Ex Parte Wadsworth

Patent Trial and Appeal Board

Apr 7, 2016

12592495 (P.T.A.B. Apr. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/592,495
122085 7590
Shartsis Friese LLP
One Maritime Plaza
18th floor
FILING DATE
11125/2009
04/11/2016
San Francisco, CA 94111
FIRST NAMED INVENTOR
Kevin Wadsworth
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.
1435.10200 6558
EXAMINER
MCMAHON, MATTHEW R
ART UNIT PAPER NUMBER
3679
NOTIFICATION DATE DELIVERY MODE
04/11/2016 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):
patents@sflaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN WADSWORTH
Appeal2014-001400
Application 12/592,495
Technology Center 3600
Before MICHAEL L. HOELTER, ERIC C. JESCHKE, and
MARK A. GEIER, Administrative Patent Judges.
JESCHKE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Kevin Wadsworth (Appellant) seeks review, under 35 U.S.C.
§ 134(a), of the Examiner's decision to reject claims 1-7, 9-11, and 16-21.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
BACKGROUND
The disclosed subject matter "relate[ s] to a clip for attaching decking,
and more particularly, ... to a gangable composite clip for attaching decking
and method for making." Spec. 2, 11. 3-5. Claim 1, the sole independent
claim, is reproduced below, with emphasis added:
Appeal2014-001400
Application 12/592,495
1. A gangable composite clip for attaching
decking, comprising:
a) a bottom; and
b) a top;
wherein said bottom 1s made of a first
material;
wherein said top is made of a second
material;
wherein said first material of said bottom is
different from said second material of said top;
wherein said first material of said bottom
engages in said second material of said top during
manufacturing so as to permanently attach said
top in direct intimate contact to said bottom and
form said gangable composite clip without a need
for any other means to attach said bottom to said
top;
wherein said gangable composite clip has a
mounting through bore;
wherein said top has a plurality of bonding
through bores;
wherein each bonding through bore in said
top has:
a) a lower portion; and
b) an upper portion;
wherein said upper portion of each bonding
through bore in said top extends upwardly from
said lower portion of an associated bonding
through bore in said top; and
wherein said upper portion of each bonding
through bore in said top is wider than said lower
portion of an associated bonding through bore in
said top so as to allow said first material of said
2
Appeal2014-001400
Application 12/592,495
bottom to flow through said lower portion of said
associated bonding through bore in said top and
captively engage in said upper portion of said
associated bonding through bore in said top
during manufacturing so as to permanently attach
said top in direct intimate contact to said bottom
and form said gangable composite clip without a
need for any other means to attach said bottom to
said top.
REJECTIONS ON APPEAL
1. Claims 1-5, 9, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Snell (US 7,984,599 B2, issued July 26, 2011) and Adams
(US 4, 106,962, issued Aug. 15, 1978).
2. Claims 6, 7, 10, and 11 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Snell, Adams, and Eberle (US 6,851,884 B2, issued Feb.
8, 2005).
3. Claims 16-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Snell, Adams, Eberle, and Ladouceur (US 3,845,860,
issued Nov. 5, 1974).
DISCUSSION
Rejection I -The rejection of claims 1-5, 9,
and 21under35 U.S.C. § 103(a)
For this Rejection, Appellant argues independent claim 1 and does not
separately argue the dependent claims. Br. 8-20. Thus, we address only
claim 1, with claims 2-5, 9, and 21 standing or falling with claim 1. See 37
C.F.R. § 41.37 (c)(l)(iv) (2012). For claim 1, the Examiner relied on Snell
for most limitations, but stated that Snell "fails to disclose that the top has a
3
Appeal2014-001400
Application 12/592,495
plurality of bonding through bores or that the top and bottom are connected
in the manner recited in claim[] 1." Final Act. 3 (dated Aug. 1, 2012). The
Examiner found, however, that Adams "teaches the use of a method (see
abstract) of bonding a metal part (10; Fig. 5) to a plastic part (18) through
the use of a bonding through bore (aperture 14; Fig. 5)." Id. at 4. The
Examiner concludes that it would have been obvious "to modify the device
of Snell to include a plurality of through bores, as taught by Adams, in the
top in order to bond the bottom to the top in an integral manner, for the
purpose of providing a more secure connection between the two
components." Id. at 4.
