STANLEY FASTENING SYSTEMS, L.P.

Patent Trials and Appeals Board

Mar 23, 2021

2020003077 (P.T.A.B. Mar. 23, 2021)

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.
14/175,711 02/07/2014 Prudencio S. Canlas JR. 011988-0429288 5568
98679 7590 03/23/2021
Pillsbury Winthrop Shaw Pittman LLP(Stanley B&D)
(Stanley Black & Decker)
P.O.Box 10500
McLean, VA 22102
EXAMINER
WEEKS, GLORIA R
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
03/23/2021 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PRUDENCIO S. CANLAS JR., JEFF PENG, HAO CHANG, and
ADAM C. TILLINGHAST
____________

Appeal 2020-003077
Application 14/175,711
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
LEE L. STEPINA, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE.
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision in the Final Office Action (dated Jan. 3, 2019, hereinafter “Final
Act.”) rejecting claims 1–3, 5, 6, and 35–41 under 35 U.S.C. § 103(a) as

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Stanley Fastening Systems, L.P. is identified as the real
party in interest. See Appellant’s Appeal Brief (filed June 14, 2019,
hereinafter “Appeal Br.”) 3.
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being unpatentable over Hagan2 and Smith.3,4 We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.
INVENTION
Appellant’s invention relates to “fastener driving devices that
incorporate mechanisms for limiting the movement of nails.” Spec. para. 2.
Claim 1, the sole independent claim, is representative of the claimed
invention and reads as follows:
1. A fastener driving device, comprising:
a housing assembly;
a nose assembly connected to the housing
assembly and having a drive channel;
a magazine for carrying a supply of fasteners
through a feed channel along a feed channel direction
toward the nose assembly; and
a plurality of stop pawls configured to prevent the
supply of fasteners from moving along a direction
opposite to the feed channel direction and independently
movable about a common pivot axis,
wherein each of the plurality of stop pawls has a
distal end configured to extend from one side of the feed
channel into the feed channel between a first fastener
and an adjacent second fastener,

2 Hagan, US 7,950,556 B2, issued May 31, 2011.
3 Smith, US 3,703,981, issued Nov. 28, 1972.
4 Claims 7–34 are withdrawn. See Appeal Br. 3. Claim 4 is objected to by
the Examiner as being dependent upon a rejected base claim and otherwise
indicated as being allowable if rewritten in independent form including all of
the limitations of the base claim and any intervening claim. See Final Act. 4.
Claim 4 is not part of the instant appeal.

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wherein each of the plurality of stop pawls, when
extended into the feed channel, has one side facing the
drive channel and the other side facing the feed channel,
wherein each of the plurality of stop pawls being
configured such that, when the associated pawl is
extended between the first fastener and the adjacent
second fastener, reverse movement of the first fastener to
the other side of the associated pawl is precluded, and
wherein the distal end of one of the plurality of
stop pawls is configured to engage the first fastener when
the first fastener is of a first size and the distal end of the
other of the plurality of stop pawls is configured to
engage the first fastener when the first fastener is of a
second size different from the first size.

