Ex Parte MULLEN et alDownload PDFPatent Trial and Appeal BoardMar 25, 201613366661 (P.T.A.B. Mar. 25, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/366,661 02/06/2012 3705 7590 03/29/2016 ECKERT SEAMANS CHERIN & MELLOTT 600 GRANT STREET 44THFLOOR PITTSBURGH, PA 15219 FIRST NAMED INVENTOR Joshua 0. MULLEN 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. 288903-00469-2 2233 EXAMINER KENNEDY, JOSHUA T ART UNIT PAPER NUMBER 3649 NOTIFICATION DATE DELIVERY MODE 03/29/2016 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): ipmail@eckertseamans.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSHUA 0. MULLEN, ERIC D. HYP, and DAVID BOIES 1 Appeal2014-002595 Application 13/366,661 Technology Center 3600 Before STEFAN STAICOVICI, JAMES P. CALVE, and AMANDA F. WIEKER, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Joshua 0. Mullen et al. ("Appellants") appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 2-7, 10, 11, 15-20, 23, and 24.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellants, the Real Party in Interest is Ames True Temper, Inc. Appeal Br. 1. 2 Claims 1, 8, 9, 12-14, 21, 22, 25, and 26 have been withdrawn. Id. at 2. Appeal2014-002595 Application 13/366,661 CLAIMED SUBJECT MATTER The invention concerns a coupling that joins a handle and tool head. Spec., 1: 10. Claims 10 and 23 are independent. Claim 10 is illustrative of the subject matter on appeal, and recites: 10. A coupling for a tool head, said tool head having an eye therethrough, said eye being tapered from a wide upper end to a narrower lower end said coupling comprising: an elongated handle having a body with an upper end and a lower end, said handle body upper end sized to pass through said tool head eye, said handle body upper end having a mounting structured to be engaged by an anchor device; a compressible collar assembly having a frustoconical body and an anchor device, said frustoconical body having an inner surface defining a cavity and an external surface defining a frustoconical shape that is tapered from a wide upper end to a narrower lower end; said inner cavity sized to correspond to said handle upper end· ' said anchor device structured to engage said handle upper end mounting and to resist axial movement of the compressible collar assembly relative to said handle upper end; said compressible collar assembly includes a transverse pm; said compressible collar assembly includes aligned passages; said handle upper end includes a passage; and wherein said transverse pin is structured to extend through said handle passage and said collar assembly body aligned passages. Appeal Br. 25-26, Claims App. (emphases added). Independent claim 23 contains similar language to that emphasized above. Id. at 28, Claims App. 2 Appeal2014-002595 Application 13/366,661 REJECTIONS The claims stand rejected as follows: I. Claims 2, 10, 11, 15, 23, and 24 under 35 U.S.C. § 102(b) as anticipated by Cox (US 4, 139,930, iss. Feb. 20, 1979). II. Claims 3-7 and 16-20 under 35 U.S.C. § 103(a) as unpatentable over Cox and Carmien (US 3,753,602, iss. Aug. 21, 1973). ANALYSIS Anticipation by Cox- Claims 2, 10, 11, 15, 23, and 24 Appellants present the same argument for independent claims 10 and 23. See Appeal Br. 10-17; Reply Br. 1-8. Appellants do not present separate argument for dependent claims 2 or 15. Appeal Br. 20. Therefore, we treat claim 10 as representative, and claims 2, 15, and 23 stand or fall with claim 10. Regarding dependent claims 11 and 24, Appellants rely on the arguments presented for independent claims 10 and 23 and also present additional argument, which we address separately below. Id. at 17-20; Reply Br. 8-9. Appellants' Specification defines certain claim terms that are relevant to this appeal. See Appeal Br. 10-11; Reply Br. 1-2. The term "mounting" is defined as "any portion of the handle upper end 30 that extends generally perpendicular to the longitudinal axis of the handle 14." Spec., 6: 19-21. "[E]ngage" is defined as "coupled with an associated bias." Id. at 5:3. And "anchor device" is defined as "a generally radially extending element structured to both engage the mounting 34, and, to resist movement of the 3 Appeal2014-002595 Application 13/366,661 compressible collar assembly body 70 relative to the mounting in at least one axial direction." Id. at 8: 14--16. The Examiner finds that Cox discloses handle 14 having a mounting structured to be engaged by an anchor device. Final Act. 2-3 (citing Cox, Figs. 1-2). Specifically, the Examiner finds that handle 14 