First, Appellant highlights the claim language shown in emphasis
above, specifically the phrases "during manufacturing" in each passage. Br.
15, 16. Appellant argues that these two passages "indicate that the engaging
activity occurs during manufacturing, and not during use, while [the
Examiner] indicates that the top and the bottom of Snell are meant to be
coupled together as one during use, and not during manufacturing,
completely contrary to the above two limitations of claim 1." Id. at 15. 1
Appellant also argues that the first passage "indicates that the permanent
attachment activity occurs during manufacturing, and not after assembly
or manufacturing, while [the Examiner] indicates that the top and the
1 In the Rejection, the Examiner found, for example, that "Snell does
however disclose that the top (120) and the bottom (110) are meant to be
coupled together 'as one during use of the fastener 100'" and that the "top
and bottom sections of Snell are not intended to be separated at any point
after they have been assembled together (i.e. after manufacturing)." Final
Act. 3 (quoting Snell, col. 5, 11. 1-5); see also Br. 14--15 (quoting, with
emphasis, various statements from Final Act. 3, 10-11 ).
4
Appeal2014-001400
Application 12/592,495
bottom of Snell are meant to be permanently attached together during use -
after assembly (i.e., after manufacturing) of the fastener/clip and not
during manufacturing." Id. at 16.
The Examiner responds that the Specification "does not assign or
suggest a particular definition to the term 'manufacturing' or otherwise
indicate that this term is used in a manner other than its ordinary and
customary meaning" before the Examiner then provides a definition of
"manufacturing" as including "'the act or process of producing something'
or 'something made from raw materials by hand or by machinery."' Ans. 2-
3 (quoting http://www.merriam-webster.com/ dictionary/manufacturing).
The Examiner states that, "regarding the clip of Snell, ... the limitation of
'during manufacturing' can refer to any point in time during the act of
producing the clip," which "includes any portion of this process that can be
performed by hand and, accordingly, can include any point in time prior to
the use of the clip." Id. at 3. According to the Examiner, "the step of
assembling the two portions (the top and bottom) together to form a single
clip can be considered to be a step in the manufacturing process of the clip."
Id.
We are not apprised of error based on Appellant's argument. As an
initial matter (and as noted by the Examiner (Ans. 4)), the argument appears
directed not at the proposed combination of Snell and Adams, but rather, at
Snell alone. See Br. 14--16. Nonobviousness, however, cannot be
established by attacking the references individually when the rejection is
based upon a combination of prior art. See In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986). To the extent Appellant addresses the
proposed combination, the scope of apparatus claim 1 is not structurally
5
Appeal2014-001400
Application 12/592,495
limited by the "during manufacturing" language in the two identified
passages. See, e.g., In re Mason, 244 F.2d 733, 735 (CCPA 1957) (holding
that certain language in a wherein clause "does not define any structure and
accordingly cannot serve to distinguish claims 10 and 11, which are not
process claims, from the reference"). Here, Appellant has not shown that the
apparatus resulting from the proposed combination lacks any structural
features recited in the two passages-for example, that certain elements
"engage[]," are "permanently attach[ed]," or are "in direct intimate contact."
Rather, Appellant argues that the recited features would not be present at the
point in time allegedly required by the "during manufacturing" language.
See, e.g., Br. 15 ("The issue at the crux of the arguments that we are faced
with here is one of temporal designation, i.e., when do things occur.").
Moreover, to the extent "during manufacturing" does structurally limit the
passages, we are not apprised of error in the Examiner's construction of that
phrase (as including the step of assembling the two portions), or the
application of that construction to the prior art. See Final Act. 3; Ans. 2-3.
