Ex Parte Milligan et al

Patent Trials and Appeals Board

Mar 22, 2019

14211031 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/2ll,031 03/14/2014
28672 7590 03/26/2019
Walter I Haverfield LLP
The Tower at Erieview
1301 East 9th Street, Ste 3500
CLEVELAND, OH 44114-1821
FIRST NAMED INVENTOR
Kenneth R. Milligan
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.
70153-00SUS-OOO 2121
EXAMINER
MULLER, BRYAN R
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
patents@walterhav.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH R. MILLIGAN and TERRY G. TAYLOR
Appeal2018-005735
Application 14/211,031 1
Technology Center 3700
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection of claims 1-13. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
According to Appellants, the "invention relates ... to improvements
in the drive end of sockets." Spec. ,r 2. Claims 1 and 5 are the independent
1 According to Appellants, the "real party in interest is Wright Tool
Company." Appeal Br. 1.
Appeal2018-005735
Application 14/211,031
claims on appeal. Below, we reproduce claim 1 as illustrative of the
appealed claims.
1. A socket for a wrench, the wrench for being turned
by a four-sided drive anvil for engaging and turning said socket
about a central axis with a force, said four-sided drive anvil
having four anvil drive surfaces and defining in cross section a
square, said socket comprising a drive end portion having a drive
end opening being so dimensioned for receiving the four-sided
drive anvil, said drive end opening being defined by four
bounding surfaces of equal length and being both parallel to said
central axis and disposed in two diametrically opposed pairs
about said central axis for preventing failure of the socket during
a torque application to said drive end portion and to prevent
rounding and wear of the comers of the four-sided drive anvil to
extend the life of the socket and/or anvil, said diametrically
opposed pairs of bounding surfaces including:
two pairs of flat side surfaces being parallel to each other
about said central axis, said two pairs of flat side surfaces
forming an intermediate part of said respective bounding
surfaces;
two pairs of curved recess surfaces forming respective
four inner comers of said drive end opening; and
four adjacent pairs of outwardly diverging transition
surfaces transitioning between respectively adjacent pairs of said
flat side surfaces and said curved recess surfaces.
REJECTIONS AND PRIOR ART
The Examiner rejects the claims as follows:
I. Claims 1-3 and 5 under 35 U.S.C. § 103 as unpatentable over
Hu (US 7,406,895 B2, iss. Aug. 5, 2008) and Colvin
(US 4,930,378, iss. June 5, 1990) (hereinafter "Colvin '378");
and
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Application 14/211,031
II. Claims 4 and 6-13 under 35 U.S.C. § 103 as unpatentable over
Hu, Colvin '378, Colvin (US 4,598,616, iss. July 8, 1986)
(hereinafter "Colvin '616"), and Wright et al. (US 5,284,073,
iss. Feb. 8, 1994) ("Wright").
ANALYSIS
Reiection I
In support of claim 1 's rejection, the Examiner finds that
Hu discloses a socket having the claimed opening (21) for
receiving a drive anvil[,] with [both] the fastener engaging
socket (32) and opening (21) each having curved comer recess[]
[surfaces] ... [,] and [that it is] well-known in the art to also
reduce stresses on the socket in the comer areas, [and] the
opening having two pairs of flat side surfaces parallel to one
another.
Answer 2 ( citation omitted). Restated, the Examiner finds that Hu discloses
a socket in which each of the drive end portion (i.e., the end that engages
with or receives a post of a ratchet, for example) and the fastener end portion
(i.e., the end that engages with or receives a bolt or nut, for example)
includes an opening with flat side surfaces and curved recess surfaces.
Because the Examiner finds that Hu "fail[ s] to disclose outwardly
diverging transition surfaces between the flat side[] [surfaces] and the
curved [recess] surfaces," the Examiner relies on Colvin '378 to remedy this
deficiency in the rejection. Id. More specifically, the Examiner finds that
Colvin ['378, which] discloses a similar socket ... [having]
curved recess[] [surfaces] ( 42) at each comer of the socket and
parallel pairs of flat side[] [surfaces] (32)[,] ... also teach[es]
outwardly diverging transition surfaces (34) between each
respective flat side [surface] and curved recess [ surface,] to
provide increased surface-to-surface engagement with a typical
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Application 14/211,031
fastener . . . [which] allows for increased force while reducing
stress that may deform the fastener.
Id. ( citation omitted).
The Examiner finds that it would have been obvious to add
Colvin '378's transition surfaces, which are between flat side surfaces and
curved recess surfaces of the socket's fastener end portion, between Ru's
flat side surface and curved recess surfaces on the socket's drive end
portion. Id. at 3. According to the Examiner, this proposed modification
would "allow for improved contact and reduced stress between the [drive]
anvil and socket[,] as well as [between] the socket and fastener[,] during
operation, thus allowing for increased torque while reducing the potential for
damage or deformation to any of the anvil, socket or fastener." Id.
Notwithstanding the Affidavits of Howard M. Chin, P.E., Professor Minel J.
Braun, Ph.D., and Frank E. Horvat, Ph.D., the Examiner finds that "any
concept known to reduce stress concentration either within the socket or
transmitted to or from the socket to a tool or fastener [(i.e., at either the
fastener end or the drive end),] would provide an obvious advantage of
reduced damage and/or failure of both the socket and the driving tool
engaged therewith." Id. at 7; see Declaration of Howard M. Chin, P.E.
