Ex Parte Bellino et al

Patent Trial and Appeal Board

Jul 31, 2018

14485296 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/485,296 09/12/2014 Mark Carmine Bellino
87853 7590 08/02/2018
Dority & Manning, PA and General Electric Company
Post Office Box 1449
Greenville, SC 29602
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
276342-1/GEC-1308 1518
EXAMINER
SAETHER, FLEMMING
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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):
usdocketing@dority-manning.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK CARMINE BELLINO,
HEATH MICHAEL OSTEBEE, LUCAS JOHN STOIA,
and CHRISTOPHER PAUL WILLIS
Appeal 2017-010116
Application 14/485,296
Technology Center 3600
Before STEFAN STAICOVICI, BRETT C. MARTIN, and LEE L.
STEPINA, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 3-15, and 17-20. Claims 2 and 16 were
canceled. See App. Br. (Claims App.) 13-14. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the applicant, as provided in 3 7 C.F .R. § 1.46, and
real party in interest is the General Electric Company. App. Br. 1.
Appeal2017-010116
Application 14/485,296
THE INVENTION
Appellants' claims are directed generally "to threaded mechanical
fasteners and, more particularly, to a nut anti-rotation cap associated with
threaded mechanical fasteners." Spec. ,r 1. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A nut anti-rotation cap comprising:
an end wall having an inner surface welded to an end of a
threaded mechanical fastener; and
at least one sidewall extending from the end wall, wherein
the at least one sidewall is a solid wall configured to be secured
to a nut engaged with the threaded mechanical fastener, and
wherein the at least one sidewall defines an inner cavity fully
encasing an outer perimeter of the threaded mechanical fastener
from the end wall to the nut.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tinnin
Curtin
Tirone
us 1,016,237
us 1,352,053
US 2014/0093328 Al
2
Jan. 30, 1912
Sept. 7, 1920
Apr. 3, 2014
Appeal2017-010116
Application 14/485,296
REJECTION
The Examiner made the following rejection:
Claims 1, 3-15, and 17-202 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Curtin, Tinnin, and Tirone. Ans. 3.
ANALYSIS
Appellants' arguments are directed to alleged benefits of the claimed
invention rather than addressing actual limitations in the claims. See App.
Br. 5-9. We agree with the Examiner that Appellants' arguments are not
commensurate with the scope of the claims because aspects, which
Appellants argue, such as "non-damage to the threads," "harsh operation,"
"press-fit," etc., are not found in the claims. See Ans. 4. Although these
may result from the claimed device, such are not structural limitations in the
claims.
Further to this point, Appellants argue that the "Examiner fails to
consider protections that may be afforded specifically by the space defined
by the inner cavity created specifically in the present disclosure." App. Br.
10. Appellants, however, do not point to the actual claim language, but
direct us to statements in the Specification that explain the alleged benefits
of the claimed invention. See App. Br. 9. Such unclaimed benefits and
features are essentially irrelevant to the rejection and Appellants do not
actually point to any structural deficiencies in the Examiner's combination.
2 The Examiner lists only claims 1 and 3-8 as rejected in the Final Office
Action, but Appellants provide arguments as to all pending claims under the
same rejection and the Examiner refers to all claims in the Answer, so we
assume the Examiner's omission of claims 9-15 and 17-20 is a
typographical error and that the rejection applies to all of the pending claims.
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Appeal2017-010116
Application 14/485,296
As such, we are not persuaded that the Examiner has failed to establish a
prima facie case of obviousness.
Appellants also argue that the combination is improper as based upon
impermissible hindsight (App. Br. 9) due to the addition of Tirone and also
that the Examiner's reasoning for the combination is merely a conclusory
statement (App. Br. 10-11). With regard to Tirone, Appellants' arguments
revolve around the assertion that Tirone does not teach a mechanical fastener
as claimed, but rather a plug, which is not "drawn from the same field of
endeavor." App. Br. 11. We first disagree that Tirone does not teach a
mechanical fastener. As the Examiner correctly finds, Tirone teaches "a bolt
with a head at one [ end] and a thread at an opposite end just like other
bolts." Ans. 6. The fact that Tirone uses this bolt as a plug, rather than a
screw does not negate the structural similarities between the disclosed
devices. Furthermore, as to field of endeavor, the pertinent aspects of Tirone
relate to its teaching of an anti-rotation cap, not to the intended use or the
exact structure of the plug. Just as with Curtin and Tinnin, Tirone discloses
an anti-rotation cap and one of ordinary skill in the art would understand that
aspects of Tirone could apply to such caps regardless of exact application.
As to the reasoning, the Examiner sufficiently explains that Tirone
teaches the applicability of both welds and press-fits to anti-rotation caps.
Ans. 6. The Examiner then concludes that it would be a mere simple
substitution for the press-fits of either Tinnin or Curtin to be replaced with
the weld disclosed in Tirone. Ans. 8. Accordingly, we are not persuaded of
error in the Examiner's rationale for combining Tirone with Tinnin and
Curtin.
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Appeal2017-010116
Application 14/485,296
DECISION
For the above reasons, we AFFIRM the Examiner's decision to reject
claims 1, 3-15, and 17-20.
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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