Applied Bolting Technology

Patent Trials and Appeals Board

Jun 16, 2021

2020006049 (P.T.A.B. Jun. 16, 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.
14/622,992 02/16/2015 Kristyn Joelle Wallace APB0025US2 1896
23413 7590 06/16/2021
CANTOR COLBURN LLP
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
SAETHER, FLEMMING
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
06/16/2021 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KRISTYN JOELLE WALLACE,
ROBERT DAVID WESTOVER, and
JORDAN DAVID RICHARDSON

Appeal 2020-006049
Application 14/622,992
Technology Center 3600
____________

Before KENNETH G. SCHOPFER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SCHOPFER, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1 and 7–10. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 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 Applied
Bolting Technology. Appeal Br. 3.
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BACKGROUND
The Specification discloses “[e]mbodiments [that] relate in general to
direct tension indicating washers and in particular to a direct tension
indicating washer with enhanced indicating material and a method of
manufacturing.” Spec. ¶ 2.
CLAIMS
Claims 1 and 9 are the independent claims on appeal and recite:
1. A direct tension indicating washer comprising:
a first surface having a protuberance formed thereon;
a second surface having an indentation formed opposite
the protuberance;
an indicating material positioned in the indentation; and
a channel leading from the indentation to an outer diameter
of the direct tension indicating washer;
wherein the indicating material is weather-resistant;
wherein the indicating material has a change in impact
strength of less than 50% after treatment by weathering testing
for 500 hours using a cycle of 8 hours UV exposure at 70°C
followed by 4 hours of condensation at 50°C;
wherein the indicating material is configured to emerge
from the channel at the outer diameter of the direct tension
indicating washer in response to compression of the
protuberance due to tension on a bolt about which the direct
tension indicating washer is installed.
9. A direct tension indicating washer comprising:
a first surface having a protuberance formed thereon;
a second surface having an indentation formed opposite
the protuberance;
an indicating material positioned in the indentation; and
a channel leading from the indentation to an outer diameter
of the direct tension indicating washer;
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wherein the indicating material is weather-resistant;
wherein the indicating material comprises a silane end-
capped polyether composition;
wherein the indicating material is configured to emerge
from the channel at the outer diameter of the direct tension
indicating washer in response to compression of the
protuberance due to tension on a bolt about which the direct
tension indicating washer is installed.
Appeal Br. 15–16.
REJECTION
The Examiner rejects claims 1 and 7–10 under 35 U.S.C. § 103 as
unpatentable over Bush2 in view of Pohl.3
DISCUSSION
Claims 1, 7, and 8
We are persuaded by Appellant’s argument that the Examiner has
failed to establish that the art of record discloses all elements of claim 1.
With respect to claim 1, the Examiner relies on Pohl as disclosing an
indicating material with the properties required by the claim. See Final
Act. 2. However, the Examiner makes no finding regarding the claim
requirement that “the indicating material has a change in impact strength of
less than 50% after treatment by weathering testing for 500 hours using a
cycle of 8 hours UV exposure at 70°C followed by 4 hours of condensation
at 50°C.” See id. at 2–3. Appellant asserts, and we agree, that the Examiner
has not pointed to any disclosure in the art of an indicating material having
this property.

2 Bush, US 3,304,827, iss. Feb. 21, 1967.
3 Pohl et al., US 4,645,816, iss. Feb. 24, 1987.
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In the Answer, the Examiner relies on the fact that “Pohl was
incorporated by reference into [Appellant’s] disclosure as disclosing a
suitable material.” Ans. 4 (citing Spec. ¶ 12). According to the Examiner,
the Specification discloses “materials which can provide a ‘desirable
combination of weather-resistance, rheology, and tear resistance’ and
describes ‘such materials are disclosed in [Pohl].’” Id. The Examiner finds
that the Specification then discloses in paragraph 14 “what would be that
desirable combination of weather-resistance, rheology, and tear resistance.”
Id. The Examiner finds that “considering the descriptions of paragraphs
0012 and 0014 together it is clear that the desirable material disclosed in
Pohl would meet the desirable combination even though those properties are
not specifically mentioned in Pohl.” Id. The Examiner also finds that Pohl
must include the property claimed because “otherwise the disclosure would
not be in compliance with section 112(a).” Id.
We disagree with the Examiner. The Specification does incorporate
Pohl “by reference in its entirety” and indicates that Pohl includes materials
“having improved elongation, flexibility, and modulus” and materials with
“a desirable combination of weather-resistance, rheology, and tear
resistance.” Spec. ¶ 12. The Specification further discloses that “[s]uitable
indicating materials include those having a change in impact strength” as
recited in the claim. Id. at ¶ 14. However, the Specification does not
specify that Pohl teaches any material with such characteristics or even state
that Pohl teaches “[s]uitable indicating materials.” Thus, the Specification
does not expressly disclose that Pohl teaches materials with the
characteristic claimed, and the Examiner has not otherwise established that
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the claimed characteristic is an inherent property of any material taught by
Pohl.4
Based on the foregoing, we are persuaded that the Examiner erred in
finding that Pohl teaches an indicating material with a change in impact
strength as required by the claim. Because the Examiner has not otherwise
established that a device with an indicating material having this property
would have been obvious, we do not sustain the rejection of claim 1. For the
same reasons, we do not sustain the rejection of dependent claims 7 and 8.
Claims 9 and 10
Independent claim 9 is directed to a direct tension indicating washer
similar to claim 1, except that claim 9 recites an indicating material that
“comprises a silane end-capped polyether composition” and does not require
that the indicating material exhibit any specific change in impact strength.
With respect to claim 9, the Examiner finds that Bush discloses a
direct tension indicating washer including a first surface, a second surface,
an indicating material, and a channel as claimed, except that Bush does not
teach an indicating material that is a silane end-capped polyether
composition. Final Act. 2 (citing Bush Fig. 3; col. 1, ll. 36–37; col. 2, ll. 3–
4, 19–22, 25–26). The Examiner finds that “Pohl discloses a methoxy silane
end-capped polyether composition as a sealant with improved properties
(Field of the Invention) intended for use which will be exposed to
weathering (‘buildings and other structures’ c.9, l.34–35).” Id. The
Examiner determines that it would have been obvious to use a material, as

