Ex Parte Nilsson

Patent Trial and Appeal Board

Sep 11, 2017

13261295 (P.T.A.B. Sep. 11, 2017)

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.
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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
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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
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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.
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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:
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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.
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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
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