Ex Parte Wilson

Board of Patent Appeals and Interferences

Jun 29, 2007

10417638 (B.P.A.I. Jun. 29, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LARRY J. WILSON
____________

Appeal 2006-3320
Application 10/417,638
Technology Center 3600
____________

Decided: June 29, 2007
____________

Before TERRY J. OWENS, MURRIEL E. CRAWFORD, and LINDA E.
HORNER, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant appeals from a rejection of claims 8-32, which are all of the
pending claims.
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THE INVENTION
The Appellant claims a washer assembly and a nut cap assembly. Claims 8
and 29 are illustrative:
29. A nut cap assembly comprising,
a) a body having longitudinal axis and an axial aperture further
comprising,
i) a plurality of ends; and
ii) wrenching flats; and
b) a cap telescoped over the body and having a crimped portion
that provides an annular clamp.

THE REFERENCES
Goiny US 4,969,788 Nov. 13, 1990
Bydalek US 6,435,791 B1 Aug. 20, 2002

THE REJECTIONS
The claims stand rejected as follows: claims 8, 9, 11-17 and 24-32 under
35 U.S.C. § 102(b) as anticipated by Goiny; claims 8-32 under 35 U.S.C. § 102(e)
as anticipated by Bydalek; and claims 18-23 under 35 U.S.C. § 103 as obvious
over Goiny in view of Bydalek.
OPINION
We reverse the aforementioned rejections and remand the application to the
Examiner. Regarding the rejections we need to address only the independent
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claims, i.e., claims 8, 20, 24 and 29. Claim 8 claims a washer assembly
comprising a washer, a body and “a cap that holds said washer to said body.”
Claim 20 claims a washer assembly comprising a washer, a body and “a cap that is
telescoped over the body.” Claim 24 claims a washer assembly comprising a
washer, a body and “a cap provided with a crimp to form a clamp.” Claim 29
claims a nut cap assembly comprising a body and “a cap telescoped over the body
and having a crimped portion that provides an annular clamp.”
Rejection over Goiny
Goiny discloses 1) a nut (40, 50) (which corresponds to the Appellant’s
body) having a circumferential flange (47, 57), 2) a pressure ring (42, 52) (which
corresponds to the Appellant’s washer) having a circumferential flange (49, 59),
and 3) a clamping ring (41, 51) in overlapping arrangement with the
circumferential flanges of the nut and pressure ring to interconnect the nut and the
pressure ring so they cannot be separated and lost (col. 4, ll. 28-62; figs. 4, 5).
The Examiner argues (Answer 4):
[T]he examiner agrees with appellant’s understanding of Goiny and that
Goiny’s specification does refer to elements 41 and 51 as “clamping rings”
but, this does not preclude the elements from being read as “a cap” in the
context of the claims. Indeed, the claims do not require any specific
structure or orientation of the “cap”. While appellant’s disclosure teaches
that the cap covers the entirety [of] the nut or bolt head this is simply not
claimed. Furthermore, appellant fails to explain why Goiny’s element 41 or
51 is not a cap. According to Webster’s a “cap” is “anything for capping”
thus according to the plain meaning, as provided by Webster’s, the
“clamping ring” is properly read as “a cap” since it is an element for capping
in that it caps the flange element (47 or 57) as shown in Goiny.

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Application 10/417,638

4

During patent prosecution, claims are to be given their broadest reasonable
interpretation consistent with the Specification, as the claim language would have
been read by one of ordinary skill in the art in view of the Specification. See In re
Zletz, 893 F.2d 319, 321, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Sneed,
710 F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). The relevant ordinary
meaning of “cap” is “something that serves as a cover or protection esp. for a tip,
knob, or end ”.1 The Appellant’s Specification, which shows the cap
as a covering (figs. 1-8), is consistent with that definition. Goiny’s clamping rings
are not disclosed as serving as a cover or protection. Instead, they are disclosed as
serving to clamp the nut and pressure ring together such that there is lateral and
axial freeplay between them (col. 4, ll. 37-43). The Examiner has not provided
evidence that one of ordinary skill in the art would have considered such a clamp
to be a cap according to the broadest reasonable interpretation of “cap” in view of
the Appellant’s Specification. The Examiner’s mere speculation to that effect is
not sufficient to establish a prima facie case of anticipation.
Rejection over Bydalek
Bydalek discloses a wheel fastener comprising, in the embodiment shown in
figure 2, 1) a bolt (12) (which corresponds to the Appellant’s body) having a
flange (22), 2) a thrust washer (40) (which corresponds to the Appellant’s washer),
and 3) a pressure ring (16) having a flange (32) comprising a crimp (54) that
overlaps the body’s flange “thus preventing the inadvertent separation of the
bolt 12 from the pressure ring 16 while preserving a degree of longitudinal and

