Schachner, Stefan

Patent Trials and Appeals Board

Jan 2, 2020

14711051 - (D) (P.T.A.B. Jan. 2, 2020)

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.
14/711,051 05/13/2015 Stefan Schachner 26202-970_DIV 5581
28410 7590 01/02/2020
BERENATO & WHITE, LLC
6550 ROCK SPRING DRIVE
SUITE 240
BETHESDA, MD 20817
EXAMINER
VAUGHAN, JASON L
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
01/02/2020 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):
uspto.filings@bw-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEFAN SCHACHNER
Appeal 2018-0051931
Application 14/711,051
Technology Center 3700
Before MICHAEL L. HOELTER, BRETT C. MARTIN, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 10–23.3 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to 37 C.F.R. § 41.50(b).

1 A hearing was conducted on December 19, 2019.
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Raimund Beck
Nagelteclmik GmbH. Appeal Br. 3.
3 Claims 1–9 are cancelled. Appeal Br. 23 (Claims App.).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure “relates to attachment means, in
particular a screw nail, for connecting plane components in dry
construction.” Spec. 1.
Claim 10, reproduced below, is illustrative of the claimed subject
matter.
10. A method for connecting plane components in dry
construction, comprising the steps of:
a) providing a screw nail comprising a shaft having a first
end forming a point and a second end forming a head, a fine
thread being formed on the shaft, and grooves being provided
on the shaft and extending substantially parallel to a central axis
of the shaft; and
b) securing a planar construction material and a metallic
substructure underlying the construction material by driving the
screw nail, substantially without rotation about the central
axis, through the construction material and into the metallic
substructure.
Appeal Br. 23 (Claims App.). We reproduce Appellant’s Figure 1 below.

Appellant’s Figure 1 depicts a screw nail 1 including shaft 2, point 3,
head 4, and groove 6. Spec. 7.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Rogers US 264,479 Sept. 19, 1882
Hodson US 4,367,836 Jan. 11, 1983
Panasik US 6,872,042 B2 Mar. 29, 2005

REJECTIONS
I. Claims 10–20, 22, and 23 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Rogers and Panasik. Non-Final Act. 4.
II. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Rogers, Panasik, and Hodson. Non-Final Act. 8.

OPINION
Rejection I–Rogers and Panasik
Claim 10
The Examiner finds that Rogers discloses many of the steps recited in
claim 10, including a step of securing construction material by driving a
screw nail substantially without rotation about its central axis. Non-Final
Act. 4. However, the Examiner relies on Panasik to teach “a planar
construction material . . . a metallic substructure . . . and . . . underlying the
construction material, and securing the construction material by driving a
screw nail . . . through the construction material and into the metallic
substructure.” Id. at 5 (citing Panasik, col. 2, ll. 24–32 and 51–col. 3, l. 5,
col. 6, ll. 7–32; Fig. 2). The Examiner reasons it would have been obvious
to secure the above-noted materials from Panasik via the screw nail and
method disclosed by Rogers as a mere substitution of one known prior art
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element for another to achieve predictable results. Id. The Examiner also
characterizes the proposed modification of Rogers as the utilization of
existing hardware for a different application that has the benefit of
“eliminating the need, cost, and time required to design, test, and
manufacture new hardware.” Id. at 5–6.
Rotation
Appellant argues that Rogers does not disclose the step of driving a
screw nail without rotation.4 Appeal Br. 8–10 (citing Rogers, 1:91–93,
2:10–13, 23–34, Figs. 3, 5); Reply Br. 2–4. Appellant argues that the
presence of a slot in the head of the screw nail in Rogers supports a finding
that Rogers discloses inserting the screw nail via rotation. Appeal Br. 9;
Reply Br. 3. Appellant asserts, “Rogers not only fails to disclose ‘driving a
screw nail, substantially without rotation about the central axis’, it explicitly
discloses the opposite, namely driving the screw nail by rotation.” Appeal
Br. 9.
In response, the Examiner refers to the presence of the “tongue and
groove” arrangement in Figure 3 of Rogers and finds that this structure
indicates that construction material is maintained along the axial length of
Rogers’ screw nail. Ans. 8–9 (citing Rogers 1:19–34). The Examiner also
finds “when the screw nail of Rogers is rotated the threaded portion of
Rogers is able to bite into the material located within the grooves b and the
screw nail can be removed.” Id. (citing Rogers 1:90–2:1).

