Ex Parte Goldberg

Patent Trial and Appeal Board

Dec 15, 2017

14467237 (P.T.A.B. Dec. 15, 2017)

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.
14/467,237 08/25/2014 IRA JASON GOLDBERG 83460815/48259.3478 8929
67318 7590
LeClairRyan (Ford Global)
2318 Mill Road
Suite 1100
Alexandria, VA 22314
12/19/2017 EXAMINER
SAETHER, FLEMMING
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
12/19/2017 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):
phoebe.jones@leclairryan.com
marcia.taylor@leclairryan.com
uspatentsalexandria@leclairryan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IRA JASON GOLDBERG
Appeal 2016-008121
Application 14/467,2371
Technology Center 3600
Before LYNNE H. BROWNE, MICHELLE R. OSINSKI, and
ERIC C. JESCHKE, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision, as set forth in the Final Office Action dated April 14, 2016 (“Final
Act.”), rejecting claims 1, 3—6, 9, 11—14, 16—18, and 20—24 under 35 U.S.C.
§ 103(a) as unpatentable over Takahashi (US 5,085,545, issued Feb. 4,
1992) and Benedetti (US 5,201,623, issued Apr. 13, 1993). We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Ford Global Technologies, LLC (“Appellant”) is the applicant as
provided in 37 C.F.R. § 1.46 and is identified as the real party in interest.
Appeal Br. 1.
Appeal 2016-008121
Application 14/467,237
BACKGROUND
The disclosed subject matter “relates generally to a fastener, and in
particular a two-part fastener including a pin and a grommet.” Spec. 11.
Claims 1,16, and 20 are independent. Claim 1 is reproduced below, with
emphasis added:
1. A fastener comprising:
a grommet including a leg portion; and
a pin including a head portion, a tail portion
and a body portion, the body portion being
positioned between the head and tail portions and
for contacting the leg portion at first and second
operating positions, the head and tail portions each
having an outer circumference greater than a
maximum outer circumference of the body portion,
wherein the body portion includes a first shoulder
and a second shoulder positioned between the first
shoulder and the tail portion along a longitudinal
direction, the first shoulder including first and
second beveled surfaces, the second shoulder
including third and fourth beveled surfaces with the
third beveled surface positioned between the second
and fourth beveled surfaces along the longitudinal
direction, the second beveled surface being less
parallel to the longitudinal direction than the fourth
beveled surface.
2
Appeal 2016-008121
Application 14/467,237
DISCUSSION2
Independent claims 1,16, and 20 each recites “a pin” with “a body
portion” in which the “body portion” includes (1) “a first shoulder” with
“first and second beveled surfaces” and (2) “a second shoulder” with “third
and fourth beveled surfaces.” Appeal Br. 11, 13—14 (Claims App.). Each of
the independent claims requires that “the second beveled surface” is “less
parallel to the longitudinal direction than the fourth beveled surface.”3 Id. at
11, 13, 14; see, e.g., Spec., Fig. 2C (element “X” defining the longitudinal
direction), 131 (discussing “first beveled surface 207” and “second beveled
surface 209” in Fig. 2C), 134 (discussing “third beveled surface 211” and
“fourth beveled surface 213” in Fig. 2C).
For the independent claims, the Examiner generally relied on element
“M” in Takahashi as the recited “pin,” but the Examiner stated that
“Takahashi does not disclose the first neck (9) [as] formed between beveled
surfaces but, instead[,] shows second and third perpendicular surfaces.”
Final Act. 3 (emphasis added); see also Takahashi, Fig. 4. The Examiner
found, however, that “Benedetti discloses a fastener similar to Takahashi
but[] discloses a first neck (30) for the second operating position (Fig. 2)
[that] is formed between second and third beveled surfaces (see Figs. 1—3).”
2 In an Amendment in response to a prior Office Action, Appellant
added claims 21—25. See Amendment (dated February 26, 2016), at 6. In
the subsequent Final Office Action (at issue in this appeal), the Examiner
listed claims 21—24 as rejected, but did not address claim 25. See Final Act.
1,2; see also Index of Claims (dated Apr. 14, 2016) (listing claims 21—24
but not listing claim 25). The record does not indicate that the Examiner
rejected claim 25. Should there be further prosecution in this case, the
Examiner should clarify the status of claim 25.
