Ex Parte WhipstockDownload PDFPatent Trial and Appeal BoardNov 28, 201211943073 (P.T.A.B. Nov. 28, 2012) Copy Citation 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. 11/943,073 11/20/2007 Craig Whipstock 81167540(19013) 2795 57444 7590 11/29/2012 AUTOMOTIVE COMPONENTS HOLDINGS LLC C/O MACMILLAN, SOBANSKI & TODD, LLC ONE MARITIME PLAZA, FIFTH FLOOR 720 WATER STREET TOLEDO, OH 43604-1853 EXAMINER ALEXANDER, MELANIE P ART UNIT PAPER NUMBER 3727 MAIL DATE DELIVERY MODE 11/29/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CRAIG WHIPSTOCK ____________ Appeal 2010-011171 Application 11/943,073 Technology Center 3700 ____________ Before GAY ANN SPAHN, BRETT C. MARTIN, and RICHARD E. RICE, Administrative Patent Judges. RICE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Craig Whipstock (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-15. Appellant canceled claims 16- 19. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appeal 2010-011171 Application 11/943,073 2 The Claimed Subject Matter The claimed subject matter “relates in general [to] a fastener socket, and in particular to, a magnetic fastener socket for a power tool.” Spec. 1, para. [0005]. Claim 1, reproduced below with italics for emphasis, is the sole independent claim and is representative of the subject matter on appeal: 1. A socket assembly for receiving and retaining a head of a fastener, the socket assembly comprising: a socket body having a longitudinal interior chamber defined by interior walls, the interior chamber extending axially within the socket body to a receiving end of the socket body, the interior walls of the interior chamber being configured to a shape of the head of a fastener for receiving the head of the fastener at the receiving end; a magnet disposed within the interior of the socket body, the magnet being selectively movable in an axial direction within the interior chamber of the of the [sic]1 socket body; and a fastening member radially engaged to the socket body, the fastening member having a securing position to secure the magnet within the socket body at a selected fixed axial position in relation to the head of the fastener inserted within the receiving end and a loosened position to adjust the magnet to a different fixed axial position in response to a change in an axial length of the socket body. The Rejections The following Examiner’s rejections are before us for review: 1. claims 1, 3, 4, and 13 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hsieh (US 5,927,160, iss. Jul. 27, 1999) and Barmore (US 5,520,075, iss. May 28, 1996); 1 Assuming Appellant meant just one “of the,” this informality should be corrected. Appeal 2010-011171 Application 11/943,073 3 2. claim 2 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Hsieh, Barmore, and Dobson (US 2002/0023521 A1, pub. Feb. 28, 2002); 3. claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Hsieh, Barmore, and Stillwagon (US 3,707,894, iss. Jan. 2, 1973); 4. claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Hsieh, Barmore, and Anderson (US 6,164,168, iss. Dec. 26, 2000); 5. claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hsieh, Barmore, and Cook (US 6,065,909, iss. May 23, 2000); 6. claims 7-10 and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hsieh, Barmore, Cook, and Vasichek (US 5,277,088, iss. Jan. 11, 1994); and 7. claims 7-11 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hsieh, Barmore, Cook, and Huebschen (US 4,919,020, iss. Apr. 24, 1990). OPINION Rejection 1 The Examiner finds that “Hsieh discloses all of the claimed subject matter [of claims 1, 3, 4 and 13] except for the fastening member being a set screw in a threaded hole.” Ans. 3.2 In particular, the Examiner finds that 2 Dependent claim 3 recites “[t]he socket assembly of claim 1 wherein the fastening member includes a set screw,” and dependent claim 4 recites “[t]he Appeal 2010-011171 Application 11/943,073 4 “[t]he device of Hsieh is capable of regrind after wear, capable of being adjusted to the length of a fastener after a regrind operation and capable of being adjusted in response to a change in axial length of the body.” Id. at 4.3 The Examiner also finds that “Barmore discloses a socket having a movably adjustable fastener engaging member ‘54’ secured in a fixed position by a set screw ‘56’ and adjustable to a different fixed position.” Id. (citing Barmore, col. 2, ll. 54-57, fig. 1). The Examiner concludes that “[i]t would have been obvious to one having ordinary skill in the art to form the fastening member of Hsieh as a set screw in a threaded opening to secure the fastener engaging member in an adjustably fixed position as taught by Barmore.” Ans. 4. More succinctly, the Examiner proposes “[f]orming the pin and slot of Hsieh as a set screw.” Ans. 7.4 Appellant argues, and we agree, that claim 1 requires the capability to adjust and secure the magnet at different axial positions in response to a change in an axial length of the socket body, whereas Hsieh discloses a socket with a slidably-mounted magnet that cannot be secured in any axial position, much less in response to a change in an axial length of the socket body. App. Br. 7; Hsieh, col. 1, ll. 26-28. We also agree with Appellant that drive element 54 of Barmore, while adjustable and securable at different socket assembly of claim 3 wherein . . . a threaded hole . . . receives the set screw for securing the magnet at a respective axial position within the interior chamber.” 3 Dependent claim 13 recites “[t]he socket assembly of claim 1 wherein the receiving end of the socket body receiving the head of the fastener is capable of regrind after wear, the magnet being selectively moved in an axial direction within the socket body for adjusting to the length of the head of the fastener after a respective regrind operation.” 4 We note that Hsieh’s magnet slides axially in slots between locating pins (20) and sloping step (13). Hsieh, col. 2, ll. 26-36, figs. 6 and 7. Appeal 2010-011171 Application 11/943,073 5 axial positions by set screw 56 to accommodate different types of fasteners (e.g., fasteners with or without cavities in their end surfaces for engaging drive element 54), is not adjustable or securable in response to a change in an axial length of the socket body. App. Br. 7-8. As argued by Appellant, “the head of the fastener in Barmore recesses to the same position within the socket regardless of wear on the socket or for the sake of argument, if a regrind operation occurred.” Id. We therefore agree with Appellant that “Barmore describes securing a driver bit at a same position in a socket whereas Hsieh describes a floating magnet within a socket,” and thus that “Hsieh and Barmore are not combinable in a manner that suggests a magnet that is releasably securable in a socket head for adjusting the axial position of the magnet in response to a change in an axial length of the socket body.” App. Br. 8. Thus, we find that the Examiner’s reasoning for combining Hsieh with Barmore, i.e., “to form the fastening member of Hsieh as a set screw in a threaded opening to secure the fastener engaging member in an adjustably fixed position as taught by Barmore” (Ans. 4), does not have a rational underpinning. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’”) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). Accordingly, we do not sustain the Examiner’s rejection of claims 1, 3, 4, and 13. Rejections 2-7 In the remaining rejections, the Examiner applies Hsieh and Barmore Appeal 2010-011171 Application 11/943,073 6 in combination with one or more other references (Dobson, Stillwagon, Anderson, Cook, Vasichek and Huebschen) to reject claims as obvious. Ans. 4-6. Because none of these other references cures the deficiencies of Hsieh and Barmore as discussed supra in connection with the rejection of claims 1, 3, 4 and 13, we do not sustain the remaining rejections. SUMMARY We reverse the rejection of claims 1-15. REVERSED mls Copy with citationCopy as parenthetical citation