Ex Parte Woolnough et al

Patent Trial and Appeal Board

May 31, 2016

12377601 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/377,601 03/05/2010
23280 7590 06/02/2016
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Brian Woolnough
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.
5068.1053 7904
EXAMINER
LAMBE, PATRICK F
ART UNIT PAPER NUMBER
3678
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN WOOLNOUGH, NEVILLE JUKES,
VINCENT MARTIN, BRIAN CARTER, and ROSS CONN1
Appeal2014-003800
Application 12/377,601
Technology Center 3600
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
MARK A. GEIER, Administrative Patent Judges.
GEIER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's rejection of claims 24-43. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants indicate that the real party in interest is Hilti
Aktiengesellschaft. Br. 2.
Appeal2014-003800
Application 12/377,601
THE CLAIMED SUBJECT MATTER
The claimed subject matter relates to "a tensioning device for a strata
support cable or tendon." Spec. 1, 11. 20-21. Claim 24 is illustrative and
recites:
24. A tensioning device for a strata support cable or tendon,
the device comprising:
a barrel fitting being elongate and adapted to attach to the
cable or tendon;
a barrel actuator movably connected to the barrel fitting
for longitudinal movement relative to the barrel fitting; and
a bearing assembly coupled to the barrel fitting to prevent
relative rotational movement between the bearing assembly and
the barrel fitting, the bearing assembly being arranged for
abutment with the barrel actuator, longitudinal movement of the
barrel actuator relative to the barrel fitting effecting tensioning
of the cable or tendon.
THE REJECTIONS ON APPEAL
The Examiner rejected claims 24--26, 29, and 31-39 under 35 U.S.C.
§ 103(a) as unpatentable over Fergusson (US 5,885,034; iss. Mar. 23, 1999)
and Choat (AU 199645582 Al; pub. Aug. 29, 1996).
The Examiner rejected claims 27, 28, and 40-43 under 35 U.S.C.
§ 103(a) as unpatentable over Fergusson, Choat, and Scott (US 4,984,938;
iss. Jan. 15, 1991) ("Scott").
The Examiner rejected claim 30 under 35 U.S.C. § 103(a) as
unpatentable over Fergusson, Choat, and Stankus (US 6,270,290 B 1; iss.
Aug. 7, 2001) ("Stankus").
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Application 12/377,601
ANALYSIS
Rejection of Claims 24-26, 29, and 31-39 as Obvious over Fergusson and
Choat
Claim 24
The Examiner finds that Fergusson discloses many of the elements of
independent claim 24, but does not disclose "a strata support cable or
tendon, and a barrel fitting being elongate and adapted to attach to the cable
or tendon." Non-Final Act. 3. The Examiner relies upon Choat for those
elements. Id. The Examiner concludes:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to modify the bolt of Fergusson to be a
cable bolt with an barrel fitting as in Choat as described in the
claim as a simple substitution of a known element for another to
obtain predictable results. In the art, bolts and cable bolts are
used for similar purposes.
Id. at 4.
Appellants argue that "there is simply no reason or motivation to
replace the bolt 2 of Fergusson with the tube 14 and the cable bolt 12 of
Choat as 'a simple substitution of a known element for another to obtain
predictable results."' Br. 5, 7. Appellants continue:
Id.
If the tube 14 and cable bolt 12 of Choat were used in Fergusson,
this clamping action of the tube 14 on cable bolt 12 would never
be achieved, as there is no radial clamping action provided by
Fergusson's washer or nut. The tube 14 and cable bolt 12 of
Choat would not be a simple substitution of the bolt 2 of
Fergusson, because they undergo a clamping action not required
by the bolt of Fergusson.
The Supreme Court provides the following instructions. "The
combination of familiar elements according to known methods is likely to be
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Application 12/377,601
obvious when it does no more than yield predictable results." KSR Int'! Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). Further, "when a patent claims a
structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result." Id.
Here, both Fergusson and Choat are directed to bolting devices for
stabilizing rock strata in mining and related applications (see Fergusson, col.
1, 11. 3-5 and Choat 2, 11. 2--4) and both use bolts, albeit different types, for
doing so. In Choat, radial clamping of the cable bolt 12 by the tube 14 is
required for proper operation of the cable bolt. See Choat 6, 11. 28-30.
