Ex Parte Hohmann,

Patent Trial and Appeal Board

Nov 9, 2018

14313645 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/313,645 06/24/2014
321 7590 11/14/2018
STINSON LEONARD STREET LLP
7700 FORSYTH BOULEVARD, SUITE 1100
ST LOUIS, MO 63105
FIRST NAMED INVENTOR
Ronald P. Hohmann, JR.
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.
MLP7728.US 8886
EXAMINER
A, PHI DIEU TRAN
ART UNIT PAPER NUMBER
3633
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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):
stl.uspatents@stinson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONALD P. HOHMANN, JR.
Appeal2017-010238
Application 14/313,645
Technology Center 3600
Before BIBHU R. MOHANTY, AMEE A. SHAH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Throughout this Decision, we refer to the Appellant's Appeal Brief ("Br.,"
filed Dec. 5, 2016) and Specification ("Spec.," filed June 24, 2014 and
amended Sept. 21, 2015), and to the Examiner's Answer ("Ans.," mailed
Apr. 19, 2017) and Final Office Action ("Final Act.," mailed June 3, 2016).
2 According to the Appellant, the real party in interest is Columbia
Insurance Company. Br. 2.
Appeal2017-010238
Application 14/313,645
STATEMENT OF THE CASE
The Appellant's invention "generally relates to anchoring systems for
insulated cavity walls, and more specifically, a thermally-isolating fastener
that creates a thermal break in a cavity wall." Spec. ,r 1.
Claims 1 and 12 are the independent claims on appeal. Claim 1
(Br. 13 (Claims App.)) is exemplary of the subject matter on appeal and is
reproduced below:
1. A thermally-isolating fastener for use in a cavity wall
to connect a wall anchor to an inner wythe, the fastener
compnsmg:
a fastener shaft having a screw portion including a driven
end and an attachment portion opposite the driven end; and
a fastener head selectively attachable to the attachment
portion of the fastener shaft, the fastener head comprising an
internal portion and an external portion encasing the internal
portion and configured to provide a thermal break in the cavity
wall when installed, wherein the external portion fully encases
the internal portion such that no part of the internal portion is
exposed when the fastener head is attached to the attachment
portion of the fastener shaft, the fastener shaft and internal
portion of the fastener head comprising one of mill galvanized,
hot galvanized, and stainless steel.
REJECTIONS
Claims 1-6 and 9-11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hashimoto (US 4,887,951, iss. Dec. 19, 1989), Cohen
(US 3,440,922, iss. Apr. 29, 1969), and Mair (US 8,029,223 B2, iss. Oct. 4,
2011).
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Appeal2017-010238
Application 14/313,645
Claims 7 and 8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Hashimoto, Cohen, Mair, and Day et al. (US 4,948,319,
iss. Aug. 14, 1990) ("Day").
Claims 12-16 and 18-20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hohmann et al. (US 6,925,768 B2, iss. Aug. 9,
2005), Hashimoto, Cohen, and Mair.
Claim 17 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Hohmann, Hashimoto, Mair, and Day.
ANALYSIS
The Appellant contends that the Examiner's rejections under
3 5 U.S. C. § 103 (a) of independent claims 1 and 12 are in error because the
Examiner has not provided adequate reasoning why one of ordinary skill in
the art would modify Hashimoto' s resin screw to be formed from mill
galvanized, hot galvanized, or stainless steel as taught by Mair. See Br. 8-9,
11. After careful review of the Appellant's arguments as presented in the
Appeal Brief, we do not agree with the Appellant's contention.
The Examiner finds, in relevant part, that Hashimoto teaches a
fastener having a metal fastener shaft with a screw portion including a
driven end and an attachment portion, and a fastener head comprising an
internal metal portion and an external nylon, resin portion, as recited in
independent claims 1 and 12. See Final Act. 2-3, 7. The Examiner
acknowledges that Hashimoto does not teach the shaft and internal head
portion comprising mill galvanized, hot galvanized, or stainless steel, and
relies on Mair to cure this deficiency. Id. at 3, 8. The Examiner concludes
that "one having ordinary skill in the art would have found it obvious to
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Application 14/313,645
modify Hashimoto' s modified structures to show the head and shaft made of
mill galvanized, hot galvanized and stainless steel as taught by Mair in order
to provide a fastener that is resistant to rust." Id. at 4; see also id. at 9.
Hashimoto discusses that a "major disadvantage" of a metal screw is
that "its head can rust after attachment." Hashimoto, col. 1, 11. 29-33.
Hashimoto also discusses that another disadvantage is a visual mismatch
between the metal head and a color panel. Id. at col. 1, 11. 33-39. Thus,
Hashimoto discloses a screw with a metal body having a small head portion
and a head of synthetic resin material fitted onto the small head portion. See
id. at col. 2, 11. 10-14. Mair teaches, and the Appellant does not disagree, a
galvanized or stainless steel screw. Mair, col. 5, 11. 6-8.
The Appellant argues that "there is no need to further modify
Hashimoto to have the head portion 7 and shank portion 4 be formed from
steel to protect from corrosion because the screw in Hashimoto, and in
particular the head 3 and head portion 7, is already corrosion resistant."
Br. 8. But, Hashimoto discloses only a corrosion-resistant head external
portion fitted onto the small metal head interior portion. Hashimoto, col. 2,
11. 10-14. Hashimoto is silent as to the corrosion resistant properties of the
shaft and internal smaller portion of the head. As such, the Examiner is not
proposing "add[ing] a coating to a fastener for corrosion protection if the
fastener is already made out of material providing corrosion protection."
Br. 8. Rather, the Examiner's combination proposes having Hashimoto's
metal of the shaft and small head portion comprise galvanized or stainless
steel, as taught by Mair, to extend the corrosion resistance to the shaft and
interior head. The Appellant has not sufficiently shown why it would not be
reasonable for one of ordinary skill in the art to do so to make the entire
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Application 14/313,645
screw, not only the external head, resistant to rust, as the Examiner
determines. See Final Act. 4; Ans. 11.
The Appellant further argues that the Examiner uses impermissible
hindsight because:
If the screw is corrosion resistant, no resin or other coating is
needed as demonstrated by Mair. Only by improperly using
Applicant's disclosure (which applies a thermal break material
to a corrosion resistant screw) as a guide to pick and choose
among the features of Hashimoto and Mair is a [sic] one
corrosion resistant material covered with another corrosion
resistant material to make the requirements of claim 1.
Br. 9. However, the Appellant does not adequately explain how providing
more rust resistance to the interior head of the screw to counteract any wear
and tear to the exterior cover of the head (see Ans. 11) is ineffective to
support the conclusion of obviousness and includes "knowledge gleaned
only from" the Appellant's disclosure. In re McLaughlin, 443 F.2d 1392,
1395 (CCPA 1971); see also Ans. 11.
Thus, we are not persuaded of error on the part of the Examiner, and
we sustain the Examiner's rejections of independent claims 1 and 12 and
dependent claims 2---6, 9-11, 13-16, and 18-20 under 35 U.S.C. § 103(a).
The Appellant argues that the rejections of claims 7, 8, and 17 are in
error because the cited prior art does not cure the deficiencies of the
rejection of claim 1. See Br. 10-11. Because we find no such deficiency in
the rejection of claim 1, we also sustain the rejections under 35 U.S.C.
§ 103(a) of claims 7, 8, and 17.
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DECISION
The Examiner's rejections of claims 1-20 under 35 U.S.C. § 103(a)
are AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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