Ex Parte Whipstock

Patent Trial and Appeal Board

Nov 28, 2012

11943073 (P.T.A.B. Nov. 28, 2012)

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.
11/943,073 11/20/2007 Craig Whipstock 81167540(19013) 2795
57444 7590 11/29/2012
AUTOMOTIVE COMPONENTS HOLDINGS LLC
C/O MACMILLAN, SOBANSKI & TODD, LLC
ONE MARITIME PLAZA, FIFTH FLOOR
720 WATER STREET
TOLEDO, OH 43604-1853
EXAMINER
ALEXANDER, MELANIE P
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
11/29/2012 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 CRAIG WHIPSTOCK
____________

Appeal 2010-011171
Application 11/943,073
Technology Center 3700
____________

Before GAY ANN SPAHN, BRETT C. MARTIN, and
RICHARD E. RICE, Administrative Patent Judges.

RICE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Craig Whipstock (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s rejection of claims 1-15. Appellant canceled claims 16-
19. We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.

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Application 11/943,073

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The Claimed Subject Matter
The claimed subject matter “relates in general [to] a fastener
socket, and in particular to, a magnetic fastener socket for a power
tool.” Spec. 1, para. [0005]. Claim 1, reproduced below with italics
for emphasis, is the sole independent claim and is representative of the
subject matter on appeal:
1. A socket assembly for receiving and retaining a
head of a fastener, the socket assembly comprising:
a socket body having a longitudinal interior chamber
defined by interior walls, the interior chamber extending axially
within the socket body to a receiving end of the socket body,
the interior walls of the interior chamber being configured to a
shape of the head of a fastener for receiving the head of the
fastener at the receiving end;
a magnet disposed within the interior of the socket body,
the magnet being selectively movable in an axial direction
within the interior chamber of the of the [sic]1 socket body; and
a fastening member radially engaged to the socket body,
the fastening member having a securing position to secure the
magnet within the socket body at a selected fixed axial position
in relation to the head of the fastener inserted within the
receiving end and a loosened position to adjust the magnet to a
different fixed axial position in response to a change in an axial
length of the socket body.

The Rejections
The following Examiner’s rejections are before us for review:
1. claims 1, 3, 4, and 13 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Hsieh (US 5,927,160, iss. Jul. 27, 1999) and Barmore
(US 5,520,075, iss. May 28, 1996);

1 Assuming Appellant meant just one “of the,” this informality should be
corrected.

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Application 11/943,073

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2. claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Hsieh, Barmore, and Dobson (US 2002/0023521 A1, pub.
Feb. 28, 2002);
3. claim 14 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Hsieh, Barmore, and Stillwagon (US 3,707,894, iss. Jan.
2, 1973);
4. claim 15 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Hsieh, Barmore, and Anderson (US 6,164,168, iss. Dec.
26, 2000);
5. claims 5 and 6 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hsieh, Barmore, and Cook (US 6,065,909, iss. May 23,
2000);
6. claims 7-10 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hsieh, Barmore, Cook, and Vasichek (US 5,277,088, iss.
Jan. 11, 1994); and
7. claims 7-11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Hsieh, Barmore, Cook, and Huebschen (US 4,919,020,
iss. Apr. 24, 1990).

OPINION
Rejection 1
The Examiner finds that “Hsieh discloses all of the claimed subject
matter [of claims 1, 3, 4 and 13] except for the fastening member being a set
screw in a threaded hole.” Ans. 3.2 In particular, the Examiner finds that

2 Dependent claim 3 recites “[t]he socket assembly of claim 1 wherein the
fastening member includes a set screw,” and dependent claim 4 recites “[t]he
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“[t]he device of Hsieh is capable of regrind after wear, capable of being
adjusted to the length of a fastener after a regrind operation and capable of
being adjusted in response to a change in axial length of the body.” Id. at 4.3
The Examiner also finds that “Barmore discloses a socket having a movably
adjustable fastener engaging member ‘54’ secured in a fixed position by a
set screw ‘56’ and adjustable to a different fixed position.” Id. (citing
Barmore, col. 2, ll. 54-57, fig. 1). The Examiner concludes that “[i]t would
have been obvious to one having ordinary skill in the art to form the
fastening member of Hsieh as a set screw in a threaded opening to secure the
fastener engaging member in an adjustably fixed position as taught by
Barmore.” Ans. 4. More succinctly, the Examiner proposes “[f]orming the
pin and slot of Hsieh as a set screw.” Ans. 7.4
Appellant argues, and we agree, that claim 1 requires the capability to
adjust and secure the magnet at different axial positions in response to a
change in an axial length of the socket body, whereas Hsieh discloses a
socket with a slidably-mounted magnet that cannot be secured in any axial
position, much less in response to a change in an axial length of the socket
body. App. Br. 7; Hsieh, col. 1, ll. 26-28. We also agree with Appellant that
drive element 54 of Barmore, while adjustable and securable at different

socket assembly of claim 3 wherein . . . a threaded hole . . . receives the set
screw for securing the magnet at a respective axial position within the
interior chamber.”
3 Dependent claim 13 recites “[t]he socket assembly of claim 1 wherein the
receiving end of the socket body receiving the head of the fastener is capable
of regrind after wear, the magnet being selectively moved in an axial
direction within the socket body for adjusting to the length of the head of the
fastener after a respective regrind operation.”
4 We note that Hsieh’s magnet slides axially in slots between locating pins
(20) and sloping step (13). Hsieh, col. 2, ll. 26-36, figs. 6 and 7.
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axial positions by set screw 56 to accommodate different types of fasteners
(e.g., fasteners with or without cavities in their end surfaces for engaging
drive element 54), is not adjustable or securable in response to a change in
an axial length of the socket body. App. Br. 7-8. As argued by Appellant,
“the head of the fastener in Barmore recesses to the same position within the
socket regardless of wear on the socket or for the sake of argument, if a
regrind operation occurred.” Id.
We therefore agree with Appellant that “Barmore describes securing a
driver bit at a same position in a socket whereas Hsieh describes a floating
magnet within a socket,” and thus that “Hsieh and Barmore are not
combinable in a manner that suggests a magnet that is releasably securable
in a socket head for adjusting the axial position of the magnet in response to
a change in an axial length of the socket body.” App. Br. 8. Thus, we find
that the Examiner’s reasoning for combining Hsieh with Barmore, i.e., “to
form the fastening member of Hsieh as a set screw in a threaded opening to
secure the fastener engaging member in an adjustably fixed position as
taught by Barmore” (Ans. 4), does not have a rational underpinning. See
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“‘[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.’”) (quoting In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
Accordingly, we do not sustain the Examiner’s rejection of claims 1,
3, 4, and 13.
Rejections 2-7
In the remaining rejections, the Examiner applies Hsieh and Barmore
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in combination with one or more other references (Dobson, Stillwagon,
Anderson, Cook, Vasichek and Huebschen) to reject claims as obvious.
Ans. 4-6. Because none of these other references cures the deficiencies of
Hsieh and Barmore as discussed supra in connection with the rejection of
claims 1, 3, 4 and 13, we do not sustain the remaining rejections.

SUMMARY
We reverse the rejection of claims 1-15.

REVERSED

mls