Thus, Appellant has not shown that either passage structurally distinguishes
over the combination relied upon to reject claim 1.
Second, Appellant argues that modifying the clip of Snell based on
Adams "so as to have the cap portion 120 of [Snell] be attached
permanently, and in direct intimate contact, to the base portion 110 of
[Snell], before use and not during or after use (again another temporal
issue), would prevent the clip of [Snell] from functioning in its intended
manner." Br. 18. According to Appellant, the device in Snell is intended to
function such that cap portion 120 moves "downwardly relative to the base
portion 110 so as to have the teeth 125 of the cap portion 120 move
6
Appeal2014-001400
Application 12/592,495
downwardly and bite into the lower internal surface wood 240 of the groove
230 when the screw 150 is tightened during or after use and not before
use." Id. (citing Snell, col. 4, 11. 41--43). Appellant argues that, if cap
portion 120 was permanently attached to base portion 110, there would be
no space between those structures for that movement to occur. Id. at 19.
As noted by the Examiner (Ans. 5-7), Snell does not disclose that cap
portion 120 must move downward relative to base portion 110, but rather,
discloses that teeth 125 of cap portion 120 move down relative to surface
240. See Snell, col. 4, 11. 41--43; Fig. 2. Thus, as stated by the Examiner
(Ans. 6), the assembly-with cap portion 120 and base portion 110
remaining in the same relative positions-moves downward such that teeth
125 "bite" into surface 240. See Snell, col. 4, 11. 41--43. This is supported
by the fact that, as noted by the Examiner, screw 150 comes in direct contact
with base portion 110 rather than cap portion 120 and thus, tightening of
screw 150 moves base portion 110 and cap portion 120 downward together
rather than moving cap portion 120 into base portion 110. See Ans. 6 (citing
Snell, Fig. 2). Thus, modifying base portion 110 and cap portion 120 based
on Adams such that those structures were permanently attached would not
render Snell unable to function in its intended manner, as asserted.
Third, Appellant contends that "a person of ordinary skill in the deck
clip art would not have reasonably consulted Adams and applied it[]s
teachings of chemical manufacturing in seeking a solution to the problem
that the advantageous distinctive feature of claim 1 has solved." Br. 17.
According to Appellant, "Adams therefore, cannot be considered 'analogous
art' and cannot be used in a holding of obviousness." Id.
7
Appeal2014-001400
Application 12/592,495
The Examiner states that "Adams is related to the particular problem
of connecting a plastic bottom member to a metal top member, as is the case
in both Appellant's instant application as well as in Snell." Ans. 5
(referencing various findings from Final Act. 4).
"Two separate tests define the scope of analogous prior art: ( 1)
whether the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved." In re Bigio, 381F.3d1320,
1325 (Fed. Cir. 2004). A prior art reference that satisfies at least one of
these tests can be considered analogous art. For the Examiner's reasons as
set forth above, we agree that Adams is "reasonably pertinent to the
particular problem with which the inventor is involved." Id. Here,
Appellant focuses on the "field of endeavor" test, implicitly asserting that
Adams is in the field of "chemical manufacturing" whereas Snell is in the
field of "deck clip[ s]." Br. 17. Appellant does not, however, persuasively
demonstrate that Adams is not "reasonably pertinent to the particular
problem with which the inventor is involved." Bigio, 381 F.3d at 1325.
Fourth, Appellant argues that "Snell's clip is two pieces that are
normally separate from each other and that snap together and often come
apart, whereas the clip of the embodiments of the present invention is
laminated together through the countersunk through bores therethrough."
Br. 19. According to Appellant, "Snell's clip ... is not a solid part, whereas
the clip of the embodiments of the present invention is injected forming two
materials as one that cannot be separated." Id.
8
Appeal2014-001400
Application 12/592,495
As noted by the Examiner, Appellant addresses Snell individually.