4 We do not address whether this determination indicates that the disclosure
is not in compliance with 35 U.S.C. § 112(a) because that is not a rejection
before us.
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taught by Pohl, as the indicating material in Bush in order to provide an
indicating material that “remains highly flexible even when exposed to
weathering.” Id. (citing Pohl, col. 9, ll. 53–65). The Examiner further states
that “[t]his would improve Bush in that it would maintain the permanent
indicating feature required in Bush in areas where the nut is exposed to the
weather which in turn would allow the indicating washer to be used in
outside environments such as in buildings and other structures where nuts
are present.” Id. at 2–3.
We agree with and adopt the Examiner’s findings and determination
with respect to the rejection of claim 9. See Final Act. 2–3; see also Ans. 7–
11. We are not persuaded of reversible error by Appellant’s arguments.
Appellant first argues that the rejection relies on impermissible
hindsight. Appeal Br. 10. In support, Appellant asserts that “the polymer of
Pohl would not have sufficient viscosity to function as the indicating
material of claim 9.” Id. at 11. Appellant asserts that only Appellant’s
Specification describes that “a weather resistant indicating material is
beneficial to direct tension indicating washers.” Id. Thus, Appellant
indicates that the Examiner’s reliance on Pohl as teaching a suitable
weather-resistant indicating material is based only on a teaching found in the
Specification, i.e. “the Examiner is relying on impermissible hindsight in
fashioning the rejection.” Id.
We are not persuaded. Bush discloses a direct tensioning washer with
an indicating material made of silicone rubber. See Bush col. 1, ll. 36–37;
col. 2, ll. 3–5. Although Bush does not specifically indicate that silicone
rubber is weather resistant, Bush discloses that the material is intended to be
permanent. Id. We agree with the Examiner that one of ordinary skill in the
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art would understand that such a permanent silicone rubber material would
display weather resistant properties. See Ans. 8. Further, Pohl teaches
polymers that “are useful in applications that require elastomers with a high
modulus of elasticity and high tensile strength, e.g. in sealants used to secure
windshields in automobiles.” Pohl col. 1, ll. 23–28. Based on this
disclosure, one of ordinary skill in the art would also understand that Pohl
provides polymers that are used in applications where weather resistance is
required. In our view, the rejection relies on the substitution of one weather
resistant material for another, which is adequately supported by the record
before us. Accordingly, we are not persuaded by Appellant’s argument that
the Examiner engaged in impermissible hindsight reasoning.
To the extent Appellant argues that the combination of Bush and Pohl
would not meet the claim limitation requiring the indicating material to be
“configured to emerge from the channel at the outer diameter of the direct
tension indicating washer in response to compression of the protuberance,”
we are not persuaded. Specifically, Appellant contends that Pohl’s polymer
“would not have sufficient viscosity” to meet this claim language. Appeal
Br. 11. Additionally, Appellant asserts that Pohl’s material would cure prior
to installation of the washer such that the material would not function as
required by the claim language. See id. at 12.
Yet, Appellant’s assertions are speculative and amount to mere
attorney argument, unsupported by the record. For example, there is no
indication that Pohl’s polymer would necessarily cure in Bush’s washer
prior to installation, or that the Examiner otherwise erred in finding that
Pohl’s material has a “moldable viscosity” prior to curing that would enable
it to emerge from the channel at the outer edge of the washer in response to
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compression of the protuberance, as required by claim 9. See Final Act. 3.
To the contrary, the Specification describes that the indicating material is
selected to have a rheology and a tear resistance that allows for “smooth”
extraction from the channel (Spec. ¶ 9), and further describes Pohl as
disclosing materials with “a desirable combination of weather-resistance,
rheology, and tear resistance” (id. ¶ 12). Pohl also discloses materials that
are “useful in coating applications and in caulking and sealing applications
. . . wherever elastomeric polymers with improved elongation and flexibility
are desired.” Pohl col. 6, l. 67–col. 7, l. 4. One of ordinary skill in the art
would understand that such materials are configured to respond in
compression as required by the claims here.
Appellant also argues that Pohl is non-analogous art. Appeal Br. 12.
Appellant asserts that “Pohl is directed to a caulking, sealing or glazing
building structures” and is not in the field of endeavor of direct tension
indicating washers. Id. Appellant also asserts that Pohl is not reasonably
