Ex Parte Groben

Patent Trial and Appeal Board

Jul 28, 2016

12451475 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/451,475 11113/2009
513 7590 08/01/2016
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Martin Graben
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.
56179 4436
EXAMINER
NICHOLS, PHYLLIS M
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
ddalecki@wenderoth.com
eoa@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN GROBEN
Appeal2013-007324
Application 12/451,475
Technology Center 3700
Before JOHN C. KERINS, STEP AN ST AI CO VICI, and
LYNNE H. BROWNE, Administrative Patent Judges.
KERINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Martin Groben (Appellant) seeks our review under 35 U.S.C. § 134(a)
of the Examiner's final rejection of claims 10-20. Claims 1-9 are canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2013-007324
Application 12/451,475
THE INVENTION
Appellant's invention is directed to a safety device for a pressure
medium tank. Independent claim 10, reproduced below, is illustrative:
10. A safety device for a pressure medium tank, comprising:
a filling/checking port having an internally threaded hole
adjacent an inner end thereof connectable to a tank interior and
having an adjoining hollow cylindrical segment, said threaded
hole and said cylindrical segment defining a flow passage
through said port for passage of a medium therethrough;
a closure screw having an externally threaded shaft and a head,
said shaft being threadedly engaged with said threaded hole, said
head being located and retained in said cylindrical segment,
tightening of said screw in said threaded hole blocking said flow
passage; and
a blocking element anchored in said cylindrical segment and
forming stop surfaces projecting into an interior of said
cylindrical segment to limit a free path of movement of said
closure scre\~1 in said port in an unthreading direction to maintain
threaded engagement of said threaded hole and said threaded
shaft by coming into direct contact with said head of said closure
screw.
THE REJECTIONS ON APPEAL
The Examiner has rejected:
(i) claims 10, 11, 17, 18, and 20 under 35 U.S.C. § 103(a) as being
unpatentable over Behl (DE 195 11 525 C 2, published Oct. 2,
1996) 1 in view of Sandau (US 4,142,546, issued Mar. 6, 1979);
1 Reference herein to the text of Behl will be to a machine-generated
English-language translation of the original German publication, of record in
the application on appeal.
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Appeal2013-007324
Application 12/451,475
(ii) claims 12 and 19 under 35 U.S.C. § 103(a) as being
unpatentable over Behl in view of Sandau and Lord (US
3,323,546, issued June 6, 1967);
(iii) claim 13 under 35 U.S.C. § 103(a) as being unpatentable over
Behl in view of Sandau and Hayes (US 3,865,344, issued Feb.
11, 1975);
(iv) claim 14 under 35 U.S.C. § 103(a) as being unpatentable over
Behl in view of Sandau and Fisher (US 4,379,707, issued Apr.
12, 1983);and
(v) claims 15 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Behl in view of Sandau and Grunbichler (US
5,713,705, issued Feb. 3, 1998)2 .
ANALYSIS
Claims 10, 11, 17, 18, and 20 -- 35 USC§ 103(a) --Behl/Sandau
Claim 10
The Examiner finds that Behl fails to disclose that the hole adjacent
the inner end of the port is internally threaded, and that the shaft of the
closure screw is externally threaded. As such, in Behl, the shaft is not
threadedly engaged with a threaded hole. Final Act. 3. The Examiner cites
to Sandau as disclosing an internally threaded hole 11 and a closure screw
with an externally threaded shaft 13, with the two being threadedly engaged.
Id. The Examiner takes the position that these two constructions present
2 Although the correct spelling is Griinbichler, as both Appellant and
Examiner refer to this reference as Grunbichler, for consistency purposes we
shall also refer to it as Grunbichler.
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Application 12/451,475
known options and a finite number of solutions, and concludes that it would
have been obvious to provide a closure screw with either a threaded head or
a threaded shaft, with a complementary threaded portion on the surface
surrounding that portion of the screw. Id. at 4.
Appellant characterizes the closure screw of Behl as "headless," and
further argues that Behl does not disclose a head located and retained in a
cylindrical segment of the port, in that the Behl locking screw is located
instead in a threaded segment. Appeal Br. 5; Reply Br. 1-2.