(dated Sept. 5, 2017) (hereinafter "Chin Declaration"); see Declaration of
Professor Minel J. Braun, Ph.D. (dated Sept. 5, 2017) (hereinafter "Braun
Declaration"); see Declaration of Frank E. Horvat, Ph.D. (dated Sept. 5,
2017) (hereinafter "Horvat Declaration").
Although we have reviewed Appellants' arguments (see Appeal Br. 4--
32; see Reply Br. 2-10) as well as the above-identified Affidavits in detail,
we agree with the Examiner that the proposed modification is obvious. For
example, we acknowledge Appellants' argument that "[t]he socket end
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Application 14/211,031
portion and the drive end portion are very different in function and structure,
and what may apply to ... [a socket's fastener] end portion would not
necessarily apply to the [socket's] drive end portion." Appeal Br. 5; see also
Reply Br. 2-7. We acknowledge the statement of Professor Braun, Ph.D.,
that "the two ends of the socket are totally different in geometry, function[,]
and interaction interface." Appeal Br. 13 (citing Braun Declaration ,r 39).
We further acknowledge the statement of Mr. Chin, P.E., that "[t]he drive
end of the wrench is very different from the socket end of the wrench
because the drive end opening is generally smaller than the socket end
opening while having the force distributed amongst four instead of six
contact points." Id. at 6 (citing Chin Declaration ,r 26). We also
acknowledge that the Examiner does not rely on any reference, including
Hsu or Colvin '378, to disclose that a socket user is concerned with stress
relief at the drive end portion of the socket (i.e., the end of the socket that
engages with or receives a post of a ratchet, for example). Id. at 8.
Nonetheless, after we consider the disclosure of the references, and
the evidence of non-obviousness, we agree with the Examiner that claim 1
would have been obvious. Hu explains that curved recess surfaces 33,
which are on the socket's fastener end portion, "avoid concentration of
stress" and "prevent damage to the comers of the fastener." Hu col. 4,
11. 13-16, col. 3, 11. 27-29. Hu does not explain why square hole 21, which
is on the socket's drive end portion, also includes curved recess surfaces.
Nonetheless, one may reasonably conclude that these curved recesses
surfaces would avoid stress concentration, as well as prevent damage to the
comers of the ratchet's post. Similarly, Colvin '378 explains that the
socket's fastener portion includes curved recess surfaces 32 and diverging
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Application 14/211,031
transition surfaces 34 for essentially the same reasons. See Colvin '378,
col. 6, 11. 15-25, explaining that the arrangement of surfaces "distribute[s]
the torque applied so as not to deform [(i.e., damage)] the fastener." Thus,
modification of Ru's socket drive end portion to include Colvin '378's
diverging transition surfaces would not provide an unexpected result, but,
instead, predictably would prevent damage to a ratchet post engaged with or
received in, as well as avoid stress concentration within, the socket's drive
end portion. See KSR Int 'l Co., v. Teleflex Co., 550 U.S. 398, 416 (2007)
("The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.").
Thus, based on the foregoing, Appellants do not persuade us that the
Examiner's rejection of claim 1 is in error. We also sustain the rejection of
independent claim 5, which Appellants argue is in error for substantially the
same reasons as claim 1. Appeal Br. 6-8. We further sustain the rejection
of claims 2 and 3 that depend from claim 1, which Appellants argue are
rejected in error because they depend from erroneously-rejected claim 1. Id.
at 8-9.
Rei ection II
Claim 4
Dependent claim 4, which incorporates all of the recitations of
claims 1-3, recites a specific relationship between radii of portions of the
curved recess surfaces and the transition surfaces, as well as angular
relationship between different portions of the transition surfaces. See
Appeal Br., Claims App. Although the Examiner attempts to demonstrate
that Colvin '616 discloses the claimed relationships (see, e.g., Answer 4--5),
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it is not clear that Colvin '616, in fact, discloses the relationship between the
radii of the specific, claimed surfaces.
Notwithstanding the above, the Examiner then finds "that both of the
Colvin references do teach that the respective radii are result effective
variables," and, therefore, the claimed relationship between radii of specific
portions of the curved recess surfaces and the transition surfaces would have
been obvious. Answer 8; see also id. at 4--5. Based on our review, however,
the Examiner does not support adequately that any reference recognizes the
relationship of radii of the specific, recited portions of the curved recess
surfaces and the transition surfaces, as providing any particular result.
Although "the discovery of an optimum value of a variable in a known
process is normally obvious," there is an exception to the conclusion of
obviousness when "the parameter optimized was not recognized to be a
result-effective variable." In re Antonie, 559 F.2d 618, 620 (CCPA 1977)
(citing In re Aller, 220 F.2d 454 (CCPA 1955)).
Claims 6-13
Claims 6-13 depend from independent claim 5. Appeal Br., Claims
App. Appellants argues that the Examiner rejects the claims in error because
they depend from erroneously-rejected claim 5. Appeal Br. 13. Thus,
because we sustain claim S's rejection, we also sustain claims 6-13 's
rejection.
DECISION
We AFFIRM the Examiner's obviousness rejections of claims 1-3
and 5-13.
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Application 14/211,031
We REVERSE the Examiner's obviousness rejection of claim 4.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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