Ex Parte Johnson et al

Patent Trial and Appeal BoardApr 26, 2016

13099619 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/099,619 05/03/2011 23598 7590 04/28/2016 BOYLE FREDRICKSON S.C. 840 North Plankinton A venue MILWAUKEE, WI 53203 FIRST NAMED INVENTOR Charles W. Johnson 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. 1627.011 1220 EXAMINER LOEPPKE, JANIE MEREDITH ART UNIT PAPER NUMBER 3754 NOTIFICATION DATE DELIVERY MODE 04/28/2016 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): docketing@boylefred.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHARLES W. JOHNSON and ANDREW R. JOHNSON Appeal2014-002906 Application 13/099,619 Technology Center 3700 Before MICHAEL L. HOELTER, THOMAS F. SMEGAL, and PAUL J. KORNICZKY, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is a decision on appeal, under 35 U.S.C. Â§ 134(a), from a final rejection of claims 1-18. Br. 1, 4. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We REVERSE. THE CLAIMED SUBJECT MATTER The disclosed subject matter "relates to a water closet bolt for use in installing a toilet." Spec. 1:8. Claims 1, 9, and 18 are independent. Claim 1 is illustrative of the claims on appeal and is reproduced below: Appeal2014-002906 Application 13/099,619 1. A water closet bolt for use in installing a toilet compnsmg: A. an elongated bolt having an upper end and a lower end and having a threaded body extending therebetween; B. a substantially oblong foot on the lower end of the bolt; and C. a notch, extending downwardly from the upper end of the bolt, for visually indicating the orientation of a long axis of the oblong foot, wherein i. the notch forms a non-threaded surface that extends downwardly from the upper end of the bolt and into the threaded body to a location well above the oblong foot, the non-threaded surface serving as an at least substantially vertical hold back to aid in the installation of the toilet, ii. the notch forms a break-off point located at the bottom of the notch, the bolt being thicker and stronger immediately beneath the break-off point than at the break-off point, and wherein 111. the non-threaded surface is configured for gripping the bolt to enable tightening of a nut onto the water closet bolt. REFERENCES RELIED ON BY THE EXAMINER Ewing US 4,492,500 Jan. 8, 1985 Sakow US 4,530,629 July 23, 1985 Reilly US 6,430,756 Bl Aug. 13, 2002 Fraleigh US 6,698,986 B2 Mar. 2, 2004 THE REJECTIONS ON APPEAL Claims 1, 2, 5-10, 13-15, and 18 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sakow and Fraleigh. Claims 4 and 12 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sakow, Fraleigh, and Reilly. 2 Appeal2014-002906 Application 13/099,619 Claims 1, 3-9, 11-13, and 16-18 are rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Sakow and Ewing. ANALYSIS The rejection of claims 1, 2, 5-10, 13-15, and 18 as unpatentable over Sakow and Fraleigh Each independent claim on appeal, i.e., claims 1, 9, and 18, is directed to a bolt having a "notch" and recites, "the notch forms a break-off point located at the bottom of the notch." 1 The claimed notch is used for a combination of three functions: "1) an orientation indicator, 2) a hold-back surface, and 3) a break off point." Br. 15; see claims 1, 9, and 18. The Examiner relies on the primary reference to Sakow for disclosing "break-off point (20)" but acknowledges that Sakow fails to disclose a "notch," and hence a "bottom" thereof. Final Act. 2-3. The Examiner relies on Fraleigh for this teaching, and particularly Fraleigh's tool slot or notch 54. Final Act. 3. Regarding the limitation of locating a break-off point at the bottom of a notch, the Examiner first references Sakow for teaching that "the break-off point may be positioned at any desired predetermined distance from the end of the bolt." Final Act. 4 (referencing Sakow 1:60- 62); see also Ans. 2. The Examiner then concludes that locating the break- off point "is considered a matter of design choice." Final Act. 4; see also Ans. 2. This is because one skilled in the art "could easily locate the break- off point at any reasonable location along the bolt given the teachings of Sakow, and a location that coincides with the bottom of the notch falls well within the purview of the invention." Final Act. 4; see also Ans. 2. 1 For exactness, claim 9 varies slightly by reciting a notch that "forms a break-off point, located at a bottom of the notch." 3 Appeal2014-002906 Application 13/099,619 Appellants contend that: Prima facie obviousness has not been established because the Examiner has not and cannot persuasively explain why it would have been obvious to combine the reference to produce a water closet bolt having the notch and associated break-off point arranged as claimed. At no point do either Sakow or Fraleigh disclose or fairly suggest combining the peripheral groove with a slot or replacing that groove with a slot to arrive at the claimed integrally formed notch and break- off point. Br. 13. Additionally, "Appellants submit that the Examiner is arriving at the conclusion that such a combination is obvious solely as a result of improper hindsight reconstruction gleaned from Appellants' own disclosure." Br. 15. There is merit to Appellants' contentions. For example, in view of the infinite number of locations Sakow teaches for the location of break-off point 20 (see Sakow 1 :60-62), the Examiner provides no basis for locating the break-off point at the specifically claimed position other than that this position is but one "location along the bolt given the teachings of Sakow." Final Act. 4. In short, other than a reliance on "design choice," the Examiner provides no reason for one skilled in the art to locate the break-off point at "a location that coincides with the bottom of the notch." Final Act. 4. Appellants, on the other hand, rebut this "design choice" rationale by stating "[ n ]othing in either of the reference[ s] cited by the Examiner suggests providing such a combination2 in a single feature of the bolt."3 Br. 2 The combination being the same notch "used as 1) an orientation indicator, 2) a hold-back surface, and 3) a break-off point." Br. 15. 3 Appellants' Specification also emphasizes that this claimed combination (i.e., orientation, hold-back and break-off point) "saves the installer time and 4 Appeal2014-002906 Application 13/099,619 15. The Examiner does not indicate how combining these three claimed limitations into a single feature of the bolt is to be expected. 