4 Appellant also argues that Panasik “engineered its fastener to rotate while
being driven into the work piece” and fails to disclose “driving a screw nail
without rotation.” Appeal Br. 10–11. This argument is unavailing because
the Examiner relies on Rogers, not Panasik, to disclose this step. See Non-
Final Act. 4.
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The Examiner has the better position. Rogers discloses that its screw
nail is “driven home” and, after this action, “turned axially.” Rogers 1:19–
25, 90–25. Rogers states, “my screw-nail, which can be driven with a
hammer as easily as a common cast or wrought nail, can be made to hold
itself in sound wood nearly as firmly as if it were a full-threaded screw and
sent home by a screw-driver.” Id. 2:2–7 (emphasis added). “This will not
only be the case if the nail is driven home and not turned by a screw-driver
after being driven, but it will also be the case if the nail be partially turned
by a driver.” Id. 2:23–27. Thus, Rogers describes placing the screw nail in
its “home” position in two different ways, via driving and via a combination
of driving and turning. In the context of the statements above, a person of
ordinary skill in the art would understand Rogers to use the phrase “driven
home” to mean driven all the way into its final position. As Rogers
discloses that its screw nail is driven home, and, afterward, turned axially, a
preponderance of the evidence supports the Examiner’s finding that Rogers
discloses “securing constructional elements together by driving the screw
nail, substantially without rotation about the central axis into the
construction elements” (Non-Final Act. 4).
Rationale
Appellant next contends “there is no rationale to combine the
teachings of Rogers and Panasik.” Appeal Br. 11; Reply Br. 4–5. Appellant
contends that “[u]nlike Rogers, the Panasik fastener is designed to facilitate
the removal of the fastener 10 and disassembly of the joined materials.” Id.
at 12. Appellant asserts that “Panasik’s purpose, allowing removable
attachment, is thus the opposite of Rogers’, which seeks a permanent
connection.” Id. (emphasis added). Appellant also states, “Panasik does not
disclose a screw nail as alleged by the Examiner. The word nail is not used
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in Panasik, nor is the term screw nail” and “fastener 10 of Panasik contains
no thread and is not a screw as that term is commonly understood in the art.”
Id. at 12–13. Based on the assertion that Panasik does not disclose a screw
nail, Appellant further asserts that the Examiner failed to consider the
teachings of Panasik as a whole and instead is merely “[p]icking and
choosing selected parts of a reference, while completely ignoring other
parts.” Id. at 13; see also Reply Br. 7.
In response, the Examiner takes the position that Panasik, like Rogers,
teaches removing its fastener by rotating it. Ans. 10–11 (citing Panasik
6:41–49, 6:66–7:7, 7:58–67; Rogers 1:7–12)). The Examiner further
explains that, regardless of the particular method of insertion and removal of
Panasik’s fastener, “Rogers merely fails to disclose that the screw nail is
utilized to secure a planar construction material to a metallic substrate.
Panasik . . . is looked to as a teaching of utilizing a fastener that is driven
with a hammer device, without substantial rotation, in order to secure
construction material to a metallic substrate.” Id. at 11. Thus, according to
the Examiner, a person of ordinary skill in the art would have had a
reasonable expectation of success in modifying the method disclosed by
Rogers as proposed. Id. at 11–12.
As a companion to the arguments asserted above, Appellant argues
“the screw nail of Rogers is so different from the fastener of Panasik that,
contrary to the Examiner's allegation, a PHOSITA would not have expected
the screw nail of Rogers to allow attachment and subsequent separation of
the work piece and the metallic support member” Appeal Br. 14 (citing
Panasik 1:49–51, 2:43–50, 4:10–15, 5:17–20, 7:13–15, 58–61). Appellant
argues that “using the screw nail of Rogers, as taught with rotation, would
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cause a loose connection with the metallic support member 4, rather than a
strong connection.” Id.
We are not apprised of Examiner error on these points. First, the
Examiner articulated two rationales for making the proposed modification,
namely, (i) that the modification would have been a mere substitution of one
known prior art element for another to achieve predictable results, and (ii)
the utilization of existing hardware for a different application that has the
benefit of “eliminating the need, cost, and time required to design, test, and
manufacture new hardware.” Ans. 5–6. Both reasons are supported by
rational underpinnings. In this regard, it is not the entire fastener and
method of attachment disclosed by Panasik that the Examiner’s rejection
relies upon. Rather, as the Examiner explains in the Answer and on pages
4–5 of the Non-Final Office Action, Panasik is cited for teaching a planar
construction material, a metallic substrate underlying the construction
material, and securing the construction material by driving a screw nail.
The Examiner’s findings as to the disclosure in Panasik are supported
by a preponderance of the evidence. See Panasik 2:24–32, 2:51–3:5, 6:7–32;
Fig. 2). The fact that Panasik does not use the term “screw nail” does not
indicate that the Examiner’s findings of fact forming the basis for the
Examiner’s stated rationale are in error. Panasik describes its hardware as
“[a] novel fastener [that] comprises a head having a recess for receiving a
rotary driver, a shank having knurls defined by generally helical grooves and
intersecting generally annular grooves, wherein a plurality of the knurls
include a lateral cutting edge, and a generally pointed tip.” Panasik,
Abstract. We do not agree that the structure of Panasik’s fastener is so
dissimilar to that of Rogers’s screw nail that a person of ordinary skill in the
art would not have found it obvious to substitute the construction materials
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attached by Panasik (not Panasik’s fastener itself) as proposed by the
Examiner. Nor do we agree that a person of ordinary skill in the art would
not have had a reasonable expectation of success in fastening the planar
materials disclosed by Panasik via Rogers’s screw nail, which, as explained
in the Examiner’s statement of rationale (ii), is capable of joining
construction elements. See Non-Final Act. 5; In this regard, we reproduce
Figure 2 of Panasik below.

