SNAP-ON INCORPORATED

Patent Trials and Appeals Board

Mar 2, 2022

2021002131 (P.T.A.B. Mar. 2, 2022)

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. 15/655,435 07/20/2017 Allen M. Hutchison 025493-497000 9539 27717 7590 03/02/2022 Seyfarth Shaw LLP 233 S. Wacker Drive Suite 8000 Chicago, IL 60606-6448 EXAMINER HALL JR, TYRONE VINCENT ART UNIT PAPER NUMBER 3723 NOTIFICATION DATE DELIVERY MODE 03/02/2022 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): patentdocket_chi@seyfarth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALLEN M. HUTCHISON and JONATHAN I. ANDERSEN Appeal 2021-002131 Application 15/655,435 Technology Center 3700 Before JILL D. HILL, CARL M. DEFRANCO, and LEE L. STEPINA, Administrative Patent Judges. DEFRANCO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-6, 10-12, 14-16, and 19-22.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Snap-on Incorporated. Appeal Br. 4. 2 These are all the pending claims. See Final Act. 1. Appeal 2021-002131 Application 15/655,435 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a handle and driver combination for a bearing race and seal driver set capable of being removably coupled together. Spec., 1:5-7. Claims 1, 11, 16, and 21 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A tool comprising: a handle having a drive end having a longitudinal axis and a bore with a ball disposed therein, wherein the ball is biased outwardly relative to the longitudinal axis; and a driver disk including: a body; an opening in the body having an interior surface; a base with a rim circumferentially extending from the base; and a groove disposed circumferentially around the interior surface, wherein the ball is adapted to engage the groove to cooperatively detain the driver disk to the handle in either one of first and second positions. REFERENCES Name Reference Date Smith US 6,554,524 B1 Apr. 29, 2003 Moushon US 7,000,301 B2 Feb. 21, 2006 Chang US 2006/0016298 A1 Jan. 26, 2006 Eggert US 2014/0260826 A1 Sept. 18, 2014 REJECTIONS 1. Claims 1, 10, 16, 21, and 22 stand rejected under 35 U.S.C. § 103 as unpatentable over Applicant Admitted Prior Art (hereinafter, “AAPA”),3 Smith, and Chang. 3 Appellant discloses a “prior art” seal driver tool in the “Background” section of the Specification and shows the same in figures labeled, “PRIOR ART.” Spec. 1:17-2:4, Figs. 6, 7. Appeal 2021-002131 Application 15/655,435 3 2. Claims 2-6, 11, 12, 14, 15, 19, and 20 stand rejected under 35 U.S.C. § 103 as unpatentable over AAPA, Smith, Chang, Moushon, and Eggert. ANALYSIS A. Obviousness-The Independent Claims Appellant argues independent claims 1, 11, 16, and 21 together. See Appeal Br. 12-14. We select claim 1 for review. The Examiner finds that AAPA Figures 6 and 7 depict a tool substantially as claimed, including a handle and a driver disk removably connected to the handle via an opening in the body of the driver disk, but that the AAPA tool lacks a ball and groove within the opening for connecting the driver disk to the handle. Final Act. 2-3. For that missing limitation, the Examiner finds that each of Smith and Chang teaches removably connecting two parts together using balls that engage with a circumferential interior groove. Id. at 3-4. With that teaching in mind, the Examiner concludes that it would have been obvious to “modify or substitute the coupling element of Applicant’s admitted prior art from a screw to a spring biased ball and circumferential groove as taught by Smith as an alternative form of coupling the driver disk to the handle.” Id. at 4. Appellant argues that when the claims are viewed as a whole the claimed invention would not have been obvious. Appeal Br. 12. In particular, Appellant argues that Smith does not cure the deficiencies in AAPA because the two parts in Smith do not operate in first and second positions and neither of the parts in Smith is a removable driver disk. Id. at 13. Appellant also argues that Chang is no better because Chang does not disclose a driver disk. Appeal 2021-002131 Application 15/655,435 4 Appellant’s arguments do not apprise us of Examiner error because they are an attack on the references individually, whereas the Examiner’s rejection is based on a combination of references. The Examiner finds that the AAPA driver disk operates in first and second positions and does not rely on Smith for this limitation. See Final Act. 2. Although the Examiner does not expressly explain the operation of the AAPA driver disk, a person having ordinary skill in the art would have drawn a reasonable inference that the driver disk is reversible between two positions. In particular, given that the cylindrical opening of the AAPA driver disk fits on a mating drive end of a cylindrical handle, an ordinary artisan would recognize that the base or rim of the AAPA driver disk is capable of being positioned to face either direction. See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.”). Appellant does not provide persuasive argument or evidence that the AAPA device is incapable of operating in first and second positions. And because the Examiner finds that AAPA discloses a driver disk and does not rely on Chang for teaching that limitation, Appellant’s argument faulting Chang for lacking a driver disk is unpersuasive. Appellant further argues that the Examiner is relying on impermissible hindsight, because “Smith and Chang have nothing at all to do with driver disks,” and “it appears that the Examiner is improperly combining Smith and Chang with the Appellant’s alleged Prior Art by improperly relying on information from Appellant’s own specification.” Appeal Br. 14. We disagree. Appeal 2021-002131 Application 15/655,435 5 At the outset, we see nothing improper about the Examiner’s reliance on Appellant’s own identification and description of “prior art” disk driver tools in the “Background” section of the Specification. See Spec. 1:17-2:4, Figs. 6, 7. Moreover, the Examiner does not rely solely on AAPA, but rather proposes to substitute AAPA’s coupling element with that of Smith (or Chang) as “an alternative means of coupling two separate parts together” that is “recognized” and “well established” in the tooling art. See Ans. 11. The Supreme Court has held that “a combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results” and that “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007). As set forth above, the Examiner finds that AAPA’s coupling element and that of Smith are known alternatives that predictably couple two elements together. See Ans. 11. Appellant does not persuasively explain why replacing AAPA’s screw that connects two parts with Smith’s bearing and groove-type arrangement, which also serves to connect two parts together, would have been unpredictable or beyond the abilities of an ordinary artisan. Thus, we detect no error in the Examiner’s reasoning for combining the references. In sum, we have considered Appellant’s arguments, but find them unpersuasive. Thus, we sustain the Examiner’s obviousness rejection of Appeal 2021-002131 Application 15/655,435 6 claim 1, as well as independent claims 11, 16, and 21, which are not argued separately and fall with claim 1. 4 B. Obviousness-Dependent Claims Appellant asserts that the dependent claims are patentable “for at least the same reasons discussed above, in addition to reasons related to their own recitations.” Appeal Br. 14-15. Because Appellant does not point to any specific Examiner error and does not substantively argue the Examiner’s rejection of these dependent claims, we sustain this rejection. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 10, 16, 21, 22 103 AAPA, Smith, Chang 1, 10, 16, 21, 22 2-6, 11, 12, 14, 15, 19, 20 103 AAPA, Smith, Chang, Moushon, Eggert 2-6, 11, 12¸ 14, 15, 19, 20 Overall Outcome 1-6, 10-12, 14-16, 19-22 TIME PERIOD FOR RESPONSE 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 4 Although independent claim 11 is rejected based on references in addition to AAPA, Chang, and Smith, Appellant does not argue it separately from the other independent claims. See Appeal Br. 12-15.