Ex Parte Burton et al

Patent Trial and Appeal Board

Oct 13, 2017

12404443 (P.T.A.B. Oct. 13, 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.
12/404,443 03/16/2009 Kurt A. Burton 08-1213-US-NP 1806
63759 7590 10/17/2017
DTTKFW YFF EXAMINER
YEE & ASSOCIATES, P.C. OMGBA, ESSAMA
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
3746
NOTIFICATION DATE DELIVERY MODE
10/17/2017 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
patentadmin @ boeing. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KURT A. BURTON, MICHAEL P. MATLACK,
HERBERT L. BOMMER, and JOHN A. BAUMANN1
Appeal 2016-004504
Application 12/404,443
Technology Center 3700
Before STEFAN STAICOVICI, JAMES P. CALVE, and
WILLIAM A. CAPP, Administrative Patent Judges.
CALVE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Final Office
Action rejecting claims 1—8, 10-20, and 26. Appeal Br. 6—13. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify The Boeing Company as the real party in interest.
Appeal Br. 2.
Appeal 2016-004504
Application 12/404,443
CLAIMED SUBJECT MATTER
The claims are directed to an adapter apparatus that can be attached
between a spindle of a power tool and the tool to measure various types of
loads during operation of the tool. Spec. 1 8. The adapter may include
strain gauges, accelerometers, or other components for measuring loads. Id.
Claims 1 and 6 are independent. Representative claim 1 is below.
1. An apparatus comprising:
a machine module comprising a first housing having a
power tool interface configured to be connected to a power tool,
the first housing further comprising a first instrument module
interface opposite the power tool interface and connected to an
instrument module, the first housing further comprising a
cooling system configured to circulate coolant through the
machine module;
the instrument module comprising a second housing
having a machine module interface connected to the first
instrument module interface, the second housing further
comprising a tool module interface opposite the machine
module interface, the instrument module further comprising a
number of sensors connected to the second housing and
configured to measure a number of operating conditions and
further configured to generate a number of signals responsive to
measuring the number of operating conditions; and
a tool module comprising a third housing having a
second instrument module interface connected to the tool
module interface, and the third housing further including a tool
interface opposite the second instrument module interface and
configured to connect a tool to the tool module; and
the cooling system, the machine module, the instrument
module, and the tool module further configured such that when
any of the instrument module, the tool module, or both the
instrument module and the tool module is removed from the
apparatus, loss of coolant in the cooling system is avoided, but
when the machine module is removed from the power tool, the
coolant is lost at least in part.
2
Appeal 2016-004504
Application 12/404,443
REJECTION
Claims 1—8, 10-20, and 26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Machino (US 4,924,713, iss. May 15, 1990) in view of
Appellants’ Admitted Prior Art (“AAPA”) in the Specification 137.
ANALYSIS
Appellants argue claims 1—8 and 10-20 as a group, and separately
argue claim 26. Appeal Br. 7—13. We select claim 1 as the representative
claim, with claims 2—8 and 10—20 standing or falling with claim 1. 37
C.F.R. § 41.37(c)(l)(iv). We separately address arguments for claim 26.
Claims 1—8 and 10—20
The Examiner finds that Machino discloses a power tool system, as
recited in claim 1, except the machine module lacks a cooling system. Final
Act. 2—3. The Examiner finds that Appellants’ Specification admits that it is
known to circulate coolant through such a power tool system and determines
it would have been obvious to a person of ordinary skill in the art to provide
a coolant system in the machine module of Machino’s power tool system to
cool the part of the adapter that connects to the spindle and therefore needs
cooling. Id. at 3; Ans. 6. The Examiner cites Appellants’ Admitted Prior
Art (AAPA) in the Specification, which describes how coolant is typically
lost when an adapter is removed from the spindle. Spec. 133; Final Act. 3;
Ans. 5. The Examiner reasons that a skilled artisan would understand that
coolant is lost when an adapter is removed from the spindle because coolant
is circulated to the portion of the adapter that is connected to the spindle and
therefore a skilled artisan would confine the coolant flow to that portion of
Machino’s adapter that connects to the spindle, i.e., tool holder 62, which
corresponds to the claimed “machine module.” Ans. 5, 6, 8.
3
Appeal 2016-004504
Application 12/404,443
Appellants argue that paragraph 37 of the Specification discloses the
use of a cooling system for a one-piece adapter and spindle but does not
discloses a cooling system for a modular adapter and “machine module” as
claimed, and nothing in Appellants’ Specification admits that a modular
design that limits coolant flow to a machine module or to an upper part of
the adapter was known in the prior art. Appeal Br. 7—9; Reply Br. 2, 4.
These arguments are not persuasive for several reasons. First, they
amount to individual attacks on the prior art teachings when the Examiner
has relied on the combined teachings of Machino and the AAPA. In this
regard, the Examiner relies on Machino to disclose a modular adapter that
comprises machine module (tool holder 62), instrument module (adapter 72),
and tool module (chuck 78). Final Act. 2—3. The Examiner also finds that
Machino teaches these elements as being modular because they attach and
detach from one another, e.g., adapter 72 is attachable to tool holder 62 via
attaching shaft 74 (Machino, 8:9-13), chuck 78 is detachable from adapter
72 (id. at 8:19-21). Id.: Ans. 5—6, 8—9. The Examiner relies on Appellants’
AAPA in paragraph 37 of the Specification for teaching the use of a cooling
system to circulate coolant through a portion of an adapter and a spindle of a