Whereas, as noted by Appellants, the standard bolt 2 of Fergusson does not
undergo radial clamping action. See Br. 5, 7. However, despite their
different constructions and methods of operation, both the standard bolt of
Fergusson and the cable bolt of Choat serve as rock bolts for stabilizing rock
strata in mining and related applications. See Fergusson, col. 1, 11. 6-10 and
Choat 6, 1. 17-7, 1. 2. It is not made clear by Appellants how or why one
skilled in the art is unable to substitute one bolt for the other, as stated by the
Examiner, since they both serve a similar purpose. Accordingly, we agree
with the Examiner's finding that the substitution of the standard bolt of
Fergusson with the cable bolt and barrel fitting of Choat would yield
predictable results.
Independent claim 24 recites, inter alia, "a bearing assembly coupled
to the barrel fitting to prevent relative rotational movement between the
bearing assembly and the barrel fitting." Br., Claims App. 1 (emphasis
added). Our resolution of claim 24 of this Appeal requires us to construe the
claim language "coupled to." In construing a claim term, we apply "the
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Application 12/377,601
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). In using
the Specification, however, we "only limit the claim based on the
specification or prosecution history when those sources expressly disclaim
the broader definition." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004)
(citation omitted).
The Specification does not contain a definition or any statements of
limitation or disclaimer regarding the term "couple." See Spec. 2, 11. 18-21.
Our review of general purpose dictionaries suggests a definition of
"something that joins or links two things together." Merriam-Webster,
http://www.merriam-webster.com/dictionary/coupled (last visited April 13,
2016); see also Dictionary.com,
http://www.dictionary.com/browse/couple?s=t (last visited April 13, 2016)
(defining couple as "to fasten, link, or associate together in a pair or pairs"
and "to join; connect"). In our view, such a meaning is consistent with the
Specification's usage of such terms. See, e.g., Spec. 3, 1. 26 to 4, 1. 1. As
such, we adopt a definition of "couple" to mean something that joins, links
or associates a pair of elements, in this case the bearing assembly and the
barrel fitting.
As for whether Fergusson and/or Choat teach a bearing assembly
coupled to a barrel fitting, Appellants state:
Fergusson simply does not show a bearing assembly coupled to
a barrel fitting at all: the washer 20 has a central opening 22
through which the bolt 2 passes, and certainly not to "prevent
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Application 12/377,601
Br. 5.
relative rotational movement between the bearing assembly and
the barrel fitting" as claimed. The washer 20 in Fergusson
appears to actually be designed to rotate about the bolt 2.
Choat does not address this issue at all.
According to the Examiner:
Claim 24 contains additional functional language that, even if
given weight, is met by the bearing assembly of Fergusson.
When the flange portion of the washer is deformed, it creates an
increased contact surface for load transmission (col. 2, lines 39-
47). The increase in area resists any rotational movement by
increasing the surface area that would be rotated and thus
increasing the amount of friction that would need to be
overcame.
Ans. 4.
In light of our construction of "couple," supra, we agree with the
Examiner and determine that the bearing assembly and the barrel fitting of
the Fergusson/Choat combination are coupled to one another via friction
upon deformation of the washer or bearing assembly 20 of Fergusson. iviore
particularly, the increased friction due to deformation of the washer's flange
portion 23 against load plate 4 would prevent relative rotational movement
between the bearing assembly/washer 20 of Fergusson and the barrel fitting
14 of Choat upon installation of the combined device.
For the foregoing reasons, we sustain the Examiner's rejection of
claim 24 as unpatentable over Fergusson and Choat. We likewise sustain the
rejection of claims 29 and 31-39 which directly or indirectly depend from
claim 24 as Appellants have not contested the patentability of those claims.
See 37 C.F.R. § 41.3 l(c) (2015); see also Hyatt v. Dudas, 551F.3d1307,
1314 (Fed. Cir. 2008) ("When the appellant fails to contest a ground of
rejection .... the Board may treat any argument with respect to that ground
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Application 12/377,601
of rejection as waived.") (citation omitted).
Claims 25 and 26
Claim 25 depends from claim 24 and includes the additional limitation
"wherein the barrel fitting has an asymmetrically cross-sectioned external
portion configured to engage a complementary shaped portion of the bearing
assembly." Br., Claims App. 1. The Examiner finds: "The barrel fitting of
Choat has an asymmetrically cross-sectioned external portion (thread 22)
configured to engage interior portions of elements around it. The bearing
assembly of Fergusson is designed to be threaded on the bolt (2)." Non-
Final Act. 4. In response, Appellants contend:
The asserted bearing assembly of Fergusson, washer 20, does
not engage the threads 22 as asserted, and is merely a washer.
It is simply not true that the "bearing assembly of Fergusson is
designed to be threaded on the bolt (2)" as asserted in paragraph
11, and no support is offered for this assertion.
Br. 5 (emphasis omitted).
