FURUYA METAL CO., LTD.

Patent Trials and Appeals BoardMar 30, 2021

2020002423 (P.T.A.B. Mar. 30, 2021)

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. 15/917,259 03/09/2018 Tomohiro MARUKO 009500-000052 1406 78198 7590 03/30/2021 Studebaker & Brackett PC 8255 Greensboro Drive Suite 300 Tysons, VA 22102 EXAMINER GAMINO, CARLOS J ART UNIT PAPER NUMBER 1735 NOTIFICATION DATE DELIVERY MODE 03/30/2021 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@sbpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TOMOHIRO MARUKO, TOMOAKI MIYAZAWA, and YUICHI IWAMOTO Appeal 2020-002423 Application 15/917,259 Technology Center 1700 Before TERRY J. OWENS, BRIAN D. RANGE, and JANE E. INGLESE, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claim 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Furuya Metal Co., LTD (Appeal Br. 2). Appeal 2020-002423 Application 15/917,259 2 CLAIMED SUBJECT MATTER Claim 1, which is the sole claim, is directed to a tool for friction stir welding. Claim 1 is reproduced below: 1. A tool for friction stir welding comprising: a tool part abutting a workpiece while being rotated; a shank part configured to fix the tool part to a front end of the shank part and be rotated together with the tool part; and a screw having a groove formed at its outer periphery thereof for fixing the tool part to the front end of the shank part, wherein portions in the tool part and the shank part at which the tool part and the shank part contact each other have at least one from between a convex section and a concave section, in order to enable movement of the tool part with respect to the shank part in a direction parallel to an axis of rotation of the shank part while movement of the tool part with respect to the shank part in a direction around the axis of rotation of the shank part is restricted, by the convex section and the concave section of the tool part and the shank part being fitted to each other, the shank part has a shank part hole section wherein the screw is capable of reaching the tool part fixed to the front end of the shank part passing through the shank part, the tool part has a tool part screw hole section having a groove, at an inner periphery, meshing with the groove of the outer periphery of the screw passing through the shank part hole section, and after the convex section and the concave section of the tool part and the shank part are fitted to each other, the tool part is fixed to the front end of the shank part, by the groove of the outer periphery of the screw passed through the shank part hole section meshing with the groove of the inner periphery of the tool part screw hole section, and an inner periphery of the shank part hole section having a groove with an inner diameter larger than an inner diameter of the tool part screw hole section, and capable of screwing in a tool part detachment screw having a groove on an outer periphery of the tool part detachment screw meshing with the Appeal 2020-002423 Application 15/917,259 3 groove of the inner periphery of the shank part hole section such that the tool part is pushed out by the tool part detachment screw and the tool part becomes detached from the shank part. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Osawa US 2012/0093602 A1 Apr. 19, 2012 Miyahara US 2014/0217151 A1 Aug. 7, 2014 REJECTION Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1 103 Miyahara, Osawa OPINION Miyahara discloses a friction stir welding tool (10) comprising a columnar holder (16) having a through-hole (15) for insertion of a bolt (18) having, at its distal end, a male screw part (17) which screws into a female screw part (12) of a probe (13) having at its distal end a pin part (11) which directly contacts a material (32) to be welded (¶ 27; Figs. 1, 5). The front end of the holder (16) has holder-side recesses (27) configured to fit with probe-side protrusions (24), and holder-side protrusions (28) configured to fit with probe-side recesses (25), such that when the bolt (18)’s head (18a) abuts the rear end of the holder (16), the probe (13) is firmly attached to the holder (16) (¶¶ 36, 41; Figs. 2, 4). When the probe (13) has become worn, “the used probe 13 can be easily separated from the holder 16 because they are coupled together merely by way of fitting engagement between the probe-side protrusions 24 and recesses 25, respectively, with the holder-side recesses 27 and protrusions 28” (¶ 46). Appeal 2020-002423 Application 15/917,259 4 Osawa discloses a machine head replaceable rotating tool (10) such as a cutter, mill, drill, or tap (¶ 21). The tool (10) comprises a shank (12) to which a machining head (14) is attached by mating fastening male screw threads (18) on the machining head (14) with fastening female screw threads (20) in the shank (12) (¶ 35; Fig. 5(a)). The end of the shank (12) opposite the machining head (14) has a through-hole (42) through which, to remove the machining head (14), a removal adding pin (30) with male screw threads (36) can be threadably engaged with removal female screw threads (46) on the inside of the shank (12) to push the machining head (14) out of the shank (12) after the fastening male screw threads (18) on the machining head (14) have been loosened from the fastening female screw threads (20) in the shank (12) (¶ 40; Fig. 5(b)). The Examiner finds that “Osawa teaches a means for solving a stuck machining/tool head that one of ordinary skill in the art could obviously apply to any other shank and tool head” (Ans. 4), Miyahara’s term “easily removed” at best “is a relative term used by Miyahara to describe the invention when compared [to] Miyahara’s knowledge of the prior art at the time of filing” (id.), and “any FSW [(friction stir welding)] tool head and shank connection with the generically claimed concave and convex sections may be in need of the claimed tool part detachment screw. Therefore, there is no reason to believe that the Miyahara tool is incapable of being stuck since it too has concave and convex features” (id.). Thus, the Examiner concludes that it would have been obvious to one of ordinary skill in the art “to incorporate the Osawa removal aiding pin concept into Miyahara in order to facilitate the removal of the probe by using a screw to push out the probe” (Final 4). Appeal 2020-002423 Application 15/917,259 5 The Examiner does not provide evidence that Miyahara’s probe (13) which, as stated by Miyahara, can be separated easily from the holder (16) (¶ 46), is capable of being stuck such that removing it requires a detachment screw. The Examiner’s mere speculation to that effect is insufficient for establishing a prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.”). Accordingly, we reverse the rejection. CONCLUSION The Examiner’s decision to reject claim 1 is reversed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 103 Miyahara, Osawa 1 REVERSED