Panasik’s Figure 2 is a partial side sectional view of fastener 10 installed in
work piece 2 and a support member 4. Panasik 2:14–15. A comparison of
Figure 2 of Panasik with Figure 3 of Rogers (reproduced below) evidences
the similarity in structure of these two fasteners.
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Figure 3 of Rogers is a perspective view of a screw nail made from a
longitudinally grooved rod. Rogers 1:35–40. Both fasteners include a head
that receives a rotary driver. Rogers, 1:10–13; Panasik, Abstract. The
fasteners in both Rogers and Panasik are intended for insertion into wood.
Rogers 1:25–34; Panasik 2:51–60. Appellant argues that Panasik teaches
that when fastener 10 of Panasik is rotated, no linear motion via screwing is
created, and instead, two results are possible: either (i) the fastener 10 spins
in place, or (ii) head 15 breaks off from shank 12. Appeal Br. 12–15. As
explained by Appellant, these results relate to the method of removing
Panasik’s fastener. See id. However, the fact that the fasteners of Rogers
and Panasik may teach different methods of removal or separation of
materials after insertion of the fastener does not support a conclusion that a
person of ordinary skill in the art would not have had a reasonable
expectation that Rogers’ fastener would be able to secure the materials
disclosed by Panasik. Given the similarities in the securing functions of the
fasteners disclosed by Rogers and Panasik, we agree with the Examiner that
a person of ordinary skill in the art would have had a reasonable expectation
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of success in using the screw nail disclosed by Rogers with the materials
disclosed by Panasik.
Regarding Appellant’s assertion that the Examiner’s proposed
modification would cause a loose connection with the metallic support
member 4 due to the rotation occurring during insertion of Rogers’s screw
nail (Appeal Br. 14), as discussed supra, Rogers discloses that its screw nail
is driven home via a hammer, and no rotation is necessary to insert it. Thus,
Appellant’s argument on this point relies on an inaccurate characterization
of Rogers’ disclosure.
Appellant also contends that Rogers’ fastener would not allow
removal without damaging the work piece, unlike Panasik’s fastener. This
argument does not address any limitation recited in claim 10, which does not
require removal of the screw nail. Further, we note that Rogers explicitly
discloses removal from the material into which it has been driven. “[T]he
nail can then, if desired, be unscrewed from its hold in the wood, like an
ordinary screw.” Rogers 2:10–12. Appellant provides no persuasive
evidence or technical argument as to why Rogers’s disclosed method of
removal would not be expected to be successful with the materials disclosed
by Panasik. Even assuming for the sake of argument that Rogers’s fastener
would have disadvantages when used to attach materials as proposed by the
Examiner, we do not agree that these disadvantages negate the Examiner’s
proposed reasoning for using Rogers’s fastener on the construction materials
of Panasik. Rather, as the Examiner states, Rogers’s fastener is designed, in
general, to hold construction materials together, and driving Rogers’ fastener
through the wood, and then the metal, disclosed by Panasik would have been
merely a specific implementation Rogers’ fastener.
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Appellant argues, “[w]ith regard to the [Examiner’s] second rationale,
‘the need, cost, and time required to design, test, and manufacture a new
hardware’ are not of concern here, because the fastener of Panasik has
already been designed and tested.” Appeal Br. 15. Although we appreciate
that Panasik was filed in May of 2003, and would not have to be designed
and tested, we agree with the Examiner that the implementation of Rogers’s
fastener with the materials disclosed by Panasik would have been the
“[utilization of] existing hardware for different applications where the
existing hardware would be capable of performing the work required by the
application.” Final Act. 5. As discussed above, the proposed modification
to Rogers would have been merely an obvious specific implementation of
Rogers’s general teaching.
Claims 13–15, 17, and 19
Appellant does not make arguments for the patentability of claims 13–
15, 17, and 19 aside from those discussed above regarding claim 10. See
Appeal Br. 20–21. Accordingly, for the same reasons discussed regarding
the rejection of claim 10, we sustain the rejection of claims 13–15, 17, and
19.
Claim 11
Claim 11 depends from claim 10 and recites, “step b) is accomplished
by means of an automatic nail gun device.” Appeal Br. 23 (Claims App.).
In the Non-Final Office Action, the Examiner’s entire discussion of
claim 11 is “[Panasik] further teaches that the securing is accomplished by
means of an automatic nail gun device (Col. 6, Lines 15-25).” Non-Final
Act. 6.
Appellant asserts that the Examiner failed to provide any reasoning
for using a nail gun in the “securing” step of Rogers. Appeal Br. 17.
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Appellant also argues that “the nail gun mentioned by Panasik is for use with
its knurled fastener, not the screw nail of Rogers. The nail gun is designed
to work with the helical groove 22 to allow the fastener 10 to rotate while
being driven,” and that Rogers’ screw nail is not designed for use with a nail
gun. Id.; see also Reply Br. 7–8.
In response, the Examiner states, “Rogers discloses using a hammer in
order to install the screw nail and [Panasik] at least suggests utilizing a
powered fastener tool to install the fastener.” Ans. 12. The Examiner also
states, “automatic nail guns are old and well known in the art, and modifying
the screw nail of Rogers such that it was capable of use with an automatic
nail gun would have been well within the ability of one [having] ordinary
skill in the art.” Id. (emphasis added). Thus, in the Answer, the Examiner
proposes a modification of the screw nail of Rogers.
Appellant replies that the Examiner “has not offered any rationale for
a PHOSITA to adapt the screw nail of Rogers for use with a nail gun (e.g.,
there is no disclosure of how a nail gun would accomplish the necessary
rotation of Rogers' screw nail) or how to modify the screw nail of Rogers for
use with a nail gun.” Reply Br. 7–8.
We agree with Appellant that the Examiner has not set forth any
rationale for modifying the screw nail of Rogers.5 See Ans. 12. Thus, we do
not sustain the rejection of claim 11 as unpatentable over Rogers and
Panasik.
Nonetheless, we agree that a person of ordinary skill in the art would
have found it obvious to carry out step (b) of claim 10, namely, the

