Szymanski, David A.

Patent Trials and Appeals Board

Dec 31, 2019

14941054 - (D) (P.T.A.B. Dec. 31, 2019)

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.
14/941,054 11/13/2015 David A. Szymanski INDI 200005US01 9546
27885 7590 12/31/2019
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
CHOI, STEPHEN
ART UNIT PAPER NUMBER
3724
MAIL DATE DELIVERY MODE
12/31/2019 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 DAVID A. SZYMANSKI
Appeal 2019-003754
Application 14/941,054
Technology Center 3700
Before JENNIFER D. BAHR, DANIEL S. SONG, and
BRANDON J. WARNER, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–12, 14, and 15.2 We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42.
2 See 37 C.F.R. § 41.31(c) (“An appeal, when taken, is presumed to be taken
from the rejection of all claims under rejection unless cancelled by an
amendment filed by the applicant and entered by the Office”); see Appeal
Br. 7 (requesting that the Board reverse the rejections of claims 1–12, 14,
and 15).
Appeal 2019-003754
Application 14/941,054

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CLAIMED SUBJECT MATTER
Appellant’s invention is directed to a chain saw provided with
structure designed “to reduce the problem of chain shot.” Spec. ¶ 4. “Chain
shot refers to what happens when a piece or pieces of a cutting chain
separate from the end of a broken saw chain at a high-velocity.” Id. ¶ 3.
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. A saw chain comprised of at least one chain link selected
from a cutting link and a drive link, at least one tie strap pair,
said chain link and said tie strap pair defining a hole passing
therethrough, a rivet disposed within said hole and joining said
chain link and said tie strap pair, each tie strap of said tie strap
pair having a wall defining said hole, said rivet comprising a
central barrel region and two opposed flanges, said barrel
region being received within a center bore of said hole, each of
said flanges passing through a reduced diameter region of said
hole formed by projections form [sic] the wall of each said tie
strap pair such that internal edges of said projections
cooperatively retain said barrel region, each of said tie strap
pair further including a counter bore inward of said projection,
an outer circumferential surface of said barrel region engaging
the wall of the tie strap at said counter bore, each flange
terminating in a head region, each head region engaging an
external surface of said projections.
EVIDENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Travis US 5,729,882 Mar. 24, 1998
Osborne US 2008/0110317 A1 May 15, 2008
Szymanski US 2011/0120280 A1 May 26, 2011

Appeal 2019-003754
Application 14/941,054

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REJECTIONS3
Claims 1–5, 9–12, 14, and 15 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Travis.
Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable over
Travis and Szymanski.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103 as unpatentable
over Travis and Osborne.
OPINION
Claims 1–3, 5–12, 14, and 15
Despite requesting that the Board reverse the rejections of claims 1–
12, 14, and 15, Appellant does not present any substantive arguments
contesting the rejections of claims 1–3, 5–12, 14, and 15 in the Appeal Brief
or Reply Brief. See Appeal Br. 5–7; id. at 5 (expressly stating, “Appellant
appeals the rejection of Claim 4.”). Accordingly, we summarily sustain the
rejection of claims 1–3, 5, 9–12, 14, and 15 as anticipated by Travis; the
rejection of claim 6 as unpatentable over Travis and Szymanski; and the
rejection of claims 7 and 8 as unpatentable over Travis and Osborne.
See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining that
summary affirmance without consideration of the substantive merits is
appropriate where an appellant fails to contest a ground of rejection);
Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed.

3 We understand the Examiner’s indication in the Advisory Action that
“Applicant’s reply has overcome the following rejection(s): 112” to mean
that the Examiner has withdrawn both the rejection of claim 14 under
35 U.S.C. § 112(d) and the rejection of claims 8 and 14 under
35 U.S.C. § 112(b) set forth in the Final Action. See Advisory Act. 1; Final
Act. 2–3.
Appeal 2019-003754
Application 14/941,054

4
rev. 08.2017 Jan. 2018) (“If a ground of rejection stated by the examiner is
not addressed in the appellant’s brief, appellant has waived any challenge to
that ground of rejection and the Board may summarily sustain it, unless the
examiner subsequently withdrew the rejection in the examiner’s answer.”).
Claim 4
The Examiner provided an annotated copy of an “exploded” (i.e.,
enlarged) view of the pertinent portions of Travis’s Figure 3 (prior art),
which the Examiner labels “Figure A,” to illustrate how the structure shown
in Travis corresponds to the elements of claim 4, which depends from claim
1. Final Act. 5; see id. at 3–4, 6 (explaining the rejection of claim 4). The
Examiner’s Figure A is reproduced below.