includes a transverse bore hole that extends perpendicular to the longitudinal axis of the handle, which is a "mounting." Ans. 9. The Examiner finds that ring 48 and cap screw 50 together form an "anchor device," which is "structured to engage" the handle bore hole, because "the ring (48) is capable of being biased (i.e., having a force applied thereon in a particular direction) by the head cap screw (50) pushing against ring [ 48] which provides a biasing force against the handle to couple the elements together." Id. at 6, 7-9; Final Act. 6. As an initial matter, we recognize Appellants' argument that the findings presented in the Examiner's Answer deviate from those presented in the Final Office Action. Reply Br. 6-7; see also Appeal Br. 15. However, Appellants did not file a Petition seeking review of this alleged change in the Examiner's ground of rejection but, instead, filed a Reply Brief arguing that "the Examiner is still incorrect." See Reply Br. 6-7; see also 37 C.F.R. §§ 1.181, 41.40; MPEP 1207.03(b). Therefore, we consider the findings presented in the Final Office Action and Examiner's Answer. 3 3 Appellants' arguments that Cox's ring 48 is not an anchor device (see Appeal Br. 10-15), and that the Examiner failed to identify a mounting on Cox's handle (see id. at 15-17) are moot in view of the findings that the safety ring 48 and cap screw 50 together form the anchor device, and that the bore hole in Cox's handle is a mounting. Ans. 6, 8-9. 4 Appeal2014-002595 Application 13/366,661 Appellants argue that Cox's cap screw 50 merely passes through the bore hole in Cox's handle and, therefore, is not an anchor device that engages a mounting, as "engage" is defined in the Specification. Reply Br. 7; see also Appeal Br. 15 ("[T]he cap screw cannot be an anchor device in that it does not 'engage' the passage."). Appellants' argument turns in large part on whether the Examiner's findings that Cox discloses an "anchor device" and "mounting," as those terms are defined in the Specification, are supported. See Reply Br. 1-2. Appellants have not identified error in the Examiner's finding that the transverse bore hole located in Cox's handle 14 is a "mounting." See Ans. 9. This bore hole is a "portion of the handle upper end that extends generally perpendicular to the longitudinal axis of the handle," as defined in Appellants' Specification. See Final Act. 2-3, 6 (citing Cox, Figs. 1-2, 4:24--43); Ans. 9. Appellants have not identified error in the Examiner's finding that Cox's ring 48 and cap screw 50 together form an "anchor device." See Final Act. 2-3, 6 (citing Cox, Figs. 1-2, 4:24--43); Ans. 6-9. Despite Appellants' conclusory argument that ring 48 "is not 'a generally radially extending element,"' Appellants have not explained persuasively how ring 48, which extends radially around Cox's handle, does not meet this definition. See Reply Br. 5. The Examiner's finding that ring 48 is "generally radially extending" is supported by a preponderance of evidence. See, e.g., Final Act. 2-3, 6 (citing Cox, Figs. 1-2, 4:24--43); Ans. 6-9. Unpersuaded of error in the Examiner's findings that Cox discloses a "mounting" (bore hole in handle 14) and an "anchor device" (ring 48 and 5 Appeal2014-002595 Application 13/366,661 cap screw 50), we tum to Appellants' argument that Cox's anchor device is not "structured to engage" the mounting, as claimed. Reply Br. 7. Appellants do not dispute that cap screw 50 passes through one side of ring 48, passes through the bore hole in Cox's handle, and is secured to the other side of ring 48 by cooperating threads on cap screw 50 and on ring 48. Id. at 3 (citing Cox, Fig. 4) ("[C]ap screw 50 passes through one side of the ring and is threaded into the other."); id. at 7 ("[C]ap screw merely 'pass[ es] through a counterbore opening' in the handle."); see also Final Act. 6; Ans. 6-9. We agree with the Examiner that the coupling between ring 48, cap screw 50, and the handle bore hole is structured to create bias in the coupling, as the threads on cap screw 50 engage the threads on ring 48 and bias ring 48 toward handle 14. Final Act. 6 (citing Cox, 4:24--43); Ans. 6 ("The ring (48) is capable of being biased (i.e., having a force applied thereon in a particular direction) by the head cap screw (50) pushing against ring which provides a biasing force against the handle to couple the elements together."), 7-9; Cox, 4:26-40.4 We are unpersuaded by Appellants' argument that any bias present in the coupling between ring 48, cap screw 50, and the handle bore hole "is a 4 We note Appellants' argument that because Cox's ring 48 is not disposed within tapered sleeves, it is not exposed to a compressive force or bias, and, therefore, does not "engage" the mounting. Appeal Br. 12-15; Reply Br. 2- 3. However, claim 10 does not require that the anchor device be disposed within any specific structure, or be exposed to a compressive force. Appeal Br. 25-26, Claims App. Rather, the claim merely requires that the anchor device is "structured to engage" the mounting, subject to Appellants' definition of "engage." This limitation is addressed above. See also Final Act. 6; Ans. 6-9. 