Cath, Inc.
v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Thus, the rejection of claims 1, 13, and 22 as failing to comply with
the written description requirement is not sustained. Similarly, the rejection
of claims 2-10, which depend either directly or indirectly from claim 1, and
claims 15, 16, and 18, which depend either directly or indirectly from claim
13, are likewise not sustained.
Rejection of claims 13, 15, 16, and 18 as unpatentable over
Ybarra, Lin, and Brown
The Examiner finds that “Ybarra discloses all of the claimed subject
matter except for having a spring in a cavity and a crimped end.” Ans. 4.
To remedy the former deficiency of Ybarra the Examiner turns to Lin’s
disclosure of a spring 34 in a cavity. Ans. 4. The Examiner concludes that
“[i]t would have been obvious to one having ordinary skill in the art to form
the device of Ybarra with a spring to allow for the automatic extension of
the extension member as taught by Lin.” Id.
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The Appellants contend that neither Ybarra nor Lin disclose a “bias
member selectively expands and contracts responsive to a compressive force
applied by a user from the wrenching device to the attachment end” as
recited in independent claim 13. See App. Br. 9. The Appellants contend
that the extension members of both Ybarra and Lin are not free floating
because they include latchable extension members. See App. Br. 10-11.
The Appellants’ characterization of Ybarra’s and Lin’s extension members
as latchable is correct because Ybarra discloses a pawl 58 which is biased to
engage with the teeth 56 of the rack 31 and Lin discloses a pawl 32 which is
biased to engage with the teeth 42 of the driving stem 41. Ybarra, col. 4, ll.
29, 30; Lin, col. 2, ll. 52-55, 59-65. However, the Appellants contentions
are not persuasive.
The inclusion of a pawl as part of an extension member does not
exclude the functionality of a biasing member to selectively expand and
contract responsive to a compressive force applied by a user. As articulated
by the Examiner “[t]he bias member of Lin expands and retracts in response
to a compressive force applied by a user upon release of the latch.” Ans. 7
(emphasis added). More specifically, Lin’s spring 34 biases the driving stem
41 forward and outward of handle 31 when panel 62 is not engaged with the
teeth 42 of driving stem 41. Lin, col. 3, ll. 18-28. Accordingly, when Lin’s
panel 62 is not engaged with the teeth 42 of the driving stem 41, Lin’s spring
34 acts as a biasing member to selectively expand and contract responsive to
a compressive force applied by a user. Although the Appellants contend that
“the Examiner erroneously maintains that bias member of Lin . . . expands
and retracts in response to a compressive force applied by a user upon
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release of the latch” (Reply Br. 5), the Appellants do not express a cogent
reason supporting this contention.
The Appellants contend that the Examiner’s rejection is based on
impermissible hindsight because “[p]ersons having ordinary skill in the art
would recognize that movement of the inner connector 16 of Ybarra by
displacing the pawl 58 is an adjustment step that is not practical to perform
during use of the wrenching device to turn a fastener.” App. Br. 10-11.
However, claim 13 does not require that a fastener is capable of being turned
while Ybarra’s pawl 58 is displaced. Furthermore, the Appellants’
contention that there is no motivation to remove the latching mechanisms of
either Ybarra or Lin is unpersuasive (id.) because the claims do not require
the latching mechanisms to be removed. Additionally, the Examiner’s
conclusion that “[i]t would have been obvious to one having ordinary skill in
the art to form the device of Ybarra with a spring to allow for the automatic
extension of the extension member as taught by Lin” is supported with
rational underpinning. Ans. 4. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[R]ejections on obviousness grounds [require] some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness”) (cited with approval in KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 418 (2007)).
The Appellants also contend that Lin teaches away from combinations
with Brown, Varnell, and Middleton. App. Br. 12. At the outset, we note
that the Examiner does reject any claim with both Lin and Middleton in the
same ground of rejection; and, Lin and Varnell are only included as prior art
for the rejection of claim 22, discussed infra. As for the Examiner’s
rejection of claim 13 as unpatentable over Ybarra, Lin, and Brown, the
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Appellants contend “Lin explicitly teaches away from using telescoping
tubular members such as those of Brown . . . because ‘the driving strengths
of the tubular members of smaller size may be greatly decreased such that
the driving tool may not be used to forceful drive the fasteners or the like.’”
App. Br. 12 (citing Lin, col. 1, ll. 9-16). However, the Examiner correctly
responds that the Appellants’ support for this contention is not directed to
Lin’s retractable tool, rather the citation to Lin is a description of the prior
art at the time Lin’s patent application was filed, i.e., the disclosure of a
separate patent to Liu. See Ans. 10. As such, this contention is also
unpersuasive.
Thus, the rejection of claim 13 as unpatentable over Ybarra, Lin, and
Brown is sustained. Additionally, as the Appellants have not addressed the
rejections of dependent claims 15, 16, and 18 separately, these claims are
likewise sustained.
Rejection of claim 22 as unpatentable over
Ybarra, Lin, Brown, and Varnell
The Examiner’s rejection of claim 22 is similar to the rejection of
claim 13 discussed above, except for the further modification of Ybarra with
Varnell’s disclosure. The Examiner finds that “Varnell discloses a tapered
coil spring disposed between the sleeve and the extension member and
extending in a sleeve receptacle and a tapered extension cavity” and
concludes that “[i]t would have been obvious to one having ordinary skill in
the art to form the device of Ybarra as modified by Lin with a tapered cavity
for receiving a tapered spring to provide a more compact device as taught by
Varnell.” Ans. 5.
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The Appellants assert that “Varnell discloses a tapered spring in a
walking cane which is far afield from the present invention.” App. Br. 12.
To the extent that this assertion argues that Varnell is not analogous art, we
agree with the Examiner that “Varnell is reasonably pertinent to the
particular problem with which the applicant was concerned, e.g., forming a
collapsible telescoping shaft.” Ans. 10. See In re Kahn, 441 F.3d 977, 986-
87 (Fed. Cir. 2006) (“The analogous-art test requires that the Board show
that a reference is either in the field of the applicant’s endeavor or is
reasonably pertinent to the problem with which the inventor was concerned
in order to rely on that reference as a basis for rejection” (emphasis added))
(citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)).
The Appellants also contend that Varnell does not remedy the
deficiency discussed supra with regard to the combined teachings of Ybarra,
Lin, and Brown. App. Br. 12. However, as discussed supra, the Examiner’s
rejection includes no such deficiency and as such, the Appellants’ contention
is unpersuasive. Additionally, as discussed supra, the Appellants’
contention that Lin teaches away from Brown and Varnell is unpersuasive
because the Appellants’ support for this contention is directed not Lin’s
retractable tool. Thus, the rejection of claim 22 as unpatentable over Ybarra,
Lin, Brown, and Varnell is sustained.
Rejection of claims 1-3, 5-7, 9 and 10 as unpatentable over
Ybarra and Middleton
The Examiner finds “Ybarra discloses all of the claimed subject
matter except for having a coil spring in a cavity of an extension member.”
Ans. 6. The Examiner attempts to remedy this deficiency with regard to
claim 1 by turning to Middleton, which the Examiner finds discloses
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Application 11/650,403