5 Although we agree Appellant has shown error in this aspect of the
rejection, as discussed above, we do not agree that Roger’s fastener requires
rotation in order to be inserted.
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“securing” step, by means of an automatic nail gun. By definition, a nail
gun is designed to insert nails. Rogers teaches that its screw nail may be
“driven home by a hammer,” and Panasik discloses use of a tool which
drives a fastener “with a piston.” Rogers 1:92–93, Panasik 6:15–20. In
other words, Rogers discloses a need to hammer its screw nail into the
materials being fastened. It would have been obvious to use a piston-driven
nail gun to drive a screw nail that is already configured to be driven home
via a hammer because this is merely the substitution of a nail gun for the
purpose for which it is designed. We see no need for the screw nail
disclosed by Rogers to be modified to work with a nail gun, as the Examiner
proposes in the Answer. Indeed, there is a rebuttable presumption that the
disclosure in a prior art patent is enabled (i.e., the disclosed screw nail may
be inserted via a nail gun, similar to how it is inserted via a hammer). See
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir.
2003); see also In re Antor Media Corp., 689 F.3d 1282, 1287–88 (Fed. Cir.
2012) (holding that prior art publications and patents are presumed to be
enabled). Appellant does not identify any reason why the screw nail of
Rogers would be incompatible with a nail gun. See Appeal Br. 17–18;
Reply Br. 7–8. As discussed above, the structure of the fasteners disclosed
by Rogers and Panasik are similar. Accordingly, we reverse the Examiner’s
rejection of claim 11 and enter a NEW GROUND OF REJECTION of claim
11 as unpatentable over Rogers and Panasik.
Claims 12, 22, and 23
Claim 12 depends from claim 10 and recites, “wherein the grooves
have a depth which corresponds to a depth of the fine thread.” Appeal Br.
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23 (Claims App.). Claim 22 recites the same limitations, and claim 23
depends from claim 22.6 Id. at 24.
The Examiner determines that “modifying the depth of the grooves of
Rogers such that they corresponded to a depth of the fine thread of Rogers
would merely require a change in shape of the grooves of Rogers without
any unpredictable result” (Non-Final Act. 6 (citing Eskimo Pie Corp. v.
Levous et al., 35 F.2d 120 (3d Cir. 1929)), and Appellant “has not described
any advantage over the screw nail of Rogers that would be provided by
changing the depth of the grooves of Rogers to that of the claimed
invention” (Ans. 12).
Appellant argues the Examiner has not provided an adequate rationale
for modifying the groove depth of Rogers’ screw nail. Appeal Br. 19; Reply
Br. 8.
Referring to Eskimo Pie Corp., Appellant states “the overall shape of
a screw nail is important to its function. Changing the overall shape of an
ice cream item is not at issue here. Indeed, Rogers explains how the grooves
bite into the surrounding wood fiber after the screw nail has been driven
axially.” Appeal Br. 18. Appellant further states, “it is not simple to change
the depth of the grooves based on the method disclosed by Rogers,” and
“[t]he Examiner has not proposed how that could he accomplished.” Id. at
19.
In the Answer, the Examiner states, “it would be well within the
ability of one of ordinary skill in the art to make this modification and as

