Ex Parte Virgil et al

Board of Patent Appeals and Interferences

May 14, 2007

10293725 (B.P.A.I. May. 14, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte HALL VIRGIL JR., MERLE D. SEARS, and
MICHAEL L. BROWN
____________

Appeal 2006-3059
Application 10/293,725
Technology Center 3600
____________

Decided: May 14, 2007
____________

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and
LINDA E. HORNER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Hall Virgil Jr. et al. (Appellants) appeal under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-3, 6, and 7, the only pending
claims. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Appeal 2006-3059
Application 10/293,725

Appellants invented a mounting plate to which articles are secured by
threaded fasteners, the mounting plate having improved impact load
resistance properties (Specification [0001]). Claim 1, which is
representative of the claimed invention, reads as follows:
1. Mounting apparatus for supportively mounting
parts that includes:
a mounting plate having a flat top surface
and a bottom surface and at least one hole passing
through said plate;
a threaded fastener to be threadably received
in said hole;
an endless depression formed in said plate
that surrounds said hole, said depression
protruding upwardly from the top surface of the
plate; and
said depression having a size and a shape
such that the magnitude of stresses resulting from
impact loads about the at least one hole are
reduced to a level below the yield strength of the
plate
wherein said plate is fabricated of sheet
metal and the threaded fastener is a self tapping or
thread forming screw that forms a thread in said
hole upon entry therein.
Appellants seek review of the Examiner’s rejection of claims 1-3, 6,
and 7 under 35 U.S.C. § 102(b) as being anticipated by Hasan (US
5,908,278, issued June 1, 1999). Appellants also seek review of the
Examiner’s objection to the drawings and Specification. The issue of
compliance with 37 C.F.R. § 1.121(d) relates to a petitionable matter and not
to an appealable matter. See Manual of Patent Examining Procedure
(MPEP) §§ 1002, 1002.02(c), and 1201. Accordingly, we will not review
the first issue raised by Appellants on page 2 of the Appeal Brief.
2
Appeal 2006-3059
Application 10/293,725

The Examiner provides reasoning in support of the rejection in the
Answer (mailed June 5, 2006). Appellants present opposing arguments in
the Appeal Brief (filed March 16, 2006) and Reply Brief (filed June 26,
2006).

OPINION
We are presented with two issues in this appeal. The first issue is
whether Appellants have demonstrated that the Examiner erred in rejecting
claims 1-3 and 6 as anticipated by Hasan. As Appellants have not separately
argued the patentability of claims 2, 3, and 6 apart from claim 1, these
claims stand or fall with representative claim 1 (37 C.F.R.
§ 41.37(c)(1)(vii)). The second issue is whether Appellants have
demonstrated that the Examiner erred in rejecting claim 7 as anticipated by
Hasan. Specifically, Appellants contend that Hasan’s fastener 24 does not
form a thread in the hole (aperture 22) of the plate 10 upon entry therein, as
required by claim 1 (Appeal Br. 3-4). Appellants further contend that “the
structure of Hasan cannot reasonably be constructed as having the flat
section 12 immediately adjacent a lip surrounding the hole, since the conical
shaped depression 20 is disposed between the flat 12 and the lips” so as to
meet the limitation in claim 7 that “said flat section is immediately adjacent
a lip surrounding said at least one hole” (Appeal Br. 4-5).
We find that Hasan supports the Examiner’s position that Hasan’s
fastener 24 is a self tapping or thread forming screw that forms a thread in
the aperture 22 of Hasan’s plate 10 upon entry therein (Answer 3 and 4-5).
Specifically, Hasan teaches:
3
Appeal 2006-3059
Application 10/293,725

