Ex Parte Eckstein et al

Patent Trial and Appeal Board

Oct 25, 2018

13878694 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/878,694 07/30/2013
23280 7590 10/29/2018
Davidson, Davidson & Kappel, LLC
589 8th A venue
16th Floor
New York, NY 10018
FIRST NAMED INVENTOR
Andreas Eckstein
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.
5068.1127 4978
EXAMINER
ROSARIO-APONTE, ALBA T
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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):
ddk@ddkpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ANDREAS ECKSTEIN, MATHIAS GOLDT,
MARC SCHAEFFER, JOERG APPI, and
ARJEN DETMER DIJKHUIS
Appeal2017-011416
Application 13/878,694
Technology Center 3700
Before LINDA E. HORNER, EDWARD A. BROWN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Andreas Eckstein et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 8-13. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
1 Appellants identify the real party in interest as Hilti Aktiengesellschaft.
Appeal Br. 2. We note that the Appeal Brief does not have page numbers.
For convenience, we designate the first page of the Appeal Brief as page 1
and number the pages consecutively therefrom.
2 Claims 1-7 are cancelled, and claims 14--16 are withdrawn. Amendment
and Response to Office Action 3-5 (Oct. 21, 2016).
Appeal 2017-011416
Application 13/878,694
We AFFIRM-IN-PART and designate our affinnance of the rejections
of claims 9--12 as NEW GROUNDS OF REJECTION and enter a NEW
GROUND OF REJECTION of claims 8 and 13 pursuant to our authority
under 37 C.F.R. § 4I.50(b).
THE CLAIMED SUBJECT MATTER
Claim 8, the sole independent claim, is reproduced below and is
representative of the claimed subject matter on appeal.
8. A method for the production of torque-limited fasteners, each
fastener including a first head element with a contact for a
fastening tool and a second head element joined to the first head
element via a welded joint that shears off at a predefined limit
torque, the method comprising:
providing a plurality of first head elements having a same
first geometry and a plurality of second head elements having a
same second geometry,
welding a first of the first head elements to a first of the
second head elements using a first welding process to define a
first fastener having a first limit torque; and
welding a second of the first head elements to a second of
the second head elements using a second welding process
employing at least one different welding parameter from the first
welding process to define a second fastener having a second limit
torque different from the first limit torque, the first and second
fasteners having a same geometry.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Difrancesco
Gibbons
us 5,083,697
US 2002/0076295 Al
2
Jan.28, 1992
June 20, 2002
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Application 13/878,694
Kosuge 3
Konno4
JP 05-023857 A
JP 09-164487 A
THE REJECTIONS
Feb.2, 1993
June 24, 1997
I. Claims 8 and 13 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Gibbons. Final Act. 2-3.
II. Claims 9 and 10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gibbons and Kosuge. Id. at 3--4.
III. Claim 11 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gibbons and Konno. Id. at 5.
IV. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Gibbons and Difrancesco. Id. at 5---6.
OPINION
Rejection I
The Examiner finds that Gibbons discloses a method for the
production of torque-limited fasteners that includes, among other things:
welding a first of the first head elements to a first of the second
head elements using a first welding process to define a first
fastener having a first limit torque (laser weld; p.0028---0029);
and welding a second of the first head elements to a second of
the second head elements using a second welding process
employing at least one different welding parameter
(amount/quantity/location of welds 32; p.0028) from the first
welding process to define a second fastener having a second limit
3 References to the text of Kosuge are to the machine translation entered
into the record as an attachment to the Non-Final Action dated July 22,
2016.
4 References to the text of Konno are to the machine translation entered into
the record as an attachment to the Non-Final Action dated July 22, 2016.
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torque different from the first limit torque (p.0028), the first and
second fasteners having a same geometry (abstract; p.0028).
Final Act. 3.
Appellants argue that, even assuming that Gibbons discloses creating
first and second fasteners having different limit torques by changing the
amount/quantity/location of welds in accordance with the Examiner's
finding, "the [S]pecification ... makes clear that a welding parameter does
not include altering a number of welding points." Appeal Br. 5 ( citing Spec.
,r 7). Appellants point to paragraph 7 of the Specification. Id. This
paragraph states that:
[a] basic idea of the invention can be seen in the fact that
the limit torque is not established by varying the geometry of the
parts, especially not by varying the shapes and dimensions of the
head elements or the number of welding points. Rather,
according to the invention, different limit torques are obtained in
that at least one welding parameter is varied.
Spec. ,r 7 (emphasis added). Appellants argue that "[t]he Examiner's claim
interpretation simply contradicts the [S]pecification and is not proper or
reasonable in light of the [S]pecification." Appeal Br. 5. We agree with
Appellants that the Specification explicitly distinguishes between a variation
in the number of welding points and a variation in a welding parameter.
