Ex Parte Nguyen et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612602651 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/602,651 12/01/2009 Dennis P. Nguyen 64833 7590 05/31/2016 FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION) P.O. BOX 692289 HOUSTON, TX 77269-2289 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. OTD-031017US (CMRN:0015) CONFIRMATION NO. 6908 EXAMINER MASINICK, JONATHAN PETER ART UNIT PAPER NUMBER 3679 MAILDATE DELIVERY MODE 05/31/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DENNIS P. NGUYEN and KIRKP. GUIDRY Appeal2014-003399 Application 12/602,651 Technology Center 3600 Before MICHELLE R. OSINSKI, JILL D. HILL, and THOMAS F. SMEGAL, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-003399 Application 12/602,651 STATEMENT OF THE CASE Dennis P. Nguyen and Kirk P. Guidry (Appellants) 1 appeal under 35 U.S.C. § 134 from the Examiner's final decision rejecting claims 1-5, 7, 8, 11, 13-17, 30-32, and 35--43 under 35 U.S.C. § 103(a) as unpatentable over Nguyen (US 6,695,356 B2, iss. Feb. 24, 2004) and Wightman (US 4,641,708, iss. Feb. 10, 1987).2 Final Act. 3-17.3 We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM-IN-PART. THE CLAIMED SUBJECT MATTER Claims 1, 41, and 43 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter on appeal. 1. A system, comprising: a connector configured to secure a first component to a second component, wherein the connector comprises: a collar configured to receive the first component and the second component, wherein the collar includes a first coupling end configured to couple with the first component and a second coupling end configured to couple with the second component; a load ring disposed within the second coupling end of the collar, wherein the load ring comprises a radial path of 1 According to Appellants, the real party in interest is Cameron International Corporation. App. Br. 2. 2 The rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Nguyen and Wightman (Final Act. 6-7) has been withdrawn and is not before us on appeal. Ans. 3. 3 The rejection of claim 43 under 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter regarded as the invention (Final Act. 2) has been withdrawn and is not before us on appeal. Ans. 3. 2 Appeal2014-003399 Application 12/602,651 movement between a first radial position and a second radial position relative to the second coupling end, the load ring is radially spaced apart from the second coupling end of the collar in the first radial position, the load ring is in engagement with the second coupling end of the collar in the second radial position, at least one fastener selectively holds the load ring in the first radial position, and the load ring is automatically expandable from the first radial position to the second radial position upon release of the at least one fastener; and a locking ring disposed adjacent the load ring, wherein the locking ring comprises an axial path of movement between a first axial position and a second axial position relative to the load ring, the locking ring in the first axial position is disposed axially offset from the load ring in the first radial position, the locking ring in the second axial position is disposed axially overlapping with the load ring in the second radial position to block movement of the load ring to the first radial position, and the load ring blocks axial movement of the locking ring from the first axial position to the second axial position until after the load ring expands to the second radial position. OPINION Claims 1-5, 7, 8, 11, 14-17, 30--32, and 35, 36, 38, 39, 40, 43 The Examiner finds that Nguyen teaches, inter alia, a system comprising connector 500 for securing a first component to a second component, the connector comprising collar 514 and load ring 540. Final Act. 3--4 (citing Nguyen, Figs. 18, 20). The Examiner acknowledges that Nguyen fails to teach a locking ring disposed adjacent the load ring and turns to Wightman' s teaching of locking ring 61 comprising an axial path of movement between a first axial position and a second axial position for mating with load ring 51. Id. at 4 (citing Wightman, Figs. 1, 5, 3:42--47). The Examiner concludes that 3 Appeal2014-003399 Application 12/602,651 it would have been obvious to a person having ordinary skill in the art at the time of invention to have modified Nguyen such that the system of Nguyen comprises a locking ring with an axial path of movement between first and second axial positions, the locking ring in the first axial position being axially offset from the load ring, and the locking ring in the second axial position overlapping with the load ring and capable of