ANALYSIS
Appellant has not presented arguments for the patentability of claims
2, 3, 5, 6, and 35–41 apart from claim 1. See Appeal Br. 7–11. Therefore, in
accordance with 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 as the
representative claim to decide the appeal of the rejection of these claims,
with claims 2, 3, 5, 6, and 35–41 standing or falling with claim 1.
The Examiner finds that Hagan discloses a fastener driving device 10
including, inter alia, housing assembly 12, magazine assembly 14,
connected to housing assembly 12, for holding fasteners 500 and feeding the
fasteners through a feed channel in a feed direction toward nose assembly
18, and a plurality of spring biased 828 stop pawls 404, 802 movable about a
common pivot axis 406. Final Act. 2 (citing Hagan, Figs. 21A–21E). The
Examiner further finds that each of stop pawls 404, 802 extends into the
feeding channel and has a ramped surface 404, 824 facing the feed channel
and an opposing abutment surface 440, 822 facing the drive channel,
wherein “the ramped surfaces can contact the fastener shanks and the
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abutment surfaces prevent the reverse movement of the fasteners.” Id.
Relying on Hagan’s Figure 21F, the Examiner finds that “the protrusion of
both pawls 404 and 802 into the feed channel [prevents] movement of
fastener 94b in a direction opposite to the feed direction.” Id. at 4. The
Examiner explains that “the phrase ‘configured to’ does not speak to a
specific structural limitation, [but] rather allows for the interpretation of any
occurrence/scenario in which the referenced structure would be capable of
meeting the functional recitation followed by the phrase.” Id (emphasis
added). Thus, according to the Examiner, Figure 21 F of Hagan illustrates
abutment surface 822 of pawl 802 blocking fastener 94b from movement in
the feed channel in a direction opposite to the feed direction. Id.
Appellant argues that “[n]owhere does Hagan disclose that pawl 802
would block fastener 94b from movement in the opposite direction of the
feed channel direction.” Appeal Br. 7. According to Appellant, “spreader
pawl 802 of Hagan is merely ‘adapted to spread adjacent fasteners 94 of the
coil of fasteners 500 a predetermined distance to resist jamming of the
fastening tool 10 as the fasteners 94 are sequentially fed into the nosepiece
18 during operation.’” Id. at 7–8. Hence, Appellant contends that Hagan’s
pawl 802 “is not ‘configured to prevent the supply of fasteners from moving
along a direction opposite to the feed channel direction,’ as claimed.” Id. at
8. In particular, Appellant explains that Hagan’s Figures 21F and 21G
illustrate spreader pawl 802 as merely inhibiting motion of fastener 94c in
the feed direction F in order to widen a gap between adjacent fasteners 94c,
94b from G1 to G2. Id.; see also Declaration of Jeff Peng, filed under 37
C.F.R. 1.132 on Sept. 10, 2018 (hereinafter “Peng Decl. or “Peng
Declaration”), para. 8; Reply Brief (filed Nov. 6, 2019, hereinafter “Reply
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Br.”) 5–6. Furthermore, relying on the Peng Declaration, Appellant asserts
that because surface 822 of pawl 802 is angled as a ramp, fastener 94b
exhibits a rearwardly force against surface 822, which would compress
spring 828 and cause pawl 802 to move upwardly away from the feed
channel, thereby allowing fastener 94b to move past pawl 802 in a direction
opposite the feed direction. See Appeal Br. 9; Peng Decl., para. 9; Reply
Br. 7–8. Thus, according to Appellant, Hagan’s pawl 802 is not configured
to prevent movement of fasteners in a direction opposite to the feed direction
because pawl 802 is configured to inhibit movement in the feed direction.
See Appeal Br. 9; Peng Decl., para. 8. Moreover, Appellant contends that
the Examiner’s construction of the phrase “configured to” is incorrect
because the phrase “configured to,” like the phrase “adapted to,” means
“‘designed or constructed to’” and the court in In re Giannelli, 739 F.3d
1375, 1379 (Fed. Cir. 2014) distinguished the phrase “adapted to” “from a
device that might merely be capable of the recited use.” See Appeal Br. 10–
11 (emphasis added).
We appreciate Appellant’s position that the phrase “configured to” in
claim 1 does not mean “capable of.” We also appreciate that Hagan fails to
explicitly disclose that pawl 802 blocks fastener 94b from movement in a
direction opposing the feed direction, but rather discloses inhibiting motion
in the feed direction. However, this does not mean that Hagan’s abutment
surface 822 of pawl 802 is not “constructed to” block fastener 94b from
movement in a direction opposite to the feed direction. Just because pawl
802 is “designed to” inhibit motion of fasteners in the feed direction does not
mean that it is not also “constructed to” block fastener 94b from movement
in a direction opposite to the feed direction. We agree with the Examiner
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that in Hagan’s Figure 21F, abutment surface 822 of stop pawl 802, and in
Figure 21G, abutment surface 440 of stop pawl 404, prevent reverse
movement of fastener 94b in a direction opposite the feeding direction.
Examiner’s Answer (dated Sept. 6, 2019, hereinafter “Ans.”) 5. To better
understand how Hagan’s stop pawls 440 and 802 prevent reverse movement
of fastener 94b in a direction opposite the feeding direction we reproduce
below the Examiner’s annotated Figures 21F and 21G of Hagan:

The Examiner’s annotated Figures 21F and 21G of Hagan illustrate feed
pawl 302, stop pawls 404, 802, spring 828, spring 306, fasteners 94b, 94c,
feeding direction F, and reverse direction opposite feeding direction F. Id. at
6.
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As seen in the above Figures, because stop pawls 802 and 404 extend
into the feeding channel, abutment surfaces 822, 440 of stop pawls 802, 404
are “constructed to” prevent reverse movement of fastener 94b in a direction
opposite feeding direction F. In particular, stop pawls 802, 404 are biased
inside the feeding channel and contact fastener 94b via abutment surfaces
822, 440 by the biasing force of spring 828. Thus, the presence of stop
pawls 802, 404 in the feeding channel and contact of abutment surfaces 822,
440 with fastener 94b prevent the fastener’s movement in a direction
opposite feeding direction F. Therefore, as Hagan’s abutment surface 822 of
stop pawl 802 blocks fastener 94b from movement in a direction opposite to
feed direction F, Hagan’s pawl 802 is “constructed to,” that is, “configured
to,” prevent movement of fastener 94b in a direction opposite to feed
direction F. Accordingly, Hagan discloses a plurality of stop pawls, as
called for by independent claim 1.
Furthermore, Appellant’s assertion that contact of fastener 94b against
abutment surface 822 of stop pawl 802 would compress spring 828 and
cause stop pawl 802 to move upwardly away from the feed channel, thereby
allowing fastener 94b to move past stop pawl 802 in a direction opposite
feed direction F (see Appeal Br. 9) is unsupported attorney argument and
cannot take the place of evidence in the record. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); see also Peng. Decl., para. 9. The Examiner is
correct that “biasing of the stop pawls [802, 404] away from the feed
channel is accomplished through the actuation of fastener feed pawl 302.”
Ans. 5 (citing Hagan, Figs. 21B–21D). Hagan specifically discloses that
“[t]he feeder biasing spring 306 and the feed pawl 302 may cooperate to
provide a force suitable to overcome the bias of the spreader pawl 802 and
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the spreader biasing spring 828.” Hagan, col. 13, ll. 34–37 (emphasis
omitted). Neither the Peng Declaration nor Appellant persuasively explain
whether the resulting rearwardly force exhibited by fastener 94b contacting
against abutment surface 822 of stop pawl 802 is at least the same value as
the force generated by feeder biasing spring 306 and feed pawl 302
discussed supra. In particular, we note that even the Peng Declaration in
paragraph 9 employs speculative language as to the level of such a force
(“And, if the force were great enough, it would actually compress the spring
828 and allow the fastener (94b) to move past the pawl 802 in a rearward
direction.”) (emphasis added).
We are also not persuaded by Appellants’ argument that the
Examiner’s rejection lacks a discussion of the level of ordinary skill in the
art and the reasoning to combine the teachings of Hagan and Smith is
conclusory. See Appeal Br. 6. “[T]he absence of specific findings on the
level of skill in the art does not give rise to reversible error ‘where the prior
art itself reflects an appropriate level and a need for testimony is not
shown’.” Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001)
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
163 (Fed. Cir. 1985)). Here, Appellant does not persuasively argue why the
Examiner’s findings regarding the teachings of Hagan and Smith do not
adequately reflect the level of skill in the art. See Final Act. 2–3; Ans. 3.
Furthermore, the Examiner has provided a reasoning with rational
underpinnings to modify Hagan’s stop pawls, according to Smith’s stop
pawls 102, 104, namely, “to have a significant surface extension parallel to
fastener shanks engaged by the stop pawls” because “Smith states [that] such
a modification[] allows fasteners of different sizes to be effectively fed by
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the stop pawls.” Final Act. 3 (citing Smith, col. 10, ll. 64–67). Therefore,
we are not persuaded that the Examiner relied on impermissible hindsight,
rather than the knowledge of those skilled in the art at the time of the
invention. See Ans. 4–5. Appellant has not persuasively argued that the
Examiner’s findings and reasoning to combine the teachings of Hagan and
Smith are in error.
Lastly, we see no merit to Appellant’s contention that the rejection of
independent claim 1 is improper due to a lack of a reasonable expectation of
success. Appeal Br. 11; Rely Br. 9. See In re O’Farrell, 853 F.2d 894, 903–
904 (Fed. Cir. 1988) (Absolute predictability that the substitution will be
successful is not required, all that is required is a reasonable expectation of
success.). The modification of Hagan’s stop pawls “to have surface
extension dimensions,” as taught by Smith, “such that fasteners of different
sizes are capable of being effectively engaged by the stop pawls” is nothing
more than the substitution of one element for another known in the field to
yield a predictable result. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(citing to Adams, 383 U.S. 38, 50–51 (1966)) (“[W]hen 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.”).
In conclusion, for the foregoing reasons, we sustain the rejection
under 35 U.S.C. § 103(a) of independent claim 1 as unpatentable over Hagan
and Smith. Claims 2, 3, 5, 6, and 35–41 fall with claim 1.

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CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5, 6,
35–41
103(a) Hagan, Smith 1–3, 5, 6,
35–41

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