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extension members 21 and 19, cavities 48 and 49, respectively, and a spring
22. Id. The Examiner concludes “[i]t would have been obvious to one
having ordinary skill in the art to form the telescoping member of Ybarra
with a cavity in the extension member and a substantial portion of a coil
spring disposed in the cavity to urge the extension member into an expanded
state as taught by Middleton.” Ans. 6.
However, the Examiner’s proposed modification of Ybarra’s
extension member (rack 31) with Middleton’s extension members (either of
bottom element 19 or intermediate element 21) would not result in a
substantially solid “extension member” as called for in claim 1. See App.
Br. 13. Although Ybarra’s rack 31 is solid, Middleton’s elements 19, 21 are
not solid, and are entirely hollow. See Ybarra, fig. 2; Middleton, fig. 3. By
modifying Ybarra’s rack 31 to include the cavity of Middleton, the
Examiner must necessarily include Middleton’s teaching of hollow elements
19 or 21. Consequently, the Examiner’s proposed modification of Ybarra’s
rack 31 in view of Middleton’s hollow elements 21 would not result in an
“extension member being a single substantially solid component” as recited
in claim 1.
Thus, the rejection of claim 1, and claims 2, 3, 5-7, 9 and 10, which
depend either directly or indirectly therefrom, as unpatentable over Ybarra
and Middleton is not sustained.
Rejection of claim 4 as unpatentable over Ybarra, Middleton, and Varnell
and rejection of claim 8 as unpatentable over Ybarra, Middleton, and Brown
The remaining rejections based on Ybarra and Middleton in
combination with Varnell or Brown rely on the same erroneous
determination as discussed above with regard to claim 1 as unpatentable
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Application 11/650,403

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over Ybarra and Middleton. As such, we cannot sustain the rejections under
35 U.S.C. § 103(a) of claim 4 as unpatentable over Ybarra, Middleton, and
Varnell, and claim 8 as unpatentable over Ybarra, Middleton, and Brown.

DECISION
We REVERSE the rejections of: claims 1-10, 13, 15, 16, 18, and 22
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement; claims 1-3, 5-7, 9, and 10 under 35 U.S.C. § 103(a)
as unpatentable over Ybarra and Middleton; claim 4 under 35 U.S.C.
§ 103(a) as unpatentable over Ybarra, Middleton, and Varnell; and, claim 8
under 35 U.S.C. § 103(a) as unpatentable over Ybarra, Middleton, and
Brown.
We AFFIRM the rejections of: claims 13, 15, 16, and 18 under 35
U.S.C. § 103(a) as unpatentable over Ybarra, Lin, and Brown; and claim 22
under 35 U.S.C. § 103(a) as unpatentable over Ybarra, Lin, Brown, and
Varnell.
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-IN-PART

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