Ex Parte Lange et al

Patent Trial and Appeal Board

Jan 23, 2017

11489214 (P.T.A.B. Jan. 23, 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.
11/489,214 07/19/2006 Frank Lange KN-110 9551
20311 7590 01/25/2017
LUCAS & MERCANTI, LLP
30 BROAD STREET
21st FLOOR
NEW YORK, NY 10004
EXAMINER
EPPS, TODD MICHAEL
ART UNIT PAPER NUMBER
3632
NOTIFICATION DATE DELIVERY MODE
01/25/2017 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):
info@lmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK LANGE, DETLEF HENRICH, and
MATHIAS KRAUS S
Appeal 2015-001061
Application 11/489,214
Technology Center 3600
Before JENNIFER D. BAHR, JOHN C. KERINS, and
SEAN P. O’HANLON, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Frank Lange et al. (Appellants) appeal under 35 U.S.C. § 134(a) from
the Examiner’s decision rejecting claims 1—3 and 5—10 under 35 U.S.C.
§ 103(a) as unpatentable over Strazar (US 5,499,430, iss. Mar. 19, 1996) and
Grzesiak (US 5,078,237, iss. Jan. 7, 1992). We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter NEW GROUNDS OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal 2015-001061
Application 11/489,214
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A clamp comprising a clamp band and a mounting element
connected to the clamp band, the clamp further comprising a
clinch connection for connecting the mounting element to the
clamp band, the clinch connection including an embossment on
an outer side thereof, wherein the clamp band has a
radially extending projection that engages in the embossment of
the clinch connection so as to fix the mounting element to the
clamp band.
DISCUSSION
The Examiner’s rejection of claims 1—3 and 5—10 as being
unpatentable over Strazar and Grzesiak is predicated in part on the
Examiner’s determination that it would have been obvious to replace the
rivet connection of Strazar with the clinch connection (with embossment and
projection) of Grzesiak “because these two fastening means with rivet and
embossment / projection connection were art-recognized equivalent^]” at
the time of Appellants’ invention. Final Act. 2—3.
Appellants argue, inter alia, that “Grzesiak does not teach that a rivet
connection and a clinch connection are equivalent” and “[t]he Examiner’s
statement that the connections of Strazar and Grzesiak are ‘art-recognized
equivalent’ is unsupported by any evidence.” Appeal Br. 14, 20.
A conclusion of obviousness must be supported by explicit findings
and analysis establishing an apparent reason to combine the known elements
in the manner required in the claim at issue. KSR Int 7 Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007). The Examiner does not proffer any evidence or
technical explanation to support the assertion that the rivet connection of
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Application 11/489,214
Strazar and the connection (i.e., “clinch fastening” or “clinched fasteners”)
taught by Grzesiak were art-recognized equivalents at the time of
Appellants’ invention. See Ans. 3 (merely reiterating that the substitution
would have been obvious because these two fastening means were art-
recognized equivalents); Grzesiak2:24—25; 3:15, 31; 4:49. Grzesiak
describes clinch fastening and spot welding as alternatives for securing the
two layers of the strap, thereby suggesting that clinch fastening and spot
welding were art-recognized equivalents for securing layers of material
together. Id. 2:24—25; 3:30—33. However, Grzesiak makes no mention of
rivets, and the Examiner does not explain the basis for the assertion that
rivets and clinch fastening were art-recognized equivalents.
Therefore, the Examiner fails to set forth the requisite factual findings
and analysis establishing an apparent reason to combine the references to
support the conclusion of obviousness of the subject matter of independent
claims 1 and 10. Accordingly, we do not sustain the Examiner’s rejection of
claims 1—3 and 5—10 under 35 U.S.C. § 103(a) as unpatentable over Strazar
and Grzesiak.
NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter the
following new grounds of rejection.
I. Claims 1, 5—7, 9, and 10 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Strazar and Obrecht (US 4,803,767, iss.
Feb. 14,1989).1
1 Obrecht is a newly-cited reference relied on by the Board.
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Appeal 2015-001061
Application 11/489,214
Claims 1, 5, and 10:
Strazar discloses a clamp (system 10) comprising a clamp band
(clamp 12) and a mounting element (spring clips 44) connected to the clamp
band by rivets 48. Strazar 4:26—5:3; Figs. 1, 2, 5. Strazar’s rivet connection
is not a clinch connection including an embossment and a radially extending
projection in the clamp band that engages in the embossment of the clinch
connection, as recited in claims 1 and 10, nor does it provide a deformation
of a material of the clamp band and a material of the mounting element
perpendicular to a surface extension of the clamp band and mounting
element, as recited in claim 10.
Obrecht teaches that it was known to fasten sheets of materials
together by deforming them in a clinching operation as an alternative to
riveting in order to overcome the recognized disadvantages of riveting (i.e.,
high capital investment and production of bulky joints that are unacceptable
in many applications). Obrecht 1:5—21. Thus, in view of Obrecht’s
teachings, it would have been obvious to one of ordinary skill in the art to