blocking movement of the load ring to the first radial position, as taught by Wightman, for the purpose of mating with the load ring. The claimed arrangement of the load ring and the locking ring would be an obvious arrangement since it has been held that merely rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Id. at 4--5. Appellants argue that Nguyen and Wightman fail to teach or suggest that "the load ring is automatically expandable from the first radial position to the second radial position upon release of the at least one fastener" and that "the locking ring in the second axial position is disposed axially overlapping with the load ring in the second radial position to block movement of the load ring to the first radial position, and the load ring blocks axial movement of the locking ring from the first axial position to the second axial position until after the load ring expands to the second radial position. App. Br. 9 (quoting claim 1) (emphasis omitted). Appellants point to Nguyen's teaching of an embodiment in which split ring 540 (identified by the Examiner as the claimed load ring) "has a relaxed contracted state that may be forced and held in an expanded state by threaded studs 560," such that split ring 540 cannot be automatically expandable. Id. at 9-10 (citing Nguyen, 8:42-62). 4 Appeal2014-003399 Application 12/602,651 The Examiner's position, however, is not premised on this embodiment of an "inwardly biased split ring," but on Nguyen's disclosure of an alternate embodiment including "an outwardly biased or hinged split ring." Final Act. 4 (citing Nguyen, 9: 19-25) (emphasis omitted). Appellants acknowledge that the Examiner's position is based on the alternate embodiment, but argue that "at most, Nguyen merely suggests an outwardly biased split ring that may be held in an expanded state by threaded studs 560, as Nguyen describes with respect to an inwardly biased split ring," but "does not disclose a load ring that automatically expands upon release of a fastener." App. Br. 10 (emphasis omitted). An Examiner's burden of proving unpatentability when rejecting claims in a patent application is by a preponderance of the evidence. In re Caveney, 761F.2d671, 674 (Fed. Cir. 1985). In order to satisfy this standard, the evidence must demonstrate that it is more likely than not that the alleged facts are actually true. See Bosies v. Benedict, 27 F.3d 539, 542 (Fed. Cir. 1994) (noting that the preponderance of the evidence standard "only requires the fact finder 'to believe that the existence of a fact is more probable than its nonexistence"' (quoting In re Winship, 397 U.S. 358, 371 (1970)). For the reasons that follow, we determine that the Examiner has met that burden in this case. The Examiner points to Nguyen's disclosure that "[a]lthough this embodiment [of Figures 18-22] has been described using an inwardly biased split ring, it will be obvious to those of ordinary skill in the art that this embodiment could be modified to use an outwardly biased or hinged split ring as used in the previous embodiments." Final Act. 4 (citing Nguyen, 5 Appeal2014-003399 Application 12/602,651 9: 19-25). In connection with those previous embodiments utilizing an outwardly biased split ring, Nguyen describes that "outwardly biased" means that "in its relaxed position it will lie approximately halfway in each of the recesses of the pin and box connection members [12, 14] and lock the members together." Nguyen, 2:16-20; see also at 5:30-33. This is in contrast to an inwardly biased split ring in which "in its relaxed position it is retracted to the inner wall of the pin connection member recess." Id. at 1:58---61; see also id. at 6:33-35. In connection with the outwardly biased split ring embodiments, Nguyen describes that contraction or compression of the outwardly biased split ring is achieved and retained by "retainer means including threaded holes 46 in recess 42 and threaded fasteners 48 ... provided to ensure split ring 102 remains in a contracted state during insertion of pin connection member 12 into box connection member 14." Id. at 6: 1-5. A person having ordinary skill in the art would reasonably infer from that description that the outwardly biased split ring 102 automatically expands upon release of the threaded fasteners 48 to return to its relaxed position. The disclosure of Nguyen discussed above conveys that it is more probable that the outwardly biased split ring of the alternately described embodiment is automatically expandable from a first radial position to a second radial position upon release of a fastener, than that the outwardly biased split ring is required to be held in an expanded state by threaded studs as alleged by Appellants. Thus, on the record before us, the Examiner's finding that Nguyen's load ring is automatically expandable, as called for in the independent claims, is supported by a preponderance of the evidence. 