tool. Final Act. 3; Ans. 8. The Examiner reasons that it would have been
obvious to a skilled artisan, in light of the teachings of the AAPA, to provide
such a cooling system on Machino to circulate coolant through the portion of
Machino’s adapter that connects to the spindle and thus needs to be cooled,
i.e., tool holder 62, which corresponds to the claimed machine module. See
Final Act. 3; Ans. 5—6, 8. The Examiner reasons that a skilled artisan would
not have been motivated, based on the AAPA, to provide any coolant to the
tool or instrument modules, which do not need to be cooled. Final Act. 4—5.
4
Appeal 2016-004504
Application 12/404,443
The Examiner’s reason for adding a cooling system to Machino to
cool the parts of the adapter that connect to the spindle and therefore need
cooling is supported by a rational underpinning of the AAPA’s teaching to
cool an adapter and spindle, to which the adapter attaches, during operation.
See Spec, 8, 37; Final Act. 3; KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 417 (2007) (using a known technique to improve similar devices in the
same way is obvious unless beyond the level of ordinary skill); Ans. 6.
Appellants also argue that the Examiner’s determination that a skilled
artisan would have known to provide coolant to the part of the adapter that is
joined to the spindle and would have understood this portion as a “machine
module” of the claimed modular adapter is impermissible hindsight. Appeal
Br. 8—10. Appellants argue that neither Machino nor their Specification has
identified coolant leakage as a problem known in the art because Appellants
identified this problem in discussing the disadvantages of one-piece adapters
known in the prior art and solved this problem with a modular adapter. Id. at
10-11. Appellants also argue that Machino’s description of tool holder 62
does not indicate that any of tool holder 62, adapter 72, or chuck 78 may be
removed separately from the power tool. Id. at 12.
Appellants’ argument regarding hindsight is not persuasive because
the AAPA discloses that cooling systems were typically used to cool part of
the adapter and the spindle, as discussed above. The Examiner found that
the part of Machino’s adapter that attaches to the spindle is tool holder 62,
which corresponds to the claimed machine module. Appellants have not
apprised us of error in those findings. See In re Cree, 818 F.3d 694, 702, n.3
(Fed. Cir. 2016) (hindsight argument is of no moment where the Examiner
provides a sufficient, non-hindsight reason to combine the references).
5
Appeal 2016-004504
Application 12/404,443
We are not persuaded that the claimed subject matter derived from a
problem that Appellants discovered and that was unknown in the prior art.
Appellants disclose that “[cjoolant is typically circulated through a portion
of the adapter and the spindle in the friction stir welding tool” and “coolant
is typically lost” when the adapter is removed for servicing or repair. Spec.
137 (emphasis added). Appellants further disclose that “leakage of coolant
occurs from the spindle” and “[t]his spillage may be from around three
gallons to around five gallons upon removing an adapter from a friction stir
welder.” Id. 140. These disclosures of coolant leakage relate to prior art
adapters, and thus also relates to known leakage problems of such adapters.
The Examiner does not rely on Appellant’s disclosure of the prior art
problem of coolant leakage in adapters to combine the teachings of Machino
and the AAPA. Instead, the Examiner finds that Machino teaches a modular
adapter, as claimed, and determines it would have been obvious to a skilled
artisan to include a cooling system on the module of Machino’s adapter that
connects to the spindle based on the AAPA’s teachings that cooling systems
are used to cool adapters and spindles. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 420 (2007) (motivation to combine can be found in “any need
or problem known in the field of endeavor at the time of the invention and
addressed by the patent”); In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006)
(skilled artisan need not be motivated to combine the prior art for the same
reason as an inventor). The claimed system merely confines leakage to the
machine module, rather than eliminating the problem entirely.2 Spec. | 60.
Thus, we sustain the rejection of claims 1—8 and 10-20.
2 Appellants disclose cooling system 354 as part of machine module 312
rather than housing 318 of machine module 312. Spec. Tflf 46, 55, Fig. 3.
6
Appeal 2016-004504
Application 12/404,443
Claim 26
Claim 26 depends from claim 1 and recites that the coolant system is
configured not to circulate coolant through the instrument module or the tool
module. The Examiner determines this feature would have been obvious to
the skilled artisan in view of the AAPA’s teaching that only a portion of the
adapter and spindle is cooled, because the skilled artisan would have known
to cool only the machine module (tool holder 62), which connects to spindle
74, and thus is the part of the adapter that needs cooling, but the instrument
and tool modules do not need to be cooled. Final Act. 4—5; Ans. 6, 8, 10.
Appellants again argue that the Examiner relies on hindsight based on
Appellants’statement of the problem. Appeal Br. 12—13. This argument is
not persuasive for the reasons discussed above. The Examiner had a sound
basis for adding a cooling system to tool holder 62 of Machino rather than to
other parts of the adapter such as instrument module 72 and tool module 78
because tool holder 62 (the machine module) is the part of the adapter that
connects to the spindle (i.e., to shaft 74) and needs cooling. Ans. 4—6. The
AAPA supports this finding by disclosing that coolant is circulated through
only a part of the adapter and the spindle. Spec. 137. Appellants’ argument
does not apprise us of error in the Examiner’s findings or reasoning.
Thus, we sustain the rejection of claim 26.
DECISION
We affirm the rejection of claims 1—8, 10-20, and 26.
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
7