Ex Parte NOAH et alDownload PDFPatent Trial and Appeal BoardDec 22, 201613076945 (P.T.A.B. Dec. 22, 2016) 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. 13/076,945 03/31/2011 MARK P. NOAH 295888-00018-3 4708 3705 7590 12/27/2016 ECKERT SEAMANS CHERIN & MELLOTT, LLC 600 GRANT STREET 44TH FLOOR PITTSBURGH, PA 15219 EXAMINER SALONE, BAYAN ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 12/27/2016 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 MARK P. NOAH, GLENN R. SNYDER, JOSEPH BRANDON DELANEY, ROBERT A. GAGLIARDI, and DAVID CARL JONES Appeal 2014-009628 Application 13/076,945 Technology Center 3700 Before MICHELLE R. OSINSKI, LISA M. GUIJT, and GORDON D. KINDER, Administrative Patent Judges. OSINSKI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Mark P. Noah et al. (Appellants)1 appeal under 35 U.S.C. § 134 from the Examiner’s final decision rejecting claims 1—19 under 35 U.S.C. § 103(a) as unpatentable over Eveleth (US 540,967, iss. June 11, 1895) and Persson (US 4,212,559, iss. July 15, 1980). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Appellants identify the real party in interest as Penn United Technologies, Inc. Appeal Br. 1. Appeal 2014-009628 Application 13/076,945 THE CLAIMED SUBJECT MATTER Claims 1, 8, and 14 are independent. Claim 1, reproduced below, is illustrative of the claimed subject matter on appeal. 1, A hand tool comprising: a tool head having a claw, said tool head defining an elongated socket with a bottom; a handle coupled to said tool head; a plunger assembly having an elongated body with a top end, a bottom end and a locking assembly; said plunger assembly body rotatably and movably disposed in said socket, said plunger assembly body structured to move between a first, withdrawn position, wherein said plunger assembly body is substantially disposed within said socket, and a second, extended position, wherein said plunger assembly body ex tends from said socket; said locking assembly includes a fixed latch member extending laterally across a portion of said socket, an upper, first lateral notch in said plunger assembly body adjacent said top end, and a lower, second lateral notch in said plunger assembly body adjacent said bottom end; and wherein, when said plunger assembly body is in said first, withdrawn position, said first notch engages said fixed latch member and, when said plunger assembly body is in said second, extended position, said second notch engages said fixed latch member. Appeal Br. 26 (Claims App). OPINION Claims 1—3, 5, 7—10, 12, 14—16, and 18 Appellants argue claims 1—3, 5, 7—10, 12, 14—16, and 18 as a group. Appeal Br. 9-25. We select claim 1 as the representative claim, and claims 2, 3, 5, 7—10, 12, 14—16, and 18 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv)(2014). 2 Appeal 2014-009628 Application 13/076,945 The Examiner finds that Eveleth teaches most of the limitations of independent claim 1, including, inter alia, a “plunger assembly body (D) movably disposed in . . . socket (c), said plunger assembly body (D) structured to move between a first, withdrawn position . . . and a second, extended position,” as well as a “locking assembly (G, f) [that] includes a fixed latch member (G), an upper, first lateral notch (f) in said plunger assembly body (D) adjacent said top end (J), and a lower, second lateral notch (f) . . . adjacent said bottom end.” Final Act. 5. The Examiner finds that Eveleth teaches that “when said plunger assembly body (D) is in said first, withdrawn position, said first notch (f) engages said fixed latch member (G) and, when said plunger assembly body (D) is in said second, extended position, said second notch (f) engages said fixed latch member (G).” Id. The Examiner acknowledges that Eveleth fails to teach plunger assembly body (D) being “rotatably disposed in said socket” and the fixed latch member “extending laterally across a portion of said socket.” Id. at 6. The Examiner finds that Persson teaches “a substantially cylindrical body[,] rotatably and movably disposed in a socket (6),” as well as “a locking assembly (5, 7) [that] includes a fixed latch member (7) extending laterally across a portion of said socket (6); a notch (4) in said cylindrical body (2) adjacent an end[,] wherein said cylindrical body (2) in a locked position, said notch (4) engages said fixed latch member (7).” Id. at 3 (citing Persson, 1:64—2:9, Figs. 1-5). The Examiner concludes that it would have been obvious to “substitute[e] the substantially cylindrical body . . . of Persson for the non- cylindrical, non-rotatable plunger body ... of Eveleth” and to “substitute] 3 Appeal 2014-009628 Application 13/076,945 the . . . locking assembly [5, 7] of Persson for the . . . locking assembly of Eveleth.” Id. The Examiner’s conclusion of obviousness is based on the