3 We will refer to these limitations, collectively, as the “limitations at
issue.”
3
Appeal 2016-008121
Application 14/467,237
Final Act. 3 (emphasis added). According to the Examiner, it would have
been obvious for one of ordinary skill in the art at the time of the invention:
to replace the second and third perpendicular surfaces Takahashi
with second and third beveled surfaces as disclosed in Benedetti
because[,] since both are from the same field of endeavor[,] the
beveled surfaces would continue to yield the same results as the
perpendicular surfaces. Furthermore, the beveled surfaces would
be an improvement in that it would facilitate the movement of
the toe into and out of the first neck and in turn make the pin
easier to move[] between the operating positions.
Id. The Examiner found that “[o]nce the combination was made, the second
beveled surface would be less parallel then the fo[u]rth beveled surface,” as
required by the limitations at issue. Id.
Appellant argues that, “even if Takahashi may be modified by
Benedetti in the way suggested by the Examiner, the thus modified
Takahashi still fails to teach or suggest” the limitations at issue by a
preponderance of the evidence. Appeal Br. 6. Appellant argues that
“Benedetti allows for [the identified] second beveled surface ... to be of any
suitable angle or direction relative to the longitudinal axis.” Id. at 7.
According to Appellant, the identified “second beveled surface” in Benedetti
“may change its angle position relative to the longitudinal direction in any
non-limiting degree, to effectuate changes in the opening size of the neck 30
and to accommodate differences in the circumferential size of the latch
portion 18.” Id. at 8—9. Appellant contends that “Benedetti does not
expressly place a limit on the size or configuration of the latching portion
18, and therefore does not expressly place any limit on the angle position of
the [identified] second beveled surface . . . relative to the longitudinal
direction.” Id. at 9.
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Appeal 2016-008121
Application 14/467,237
The Examiner responds that the finding that “[o]nce the combination
was made, the second beveled surface would be less parallel then the
fo[u]rth beveled surface” as required (Final Act. 3) “is based in part on the
drawings but[] is also based on common sense.” Ans. 2.4
A.
To the extent that the Examiner relies on the figures in Benedetti (e.g.,
for the “second beveled surface”) and Takahashi (e.g., for the “fourth
beveled surface”) to support the finding regarding the limitations at issue,
we agree with Appellant that, on the record here, such reliance is improper.
See Reply Br. 3. As argued by Appellant, “neither [of] the cited references
teach . . . that the drawings in Takah[a]shi or Benedetti are drawn to scale,
and therefore assertions made by the Examiner regarding the relative angle
measurements merely from what is depicted in the drawings are of little
value, if any.” Id.', see also In re Wright, 569 F.2d 1124, 1127 (CCPA 1977)
(“This ignores the fact that [the prior art reference] does not disclose that
[its] drawings are to scale. Absent any written description in the
specification of quantitative values, arguments based on measurement of a
drawing are of little value.”).
4 In the Reply Brief, Appellant states that “the word ‘forth’ is recited
throughout the Answer, at many locations” and that “[t]he word ‘forth’ is
believed to completely differ from the word ‘fourth’ both in meaning and
usage.” Reply Br. 6. Appellant also states that “[a] proof-read would
quickly identify such unnecessary error and call for its correction” and that
“reasonable attention to detail and respect for the resources before the Board
and of the Appellant is called for in this case.” Id. at 6—7. Such comments
are neither appropriate nor helpful in determining the proper outcome on
appeal. We remind counsel of the duty to conduct all business with the
Office with decorum and courtesy. See 37 C.F.R. §§ 1.3, 41.1(c).
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Application 14/467,237
Figures in prior art may be relied on, however, for aspects shown with
“great particularity.” See In re Mraz, 455 F.2d 1069, 1072 (CCPA 1972);
see also id. (stating that, in a prior decision, the court did “not mean that
things patent drawings show clearly are to be disregarded”). We determine
that any difference in the relative angles between (1) the longitudinal
direction and the identified “second beveled surface” in Benedetti, and (2)
the longitudinal direction and the identified “fourth beveled surface” in
Takahashi, however, are not shown with sufficient particularity to support
the finding regarding the limitations at issue. See Mraz, 455 F.2d at 1072.