6 Appeal2014-003399 Application 12/602,651 Appellants also argue that Wightman teaches that upper load ring 61 (identified by the Examiner as the claimed locking ring) forcibly drives split ring 51 radially outwardly, "rather than merely allowing the ring 51 to automatically expand upon release of a fastener." App. Br. 11 (emphasis omitted) (citing Wightman, 3:41-56). We agree with Appellants that Wightman' s split ring 51 does not automatically expand by release of a fastener. This argument, however, fails to address the rejection as articulated by the Examiner, which does not rely on Wightman's split ring 51, but rather on Nguyen's disclosure of an outwardly biased split ring in connection with the alternate embodiment ofNguyen's Figures 18-22. Appellants further argue that "the cited references teach contrastingly different intended purposes and principles of operation, which would change if the cited references were hypothetically combined as suggested by the Examiner." App. Br. 15. More particularly, Appellants argue that Nguyen's principle of operation is "securing a split ring ... in an expanded or locked position with threaded studs and a wedge block, whereas Wightman's principle of operation is "to forcibly drive a split ring ... to expand and then subsequently hold the split ring ... in the expanded state." Id. at 15-16 (citing Nguyen, Figs. 8, 14, 18, 6:13-17, 7:21-25, 8:47---66; Wightman, 3 :42---60) (emphasis omitted). Appellants maintain that "[i]f the upper load ring 61 of Wightman is hypothetically combined with the split ring 540 of Nguyen, then the hypothetical combination would change the principle of operation of Nguyen by eliminating (or rendering inoperable) the locking mechanism based on the holes and threaded studs as well as the wedge blocks." Id. at 16. 7 Appeal2014-003399 Application 12/602,651 The Examiner responds that "both of these references have the same principle of operation in that an element is inserted to lock the load ring in a locked state" and that "[p ]roviding the locking ring ( 61) of Wightman in the device of Nguyen does not eliminate any principle features or operation of the Nguyen reference nor does it change the above stated principle of operation of locking the load ring in a locked position." Ans. 10. We agree with the Examiner that Appellants have defined the operation principles of Nguyen and Wightman too narrowly, as this term actually relates to the "basic principles" under which the prior art device was designed to operate. In re Ratti, 270 F.2d 810, 813 (CCPA 1959) ("This suggested combination of references would require a substantial reconstruction and redesign of the elements shown in [the primary reference] as well as a change in the basic principles under which the [primary reference] construction was designed to operate." (Emphasis added)). In the case before us, the proposed modification of adapting Wightman's locking ring for use with Nguyen's outwardly biased split ring does not necessitate a change in the basic principles under which Nguyen operates. In particular, the Examiner notes that the embodiment of Figures 18-22 ofNguyen does not even use or disclose a wedge block as included in Appellants' narrow statement regarding the principle of operation, and also that the addition of a locking ring to secure the load ring in this embodiment does not obviate the use of Nguyen's fastener with the load ring. Final Act. 18. For the forgoing reasons, we are not persuaded that the Examiner's rejection of independent claims 1 and 43 was in error. We are also not 8 Appeal2014-003399 Application 12/602,651 persuaded that the Examiner's rejection of dependent claims 2-5, 7, 8, 11, 14--17, 30-32, 35, 36, and 38--40, for which Appellants rely on the same arguments and reasoning we found unpersuasive in connection with the independent claims, is in error. See App. Br. 7. Accordingly, we sustain the rejection of claims 1-5, 7, 8, 11, 14--17, 30-32, and 35, 36, 38, 39, 40, 43 under 35 U.S.C. § 103(a) as unpatentable over Nguyen and Wightman. Claims 3 7 and 41 Appellants separately argue the patentability of dependent claim 37 and independent claim 41. App. Br. 11-12. These claims recite that the locking ring has "a first cylindrical surface, a second cylindrical surface, and an annular lip between the first and second cylindrical surfaces, ... wherein the annular lip is generally perpendicular to the first and second cylindrical surfaces." Id. at 