See Ans. 7 (citing In re Keller, 642 F.2d 413 (CCPA 1981); In re Merck &
Co., 800 F.2d 1091 (Fed. Cir. 1986)). Appellant has not shown that claim 1
distinguishes over the proposed combination of Snell and Adams.
For these reasons, we sustain the rejection of claim 1 as unpatentable
over the combined teachings relied upon by the Examiner. Claims 2-5, 9,
and 21 fall with claim 1.
Rejection 2 - The rejection of claims 6, 7, 10,
and 11under35U.S.C.§103(a)
A. Claims 6 and 7
Claim 6 recites "[t]he clip of claim 4, wherein said transverse portion
is generally octagon-shaped in plan view" and claim 7 recites "[t]he clip of
claim 6, wherein one axis of said transverse portion is longer than the other
axis of said transverse portion so as to be asymmetrical." Br. 28 (Claims
App.). In rejecting these claims, the Examiner relied on, inter alia, Figure 6
of Eberle, stating that "a change in the shape of a prior art device, wherein
there is no structural or functional significance disclosed as to the specific
shape of an element, is a design consideration within the skill of the art."
Final Act. 6-7 (citing In re Dailey, 357 F.2d 669 (CCPA 1966).
Without identifying the claim being addressed, Appellant argues that
"the octagonal shape of the clip of the embodiments of the present invention
is a design function needed to curve the clips for installation" and that "[t]he
first clip of the embodiments of the present invention is installed, then the
remainder of the clips of the embodiments of the present invention is pulled
up breaking the connection." Br. 22. Appellant argues that "[w]ithout this
octagonal shape, all of the clips of the embodiments of the present invention
9
Appeal2014-001400
Application 12/592,495
would fit in the groove in the decking, thus making it hard to separate from
each other." Id.
The Examiner states that the Specification "does not discuss any
particular significance of the octagonal shape of the clip" and that "there has
been no evidence to show that this particular shape would yield any novel or
unexpected results." Ans. 8. The Examiner also states, "as discussed in the
rejection of claim 6 on pages 6-7 of the Final Rejection, deck clips with an
octagonal shape are well known in the art, as taught by Eberle." Id.
In the context of a rejection based on design choice, the relevant issue
is whether the alleged differences between the claimed invention and the
prior art "result in a difference in function or give unexpected results." See
In re Rice, 341F.2d309, 314 (CCPA 1965). Here, we are not persuaded by
Appellant's assertions because they lack evidentiary support. See In re Chu,
66 F.3d 292, 298-99 (Fed. Cir. 1995) (reversing an obviousness rejection
based on evidence of unexpected results and distinguishing cases affirming
rejections in which the parties failed to provide any evidence). Moreover, as
noted by the Examiner, Figure 6 of Eberle discloses the additional
limitations in claims 6 and 7. We see no error, based on Appellant's
argument, in the Examiner's conclusion that
it would have been obvious to one having ordinary skill in the
art at the time the invention was made to modify the device
disclosed by Snell wherein the transverse portion is octagonal-
shaped as taught by Eberle as Snell does not disclose any
structural or functional significance as to the specific cross-
sectional shape of the transverse portion of the clip, other than
that the clip is non-rotatably received within adjacent panels,
and as such practice is a design consideration within the skill of
the art which would yield expected and predictable results.
10
Appeal2014-001400
Application 12/592,495
Final Act. 7; see also KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) ("[W]hen a patent claims a structure already known in the prior art
that is altered by the mere substitution of one element for another known in
the field, the combination must do more than yield a predictable result.").
For these reasons, we sustain the rejection of claims 6 and 7.
B. Claims 10 and 11
Claim 10 recites "[t]he clip of claim 9, wherein said mounting through
bore has a countersink" and claim 11 recites "[t]he clip of claim 10, wherein
said countersink of said mounting through bore is disposed through said top
for setting the head of a mounting screw flush with said top." Br. 29
(Claims App.). For the "countersink" in each claim, the Examiner identified
bevel cut 75 in Figure 6 of Eberle. See Final Act. 7, 8.