Consequently, interpreting a changed quantity of welding points as a
different welding parameter is unreasonable in light of the Specification.
Giving claim 8 the "broadest reasonable interpretation consistent with the
[S]pecification" and "in light of the [S]pecification as it would be interpreted
by one of ordinary skill in the art," we determine the claimed welding
parameter does not extend to the quantity of welding points. In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). With this claim
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construction in mind, the Examiner's finding that Gibbons discloses "a
second welding process employing at least one different welding parameter"
(Final Act. 3) is not supported by a preponderance of the evidence.
For the foregoing reasons, Appellants have shown that the Examiner
erred in finding that claim 8 is anticipated by Gibbons. We do not sustain
the rejection of claim 8, and claim 13 depending therefrom, under 35 U.S.C.
§ 102(b) as anticipated by Gibbons.
Re} ections II-IV
The Examiner finds that Gibbons teaches all of the elements of the
claimed invention, except for the different welding parameter being, in
particular, a (i) welding voltage (Rejection II-claim 9), (ii) different
welding current intensity (Rejection II-claim 10), (iii) processing
temperature (Rejection III-claim 11 ), or (iv) pretension between the first
and second head elements (Rejection IV-claim 12). Final Act. 4--5. With
respect to Rejection II, the Examiner finds that "Kosuge teaches a fastening
device prepared by ... using two welding processes, each having different
welding condition (voltage, current)" to achieve different tensile strength
and torque strength. Id. at 4 (citing Kosuge ,r,r 14--15). With respect to
Rejection III, the Examiner finds that "Konno teaches [that] changing the
heating temperature during welding changes the breaking torque at weld."
Id. at 5 (citing Konno ,r,r 25, 27, and 29-31). Id. at 5. With respect to
Rejection IV, the Examiner finds that "Difrancesco teaches a torque-limited
bolt (50) comprising a head portion (54) and a shank portion (52) which are
joined at a pressure selected to achieve a desired strength." Id. (citing
Difrancesco 10:31---68, 11: 1-12). The Examiner concludes that it would
have been obvious to modify Gibbons with the teachings of each of Kosuge
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and Konno, "along with changes in the amount of welding points and
locations, to achieve different torque values." Id. at 4--5. The Examiner
concludes that it would have been obvious to modify Gibbons with the
teaching of Difrancesco during the welding processes of Gibbons "to
achieve a desired strength." Id. at 5-6.
Appellants argue that "there is no reason to vary or alter the voltage or
intensity [ or any of the other claimed welding parameters] for two different
sets having a same geometry, whether in view of Kosuge or another
reference, especially if the number of welds is already being altered to
achieve different torque values as asserted by the Examiner." Appeal Br. 6
(emphasis omitted). We agree with Appellants that the Examiner's rejection
does not adequately explain what would have led one of ordinary skill in the
art to alter both the number of welds and a welding parameter to achieve
different torque values. However, based on the record before us, we
determine that one of ordinary skill in the art would have been led to change
at least one welding parameter to achieve a different torque value for a
resulting fastener, while maintaining the number of welds disclosed in
Gibbons.
Gibbons teaches the use of "two diametrically-opposed welds, or three
or more equispaced welds, [to] give a sudden shear with consistent torque
values." Gibbons ,r 28 (teaching that the use of one laser weld "yields a
gradual and inconsistent torque value"). We understand Gibbons to teach
the desirability of producing torque limiting devices having two or more
welds to ensure consistent torque values for a single production batch. We,
however, do not understand Gibbons to suggest that a single torque value is
desirable over any and all production batches. This is because Gibbons also
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teaches that "[t]he application of a correct or precise torque during the
assembly of certain mechanical components ... is essential to their
mechanical integrity" and that torque limiters and torque wrenches are used
"to provide uniform torquing of nuts onto bolts, studs or the like without
under torquing or over torquing the fastener with the resultant mechanical
failure thereof." Gibbons ,r 4. A stated objective of Gibbons is to provide a
torque limiter "which can be torqued to a precise predetermined shear value
... [,] thereby avoiding under or over torquing thereof." Id. ,r 8.
Based on these teachings of Gibbons, one of ordinary skill in the art
would understand that the correct or precise torque to be applied in the
assembly of a mechanical component would vary depending upon the
particular mechanical component and its intended use or application. One of
ordinary skill in the art would also understand that the precise, desired shear
value of a torque limiter for such a mechanical component would
correspondingly vary to avoid under or over torquing of the mechanical
component. Thus, one of ordinary skill in the art would understand that it
would be desirable to produce different production batches of torque limiters
having different predetermined shear values for use with various mechanical
components having various applications. Kosuge, Konno, and Difrancesco
each teach different welding parameters that may be varied to achieve
different shear values for torque limiters in different production batches. We
note that the Examiner finds that "the claim language does not limit the first
and second welding process to be performed for the same production batch."