6 The Examiner objected to claims 12 and 22 on the basis that they are
identical. Non-Final Act. 2–3.
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[no] advantage or unexpected result would be arrived at by this modification
the modification would have been an obvious modification.” Ans. 13.
In the Reply Brief, Appellant reiterates that the Examiner has not set
forth an adequate rationale for the proposed modification and asserts the
Examiner failed to address Appellant’s arguments regarding Eskimo Pie.
The Examiner has the better position on this point because the
rejection of claims 12, 22, and 23 relies on the doctrine of design choice, not
a finding that the proposed modification would result in an improvement.
In re Dailey, 357 F.2d 669 (CCPA 1966) (The court held that the
configuration of the claimed disposable plastic nursing container was a
matter of choice which a person of ordinary skill in the art would have found
obvious absent persuasive evidence that the particular configuration of the
claimed container was significant.). Appellant’s argument that the Examiner
“has offered no motivation for a PHOSITA to expend the extra effort to
modify the groove of Rogers” (Appeal Br. 19) does not address the
Examiner’s finding that Appellant has not indicated that the recited depth of
the groove provides any difference in performance (Ans. 12–13).
Appellant’s argument that “cutting the thread so that its depth
corresponds to the depth of the grooves requires a very deep thread and
precise cutting[, and this] is the reason why the thread of Rogers is shallower
than the grooves” (Appeal Br. 19) is unavailing because Appellant provides
no objective evidence or technical argument supporting this assertion (which
characterizes an industrial process as being difficult). In this regard,
Appellant merely asserts that the fact that “the grooves are not shaped but
are already present on the rod before the screw nail is formed” is an
indication that making the depth of the groove equal the depth of the thread
is difficult. Id. It is not self-evident why this process would be difficult or
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would have a difficulty different from making the groove some other depth.
Appellant provides no evidence supporting a conclusion that there would be
any such difference. Thus, Appellant’s contention attempts to substitute
attorney argument in place of objective evidence. Accordingly, Appellant
does not apprise us of Examiner error, and we sustain the rejection of claims
12, 22, and 23 as unpatentable over Rogers and Panasik.
Claim 16
Claim 16 recites, “the fine thread has self-cutting thread flanks.”
Appeal Br. 24 (Claims App.). Claim 20 recites identical language.7 Id.
The Examiner finds that “Rogers further discloses that the fine thread
has self-cutting thread flanks.” Non-Final Act. 8 (citing Rogers 1:90–2:12).
Appellant argues that serrations such as those described by Rogers are
distinguished from self-cutting threads. Appeal Br. 21 (citing Spec. 6).
In response, the Examiner states, “Rogers discloses that the threads of
the screw nail are capable of cutting into the material provided within the
[groove] b, and are therefore considered self-cutting.” Ans. 13 (citing
Rogers 1:19–34).
In reply, Appellant reiterates that the Specification distinguishes
serrations from self-cutting threads, and, therefore, the serrations of Rogers
do not meet the requirements for self-cutting threads recited in claims 16 and
20. Reply Br. 9 (citing Spec. 6).
The Examiner has the better position on this point because the
Examiner does not rely on the serrations of Rogers to meet the requirements
of claims 16 and 20. See Non-Final Act. 8. Thus, Appellant’s argument