pertinent to the problems faced by the inventors, which “was finding a
weather-resistant material that could be used in a direct tension indicating
washer, where the indicating material must travel from an indentation to an
outer diameter of the direct tension indicating washer.” Id. Appellant also
asserts that Pohl is non-analogous because it only relates to materials used in
static application, and that because direct tension indicating washer use
materials pre-loaded thereon well before installation, the initial viscosity of
Pohl’s material is irrelevant to its use in direct tension indicating washers.
Id.
We disagree. A reference may be considered analogous art if the
reference is from the same field of endeavor as the claimed invention, or if
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the reference is not within the same field of endeavor, whether the reference
is reasonably pertinent to the particular problem with which the inventor is
involved. In re Klein, 647 F.3d 1343 (Fed. Cir. 2011). As discussed
previously, in our view, one of ordinary skill in the art would understand that
Pohl provides polymers that are used in applications where weather
resistance is required. Indeed, Appellant cannot reasonably argue that Pohl
is not pertinent to the problems faced by the inventors in this case, because
Appellant’s Specification indicates that the inventors specifically looked to
Pohl in solving the problem of providing a suitably weather-resistant
material for a direct tensioning washer. See Spec. ¶ 12 (acknowledging that
Pohl discloses materials that “provide a desirable combination of weather-
resistance, rheology, and tear resistance”). Further, as noted above, Pohl
teaches polymers that are useful in applications requiring weather resistance.
See also Appeal Br. 12 (acknowledging that “Pohl is directed to a
composition for caulking, sealing[,] or glazing building structures.”). Pohl
teaches different materials for use in “applications requiring elastomers that
are capable of considerable stretching and contracting,” such as “elastomers
used in moisture barrier sealants in expansion joints of high rise buildings
[that] frequently need the ability to stretch and compress without tearing and
cracking.” Id. at col. 1, ll. 32–37. Given this disclosure, we find that Pohl is
reasonably pertinent to the problem identified by Appellant, i.e. Pohl is
concerned with providing suitable materials with suitable elasticity and
strength to provide weather-resistance.
Finally, Appellant argues that the Examiner has failed to consider
Appellant’s objective evidence of non-obviousness. Appeal Br. 12.
Specifically, Appellant argues that “[t]he statements of Al Vercellino, David
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Stayshich, Sunny Ghadban and Peter Carrato establish that there was a long
felt need for a direct tension indicating washer having a weather resistant
indicating material of the type recited in the pending claims.” Id. at 12–13.
Appellant asserts that “[t]he DuraSquirt direct tension indicating washer uses
a weather-resistant indicating material as recited in the claims of this
application.” Id. at 13.
To be given substantial weight in the determination of obviousness or
nonobviousness, objective evidence of non-obviousness must be relevant to
the subject matter as claimed, and therefore the examiner must determine
whether there is a nexus between the merits of the claimed invention and the
evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986). We are not persuaded that the Examiner erred in
determining that the evidence provided lacks a sufficient nexus to the claims
to be afforded substantial weight. The statements provided as objective
evidence of a long felt need do not provide sufficient evidence to show that
the DuraSquirt washer has a sufficient nexus to claim 9, especially with
respect to the indicating material recited the claim. Notably, Appellant
provides no evidence, beyond attorney argument, that the DuraSquirt washer
embodies the limitations of the claim.
Further, even if a nexus had been shown, we find that Appellant also
does not adequately explain how the statements provided show substantial
long-felt need for the claimed washer. Although the statements provide
positive reviews of the DuraSquirt washer, they do not provide an adequate
basis for concluding that the problems solved by such a product were long-
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felt. For example, no evidence is provided showing when the DuraSquirt
washers were first developed or introduced into the market.
Based on the foregoing, we are not persuaded of error in the rejection
of claim 9. We are also not persuaded of error in the rejection of dependent
claim 10, for which Appellant does not present separate arguments.
Accordingly, we sustain the rejection of claims 9 and 10.
CONCLUSION
We REVERSE the rejection of claims 1, 7, and 8. We AFFIRM the
rejection of claims 9 and 10.
In summary:
Claims
Rejected
35 U.S.C. § References/Basis Affirmed Reversed
1, 7–10 103 Bush, Pohl 9, 10 1, 7, 8

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)(l)(iv).
AFFIRMED IN PART