replace Strazar’s rivet connection with a clinch connection to overcome the
known disadvantages of rivet connections.
As illustrated in Obrecht’s Figures 1 and 6, for example, the clinching
operation deforms the material in both sheets in a direction perpendicular to
a surface extension of those sheets, forming a projection in one sheet that
engages in an embossment in the other sheet to produce the clinch
connection. Thus, a clinch connection as taught by Obrecht securing
Strazar’s spring clips 44 to clamp 12 would comprise a deformation in each
of the spring clips and the clamp that is perpendicular to a surface extension
of each of the spring clips and the clamp, thereby forming a radially
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Appeal 2015-001061
Application 11/489,214
extending projection in one of the spring clip and the clamp that engages in
an embossment in the other of the spring clip and the clamp. In other words,
there are only two alternatives for the arrangement of the projection and the
embossment in the clinch connection — either the projection is formed in
the clamp and the embossment is formed in the clip, or the embossment is
formed in the clamp and the projection is formed in the clip —both of
which are predictable solutions well within the technical grasp of a person of
ordinary skill in the art. Thus, the selection of either would have been
obvious. See KSR, 550 U.S. at 421 (“When there is a design need or market
pressure to solve a problem and there are a finite number of identified,
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp.”).
With respect to claim 5, the recitation “wherein the clamp band is
deformed into the mounting element” simply denotes one of the two
aforementioned alternatives for the clinch connection — namely, the one in
which the clamp band is deformed into the mounting element, thereby
forming a projection in the clamp band that engages in an embossment in the
mounting element. Once again, where, as here, there are a finite number of
identified, predictable solutions, the selection of either amounts not to
innovation, but to the exercise of ordinary skill, and, thus, would have been
obvious. See id.
Claim 6:
Strazar discloses that the preferred materials for the clamp band
(clamp 12) are plastic or metal and that the preferred material for the
mounting element (fmgers/spring clips 44) is a flexible, resilient material,
such as plastic or metal. Strazar 5:4—7. Strazar expresses no preference as
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Application 11/489,214
to whether the clamp band and the mounting element are made of the same
material or different materials. See id. (expressing only a preference for a
clamp band of sufficient thickness to allow relatively limited flexibility and
resilience, in contrast to the fingers, in which flexibility and resilience is
desired). Accordingly, the selection of either the same material or different
materials for Strazar’s clamp band and spring clips, which amounts to a
selection from among a finite number (i.e., two) of predictable options,
would have been obvious to a person of ordinary skill in the art. See KSR,
550 U.S. at 421.
Claim 7:
Strazar discloses clamps made of stainless steel, which is a chromium
steel. Strazar 5:35—36.
Claim 9:
Strazar’s clamp is a worm drive clamp comprising a rotatable member
32 having threads 34 for cooperating with recesses 18 in clamp 12 to tighten
or loosen the clamp, and, thus, is a worm gear clamp as called for in claim 9.
Strazar 4:28, 31—33, 39-50. Further, Strazar’s spring clips 44 are
prepositioning clips as called for in claim 9. Id., Figs. 1—2; 4:51—52; 4:65—
5:3; 5:8-34.
II. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Strazar and Obrecht, as applied to claim 1
above, and Cronn (US 5,230,136, iss. July 27,1993).2
Obrecht does not specifically teach a clinch connection having a
polygonal or hexagonal cross-section, as called for in claims 2 and 3,
respectively. However, Cronn teaches that, in addition to punches having a
2 Cronn is a newly-cited reference relied on by the Board.
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Appeal 2015-001061
Application 11/489,214
circular cross-section, “punches having an oval, rectangular or other form of
cross-section can be used with satisfactory results” for a clinching operation.
Cronn 5:29—38. Thus, a clinch connection having a polygonal cross-section,
such as a rectangular or hexagonal cross-section, would have been well
within the technical grasp of a person having ordinary skill in the art and
would have been obvious for use in securing Strazar’s spring clips 44 to
clamp 12.
DECISION
The Examiner’s decision rejecting claims 1—3 and 5—10 under
35 U.S.C. § 103(a) as unpatentable over Strazar and Grzesiak is
REVERSED.
We enter a new ground of rejection of claims 1, 5—7, 9, and 10 under
35 U.S.C. § 103(a) as unpatentable over Strazar and Obrecht.
We enter a new ground of rejection of claims 2 and 3 under 35 U.S.C.
§ 103(a) as unpatentable over Strazar, Obrecht, and Cronn.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
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Application 11/489,214
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the prosecution will be
remanded to the Examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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).
REVERSED; 37 C.F.R, $ 41.50(b)
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