As to the former, Appellant notes that "[a] screw head is usually
interpreted, including in this application, as being located at the end of a
shank or shaft of the screw." Reply Br. 2. The Examiner's statement that
"[t]he head of the closure screw of Behl is element 20 and is adjacent to the
shaft 21," comports with Appellant's description. Ans. 7. Accordingly, we
are not persuaded that Behl fails to disclose a closure screw having a head
portion.
We are also not persuaded that the internal threading on the generally
cylindrical bore (upper part of element 11) in Behl requires a finding that the
head of the closure screw in Behl is not located in a hollow cylindrical
segment. Appellant (see Appeal Br. 6) would have us apply a
mathematically precise definition of the term "cylinder," 3 yielding a
perfectly smooth wall, whereas Appellant's own disclosure evidences that
such would be an unreasonably narrow meaning. In each embodiment of
Appellant's invention, a nominally cylindrical segment has a surface altered
by either the presence of bores for receiving a blocking pin therethrough, or
3 In actuality, a surface that would be complementary to a cylinder.
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Appeal2013-007324
Application 12/451,475
a rounded or rectangular annular groove adapted to receive therein a snap
rmg.
Accordingly, we do not find error in the Examiner's position that
"[t]he threaded portions ... do not cease to possess a cylindrical shape
because they include threads." Ans. 7. Furthermore, in the Examiner's
proposed modification to Behl, with the head no longer being threaded, there
would additionally be no need to retain the internal threads on the portion of
the surrounding cylindrical segment.
Appellant additionally argues that Sandau "would only, at best, teach
providing additional threads on portion 21 of the Behl screw," and that such
additional threads would render Behl inoperative for its intended purpose.
Appeal Br. 5. This argument is in the nature of requiring that, ifthe
teachings of Sandau are considered for modification of the Behl device, the
proposed modification to Behl must bodily incorporate additional features of
the Sandau device not relied on by the Examiner. A person of ordinary skill
in the art is not, however, compelled to blindly follow the teaching of one
prior art reference over the other without the exercise of independent
judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889 (Fed.
Cir. 1984).
As none of Appellant's arguments apprise us of Examiner error, the
rejection of claim 10 is sustained.
Claim 11
Appellant includes claim 11 under a separate subheading in the
Appeal Brief. Appeal Br. 7. After summarily stating that the limitations of
claim 11 are not disclosed or rendered obvious by Behl and Sandau,
Appellant states that, "[t]he Sandau patent cited for this feature is not in
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Application 12/451,475
combination with the claim 10 features such that the proposed combination
thereof is not obvious." Id. Appellant further argues that element 15 in
Sandau is not a head. Id. We are uncertain of the point Appellant is
attempting to make in the first statement. As to whether Sandau discloses a
head, element 15 is a portion atop a threaded shaft having a greater radial
dimension than the shaft, and operates to seal against sealing ring 16. The
teaching appears to be germane in considering a modification to the Behl
device, and Appellant has not persuaded us otherwise.
The rejection of claim 11 is sustained.
Claim 17
Appellant argues that the limitations set forth in claim 1 7 are not
merely statements of intended use, and are not shown to be disclosed by
Behl and Sandau. Appeal Br. 7. Regardless of whether the limitations are
or are not properly regarded as intended use, they do not appear to add any
structural requirements to the device of claim 10, nor does Appellant
maintain that they do. The Examiner's proposed modification addresses all
structural limitations in claims 10 and 17, and the rejection of claim 17 is
thus sustained.
Claim 18
Appellant repeats the arguments to the effect that Behl does not have
an enlarged head and a cylindrical section, and that element 15 of Sandau
does not constitute a head. Appeal Br. 7. For the same reasons presented
above, we are not persuaded of Examiner error, and the rejection of claim 18
is sustained.
Claim 20
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Appeal2013-007324
Application 12/451,475
Appellant maintains that the Examiner's reliance on the disclosure in
Sandau of an axially and laterally extending groove on the threaded shaft is
improper, in that "that groove is a different and non-analogous
environment." Appeal Br. 7. This conclusory statement, unsupported by
factual underpinnings, does not apprise us of Examiner error. The rejection
of claim 20 is sustained.
Claims 12 and 19 -- 35 USC§ 103(a) --Behl/Sandau/Lord
Claim 12
Appellant argues that "[t]he straight portion of pin 33 [in the] Lord
patent cited for this [claimed] feature is not a blocking element that engages
a screw head ... but only engages a shoulder on the end of the threads."
