Ex Parte Cutsforth

Patent Trials and Appeals BoardJan 17, 2019

14220489 - (D) (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/220,489 03/20/2014 28075 7590 01/22/2019 SEAGER, TUFTE & WICKHEM, LLP 100 SOUTH 5TH STREET SUITE 600 MINNEAPOLIS, MN 55402 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Robert S. Cutsforth 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. 1099.1115102 9262 EXAMINER FERGUSON, MICHAEL P ART UNIT PAPER NUMBER 3678 NOTIFICATION DATE DELIVERY MODE 01/22/2019 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): GEN.USPTO@stwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT S. CUTS FOR TH Appeal2018-004407 Application 14/220,489 1 Technology Center 3600 Before STEFAN STAICOVICI, SEAN P. O'HANLON, and ALYSSA A. FINAMORE, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE- Appellant appeals under 35 U.S.C. Â§ 134(a) from the Examiner's decision in the Final Office Action ( dated Jan. 20, 2017, hereinafter "Final Act.") rejecting claims 1--4 and 22. 2 We have jurisdiction over this appeal under 35 U.S.C. Â§ 6(b ). 1 Cutsforth, Inc. is the applicant and identified as the real party in interest in Appellant's Appeal Brief (filed Aug. 31, 2017, hereinafter "Appeal Br."). Appeal Br. 3. 2 The Examiner indicates claims 5-21 and 23 as allowable. See Final Act. 12. Appeal2018-004407 Application 14/220,489 We REVERSE. SUMMARY OF DECISION INVENTION Appellant's invention is related "to a mounting fixture for positioning a workpiece in a desired relationship with an apparatus." Spec. 1, 11. 9-10. Claim 1, the sole independent claim, is representative of the claimed invention and reads as follows: 1. A mounting fixture comprising: a first tubular member having a first end, a second end, and a central longitudinal axis extending therethrough; a second tubular member having a first end, a second end, and a central longitudinal axis extending therethrough; and an articulation joint coupled between the first tubular member and the second tubular member to position the longitudinal axis of the first tubular member at a desired angle relative to the longitudinal axis of the second tubular member, the articulation joint including a first articulation member pivotably coupled to a second articulation member at a pivot point; wherein a first end portion of the articulation joint is operatively configured to exert a radially outward clamping force against an inner surface of the first tubular member; wherein a second end portion of the articulation joint is operatively configured to exert a radially outward clamping force against an inner surface of the second tubular member; and wherein the articulationjoint is operatively configured to exert an inward clamping force against the first articulation member and the second articulation member to clamp the first articulation member from pivotable movement relative to the second articulation member. 2 Appeal2018-004407 Application 14/220,489 REJECTI0N3 The Examiner rejects claims 1--4 and 22 under 35 U.S.C. Â§ 103(a) as being unpatentable over Andersen (US 1,232,473, iss. July 10, 1917) and Walter (EP O 399 371 Al, publ. May 17, 1990). 4 ANALYSIS The Examiner finds that Andersen discloses a mounting fixture including, inter alia, "a first tubular member (not shown; receiving threaded end portion 11) ... a second tubular member (not shown; receiving threaded end portion 11) ... and an articulation joint 12 coupled between the first tubular member and the second tubular member." Final Act. 9. The Examiner further finds that "the articulation joint includ[es] a first articulation member 12 pivotably coupled to a second articulation member 12 at a pivot point 15." Id. However, the Examiner further finds that Andersen fails to disclose that "a first end portion of the articulation joint is operatively configured to exert a radially outward clamping force against an inner surface of the first tubular member" and "a second end portion of the articulation joint is operatively configured to exert a radially outward 3 The rejections under 35 U.S.C. Â§ 112, second paragraph, of claims 1-23, as being indefinite, and of claims 5 and 16-18 as being incomplete for omitting essential structural elements, are withdrawn by the Examiner. See Examiner Answer (dated Jan. 22, 2018, hereinafter "Ans.") at 6; see also Final Act. 2- 8. 4 We derive our understanding of this reference from the English language translation contained in the image file wrapper of this application. All references to the text of this document are to portions of the translation. 