1. In the preferred embodiment, the fastener 24 has a thread diameter T
of 0.212 inch, which is greater than the aperture 22 diameter “in the
general range of 0.200 inch” (Hasan, col. 3, l. 67 to col. 4, l. 3).
2. The tip 32 of fastener 24 is of a self-tapping configuration (Hasan, col.
4, ll. 13-14).
3. The sleeve 38 circumscribing the aperture 22 depends from the
underside 36 of the plate 10 a sufficient distance to receive and
maintain the fastener 24 perpendicular to the plate 10 and, in
particular, has a length L “dimensioned to span approximately at least
one [thread] pitch of the fastener” (Hasan, col. 4, ll. 27-32 and 46-52).
4. The fastener 24 “threadably engages the aperture 22” (Hasan, col. 4,
l. 59).
5. Hasan’s “plate is preferably provided to the installer as an assembly
with the fastener threaded into the hole in the plate” (Hasan, col. 2, ll.
51-53).
Appellants theorize that, rather than forming threads, “when the
slightly larger diameter screw passes through the hole of the relatively
lightweight material of the plate 10, the diameter of the hole in the plate is
expanded to accommodate the slightly larger diameter screw” (Appeal
Br. 3). This theory is not supported by evidence and is expressly belied by
the teachings of Hasan cited above.
Appellants additionally argue, in essence, that Hasan’s teaching that
the sleeve 38 maintains the fastener 24 perpendicular to the sleeve “without
shaving, penetrating or otherwise damaging the protective anti-corrosion
coating of the fastener” (Hasan, col. 4, ll. 57-59) indicates that the fastener
does not form a thread (Appeal Br. 3). Hasan is very clear, as discussed
4
Appeal 2006-3059
Application 10/293,725

above, that the thread diameter of fastener 24 is slightly larger than the
aperture diameter and that the fastener threadably engages the aperture.
That such engagement occurs without shaving, penetrating, or otherwise
damaging the anti-corrosion coating on the fastener appears to be a
consequence of providing a depending sleeve 38, which does not present the
sharp edges of a hole (Hasan, col. 1, ll. 62-65), to engage the threads of the
fastener (Hasan, col. 2, ll. 45-51).
In light of the above, Appellants have not demonstrated that the
Examiner erred in rejecting claim 1 as anticipated by Hasan. The rejection
of claim 1, and claims 2, 3, and 6 depending from claim 1, is sustained.
Turning now to claim 7, the Examiner contends that, in the illustrated
embodiment of Hasan’s plate, the conically-shaped depression 20 and sleeve
38 together respond to the “lip” recited in the claim and points out that the
flat section of the main body 12 of the plate is immediately adjacent such lip
(Answer 5). In the alternative, the Examiner refers to Hasan’s teaching that,
“[i]f other fasteners are used, such as those having flat heads, the flat head is
preferably located on the main body 12, and the depression 20 is not
required” (Hasan, col. 3, ll. 57-60), in which case the sleeve 38 would
respond to the recited “lip,” with the flat section of the main body 12 of the
plate being immediately adjacent such lip (Answer 5-6). Both positions are
well taken.
We determine the scope of the claims in patent applications “not
solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc)
5
Appeal 2006-3059
Application 10/293,725

(quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70
USPQ2d 1827, 1830 (Fed. Cir. 2004)).
Appellants’ Specification uses the term “lip” only on page 2, in
paragraph [0007], describing it merely as protruding structure. Nothing in
this brief mention of the term “lip” indicates that it is used in the context of
Appellants’ invention in any manner other than its ordinary and customary
definition, namely, “anything like a lip, as in structure or in being an edge,
rim, or margin” (Webster's New World Dictionary 824 (David B. Guralnik
ed., 2nd Coll. Ed., Simon & Schuster, Inc. 1984)). Either the combination of
sleeve 38 and conically-shaped depression 20, in the case of the illustrated
embodiment, or the sleeve 38 alone, in the embodiment wherein depression
20 is omitted (Hasan, col. 3, ll. 57-60), meets this definition of “lip.”
Further, in either case, the main body 12 of the plate comprises a flat section
immediately adjacent such structure responding to the “lip.”
We therefore conclude that Appellants have not demonstrated the
Examiner erred in rejecting claim 7 as anticipated by Hasan. The rejection
is sustained.

6
Appeal 2006-3059
Application 10/293,725

SUMMARY
The decision of the Examiner to reject claims 1-3, 6, and 7 as
anticipated by Hasan is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
AFFIRMED

vsh:

MARJAMA & BILINSKI LLP
250 SOUTH CLINTON STREET
SUITE 300
SYRACUSE, NY 13202

7