Ex Parte NilssonDownload PDFPatent Trial and Appeal BoardSep 11, 201713261295 (P.T.A.B. Sep. 11, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/261,295 05/23/2012 Ulf Nilsson AC-195 8898 2529 7590 MARK P. STONE 400 Columbus Avenue Valhalla, NY 10595 09/13/2017 EXAMINER WALLACE, KIPP CHARLES ART UNIT PAPER NUMBER 3676 NOTIFICATION DATE DELIVERY MODE 09/13/2017 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): stone92349 @ msn. com aleitner. stonelaw @msn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ULF NILSSON Appeal 2016-000584 Application 13/261,295 Technology Center 3600 Before MICHAEL L. HOELTER, JILL D. HILL, and PAUL J. KORNICZKY, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2016-000584 Application 13/261,295 STATEMENT OF THE CASE Appellant, Ulf Nilsson,1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision, as set forth in the Final Office Action dated December 10, 2014 (“Final Act.”), rejecting claims 1—10. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE CLAIMED SUBJECT MATTER The claims are directed to a percussion rock drilling machine. Claim 1, the only independent claim on appeal, is reproduced below with disputed limitations italicized for emphasis: 1. A percussion rock drilling machine comprising a front head, in which front head are arranged a flush housing and a flush connector, wherein a sheath of rust-resistant material is arranged in the front head around the flush housing, such that flushing medium can enter the flush housing through the flush connector, without coming into contact with the front head. REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Prellwitz US 975,891 Nov. 15, 1910 Lagerstrom US 3,227,230 Jan. 4, 1966 Jenne US 5,695,014 Dec. 9, 1997 1 Appellant identifies Atlas Copco Drills AB as the real party in interest. Appeal Brief, dated May 6, 2015 (“Appeal Br.”), at 1. 2 Appeal 2016-000584 Application 13/261,295 REJECTIONS The Examiner made the following rejections: 1. Claims 1—4, 6, and 7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Prellwitz and Jenne. 2. Claims 5 and 8—10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Prellwitz, Jenne, and Lagerstrom. Appellant seeks our review of these rejections. DISCUSSION The Rejections of Claims 1—10 In response to Rejection 1, Appellant argues claims 1—4, 6, and 7 as a group. Appeal Br. 2. We select independent claim 1 as the representative claim, and dependent claims 2-4, 6, and 7 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). In response to Rejection 2, Appellant does not present any arguments directed to the patentability of dependent claims 5 and 8—10 over Prellwitz, Jenne, and Lagerstrom. Appellant relies on the same arguments presented for independent claim 1, from which claims 5 and 8—10 depend. Appeal Br. 2. The Examiner finds, in part, that Prellwitz discloses a percussion rock drilling machine comprising a front head 4 having a flush housing (i.e., chuck 6) and a flush connector (i.e., fluid supply pipe 18), and a sheath (i.e., tube 10) of material arranged in front head 4 around flush housing 6, such that flushing medium can enter flush housing 6 through flush connector 18, without coming into contact with front head 4. Final Act. 3. Appellant argues that the Examiner’s rejection is erroneous for several reasons. First, Appellant argues that Prellwitz calls element 6 a “drill 3 Appeal 2016-000584 Application 13/261,295 receiving chuck,” not a flush housing. Appeal Br. 3. According to Appellant, “[ejlement 9 is the ‘pressure fluid feeding chamber’ which is defined by the tube 10, the front end of the cylinder 1, and an inner shoulder 11 of the front head 4. Id. (citing Prellwitz 1:49—53). Appellant argues that “the chuck 6 does not provide a housing for the flush chamber 9, but it is the tube 10, and not the chuck 6, which provides the housing for the flush chamber,” and the “tube 10 is not a sheath arranged around a flush housing . . . , but tube 10 is the flush housing itself.” Id. In response to Appellant’s argument, the Examiner correctly explains that “there is nothing to prevent element 6 from being referred to as the flush housing since flushing fluid enters the housing 6 via the flush connector from the inside of element 21 given the hollow portion 20, passage 19, channel 22, and flush connector 18.” Answer, dated September 21, 2015 (“Ans.”), at 2 (citing Prellwitz 1:63—76). The Examiner is also correct that chamber 9 in the flush housing 6 “is only sealed at the upper end via 33, 29, 30” so that “fluid is able to enter housing 6 from the connector 18 around element 21 up until the sealing elements.” Id. (citing Prellwitz 1:88—98). Appellant’s argument is unpersuasive because it addresses only a portion of the fluid chamber 9. According to Appellant, the left side of the fluid chamber 9 (as illustrated in Figure 1) is formed by tube 10 and shoulder 11, but Appellant ignores the fact that the right side of fluid chamber 9 extends to the seal formed at elements 29, 30, as noted by the Examiner. Ans. 2; see, e.g., Prellwitz 1:88—98 (“A fluid tight packing is formed between the drill steel and its chuck at the outer end of the chuck as follows:—An elastic cup shaped washer 29 . . . [and] the circumferential flange 30 of which cup shaped washer . . .”). The