6 Appeal2014-002595 Application 13/366,661 mere possibility," not an inherent feature. Reply Br. 6; see also Appeal Br. 13-15. Neither Appellants' claims nor Specification requires a certain amount of bias that must be present to satisfy the definition of "engage." Appellants have not explained persuasively how the cooperation between threads on cap screw 50 and threads on ring 48 would not impart some amount of bias to the coupling created between the ring 48, cap screw 50, and the bore hole. Therefore, we agree with the Examiner's finding that by engaging the corresponding threads, at least some amount of bias is present in the associated coupling. See Final Act. 6; Ans. 7-8. The Examiner had a sound basis for finding that Cox discloses a mounting (handle bore hole) "engaged" by an anchor device (ring 48, cap screw 50) based on Cox's structures that satisfy the definitions in Appellants' Specification for such features, and Appellants' arguments do not persuade us that Cox's structure is not capable of meeting this limitation. For similar reasons, we are unpersuaded by Appellants' argument that there is no evidence establishing that Cox's metal ring 48 could be compressed by cap screw 50 to create bias. Reply Br. 3; see also Appeal Br. 14--15. Appellants have not established that the material used to manufacture ring 48 precludes the presence of any bias in the coupling between ring 48, cap screw 50, and the handle bore hole. Figure 4 of Cox shows ring 48 pressed against handle 14 when cap screw 50 is tightened in ring 48. Finally, Appellants contend that because "cap screw 50 passes through one side of the ring and is threaded into the other," rather than being threaded into the handle, "it is not possible for the cap screw to 'push[] 7 Appeal2014-002595 Application 13/366,661 against ring'" and create bias. Reply Br. 3. Appellants have not explained persuasively how the location of the threads as between ring 48 and cap screw 50 precludes the presence of bias in the coupling between ring 48, cap screw 50, and the handle bore hole. To the contrary, the evidence of record shows that Cox's cap screw 50 is inserted through one side of ring 48, passes through the handle bore hole, and is threaded onto the opposing side of ring 48 to securely retain the ring and cap screw against the handle bore hole and handle 14, as shown in Figure 4 of Cox. Ans. 6-9; Final Act. 6 (citing Cox, 4:24--43). By this arrangement, bias is created in the coupling between the handle bore hole, ring 48, and cap screw 50, as the threads engage. Final Act. 6; Ans. 6-9; Cox, 4:26-40. Therefore, Appellants have not identified error in the Examiner's finding that the anchor device (ring 48 and cap screw 50) is "structured to engage" the mounting (handle bore hole), as required by claim 10, and we sustain the Examiner's rejection. 5 Because Appellants present no additional arguments with respect to claims 2, 15, or 23, we also sustain the Examiner's rejection of those claims. Regarding claims 11 and 24, Appellants additionally argue that Cox fails to disclose a pin "structured to engage the inner surface of the tool head eye," as claimed. Appeal Br. 17-20; see also Reply Br. 8-10. Appellants contend that the Examiner's reliance on Cox's Figure 3 is misplaced because Figure 3 shows a gap between tool head 12 and pin 40, with no compression 5 We are unpersuaded by Appellants' discussion of Cox's Figure 6, which presents an embodiment not relied upon by the Examiner. See generally Final Act. 2-9; Ans. 5-12. 