7 The Examiner objected to claims 16 and 20 on the basis that they are
identical. Non-Final Act. 2–3.
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does not address the rejection of claims 16 and 20. In any event, the portion
of Rogers cited in the Non-Final Office Action, page 1, line 90 to page 2,
line 12 describes screw threads that “enter the untorn fibers of the wood.”
Threads that enter untorn fibers of wood are consistent with threads that are
“self-cutting.” Accordingly, a preponderance of the evidence supports the
Examiner’s findings with regards to claims 16 and 20, and this rejection is
sustained.
Claim 18
Claim 18 depends from claim 10 and recites, “the screw nail is heat
treated.” Appeal Br. 24 (Claims App.).
The Examiner finds “[Panasik] further teaches that the screw nail is
heat treated.” Non-Final Act. 8 (citing Panasik 7:41–49). The Examiner
provides no explanation as to why this feature would have been obvious to
include in the screw nail of Rogers. See id.
Appellant points out the Examiner’s lack of explanation as to why a
person of ordinary skill in the art would have found it obvious to include
heat treatment in the screw nail of Rogers. Reply Br. 10. “Appellant does
not dispute that heat treatment of fasteners (as disclosed by Panasik) was
known at the time of the invention. Appellant avers that the Examiner has
not proposed a rationale to heat treat the screw nail of Rogers.” Id.
In the Answer, the Examiner states (in a discussion of claim 21),
“[h]eat treatment of metallic workpieces to provide a desired design
characteristic is old and well known in the art.” Ans. 7. With specific
reference to claim 18, the Examiner states, “as addressed above it is known
in the art to heat treat fasteners in order to provide desired characteristics to
the fastener.” Id. at 13.
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In reply, Appellant reiterates that the Examiner has not provided any
rationale for modifying the screw nail of Rogers to include heat treatment.
Reply Br. 10–11.
We agree with Appellant that the Examiner has not provided an
adequate rationale for heat treating the screw nail of Rogers. Thus, we do
not sustain the rejection of claim 18 as unpatentable over Rogers and
Panasik.
Nonetheless, we enter a NEW GROUND OF REJECTION of claim
18 as unpatentable over Rogers, Panasik, and Hodson. Hodson discloses
that a nail driven by a driver is austempered, a kind of heat treatment that
improves hardness and toughness of steel.8 It would have been obvious to a
person of ordinary skill in the art to heat treat a screw nail designed to be
driven home via hammering, as disclosed by Rogers, in order to make it hard
and tough, improving its durability and reducing the likelihood of unwanted
deformation during hammering.
Rejection II–Rogers, Panasik, and Hodson
Claim 21
Claim 21 depends from claim 10 and recites, “wherein the screw nail
is austempered.” Appeal Br. 24 (Claims App.).
The Examiner finds that Hodson discloses austempering nails
(Hodson 4:36–58; Fig. 3) and determines that modifying Rogers’ screw nail
(has heat-treated based on the teachings of Panasik) would have been
obvious as a combination of prior art methods in order to achieve predictable