4 Regarding Appellants' contention concerning hindsight, we agree with Appellants that "[a ]t most, Fraleigh would have suggested adding its groove 54 to the upper end of Sakow's bolt." Br. 15. Here, Fraleigh identifies slot 54 as being able "to receive the blade of a flat screwdriver," and is illustrated as a conventional flat blade tool slot. Fraleigh 3:38--40; Fraleigh Figs. 1 and 6. In other words, "[ n Jo one would look to this shallow groove 54 as incentive to form a break-off point in a water closet bolt." Br. 14. We are persuaded by Appellants' contention that the Examiner's finding to locate the break-off point at "a location that coincides with the bottom of the notch" (Final Act. 4; see also Ans. 2) has been gleaned from Appellants' disclosure because "[a] break-off point would serve no beneficial purpose at a location so near the upper end of the bolt." Br. 15. Accordingly, and based on the record presented, we reverse the Examiner's rejection of independent claims 1, 9, and 18, and dependent claims 2, 5-8, 10, and 13-15. assists in the proper installation of the toilet, thus eliminating callbacks." Spec. 3 :20-27. 4 Because Appellants have shown that the claimed location of the break-off point functions differently from other prior art designs, this claimed location was not an obvious matter of design choice. See In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (claimed chip design was not a matter of design choice over the prior art where applicant disclosed that the claimed design achieved desired functions different from the prior art); In re Chu, 66 F.3d 292, 299 (Fed. Cir. 1995) (holding that claimed feature was not a matter of design choice where there was no suggestion or teaching to modify the prior art in this manner and applicant showed the benefits of the claimed feature). 5 Appeal2014-002906 Application 13/099,619 The rejection of claims 4 and 12 as unpatentable over Sakow, Fraleigh, and Reilly Claim 4 depends from claim 1 while claim 12 depends from claim 9. The Examiner relies on the additional reference to Reilly for showing "a notch (24) that is oriented perpendicularly to the long axis of the foot (fig. 7)." Final Act. 5. Reilly is not relied on by the Examiner to cure the defect discussed supra and hence, we also reverse the Examiner's rejection of claims 4 and 12 for similar reasons discussed above. Additionally, it is noted that figure 7 of Reilly (relied on by the Examiner to show a slot perpendicular to the long axis of the foot (Final Act. 5) ), depicts a triangular slot. The Examiner does not explain how a triangular slot "is oriented perpendicularly to the long axis of the foot" as recited in claims 4 and 12. Final Act. 5. In other words, it is not clear from figure 7 of Reilly that it would have been obvious to "orient the notch in any suitable position" to "establish the orientation of the foot" because doing so is "known in the art." Final Act. 5. In view of the dependence on claims 1 and 9 (supra), and in view of this additional reason, we reverse the Examiner's rejection of claims 4 and 12. The rejection of claims 1, 3-9, 11-13, and 16--18 as unpatentable over Sakow and Ewing The Examiner again relies on Sakow for disclosing "break-off point (20)" and relies on Ewing for showing "a 'male notch."' Final Act. 5---6. As above, the Examiner also concludes that locating "the break-off point in relation to the notch is considered a matter of design choice" and that in view of the teachings of Sakow, "a location that coincides with the bottom of the notch falls well within the purview of the invention." Final Act. 7. 6 Appeal2014-002906 Application 13/099,619 Appellants contend, "[a]rguments made previously with respect to Sakow and the positioning of the groove thereof are equally applicable to the instant rejections and for at least those reasons, the rejection of claims 1, 3-9, 11-13, and 16-18 should be reversed." Br. 18. We agree with Appellants for the reasons previously discussed. Each independent claim (i.e., claims 1, 9, and 18) also includes the limitation of a notch that "extends downwardly from the upper end of the bolt."5 The Examiner acknowledges that Sakow fails to show a notch "that extends downwardly from the upper end of the bolt." Final Act. 6. However, the Examiner does not clearly state where this limitation can be found in the secondary reference to Ewing. Appellants reasonably presume "the Examiner is referencing [Ewing's] facets 32" as corresponding to the notch that extends downwardly, but Appellants contend, "the facets do not, however, extend downwardly from the upper end of the bolt. Instead, the facets are medially located beneath the neck 18." Br. 20. The Examiner states, "[t]he claims do not define the upper end of the bolt as being the foremost top portion of the bolt, and under a reasonable interpretation, any portion of the bolt located near the end closer to the upper portion is considered the 'upper end' of the bolt." Ans. 3. As understood by the Examiner's interpretation, even medial facets that are inset or spaced from an end of a bolt (as in Ewing) can be deemed to be extending from that end so long as the facets are closer to this end than the other. We are not of the opinion that the Examiner's determination regarding what constitutes extending "from the upper end of the bolt" is consistent with the 5 Claim 9 recites "having a notch, extending downwardly from the upper end of the bolt." 7 Appeal2014-002906 Application 13/099,619 understanding of that term by one of skill in the art within the context of the specification. Ewing's facets do not themselves emanate or extend from or intersect with the end of the bolt, and as such, we are not of the opinion that the Examiner provided a prima facie basis as to why these intermediate facets can reasonably correlate to a notch that "extends downwardly from the upper end of the bolt" as claimed. We thus agree with Appellants regarding the Examiner's overly broad understanding of the claimed upper end of the bolt. See Br. 19-20. Accordingly, and based on the record presented, we reverse the Examiner's rejection of independent claims 1, 9, and 18, and dependent claims 3-8, 11-13, 16, and 17. DECISION The Examiner's rejections of claims 1-18 are reversed. REVERSED 8