8 Appeal2014-002595 Application 13/366,661 exerted on the pin. Appeal Br. 17-18 (showing an annotated Figure 3, with gap "A" identified). Appellants further contend that although Cox describes pin 40 as being in "engagement" with the tool head, Cox does not use the term as defined in Appellants' Specification and, when read in light of Figure 3, Cox's description simply means that the pin is "trapped" in the tool head. Id. at 17. We are unpersuaded by Appellants' arguments. The evidence of record supports the Examiner's finding that Cox's transverse pin 40 is "structured to engage the inner surface of the tool head eye [32]," as claimed. Final Act. 3, 7; Ans. 9-10. The Examiner's finding relies on Cox's disclosure that "[o]nce the hammer head is assembled onto the adapter sleeves 18 and 20, the dowel pin 40 is prevented from shifting or being dislodged due to engagement with the interior of the tapered bore [32] formed in the hammer head 12." Cox, 4:19-23; Ans. 9-10. This disclosure supports the Examiner's finding that pin 40 is "structured to engage the inner surface of the tool head eye," as the term "engage" is defined by Appellants' Specification, because this disclosure shows a bias between pin 40 and tool head eye 32 sufficient to prevent shifting or dislodging the pin. Ans. 9-10. We are unpersuaded by Appellants' arguments regarding Cox's Figure 3. Even if Figure 3 of Cox can be understood to disclose a gap between pin 40 and interior tapered bore 32 of hammer head 12, the fact remains that Cox discloses that pin 40 engages the interior 32, as recited in claims 11 and 24. This disclosure supports the Examiner's finding by a preponderance of evidence. Moreover, an artisan must be presumed to know 9 Appeal2014-002595 Application 13/366,661 something about the art apart from what the references disclose. See In re Jacoby, 309 F.2d 513, 516 (CCPA 1962). In this case, a person of ordinary skill in the art would have recognized readily that if a gap were present between pin 40 and bore 32, as Appellants suggest, Cox's handle 14 and hammer head 12 would not be fixed relative to each other and thus tool 10 would not function as intended. Obviousness over Cox and Carmien- Claims 3-7 and 16--20 The Examiner finds that Cox does not disclose that the mounting and anchor device include a groove and ridge, as claimed. Final Act. 4. The Examiner finds that Carmien teaches a tool handle adapter having a groove and ridge, which prevent longitudinal movement. Id. The Examiner concludes that it would have been obvious to one skilled in the art to modify Cox "to have cooperating ridges and grooves as taught by Carmien to provide an extra factor of safety in the prevention of longitudinal movement." Id. Appellants argue that Carmien discloses "a self-locking and self- holding attachment," which "cannot include external hardware such as ... dowels and pins." Appeal Br. 21. Therefore, Appellants argue that "Carmien specifically teaches away from a combination with a dowel, as in Cox." Id. (emphasis omitted). Appellants argue that Carmien also teaches away because Carmien's device employs fiberglass while Cox's device employs metal. Id. We are unpersuaded by Appellants' arguments. A prior art reference is said to teach away from an applicant's invention "when a person of ordinary skill, upon reading the reference, would be discouraged from 10 Appeal2014-002595 Application 13/366,661 following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). We recognize Appellants' argument that the Examiner does not cite any "rule or case that holds that the 'teach[ing] away from [a] combination' must be found in the primary reference." Reply Br. 10-11. However, wherever the purported teaching away may be found, Appellants have not articulated persuasively why one skilled in the art would be discouraged from modifying Cox's device to include Carmien's cooperating ridges and grooves "to provide an extra factor of safety in the prevention of longitudinal movement," as proposed by the Examiner. Final Act. 4. That Carmien's device excludes wedges,6 or is made from fiberglass, does not establish that it would not have been obvious to include Carmien's engagement feature in Cox's device to provide "a dual factor of safety." Ans. 11-12. DECISION The rejection of claims 2, 10, 11, 15, 23, and 24 under 35 U.S.C. § 102(b) as anticipated by Cox is AFFIRMED; The rejection of claims 3-7 and 16-20 under 35 U.S.C. § 103(a) as unpatentable over Cox and Carmien is AFFIRMED. 6 We note that Carmien does not exclude specifically all "external hardware," such as dowels or pins, as Appellants suggest. See, e.g., Appeal Br. 21-22. Rather, Carmien discloses a device "in which all driven wedges and re-wedging are eliminated." Carmien, 3:23-26. 11 Appeal2014-002595 Application 13/366,661 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 12 Copy with citationCopy as parenthetical citation