3 Appeal2018-004407 Application 14/220,489 clamping force against an inner surface of the second tubular member." Id. at 10. Nonetheless, the Examiner finds that Walter discloses a mounting fixture including, inter alia, threaded stud 50 "for exerting a radially outward clamping force against the inner surface of a tubular member 7 with an end portion 6, 16 of a joint." Id. Thus, the Examiner concludes that [I]t would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the mounting fixture disclosed by Andersen wherein the first and second end portions of the articulation joint each exert a radially outward clamping force against an inner surface of the second tubular member via a first or second threaded stud, respectively, as taught by Walter in order to enable one to use the articulation joint with readily available unthreaded tubular members, providing for quicker, easier manufacturing and assembly[.] Id. at 11. Appellant argues that the Examiner's modification of the end portions of Andersen's ball joint, according to Walter, is based on impermissible hindsight. Reply Brief (filed Mar. 21, 2018, hereinafter "Reply Br.") at 3. According to Appellant, "[t]he Examiner has failed to identify any deficiency in the ball joint of Andersen for its intended purpose that would necessitate or inspire the proposed modification," but rather, "appears to have merely identified independently disclosed elements and pieced them together using Appellant's disclosure as a guide." Appeal Br. 7; see also Reply Br. 3. In response, the Examiner notes that [t]he Walter reference has only been relied upon to teach or suggest modifying the first and second end portions of the articulation joint disclosed by Andersen wherein each exert a 4 Appeal2018-004407 Application 14/220,489 radially outward clamping force against an inner surface of the second tubular member via a first or second threaded stud. Ans. 8-9 ( emphasis added). The Examiner further reiterates the reasoning for modifying Andersen's articulation joint, according to Walter; namely, "to enable one to use the articulation joint with readily available unthreaded tubular members, providing for quicker, easier manufacturing and assembly." Id. at 8. Although we appreciate the Examiner's position that Walter discloses an end portion 6, 16 of a joint that "is configured to exert a radially outward clamping force 50 against an inner surface of a tubular member 7," nonetheless, we find the Examiner's rejection insufficient. See Ans. 8; see also Walter, Fig. 5. Specifically, the Examiner's rejection does not adequately explain what would have prompted a person having ordinary skill in the art to modify the end portions of Andersen's joint 12 to include Walter's threaded stud. We agree with Appellant that the Examiner has not provided any findings that Andersen recognized a problem with its ball joint 12 in coupling first and second tubular members. See Reply Br. 2. Appellant is correct that "nowhere does Andersen indicate that the bushing 10 and/or nipple [11] are required to be 'quickly assembled' or 'easily manufactured.'" Id. Furthermore, the Examiner does not provide any factual support for the allegation that modifying the end portions of Andersen's joint 12 to include Walter's threaded stud "provid[es] for quicker, easier manufacturing and assembly." See id. at 2-3; see also Final Act. 11. Rather, as Appellant correctly notes, "using the cited clamping system of Walter" to couple 5 Appeal2018-004407 Application 14/220,489 Andersen's first and second tubular members to ball joint 12, a skilled artisan would require a tool to rotate threaded stud 50, and, thus, would not make for a "quicker, easier ... assembly." Appeal Br. 8. Stated differently, the Examiner does not provide any factual support for the position that Walter's clamping system constitutes a quicker and easier assembly method than the threaded connections of Andersen. Moreover, the Examiner does not adequately explain how the end portions of Andersen's joint 12 would be modified to include Walter's threaded stud 50 such that "a radially outward clamping force" is exerted against an inner surface of the first and second tubular members, as called for by independent claim 1. The Examiner also fails to adequately explain how the end portions of Andersen's joint 12 would be modified to include three threaded studs. See Ans. 10 ("The Walter reference has only been relied upon to teach or suggest modify[ing] the means 15,16 [of Andersen] ... to comprise a third threaded stud."). As such, for the foregoing reasons, the Examiner's articulated reason for combining the disclosures of Andersen and Walter is not supported by a preponderance of the evidence. See Final Act. 11. Accordingly, absent hindsight, we fail to see why a person having ordinary skill in the art would modify the end portions of Andersen's joint 12 to include Walter's threaded stud. Lastly, we agree with Appellant that "it is unclear [from the Examiner's rejection] how the bushing or nipple 11 [ of Andersen] may be received by both the first tubular member and the second tubular member." Appeal Br. 6 ( emphasis added); see also Final Act. 9. 6 Appeal2018-004407 Application 14/220,489 In conclusion, for the foregoing reasons, we do not sustain the rejection under 35 U.S.C. Â§ 103(a) of claims 1--4 and 22 as unpatentable over Andersen and Walter. SUMMARY The Examiner's decision to reject claims 1--4 and 22 under 35 U.S.C. Â§ 103(a) is reversed. REVERSED 7