B.
We now turn to the reliance on “common sense.” Ans. 2, 3. The
Examiner states:
Similar to the instant invention both Takahashi and Benedetti
would have an objective of retaining the rivet in the expanded
state in order for the rivet to be operative to connect the panels
(see the left hand side of Fig. 8 in Takahashi and Fig. 2 of
Benedetti) in which case both Takahashi and Benedetti would
want the walls forming the slot to be “less parallel” in order to
securely retain the end latch portions of the expandable rivet
sleeve (shown at 4 in Takahashi and 18 in Benedetti). As the
walls forming the slot become more parallel it becomes easier for
the end latch portion of the expandable rivet sleeve to slide out
of the groove and in turn take the rivet out of its operative
expanded condition. So therefore, taken in conjunction with
relatively shallow angles of the fo[u]rth and first beveled surface,
which are there to facilitate easy installation, it would have been
common sense to make the second and third beveled surfaces less
parallel in order to positively retain the latch ends of the rivet
sleeve in order for the device to be operative.
Ans. 3 (emphasis added).
We view this discussion as setting forth two possible positions: (1)
proposing to further modify the combined device of Takahashi/Benedetti (as
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Application 14/467,237
discussed on Final Act. 2—3) such that the “second beveled surface” and
“fourth beveled surface” satisfy the limitations at issue and (2) a finding that
the “second beveled surface” and “fourth beveled surface” of the combined
device of Takahashi/Benedetti, without further modification, would
inherently satisfy the limitations at issue. We address the first possibility in
this section and the second possibility in the section C.
Rejections based on obviousness must be supported by “some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007). The Examiner has not provided adequate articulated reasoning to
further modify the combined device of Takahashi/Benedetti (see Final Act.
2—3) such that the “second beveled surface” and “fourth beveled surface”
satisfy the limitations at issue. The reasoning provided by the Examiner—
“to positively retain the latch ends of the rivet sleeve in order for the device
to be operative” (Ans. 3)—does not support the conclusion of obviousness
because the Examiner has not shown, with sufficient technical reasoning,
that the limitations at issue are necessary for the (now further) modified
“pin” to retain the identified “leg portion” (elastic leg 3 in Takahashi), and
thereby “be operative.”
C.
We now turn to the second possible position discussed above: a
finding that the “second beveled surface” and “fourth beveled surface” of the
combined device of Takahashi/Benedetti, without further modification,
would inherently satisfy the limitations at issue. On this issue, the Examiner
notes that Benedetti discloses:
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Appeal 2016-008121
Application 14/467,237
that in the second position where the rivet sleeve is in the
expanded operative state[,] the latches on the end of the sleeve
are located in the groove (c[ol.] 1,11. 24—29) which supports the
[Ejxaminer’s position that the walls of the groove must be
formed so that they would retain the latches, in other words “less
parallel” as discussed above.
Ans. 3^4. Although the Examiner is correct that Benedetti discloses
retaining latch portions 18 in annular groove 30 (col. 1,11. 24—29), for the
same reasons discussed in section B, the Examiner has not shown, with
sufficient technical reasoning, that the limitations at issue are necessary for
such retention to occur. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)
(“Inherency, however, may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” (quoting Hansgirg v. Kemmer, 102 F.2d
212, 214 (CCPA 1939))). Moreover, although the Examiner is correct that
Benedetti discloses latch portions 18 moving along surfaces 36 and 37 (Ans.
4 (citing Benedetti, col. 2,11. 18—22 and 30—32)), the Examiner has not
shown, with sufficient technical reasoning, that the limitations at issue are
necessary for such motion to occur.
For the reasons above, we do not sustain the rejection of independent
claims 1,16, and 20, and also do not sustain the rejection of claims 3—6, 9,
11—14, and 21 (which depend from claim 1), the rejection of claims 17, 18,
22, and 23 (which depend from claim 16), and the rejection of claim 24
(which depends from claim 20).
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Appeal 2016-008121
Application 14/467,237
DECISION
We reverse the decision to reject claims 1, 3—6, 9, 11—14, 16—18, and
20-24 under 35 U.S.C. § 103(a).
REVERSED
9