22, 23 (Claims App.). The Examiner finds that the locking ring taught by Wightman has first and second cylindrical surfaces and "an annular lip (shoulder 63) between the first and second cylindrical surfaces." Final Act. 11. The Examiner finds that "the annular lip is generally perpendicular to the first and second cylindrical surfaces (while this ... surface does appear to be angled it is considered to be broadly 'generally' perpendicular)." Id. (discussing claim 37); see also id. at 13 (discussing claim 41 ) . Appellants argue that Wightman's "shoulder 63 of the load ring 61 appears to be at an approximately 45 degree angle to external side surfaces of the load ring 61" and that "[a]s such, one o[fJ ordinary skill in the art would not appreciate the shoulder 63 of Wightman to be 'generally 9 Appeal2014-003399 Application 12/602,651 perpendicular' to the exterior side surfaces of the load ring 61." App. Br. 12 (citing Wightman, Fig. 5) (emphasis omitted). We agree with Appellants that it is unreasonable to consider Wightman's approximately 45 degree angle shoulder 63 as being "generally perpendicular" considering the large amount of deviation from 90 degrees that is present.4 The Examiner, however, alternately asserts that "it would also have been obvious to have varied the angle of the surfaces of the load ring and locking ring to meet the desired force needed to drive the locking ring behind the load ring. Accordingly, this angle could be very close to perpendicular, which would read on 'generally perpendicular."' Ans. 6-7. Appellants do not address this alternate conclusion (see Reply Br. 3 (Appellants merely reiterating that"[ o ]ne of ordinary skill in the art would not appreciate surfaces at a 45 degree angle to one another to be 'generally perpendicular' to one another," rather than addressing the obviousness of a generally perpendicular annular lip)). 4 The term "generally" can be used as a term of approximation to mean "mostly" and to allow some degree of deviation. See, e.g., North Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1346 (2005) ("generally" was used as a term of approximation such that "generally convex" meant "mostly convex"); Anchor Wall Sys. V. Rockwood Retaining Walls, 340 F.3d 1298, 1310-11 (Fed. Cir. 2003) (noting that "generally" is a word of approximation used in patent claims to avoid a strict numerical boundary to a specified parameter and "generally parallel" envisions some amount of deviation from exactly parallel); Schoell v. Regal Marine Indus., Inc., 247 F.3d 1202, 1208 (Fed. Cir. 2001) ("generally" means "mostly" so that claimed "generally flat aft keel" is not limited to a completely flat surface). 10 Appeal2014-003399 Application 12/602,651 Accordingly, we are not persuaded that the Examiner's rejection of claims 37 and 41 was in error, and we sustain the rejection of claims 37 and 41under35 U.S.C. § 103(a) as unpatentable over Nguyen and Wightman. Claim 13 Appellants separately argue the patentability of dependent claim 13. App. Br. 13-14. Dependent claim 13 positively recites "the second component," describing that "the at least one fastener selectively holds the load ring in the first radial position to facilitate insertion and removal of the second components from the collar." Id. at 20 (Claims App.). The Examiner finds that Nguyen as modified by Wightman teaches this limitation (Final Act. 8), and elaborates that: fastener 560 of ... Nguyen ... would also be capable of retaining the load ring spring in a contracted state, whereby releasing the fastener would cause the load ring to be automatically expanded. When the load ring is in this contracted state, the collar is able to be inserted and removed from the second component (the component having the load ring and groove. Figure 20 of Nguyen shows that the collar (526) is indeed capable of being removed from the component (512) when the load ring 540 is in a contracted state in the first radial position. Ans. 7. Appellants argue that "the threaded studs 560 hold the split ring 540 of Nguyen in the expanded state to block removal of the pin connection member 12 from the box connection member 514" and that Wightman fails to cure this deficiency. App. Br. 14 (citing Nguyen 8:42---62). This argument fails to address the rejection as articulated by the Examiner, which relies on Nguyen's alternate disclosure of an outwardly biased split ring in connection with the embodiment ofNguyen's Figures 18-22, in which 11 Appeal2014-003399 Application 12/602,651 threaded fasteners would be used to ensure the outwardly biased split ring remains in a contracted state to facilitate insertion of pin connection member 12 into box connection