Ans. 7.
We agree with the Examiner's findings regarding the teachings of
Kosuge, Konno, and Difrancesco. Final Act. 4--5; Ans. 8-9. We also agree
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with the Examiner's conclusion that it would have been obvious to one of
ordinary skill in the art to employ two different welding processes having
different welding parameters, (i.e., welding voltage and current, heating
temperature, pretension or pressure between the first and second head
elements during the welding processes of Gibbons) as taught by Kosuge,
Konno, and Difrancesco, respectively, in order to achieve different torque
limit values or different strength. Id. We further determine that one of
ordinary skill in the art would have been led to produce different torque
limiting devices having different torque limit values in different production
batches, in order to have the torque limit value correspond to the precise
amount of torque required by the mechanical component with which the
torque limiting device will be used.
For the foregoing reasons, we are not persuaded that the Examiner
erred in concluding that Gibbons combined with each of Kosuge, Konno,
and Difrancesco renders obvious the subject matter of claims 9--12. We
sustain the rejections, under 35 U.S.C. § 103(a), of: claims 9 and 10 as
unpatentable over Gibbons and Kosuge; claim 11 as unpatentable over
Gibbons and Konno; and claim 12 as unpatentable over Gibbons and
Difrancesco. We, however, designate the affirmance of the rejections of
claims 9--12 as NEW GROUNDS OF REJECTION pursuant to 37 C.F.R.
§ 41.50(b) because our analysis relies upon reasoning that the Examiner did
not specifically use in that it: (i) elaborates on the desire for producing
different torque limiting devices having different torque limit values in
different production batches; and also (ii) does not contemplate changing the
number of welding points along with changes in the welding parameter(s),
but rather, maintains the number of welding points to ensure consistency in a
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single production batch as taught by Gibbons.
NEW GROUND OF REJECTION
We enter a new ground of rejection of claims 8 and 13 under
35 U.S.C. §103(a) as unpatentable over Gibbons and each ofKosuge,
Konno, and Difrancesco. By virtue of each of claims 9--12 incorporating the
subject matter of the claim from which it depends, we enter a new ground of
rejection based on the combination of Gibbons and each of Kosuge, Konno,
and Difrancesco for independent claim 8. Gibbons, as modified by each of
Kosuge, Konno, and Difrancesco and as described in more detail above in
the analysis of Rejections II-IV, would result in the claimed subject matter
of independent claim 8. See Ormco Corp. v. Align Technology, Inc., 498
F.3d 1307, 1319 (Fed. Cir. 2007) (holding that because dependent claims
were found to have been obvious, the broader independent claims must also
have been obvious).
With respect to dependent claim 13, we adopt and incorporate by
reference the Examiner's finding that Gibbons teaches that "the torque-
limited fasteners are shear nuts[], the first head element having an external
polygon and/or the second head element having an internal thread." Final
Act. 3 ( citing Gibbons, Abstract, Figs. 1-11 ). Thus, Gibbons, as modified
by each of Kosuge, Konno, and Difrancesco and as described in more detail
above in the analysis of Rejections II-IV, would result in the claimed subject
matter of dependent claim 13.
Accordingly, we enter a new ground of rejection of claims 8 and 13
under 35 U.S.C. § 103(a) as unpatentable over Gibbons and each of Kosuge,
Konno, and Difrancesco.
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DECISION
The Examiner's decision to reject claims 8 and 13 under 35 U.S.C.
§ 102(b) as anticipated by Gibbons is reversed.
The Examiner's rejection of claims 9 and 10 under 35 U.S.C. § 103(a)
as unpatentable over Gibbons and Kosuge is affirmed, and we designate our
affirmance as a NEW GROUND OF REJECTION.
The Examiner's rejection of claim 11 under 35 U.S.C. § 103(a) as
unpatentable over Gibbons and Konno is affirmed, and we designate our
affirmance as a NEW GROUND OF REJECTION.
The Examiner's rejection of claim 12 under 35 U.S.C. § 103(a) as
unpatentable over Gibbons and Difrancesco is affirmed, and we designate
our affirmance as a NEW GROUND OF REJECTION.
We enter a NEW GROUND OF REJECTION of claims 8 and 13
under 35 U.S.C. § 103(a) as unpatentable over Gibbons and each of Kosuge,
Konno, and Difrancesco.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). Section 40.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence
relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
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prosecution will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new Evidence not previously of Record is
made which, in the opinion of the examiner, overcomes
the new ground of rejection designated in the decision.
Should the examiner reject the claims, appellant may again
appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record.
The request for rehearing must address any new ground of
rejection and state with particularity the points believed to
have been misapprehended or overlooked in entering the
new ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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