Ex Parte GrobenDownload PDFPatent Trial and Appeal BoardJul 28, 201612451475 (P.T.A.B. Jul. 28, 2016) Copy Citation 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. 2 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. 3 Appeal2013-007324 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. 4 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 5 Appeal2013-007324 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 6 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. 7 Appeal2013-007324 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. 8 Appeal2013-007324 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. 9 Appeal2013-007324 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 10 Copy with citationCopy as parenthetical citation