Appeal Br. 8. This argument, however, fails to appreciate that the proposed
modification to Behl to employ a similar pin structure on the Behl device
results in the pin being positioned to engage a screw head, not a shoulder of
an end of a threaded section. In other words, the argument addresses the
teachings of Lord individually, and not the combination of teachings that
forms the basis for the rejection.
The rejection of claim 12 is sustained.
Claim 19
Appellant appears to argue that Lord does not disclose that the pin
blocking element is not offset from a wrenching recess in a screw head.
Appeal Br. 8-9. The straight portion of the pin in Lord is indeed offset from
a central axis of rotation, however, a wrenching recess is not disposed below
the pin. Lord Fig. 2. As such, the argument again addresses only the
teachings of Lord individually, and not the combination of teachings that
forms the basis for the rejection.
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Application 12/451,475
The rejection of claim 19 is sustained.
Claim 13 -- 35 US.C. § 103(a) --Behl/Sandau/Hayes
Appellant argues that "[t]he Hayes patent is not shown to relate to
structures that are not [sic] analogous or have a common problem with the
threaded valve structures of the Behl and Sandau patents." Appeal Br. 9.
Hayes discloses "[a] device for retaining an externally threaded member
inside a correspondingly internally threaded member against the exertion of
torque on the members." Hayes Abstract. Hayes further states that an object
of that invention is "to provide means for retaining a threaded valve stem
inside a corresponding valve body, against torque tending to remove the
valve stem." Hayes col. 2, 11. 35-38. Hayes thus appears to be in the same
field of endeavor as is Appellant's invention, and, at a minimum, is
reasonably pertinent to a problem faced by Appellant.
The rejection of claim 13 is sustained.
Claim 14 -- 35 US.C. § 103(a) -- Behl/Sandau/Fisher
Appellant argues that "[ t ]he Fisher patent relates to structures (i.e. a
splined joint) that are not analogous to the threaded valve structures of the
Behl and Sandau patents," and that "[ n Jo common problem is involved,
particularly since the Fisher member 20 is to prevent over tightening and not
to prevent removal of a threaded member." Appeal Br. 10. Fisher, however,
discloses that "retaining member 20" holds bearing 19 in place by presenting
a surface that abuts the bearing. Fisher col. 2, 11. 11-13.
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Application 12/451,475
Appellant's bald assertions, as contrasted with the actual disclosure in
Fisher, do not establish that Fisher would not have been reasonably pertinent
to a problem faced by Appellant.
The rejection of claim 14 is sustained.
Claims 15and16 -- 35 US.C. § 103(a) --Behl/Sandau/Grunbichler
Appellant argues that the tamper-proof bolt of Grunbichler, which has
as a feature thereof a torque head that is sheared off when the bolt is initially
fastened in place, runs counter to the valving purpose and operation of Behl
and Sandau. Grunbichler Abstract; Appeal Br. 11. The same can be said as
to the relationship of Grunbichler to the problem facing Appellant.
Along these lines, the Examiner erroneously finds that the torque
limiting feature in the Grunbichler bolt is to limit torque in an unthreading
direction. Instead, once the Grunbichler bolt is installed, the torque limiter
operates to shear off the torque head so that the remaining portion of the bolt
may not be unthreaded from its place of attachment with normal tools.
Grunbichler Abstract. The Examiner's position fails to take into account the
correct operation of the Grunbichler device, and the rejection of claims 15
and 16 thus lacks rational underpinnings for the alleged reason to combine
the teachings of Grunbichler with Behl and Sandau.
The rejection of claims 15 and 16 is not sustained.
DECISION
The rejection of claims 10, 11, 17, 18, and 20 as being unpatentable
over Behl in view of Sandau is AFFIRMED.
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Application 12/451,475
The rejection of claims 12 and 19 as being unpatentable over Behl in
view of Sandau and Lord is AFFIRMED.
The rejection of claim 13 as being unpatentable over Behl in view of
Sandau and Hayes is AFFIRMED.
The rejection of claim 14 as being unpatentable over Behl in view of
Sandau and Fisher is AFFIRMED.
The rejection of claims 15 and 16 as being unpatentable over Behl in
view of Sandau and Grunbichler is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
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