substitution of the components as described above “achieving the claimed invention of the instant application,” and doing so “with no change in the[] respective functions [of the substituted components] and [where] the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.” Id. at 3^4. The Examiner further finds that one of ordinary skill in the art would have a “reasonable expectation of success” in substituting the components because both Eveleth and Persson “are concerned with . . . mounting movable bodies in sockets” that “engage latch members.” Id. at 7; Ans. 11. The Examiner also determines that one of ordinary skill in the art would be led to make the predictable substitution because Persson teaches it would be advantageous to have a locking assembly “capable of absorbing forces from all directions” (Final Act. 6 (citing Persson, 1:64—2:9, Figs. 1—5)) and it would also “reduc[e] the number of parts required to manufacture the invention of Eveleth,” saving costs and manufacturing time (Ans. 11). Appellants argue that the principle of operation of Eveleth’s device “is that the plunger is non-rotatable and trapped in the socket.” Appeal Br. 10; see also Reply Br. 2—3. Appellants argue that modifying Eveleth so that its plunger is substantially cylindrical and rotatable and so that its locking assembly has a fixed latch member that extends laterally across a portion of the socket would change the principle of operation of Eveleth and render Eveleth unsatisfactory for its intended purpose. Reply Br. 3. We disagree with Appellants because their arguments rely on an overly narrow characterization of Eveleth’s principle of operation and intended purpose. 4 Appeal 2014-009628 Application 13/076,945 The “principle of operation” referred to by Appellants 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)). Under In re Ratti, “a change in the basic principles” refers to change that is fundamental in scope so as to relate to scientific or technical principles under which the invention is designed to operate. It cannot be said that a “change in the basic principles” occurs by making the plunger cylindrical and rotatable and having the notches engage with a latch member extending laterally across the socket, when Eveleth’s hammer continues to allow' a plunger to slide within a socket in the hammer. See Ans. 11 (Examiner asserting that both Eveleth and Persson are broadly concerned with “movable bodies, disposed in sockets[,] that engage latch members”). Furthermore, the intended purpose of Eveleth is to “pull out. . . nails without marring the work they are being extracted from” by “including a plunger [that] slides within a socket in the hammer and is adapted to project beyond the hammer head.” Eveleth, 1:12—14, 21—24. Modifying Eveleth as taught by Persson would not impede full performance of the intended purpose. As explained by the Examiner, “[t]he invention of Eveleth would still function properly if provided with a cylindrical plunger disposed in a socket having the same, or similar dimensions as the disclosed socket (c) of Eveleth. . . . [U]pon removal of the set screw (g)[,] a cylindrical plunger is permitted to rotate as desired and is capable of being maintained in a desired 5 Appeal 2014-009628 Application 13/076,945 configuration by the latching member (G) and the set screw (g) when required.” Final Act. 14. We have also considered Appellants’ argument that “the cited references teach away from a combination.” Appeal Br. 20. We do not find this argument persuasive because prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed (see In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)), and Appellants have not identified where Eveleth or Persson actually discourages the claimed invention. Appellants argue that substituting Persson’s shank for Eveleth’s plunger would not allow the resulting device to move between a first and second position because Persson’s shank has only a single notch. Appeal Br. 13—14. The argument is not persuasive because it does not address the rejection as articulated by the Examiner, which does not replace Eveleth’s plunger with Persson’s shank, but merely modifies Eveleth’s multi-notched plunger to be cylindrical and rotatable. See Ans. 10 (The Examiner explaining that, when incorporating Persson’s teachings into Eveleth, “a cylindrical plunger having a plurality of notches [is provided] that engages a fixed latch member extending laterally across a portion of the socket”). Appellants also argue that substituting Persson’s fixed latch that extends across a portion of the socket for Eveleth’s pivoting latch would not allow the Eveleth plunger to move at all. Appeal Br. 14. According to Appellants, “the latch would engage a notch and, as stated by the Examiner, the plunger cannot rotate.” Id. Again, this argument is