Ex Parte MULLEN et al

Patent Trial and Appeal Board

Mar 25, 2016

13366661 (P.T.A.B. Mar. 25, 2016)

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2 Claims 1, 8, 9, 12-14, 21, 22, 25, and 26 have been withdrawn.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.
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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
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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.
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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
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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.
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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[]
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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.
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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
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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
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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.
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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
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