Appeal 2019-003754
Application 14/941,054

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Figure A is a longitudinal sectional view through a staked rivet
interconnecting side and center links of a saw chain, and includes, in
pertinent part, annotations, added by the Examiner, pointing to the structure
which the Examiner finds corresponds to the claimed “projections,”
“chamfered edge,” and “counter bore” of the tie straps, and the claimed
“outer circumferential surface” of the “rivet.” See Travis 2:53–55; Final
Act. 5.
Appellant argues that the Examiner’s Figure A “shows a counter bore
and a chamfered edge as the same element of the tie strap projection.”
Appeal Br. 5. More particularly, Appellant submits that the element pointed
to by the Examiner as corresponding to both the chamfered edge and the
counter bore “is a continuous bevel formed on the inner edge of the hole.”
Id.
In response, the Examiner points out that “[t]he term ‘bore’ is defined
as a hole in which is a hollow space,” and finds that “Travis clearly shows a
hollow space inward of the projection as shown on a highlighted exploded
annotated figure” provided on page 9 of the Answer. Ans. 8. According to
the Examiner, the annotated figure provided on page 9 of the Answer shows
both the claimed “chamfered edge” of the projections and the claimed
“counter bore” disposed inward of the projections. Id.
The Examiner’s “highlighted exploded annotated figure,” which is a
portion of Travis’s Figure 3 further enlarged relative to Figure A
(reproduced above), is reproduced below (bottom figure), along with an
enlarged annotated copy of a portion of Appellant’s Figure 1 (top figure),
also provided on page 9 of the Answer.
Appeal 2019-003754
Application 14/941,054

6

The Examiner’s annotated portion of Appellant’s Figure 1 (top figure)
“is a top view cutaway of a portion of a saw chain showing a tie strap and
rivet design in accordance with [Appellant’s] disclosure,” with annotations
to show, in pertinent part, the chamfered edge of the projection and the
counter bore inward of the projection. Spec. ¶ 9; Ans. 9. The Examiner’s
Appeal 2019-003754
Application 14/941,054

7
annotated portion of Travis’s Figure 3 (bottom figure) is an enlarged view
thereof and includes annotations showing, in pertinent part, where the
Examiner finds the “projection” of the tie strap, the “chamfered edge” of the
projection, and the “counter bore” of the tie strap inward of the projection.
Ans. 9. In particular, the Examiner includes two lead lines purporting to
identify the claimed “counter bore”; one of the lead lines points to a hollow
space formed between the chamfered edge of the projection of the tie strap
(side link 20) and the exterior face of the barrel (center section 3) of rivet 2
of Travis’s Figure 3, and the other lead line points to the interior face of the
tie strap (or the projection thereof) of Travis’s Figure 3. See id.
It may be reasonable for the Examiner to consider the hollow space
formed inward of, and bounded by the chamfered edge of the tie strap of
Travis’s Figure 3, to be a “bore” inward of the projection (see Ans. 8), or
perhaps a countersink (i.e., a cone shaped hole) inward of the projection.
However, claim 4, by virtue of its dependence from claim 1, specifically
recites “a counter bore inward of the projection.” Appeal Br. 8 (Claims
App.) (emphasis added). The Examiner’s finding that Travis shows a
hollow space inward of the projection (Ans. 8) fails to address this
distinction. A counter bore, in contrast to a countersink, is a flat-bottomed
hole with its sides drilled straight down forming a cylindrical hole or hollow.
See, e.g., Counterbore: “[A] flat-bottomed enlargement of the mouth of a
cylindrical bore.” Merriam-Webster.com (accessed Dec. 30, 2019),
https://www.merriam-webster.com/dictionary/counterbore; PCB Prime,
What is the difference between a Countersink and a Counterbore? (accessed
Dec. 30, 2019), https://pcbprime.com/pcb-tips/countersink/. Appellant’s
Figure 1 illustrates such a counter bore. See Ans. 9 (top drawing). Neither
Appeal 2019-003754
Application 14/941,054

8
the conical hollow space formed inward of the chamfered edge, nor the
planar interior face of the tie strap, constitutes a “counter bore” as that term
is conventionally understood in the art and as disclosed by Appellant.
Therefore, the Examiner’s finding that Travis discloses a tie strap including
a projection having a chamfered edge and a “counter bore inward of said
projection,” as required in claim 4, is not supported by a preponderance of
the evidence.
Accordingly, we do not sustain the rejection of claim 4 as anticipated
by Travis.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 9–12,
14, 15
102(a)(1) Travis 1–3, 5, 9–12,
14, 15
4
6 103 Travis, Szymanski 6
7, 8 103 Travis, Osborne 7, 8
Overall
Outcome
1–3, 5–12,
14, 15
4

TIME PERIOD FOR RESPONSE
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).
AFFIRMED IN PART

Notice of References Cited
Application/Control No.

14/941,054
Applicant(s)/Patent Under Patent
Appeal No.
2019-003754
Examiner

Art Unit

3724

Page 1 of 1
U.S. PATENT DOCUMENTS
* Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification
A US-
B US-
C US-
D US-
E US-
F US-
G US-
H US-
I US-
J US-
K US-
L US-
M US-
FOREIGN PATENT DOCUMENTS
* Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification
N
O
P
Q
R
S
T
NON-PATENT DOCUMENTS
* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)

U
Counterbore: “[A] flat-bottomed enlargement of the mouth of a cylindrical bore.” Merriam-Webster.com
(accessed Dec. 30, 2019), https://www.merriam-webster.com/dictionary/counterbore.

V
PCB Prime, What is the difference between a Countersink and a Counterbore? (accessed Dec. 30, 2019),
https://pcbprime.com/pcb-tips/countersink/.

W

X

*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
U.S. Patent and Trademark Office
PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.
 











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