Ex Parte Bellino et al

Patent Trial and Appeal BoardJul 31, 2018

14485296 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/485,296 09/12/2014 Mark Carmine Bellino 87853 7590 08/02/2018 Dority & Manning, PA and General Electric Company Post Office Box 1449 Greenville, SC 29602 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. 276342-1/GEC-1308 1518 EXAMINER SAETHER, FLEMMING ART UNIT PAPER NUMBER 3677 NOTIFICATION DATE DELIVERY MODE 08/02/2018 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): usdocketing@dority-manning.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK CARMINE BELLINO, HEATH MICHAEL OSTEBEE, LUCAS JOHN STOIA, and CHRISTOPHER PAUL WILLIS Appeal 2017-010116 Application 14/485,296 Technology Center 3600 Before STEFAN STAICOVICI, BRETT C. MARTIN, and LEE L. STEPINA, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1, 3-15, and 17-20. Claims 2 and 16 were canceled. See App. Br. (Claims App.) 13-14. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to Appellants, the applicant, as provided in 3 7 C.F .R. Â§ 1.46, and real party in interest is the General Electric Company. App. Br. 1. Appeal2017-010116 Application 14/485,296 THE INVENTION Appellants' claims are directed generally "to threaded mechanical fasteners and, more particularly, to a nut anti-rotation cap associated with threaded mechanical fasteners." Spec. ,r 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A nut anti-rotation cap comprising: an end wall having an inner surface welded to an end of a threaded mechanical fastener; and at least one sidewall extending from the end wall, wherein the at least one sidewall is a solid wall configured to be secured to a nut engaged with the threaded mechanical fastener, and wherein the at least one sidewall defines an inner cavity fully encasing an outer perimeter of the threaded mechanical fastener from the end wall to the nut. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Tinnin Curtin Tirone us 1,016,237 us 1,352,053 US 2014/0093328 Al 2 Jan. 30, 1912 Sept. 7, 1920 Apr. 3, 2014 Appeal2017-010116 Application 14/485,296 REJECTION The Examiner made the following rejection: Claims 1, 3-15, and 17-202 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Curtin, Tinnin, and Tirone. Ans. 3. ANALYSIS Appellants' arguments are directed to alleged benefits of the claimed invention rather than addressing actual limitations in the claims. See App. Br. 5-9. We agree with the Examiner that Appellants' arguments are not commensurate with the scope of the claims because aspects, which Appellants argue, such as "non-damage to the threads," "harsh operation," "press-fit," etc., are not found in the claims. See Ans. 4. Although these may result from the claimed device, such are not structural limitations in the claims. Further to this point, Appellants argue that the "Examiner fails to consider protections that may be afforded specifically by the space defined by the inner cavity created specifically in the present disclosure." App. Br. 10. Appellants, however, do not point to the actual claim language, but direct us to statements in the Specification that explain the alleged benefits of the claimed invention. See App. Br. 9. Such unclaimed benefits and features are essentially irrelevant to the rejection and Appellants do not actually point to any structural deficiencies in the Examiner's combination. 2 The Examiner lists only claims 1 and 3-8 as rejected in the Final Office Action, but Appellants provide arguments as to all pending claims under the same rejection and the Examiner refers to all claims in the Answer, so we assume the Examiner's omission of claims 9-15 and 17-20 is a typographical error and that the rejection applies to all of the pending claims. 3 Appeal2017-010116 Application 14/485,296 As such, we are not persuaded that the Examiner has failed to establish a prima facie case of obviousness. Appellants also argue that the combination is improper as based upon impermissible hindsight (App. Br. 9) due to the addition of Tirone and also that the Examiner's reasoning for the combination is merely a conclusory statement (App. Br. 10-11). With regard to Tirone, Appellants' arguments revolve around the assertion that Tirone does not teach a mechanical fastener as claimed, but rather a plug, which is not "drawn from the same field of endeavor." App. Br. 11. We first disagree that Tirone does not teach a mechanical fastener. As the Examiner correctly finds, Tirone teaches "a bolt with a head at one [ end] and a thread at an opposite end just like other bolts." Ans. 6. The fact that Tirone uses this bolt as a plug, rather than a screw does not negate the structural similarities between the disclosed devices. Furthermore, as to field of endeavor, the pertinent aspects of Tirone relate to its teaching of an anti-rotation cap, not to the intended use or the exact structure of the plug. Just as with Curtin and Tinnin, Tirone discloses an anti-rotation cap and one of ordinary skill in the art would understand that aspects of Tirone could apply to such caps regardless of exact application. As to the reasoning, the Examiner sufficiently explains that Tirone teaches the applicability of both welds and press-fits to anti-rotation caps. Ans. 6. The Examiner then concludes that it would be a mere simple substitution for the press-fits of either Tinnin or Curtin to be replaced with the weld disclosed in Tirone. Ans. 8. Accordingly, we are not persuaded of error in the Examiner's rationale for combining Tirone with Tinnin and Curtin. 4 Appeal2017-010116 Application 14/485,296 DECISION For the above reasons, we AFFIRM the Examiner's decision to reject claims 1, 3-15, and 17-20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5