not persuasive because it does not address the rejection as articulated by the Examiner, 6 Appeal 2014-009628 Application 13/076,945 which simultaneously modifies Eveleth’s plunger to be cylindrical and rotatable, along with the modification to the latch. See, e.g., Final Act. 14. Appellants also make various arguments relating to the Examiner’s alleged failure to present a prima facie case of obviousness by failing to make all of the required findings in connection with a rationale to support a conclusion of obviousness. Appeal Br. 10-12, 14—19; see also Reply Br. 5— 13.2 We are not persuaded because the Examiner has at least found there was a motivation in the knowledge generally available to those of ordinary skill in the art to combine the teachings of Eveleth and Persson (Ans. 11) and there was a reasonable expectation of success in doing so (Final Act. 3— 4). See DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006) (stating that one rationale to support a conclusion that a claim would have been obvious is that “a person of ordinary skill in the art would have been motivated to combine the prior art to achieve the claimed invention and whether there would have been a reasonable expectation of success in doing so.”) (citation omitted). 2 Appellants argue that a “prima facie case of obviousness requires not only predictability or a reasonable expectation of success but also an apparent reason or suggestion to modify the prior art as proposed by the Examiner.” Appeal Br. 11 (citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Appellants question the Examiner’s “switch[] [in] terminology from ‘substitution’ to ‘combination’” and argue that the Examiner is conflating various rationales. Id. at 12, 17—18. Appellants argue that the Examiner has not made a finding “that the functions of the substituted components were known in the art” (id. at 15) and disagree that one of ordinary skill in the art would be motivated “to have a plunger ‘capable of absorbing forces from all directions’” in that a plunger only experiences force in a single direction (id. at 19 (quoting Final Act. 6)). 7 Appeal 2014-009628 Application 13/076,945 As to the Examiner’s specific motivation relating to a reduction in the number of parts, Appellants argue that this is instead indicative of unobviousness. Reply Br. 9 (citing In re Edge, 359 F.2d 896 (CCPA 1966)) (“[A] combination [that] has fewer elements than the cited art but maintains the function of the cited art is an indicia of unobviousness.”). We find Appellants’ reliance on Edge misplaced. Unlike in Edge, Appellants’ claimed subject matter does not omit elements completely while retaining their function, but rather replaces certain elements (e.g., the prior art locking assembly of Eveleth) with certain other elements (e.g., certain features of the shaft and locking assembly of Persson) that perform the same function of permitting movement of a body in a socket that engages a latch member. This situation is distinguishable from the facts in Edge, where the court found that the prior art’s intermediate layer was omitted but its functionality retained. See In re Edge, 359 F.2d at 899. Appellants also argue that “the element identified by the Examiner ‘latch member (G)’ pivots and cannot be a ‘fixed latch member’ as recited in the claims.” Reply Br. 4. Assuming arguendo that latch member G is not a fixed latch member, we are not persuaded by Appellants’ argument because it fails to address the rejection as articulated by the Examiner. The rejection is based on substituting Persson’s locking assembly that includes “fixed latch member (7)” for Eveleth’s locking assembly. Final Act. 3. Appellants do not explain how Persson’s latch member is not fixed. For the foregoing reasons, we are not persuaded that the Examiner erred in concluding that Eveleth and Persson renders obvious the subject matter of independent claim 1, and we sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a) as unpatentable over Eveleth and Persson. 8 Appeal 2014-009628 Application 13/076,945 We also sustain the rejection of claims 2, 3, 5, 7—10, 12, 14—16, and 18 which fall with independent claim 1. Claims 4, 11, and 17 Dependent claims 4, 11, and 17 recite that the “plunger assembly body bottom end has a greater cross-sectional area than said passage [defined by the fixed latch member extending across the socket as a chord], whereby said plunger assembly body is trapped in said socket.” Appeal Br. 28, 30, 33 (Claims App.). The Examiner finds that Persson discloses that “the cylindrical shank (2) bottom end has a greater cross-sectional area than a passage having a width defined by a fixed latch member (7) extending laterally across a socket (6) as a chord, whereby said cylindrical shank (2) is trapped in said socket (6).” Final Act. 7 (citing