Examiner correctly finds 4 Appeal 2016-000584 Application 13/261,295 that element 6 structurally defines a portion of the fluid chamber 9, and determines that it may be construed as the “fluid housing” recited in claim 1. Ans. 2. The Examiner also correctly finds that “[sjheath 10 surrounds a portion of the housing 6, and thus the claimed limitations are met.” Ans. 2. Second, Appellant argues that Prellwitz’s cup washer 23 disposed between tube 10 and chuck 6 is “not a sheath around the housing 10 for the fluid chamber 9.” Appeal Br. 3. As Appellant acknowledges, the Examiner does not rely on washer 23 for his findings. Id. Appellant’s argument does not address the rejection as articulated by the Examiner, and, thus, does not identify error. Third, Appellant argues that “Jenne has no flushing housing in the front head, and thus is distinctly different from the device disclosed and claimed by [Appellant]”, and “it will be necessary to form the entire front head 12 of Jenne from a corrosion resistant material.” Appeal Br. 4. However, Appellant is attacking the teachings of Jenne individually. Nonobviousness cannot be established by attacking the references individually when the rejection is predicated upon a combination of prior art disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner finds that Prellwitz, not Jenne, discloses a flush housing. Final Act. 3. The Examiner also finds that “it is well-known to provide corrosion-resistant material such as stainless steel for any component coming into contact with a fluid in a drill,” and it would have been obvious to use stainless steel for part 10, not the entire front head, because part 10 comes into contact with the fluid. Id. at 4 (citing Jenne 2:58—63). Appellant does not address the rejection as articulated by the Examiner, and, thus, does not identify error by the Examiner. 5 Appeal 2016-000584 Application 13/261,295 Finally, Appellant argues that “there is no teaching or suggestion to combine [Prellwitz and Jenne] in any manner rendering independent claim 1 obvious, without the benefit of the teachings of [Appellant’s] own disclosure.” Appeal Br. 5. According to Appellant, the specific arrangement of the rock drilling machine defined by independent claim 1, “which addresses both the rust-proofing and strength issues, is not taught, suggested or recognized by any of the applied prior art references, either individually or in combination,” and “neither [Prellwitz nor Jenne] disclose or suggest a rock drilling machine formed from a strong but not rust- resistant material except for only the portions thereof which contact flushing material which are formed from a less strong but rust-resistant material.” Id. at 6. Appellant explains that because “Prellwitz patent has no rust resistant sheath around the flushing housing while the Jenne patent has no flushing housing, no flush connector and no rust-resistant sheath,” “there is no basis for combining these references in any manner rendering independent claim 1 obvious without the benefit of the teachings of [Appellant’s] own disclosure.” Id. at 7—8. Appellant’s argument that Prellwitz and Jenne do not disclose a motivation to combine is unpersuasive. Contrary to Appellants’ argument, an express teaching or motivation in the references is not required. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Instead, the Examiner need only articulate a reason to combine the references with some rational underpinning to support the legal conclusion of obviousness. Id. Nevertheless, the Examiner’s finding and articulated reasoning is fully supported by Jenne. Jenne states: 6 Appeal 2016-000584 Application 13/261,295 In order to be able to use water as the pressure fluid without danger of corrosion, it is practical if at least the portions of the ram boring device which come into contact with the pressure fluid are made of a corrosion resistant material, especially stainless steel. Jenne 2:58—63. Relying on Jenne, the Examiner finds that “it is well-known to provide corrosion-resistant material such as stainless steel for any component coming into contact with a fluid in a drill” and it would have been obvious to use stainless steel for part 10, not the entire front head, because part 10 comes into contact with the fluid. Final Act. 4 (citing Jenne 2:58-63). Similarly, Appellant’s “hindsight” argument that “there is no basis for combining these references in any manner rendering independent claim 1 obvious without the benefit of the teachings of [Appellant’s] own disclosure” is unpersuasive. Appeal Br. 7. Appellant does not identify any knowledge relied upon by the Examiner that was gleaned only from Appellant’s disclosure and that was not otherwise within the level of ordinary skill at the time of the invention, thereby obviating Appellant’s assertion of hindsight. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Thus, Appellant does not apprise us of error. For the reasons above, the rejection of independent claims 1 and 15 is sustained. Dependent claims 2—10 fall with claim 1. 7 Appeal 2016-000584 Application 13/261,295 DECISION For the above reasons, the Examiner’s rejections of claims 1—10 are AFFIRMED. 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 8 Copy with citationCopy as parenthetical citation