8 One online dictionary defines “austemper” as “to quench (steel) from
above the transformation temperature in a bath between 350° and 600° F and
hold it there until transformation of austenite stops, for rendering it hard and
tough.” https://www.merriam-webster.com/dictionary/austemper.
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results inasmuch as it would have provided desired design characteristics.
Non-Final Act. 9. Further, the Examiner reasons this modification would
have been “a simple substitution of known heat treatment method,
austempering, for the generic heat treatment method of Panasik.” Id.
Appellant argues that the Examiner has not articulated any reasoning
for the proposed modification. Reply Br. 11. “Appellant does not dispute
that austempering of nails (as disclosed in Hodson) was known at the time of
the invention. Appellant avers that the Examiner has not proposed a
rationale to austemper the screw nail of Rogers.”9 Id.
The Examiner has the better position. We agree that austempering
would provide a predictable result of improving the properties of the screw
nail disclosed by Rogers. As discussed above, the austempering process
toughens and hardens the material thus treated. Accordingly, we sustain the
rejection of claim 21 as unpatentable Rogers, Panasik, and Hodson.

CONCLUSION
The Examiner’s rejections are affirmed-in-part.
DECISION SUMMARY

9 In the Answer, the Examiner reiterates the discussion set forth in the Non-
Final Office Action (Ans. 7–8, 13–14), and, in the Reply Brief, Appellant
reiterates the arguments set forth in the Appeal Brief (Reply Br. 22).
Appeal 2018-005193
Application 14/711,051
20
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed New
Ground
10–20, 22,
23
103(a) Rogers, Panasik 10, 12–17,
19, 20, 22,
23
11, 18 11
21 103(a) Rogers, Panasik,
Hodson
21 18
Overall
Outcome
10, 12–17,
19, 20–23
11, 18 11, 18

TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
Appeal 2018-005193
Application 14/711,051
21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)