Persson, 2:10-39, Figs. 1—5). The Examiner concludes it would have been obvious to utilize this feature “with the invention of Eveleth, for the benefit of ensuring the plunger is properly secured within the socket.” Id. Appellants argue that in order for beveled portion 3 of Persson’s shank 2 to pass locking pin 7 (Persson, 2:10—12), the cross-sectional area of shank 2 at beveled portion 3 “must be smaller than the narrow portion of the passage defined by the locking pin 7.” Appeal Br. 22; see also Reply Br. 4— 5, 16—18. The Examiner responds that “the bottom cross-sectional area of . . . shank (3)... is larger than the passage defined by the latch member (7). When the shank (3) is rotated, the latch member (7) is bent back to allow the notch (4) to engage the latch member (7) and lock the shank (3) in place.” Ans. 12 (citing Persson, 2:12—24). The Examiner continues that “[w]ith respect to this orientation, the shank bottom end has a greater cross-sectional area than the passage as defined by the latch member.” Id. 9 Appeal 2014-009628 Application 13/076,945 Appellants counter that “the cross-sectional area of the Persson shank [does not] change[] with orientation about the shank’s longitudinal axis” (Reply Br. 18) and maintain that “the shank lower end must have a smaller cross-sectional area than the passage defined by the locking pin” because “beveled portion 3, including the tapered bottom end, is structured to pass the locking pin 7” (id. at 5). We agree with Appellants. The Examiner has not established by a preponderance of the evidence that Persson teaches the claimed limitation of a bottom end of the plunger assembly body having a greater cross-sectional area than a passage having a width defined by a fixed latch member extending laterally across the socket as a chord. As such, the Examiner’s conclusion of obviousness is based on an erroneous finding as to the scope and content of Persson. For the foregoing reasons, we are persuaded that the Examiner erred in concluding that Eveleth and Persson renders obvious the subject matter of dependent claims 4, 11, and 17, and we do not sustain the rejection of dependent claims 4, 11, and 17 under 35 U.S.C. § 103(a) as unpatentable over Eveleth and Persson. Claims 6, 13, and 19 Dependent claim 6, 13, and 19 recite that the tool head has an axial portion and a neck with a narrow medial portion and that the socket “extend[s] through said axial portion and into, but not through, said neck medial portion.” Appeal Br. 28, 31, 33 (Claims App.). The Examiner acknowledges that the combination of Eveleth and Persson “does not explicitly disclose said socket extending through said axial portion and into, but not through, said neck medial portion.” Final Act. 12. The Examiner, however, concludes that “it would have been an obvious 10 Appeal 2014-009628 Application 13/076,945 matter of design choice to modify the socket of the combination to obtain the invention.” Ans. 8 (citing In re Dailey, 357 F.2d 669 (CCPA 1966)). The Examiner finds that Appellants do not disclose that the claimed feature is for any particular purpose or solves a stated problem, and further, that a person of ordinary skill in the art would have expected the hammer “to perform equally well with either socket because both perform the same function of housing the movable plunger.” Id. Appellants argue that “the Examiner does not appear to be relying upon any law, rule or precedent for the rule applied . . . and has improperly shifted the burden of proof to the Appellants.” Appeal Br. 23. We are not persuaded of error because the Examiner’s rejection is based on supporting legal precedent holding that a particular shape or configuration is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular shape or configuration was significant. See Dailey, 357 F.2d 669. Without any persuasive argument showing that the claimed configuration is critical or achieves any particular result as compared to other configurations, Appellants have failed to show error by the Examiner in concluding that the claimed limitation would have been an obvious design choice based on supporting legal precedent. For the foregoing reasons, we are not persuaded that the Examiner erred in concluding that Eveleth and Persson renders obvious the subject matter of dependent claims 6, 13, and 19, and we sustain the rejection of dependent claims 6, 13, and 19 under 35 U.S.C. § 103(a) as unpatentable over Eveleth and Persson. 11 Appeal 2014-009628 Application 13/076,945 DECISION The Examiner’s decision to reject claims 1—3, 5—10, 12—16, 18, and 19 under 35 U.S.C. § 103(a) is affirmed. The Examiner’s decision to reject claim 4, 11, and 17 under 35 U.S.C. § 103(a) is reversed. 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 12 Copy with citationCopy as parenthetical citation