member 14. See Nguyen, 6: 1-5, 9: 19-25. Accordingly, we are not persuaded that the Examiner's rejection of claim 13 was in error, and we sustain the rejection of claim 13 under 35 U.S.C. § 103(a) as unpatentable over Nguyen and Wightman. Claim 36 Appellants separately argue the patentability of dependent claim 36. App. Br. 14--15. Dependent claim 36 recites "wherein the locking ring in the second axial position is concentric with the load ring in the second radial position, and the locking ring in the second axial position overlaps at least one receptacle of the load ring for the at least one fastener." Id. at 21 (Claims App.). The Examiner finds that Nguyen as modified by Wightman teaches this limitation (Final Act. 10-11 (citing Wightman, Figs. 1, 5) ), and elaborates that because Wightman teaches locking ring 61 axially and concentrically overlapping load ring 51, "the locking ring would therefore also overlap a receptacle of the load ring" (Ans. 8). Appellants argue that "neither the split ring 51 nor the load ring 61 of Wightman includes an aperture for at least one fastener," such that "the load ring 61 of Wightman cannot overlap at least one receptacle of the load ring 61 or the split ring 51." App. Br. 14--15 (citing Wightman, Fig. 5) (emphasis omitted). This argument fails to address the rejection as articulated by the Examiner, which relies on Nguyen's alternate disclosure of an outwardly biased split ring in connection with the embodiment of 12 Appeal2014-003399 Application 12/602,651 Nguyen's Figures 18-22 as the load ring, not Wightman's rings as the load rmg. Accordingly, we are not persuaded that the Examiner's rejection of claim 36 was in error, and we sustain the rejection of claim 36 under 35 U.S.C. § 103(a) as unpatentable over Nguyen and Wightman. Claim 42 Appellants separately argue the patentability of dependent claim 42. App. Br. 15. Dependent claim 42 recites that "the annular lip of the locking ring axially abuts an axial end of the load ring in the locked position of the locking ring." Id. at 23 (Claims App.). The Examiner finds that "Nguyen as modified by Wightman suggests that it would have been obvious to have arranged the locking ring and the load ring wherein the annular lip of the locking ring axially abuts an axial end of the load ring in the locked position of the locking ring since it has been held that rearranging parts of an invention involves only routine skill in the art." Final Act. 14. The Examiner clarifies in the Answer that "in the locked condition ... , the annular lip (which can be any of the angled surfaces of the locking ring 61) does indeed axially abut an axial end of the load ring (51)." Ans. 8 (citing annotated Figure 1 of Wightman reproduced on page 9 of the Examiner's Answer). Appellants respond that "the angled surfaces identified by the Examiner in the Examiner's Answer are not axial ends of the load ring 61" but rather "radial or side surfaces of the load ring 61" and that "[i]ndeed, the load ring 61 of Wightman does not abut axial ends of the split ring 51." Reply Br. 4 (emphasis omitted) (citing Wightman, Fig. 1). 13 Appeal2014-003399 Application 12/602,651 In rejecting claims under 35 U.S.C. § 103(a), the Examiner bears the initial burden of establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the burden of coming forward with evidence or argument shift to Appellants. See Oetiker, 977 F.2d at 1445; see also Piasecki, 745 F.2d at 1472. Here, the Examiner has not adequately explained specifically how Nguyen would incorporate a locking ring like Wightman' s locking ring 61 such that an annular lip of the locking ring axially abuts an axial end of Nguyen's outwardly biased load ring in the locked position of the locking ring. At most, the Examiner has sought to explain how Wightman' s locking ring might be considered to abut an axial end of Wightman' s split ring 51, but has failed to adequately address the specific combination with Nguyen. For the foregoing reasons, the Examiner has not satisfied the initial burden of presenting a prima facie case of obviousness with respect to dependent claim 42, and we do not sustain the Examiner's rejection of claim 42 under 35 U.S.C. § 103(a) as unpatentable over Nguyen and Wightman. DECISION The Examiner's decision to reject claims 1-5, 7, 8, 11, 13-17, 30-32, 35--41, and 43 under 35 U.S.C. § 103(a) as unpatentable over Nguyen and Wightman is affirmed. The Examiner's decision to reject claim 42 under 35 U.S.C. § 103(a) as unpatentable over Nguyen and Wightman is reversed. 14 Appeal2014-003399 Application 12/602,651 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 15 Copy with citationCopy as parenthetical citation