Without identifying the claim being addressed, Appellant argues that
"[t]he countersink of Eberle is only to keep the screw flush with the top of
the clip, whereas the clip of the embodiments of the present invention uses
the countersunk through bores to combine the two materials as one." Br. 22.
The Examiner responds that "the countersink of Eberle was relied
upon in the rejection of claims 10 and 11 ... to teach a countersink in the
mounting through bore," and that "Appellant's argument is related to the
bonding through bores and thus is not applicable to the rejection." Ans. 8.
For the Examiner's reasons as set forth above, we are not apprised of
error based on Appellant's argument. Thus, we sustain the rejection of
claims 10 and 11.
11
Appeal2014-001400
Application 12/592,495
Rejection 3-The rejection of claims
16--20 under 35 U.S.C. § 103(a)
A. Claims 16 and 18-20
Appellant does not separately argue claims 16 or 18-20, which
depend from claim 1. Br. 23-26. Thus, for the reasons discussed above, we
sustain the rejection of claims 16 and 18-20.
B. Claim 17
Claim 17 recites the clip of claim 16 wherein, inter alia, "said
connectors are of said first material." Br. 29 (Claims App.). 2 In rejecting
claim 17, the Examiner relied on element 52 in Ladouceur but stated that
"Snell in view of Adams, Eberle and Ladouceur does not explicitly disclose
that the connectors are of said first material." Final Act. 9. The Examiner
concluded that it would have been obvious
to modify the device of Snell in view of Adams, Eberle and
Ladouceur such that the connectors are of the first material, for
the purpose of easing manufacturing and assembly, since it has
been held to be within the general skill of a worker in the art to
select a known material on the basis of its suitability for the
intended use as a matter of obvious design choice.
Id. (citing In re Leshin, 277 F.2d 197 (CCPA 1960)).
Appellant contends that In re Leshin held it to be "within the general
skill of a worker in the art to select a known material on the basis of its
suitability for the intended use as a matter of obvious design choice, only,
and only if, the known material is selected from a group of the known
materials." Br. 25. Appellant asserts that Leshin "holds that the selection of
the material must be made from a group of similar materials." Id.
2 The phrase "first material" refers to a limitation in claim 1 reciting
"wherein said bottom is made of a first material." Br. 27 (Claims App.).
12
Appeal2014-001400
Application 12/592,495
The Examiner states that "Appellant has not offered any specific
argument as to why the selection of the first material (the material of the
bottom) would not have been a suitable or obvious material choice for the
connectors of claim 17." Ans. 9. The Examiner also states that the
Specification "does not discuss any particular significance of the material of
the connectors being the same material as that of the bottom" and that "there
has been no evidence to show that this particular material would yield any
novel or unexpected results." Id.
Although Appellant is correct that Leshin did not "hold that the
selection of any material suitable for [an] intended use is obvious" (Br. 25),
here, claim 17 does not require any specific material (e.g., plastic) for the
"first material." Cf Br. 28 (showing claim 2, which recites "wherein said
first material of said bottom is plastic"). Instead, the relevant additional
limitation of claim 1 7 requires that the "connectors" are of the same material
as the "bottom" recited in claim 1. Because claim 1 7 does not require a
specific material, the argument based on Leshin does not apprise us of error.
Stated differently, because claim 17 does not require a specific material,
Appellant has not shown that the specific material required is not a known
material for the intended use at issue.
Moreover, Appellant has not shown error in the Examiner's
alternative reasoning to fabricate the "connectors" of Ladouceur from the
same material as the "bottom": i.e., "for the purpose of easing manufacturing
and assembly" (Final Act. 9) and to "limit the number of different materials
used in manufacturing of the clip assembly" (Ans. 9-10). For these reasons,
we sustain the rejection of claim 1 7.
13
Appeal2014-001400
Application 12/592,495
DECISION
We AFFIRM the decision to reject claims 1-7, 9-11, and 16-21 under
35 U.S.C. § 103(a).
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
14