Appellants; argument is persuasive. Inspection of Figs. 2--4 of
Fergusson reveals that the washer 20 is not internally threaded and thus is
not configured to engage the alleged asymmetrically cross-sectioned
external portion of Choat (identified by the Examiner as thread 22). Indeed,
Fergusson indicates that the washer 20 is free to rotate when not
compressed, i.e., that it does not engage any complementary structure of any
kind: "[T]he washer [20] can be readily swivelled [sic] to various
orientations relative to the plate [ 4] .... " Fergusson, col. 2, 11. 53-54.
For the foregoing reasons, we do not sustain the Examiner's rejection
of claim 25 as unpatentable over Fergusson and Choat. We likewise do not
sustain the rejection of claim 26 which depends from claim 25.
Rejection of Claims 27, 28, and 40--43 as Obvious over Fergusson, Choat,
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and Scott
Claims 27 and 28
Claims 27 and 28 depend (directly or indirectly from claim 25). The
Examiner does not find that the additional reference Scott remedies the
deficiencies we have identified above with respect to the Examiner's
rejection of claim 25. See Non-Final Act. 4--5. Accordingly, we also do not
sustain the Examiner's rejections of claims 27 and 28 for the same reasons
stated with respect to claim 25.
Claim 40
Like claim 24, independent claim 40 recites a barrel fitting, a barrel
actuator, and a bearing assembly. Br., Claims App. 3. Further, claim 40
includes the additional limitations "the barrel fitting having an axially
extending groove along an external surface" and "a washer having a key
engaging with the axially extending groove of the barrel fitting to prevent
relative rotational movement between the washer and the barrel fitting while
permitting longitudinal movement between the washer and the barrel
fitting." Id.
With regard to claim 40, the Examiner relies upon Fergusson and
Choat for the same reasons as set forth in the rejection of claim 24. See
Non-Final Act. 5---6. As for the claimed groove and key, the Examiner finds
"Scott discloses a slot ( 42) engaged by the key ( 46) along the barrel fitting
(25)." Id. at 6. The Examiner reasons:
Id.
It would have been obvious for one of ordinary skill in the art at
the time of the invention to modify the bearing assembly the
Fergusson-Choat combination with the key of Scott as described
in the claim to further limit the rotational movement of the barrel
fitting in such a device.
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In response, Appellants contend "there simply is no reason or
motivation to modify the washer 20 of Fergusson with any key 'to prevent
relative rotational movement of the barrel fitting.' The asserted key 46
would not permit longitudinal movement as claimed as it could not move on
the thread of Fergusson." Br. 7.
The Examiner concludes "[ w ]ith respect to the rotating nut versus the
cable, one point of adding a key is to lock the nut to the cable. As such, the
combination would have the fitting, nut, and cable all joined together." Ans.
5 (emphasis added).
We determine that the Examiner's final statement regarding the
combination of Fergusson, Choat, and Scott results in a construct that does
not satisfy each limitation of claim 40. Claim 40 concludes with the
limitation: "longitudinal movement of the barrel actuator relative to the
barrel fitting effecting tensioning of the cable or tendon." Br., Claims App.
3. The barrel actuator or nut 50 (see Fig. 1) of Appellants' invention is
longitudinally movable relative to the barrel fitting, and it is this longitudinal
movement that effects tensioning of the cable or tendon. See Spec. at 3--4, 7.
In diametric contrast, the Examiner's combination has the [barrel] fitting,
nut [barrel actuator], and cable all joined together. In such case, the nut or
barrel actuator is unable to move relative to the barrel fitting and tensioning
of the cable cannot occur.
For the foregoing reasons, we do not sustain the Examiner's rejection
of claim 40 and claims 41--4 3 which depend therefrom.
Rejection of Claim 30 as Obvious over Fergusson, Choat, and Stankus
As Appellants have not contested the patentability of claim 30 (see Br.
8), we sustain the rejection of that claim. See 37 C.F.R. § 41.3 l(c) (2015).
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CONCLUSION
We affirm the Examiner's rejection of claims 24, 29, and 31-39 under
35 U.S.C. § 103(a) as unpatentable over Fergusson and Choat.
We reverse the Examiner's rejection of claims 25 and 26 under
35 U.S.C. § 103(a) as unpatentable over Fergusson and Choat.
We reverse the Examiner's rejection of claims 27, 28, and 40-43
under 35 U.S.C. § 103(a) as unpatentable over Fergusson, Choat, and Scott.
We affirm the Examiner's rejection of claim 30 under 35 U.S.C.
§ 103(a) as unpatentable over Fergusson, Choat, and Stankus.
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-IN-PART
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