1 Webster’s New Collegiate Dictionary 163 (G. &. C. Merriam 1973).
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transversal play of these elements with respect to the [bolt’s] longitudinal axis A”
(col. 2, ll. 4-10, 25-31, 45-56; fig. 2). In the embodiment shown in figure 11,
which is the reverse of the figure 2 embodiment, the bolt includes a crimp (42) that
overlaps the pressure ring’s flange 32 (col. 3, ll. 58-61). With respect to the
figure 11 embodiment the Examiner relies upon Bydalek’s thrust washer (14) as
corresponding to the Appellant’s washer, Bydalek’s pressure ring (16) as
corresponding to the Appellant’s body, and Bydalek’s crimp (42) on bolt 12 as
corresponding to the Appellant’s cap (Final Rejection 7).
The Examiner argues regarding the figure 2 embodiment (Answer 4-5):
[T]he examiner agrees with appellant’s understanding of Bydalek and that
Bydalek’s specification does refer to element 16 as “pressure ring” but, this
does not preclude the elements from reading on “a cap” in the context of the
claims. Indeed, the claims do not require any specific structure or
orientation of the “cap”. While appellant’s disclosure teaches that the cap
covers [the] entirety [of] the nut or bolt head this is simply not claimed.
Furthermore, appellant fails to explain why Bydalek’s element 16 is not a
cap. According to Webster’s a “cap” is “anything for capping” thus
according to the plain meaning, as provided by Webster’s, the “clamping
[sic, pressure] ring” is properly read as “a cap” since it is an element for
capping in that it caps the flange element (22) as shown in Bydalek.

With respect to the figure 11 embodiment the Examiner argues (Answer 5),
regarding claims 20 and 29 which require that the cap is telescoped over the body
(and claims 15 and 26 which require that the cap extends downward from the
body):
Appellant contends that the element 12 is not “a cap” since it is described as
a bolt. Similar to the above arguments, the examiner agrees with appellant’s
understanding of Bydalek and that Bydalek’s specification does refer to
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element 12 as “a bolt” but, this does not preclude the elements [crimp 42]
from reading on “a cap” in the context of the claims. [Answer 5]

Neither of Bydalek’s crimps (42 (fig. 11), 54 (fig. 2)) is disclosed as serving
the function of cover or protection. Instead, crimp 54 is disclosed as functioning to
prevent inadvertent separation of the bolt and pressure ring while preserving a
degree of longitudinal and lateral play between them (col. 2, ll. 52-56). The
Examiner has not established that one of ordinary skill in the art would have
considered a flange having a crimp which serves that function to be a cap as that
term is most broadly construed in view of the Appellant’s Specification. Crimp 42
is merely disclosed as overlapping the pressure ring’s flange (col. 3, ll. 60-64).
The function of crimp 42 is not disclosed, but appears to be the same as that of
crimp 54. The Examiner has not established that one of ordinary skill in the art,
giving the Appellant’s claim term “cap” its broadest reasonable interpretation in
view of the Appellant’s Specification, would have considered a bolt having a crimp
which serves that function to be a cap.
The Examiner, therefore, has not established a prima facie case of
anticipation of the Appellant’s claimed invention over Bydalek.
Rejection over Goiny in view of Bydalek
The Examiner does not make an obviousness argument regarding the
requirement in independent claim 20 of “a cap that is telescoped over the body” or
the requirement in claim 8 of “a cap that holds said washer to said body” (Final
Rejection 10-11). As discussed above, the Examiner has not established that one
of ordinary skill in the art would have considered Goiny’s clamp or Bydalek’s
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flange/crimp or bolt/crimp to be a cap. We therefore conclude that the Examiner
has not carried the burden of establishing a prima facie case of obviousness of the
inventions claimed in claim 20 and its dependent claims 21-23, or claims 18 and 19
that depend from claim 8.
Remand
The Appellant’s claim 24 requires “a cap provided with a crimp to form a
clamp”. The claim does not relate the cap to any other element of the claim.
Hence, that claim does not appear to adequately set forth the metes and bounds of
the claimed invention in compliance with 35 U.S.C. § 112, second paragraph. We
therefore remand the application for the Examiner and the Appellant to address on
the record whether claim 24 and its dependent claim 27 which recites “wherein
said washer is able to rotate relative to said body” meet the claim clarity
requirement of 35 U.S.C. § 112, second paragraph.
DECISION
The rejections of claims 8, 9, 11-17 and 24-32 under 35 U.S.C. § 102(b)
over Goiny, claims 8-32 under 35 U.S.C. § 102(e) over Bydalek, and claims 18-23
under 35 U.S.C. § 103 over Goiny in view of Bydalek, are reversed. The
application is remanded to the Examiner.
REVERSED and REMANDED

jlb

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Application 10/417,638

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Dana Andrew Alden
Maclean-Fogg Company
1000 Allanson Road
Mundelein, IL 60060