Ex Parte Braithwaite

Patent Trial and Appeal Board

Mar 17, 2016

12663702 (P.T.A.B. Mar. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/663,702 12/08/2009 Julian Braithwaite
64833 7590 03/17/2016
FLETCHER YODER (CAMERON INTERNATIONAL CORPORATION)
P.O. BOX 692289
HOUSTON, TX 77269-2289
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.
OTE-031052
(CMRN:0080)
EXAMINER
6241
BATSON, VICTORD
ART UNIT PAPER NUMBER
3677
MAILDATE DELIVERY MODE
03/17/2016 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 JULIAN BRAITHWAITE 1
Appeal2014-001946
Application 12/663,702
Technology Center 3600
Before MICHAEL L. HOELTER, ANNETTE R. REIMERS, and
LISA M. GUIJT, Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Julian Braithwaite (Appellant) appeals under 35 U.S.C. § 134(a) from
the Examiner's decision to reject claims 1--4, 6, 7, 9, 24--28, 31, 32, and 34.2
Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Cameron International
Corporation. Appeal Br. 2.
2 Claims 5, 8, 29, 30, and 33 are objected to. See Final Act. 3, 13.
Appeal2014-001946
Application 12/663,702
THE CLAIMED SUBJECT MATTER
Claims 1, 27, and 34 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A theft-deterrence device, comprising:
a sleeve surrounding a tool interface of a bolt
assembly, wherein the sleeve has a shoulder located on an
interior surface, and the sleeve is free to rotate with respect
to the tool interface;
a retaining ring disposed above the tool interface,
wherein the retaining ring is configured to cooperate with
the shoulder to block removal of the sleeve; and
a retaining pin that extends through a bolt of the bolt
assembly to block removal of the retaining ring, wherein
the sleeve, the retaining ring, and the retaining pin are
removable to enable access to the tool interface, and the
retaining pin includes a tamper-resistant feature.
THE REJECTIONS
Claims 1, 2, 6, 7, 9, 24--28, 31, 32, and 34 stand rejected under 3 5
U.S.C. § 103(a) as unpatentable over Ipri (US 3,492,841; iss. Feb. 3, 1970)
and Woodard (US 566,050; iss. Aug. 18, 1896).
Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ipri, Woodard, and Coffia (US 4,540,322; iss. Sept. 10,
1985).
OPINION
Claims 1, 2, 6, 7, 9, 24-28, 31, 32, and 34- Obviousness over Ipri and
Woodard
Regarding independent claim 1, the Examiner found that Ipri discloses
the theft-deterrence device as claimed, except that Ipri does not disclose the
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Appeal2014-001946
Application 12/663,702
claimed retaining pin. Final Act. 3--4. The Examiner relied on Woodard for
disclosing pinf extending through bolt a. Id. at 4--5. The Examiner further
found that Woodard's pinf includes a tamper-resistant feature, in that the
pin's "lower end g is bent over or turned up against [sleeved] to retain it in
position." Id. at 5 (citing Woodard 1:57-59).
The Examiner identified depending skirt 13 of Ipri' s plate 10 as
"another" or "second" sleeve of Ipri, and concluded that Woodard's sleeved
"could be routinely used in place of the second sleeve of Ipri in order to
secure the retaining ring." Final Act. 5 (emphasis added). Alternatively, the
Examiner determined that Woodard's sleeved "may be used in place of or
along with" Ipri' s plate 10 "to prevent withdrawal of' Ipri' s retaining ring 1
and sleeve 2. Ans. 6 (emphasis added). The Examiner concluded that,
although not explicitly disclosed in Ipri, "leav[ing] the ends of [Ipri's]
retaining ring [1] and plate [10] open such that the bolt extends through them
... [to] allow the attachment of additional security means [(a pin)] on the
exposed length of the threaded shaft" is "in keeping with the disclosed
operation of [Ipri' s] device" and "within the ordinary artisan's skill level."
Id. at 7. Additionally, the Examiner found that modifying Ipri, in view of
Woodard, such that a pin extends through Ipri's sleeve (or outer housing 2),
retaining ring (or auxiliary nut 1 ), and bolt B, as discussed in Appellant's
Appeal Brief, "would still meet the claim limitations and would be capable
of performing the functional limitations." Ans. 9; see also Appeal Br. 9.
The Examiner reasoned that
[ o ]ne of ordinary skill in the art would have been motivated to
combine the disclosure of Ipri with the teaching of Woodard in
order to achieve a theft-deterrence device having an outer
sleeve surrounding a nut, said sleeve being blocked from
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Appeal2014-001946
Application 12/663,702
removal by a retaining ring, and wherein the retaining ring is
further blocked from removal by a locking sleeve that is
secured by a retaining pin in order to hold the retaining ring in
place.
Final Act. 5---6; Ans. 7. In support, the Examiner concluded that "it is known
to use multiple security devices in tandem." Ans. 6-7. The Examiner
further reasoned that one of ordinary skill would have been led to have made
such modifications ( 1) because Woodard describes "benefits ... such as
'lock[ing] the sleeve against the nut to hold the nut in place' and 'preventing
the sleeve from turning"' (Final Act. 5 (citing Woodard 1:51-53); Ans. 7);
and (2) because of "the similar subject matter of [Ipri and Woodard]" (Ans.
8).
Appellant argues, inter alia, that "one of ordinary skill in the art
would not incorporate a pin into the assembly of Ipri, because Ipri already
uses a locking system that relies on an auxiliary nut 1, outer housing 2, and
detachable key element 3." Appeal Br. 7. Appellant additionally submits
that Woodard's "pin f helps to secure the sleeve" but "provide[s] no
resistance against tampering or theft." Id. at 7; see also Reply Br. 3.
Appellant also argues that modifying Ipri' s threaded nut lock to include a
pin "add[s] unnecessary complexity to the design of Ipri, change[s] its
principal of operation, and potentially hinder[ s] correct operation of the
locking system of Ipri." Id. at 8 (referring to Appellant's Annotated Ipri Fig.
2 at Appeal Br. 9). Appellant concludes that "the Examiner's rationale does
not seem to provide any logical reason to modify Ipri based on Woodard,"
but "is merely based on 'similar subject matter' between Ipri and Woodard,
and because Woodard teaches another security device that is not necessarily
redundant to Ipri." Reply Br. 4. Appellant contends that "the Examiner has
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Appeal2014-001946
Application 12/663,702
not met [the] evidentiary burden to establish a prima facie case of
obviousness of independent claim 1 and its dependent claims." Id.
We agree with Appellant that the Examiner fails to articulate adequate
reasoning to set forth a prima facie case of obviousness of the subject matter
of independent claim 1. Although it may be known to use multiple security
devices in tandem, Woodard discloses that pinf and sleeved function to
hold nut c in place and are designed to be removeable to allow adjustment
due to wear; thus, the Examiner's reasoning that the addition of Woodard's
pin f to Ipri is an added security feature is unsupported. See Woodard 1 : 13-
16, 51-52, 64--71. Moreover, the Examiner's reliance on Woodard's
description of the benefits of locking a sleeve against a nut to hold the nut in
place does not explain why one of ordinary skill in the art would be led to
significantly modify Ipri' s threaded nut lock, as discussed supra, to provide
a pin through bolt B to block removal of auxiliary nut 1. The Examiner's
reliance on the similarity of the subject matter of Ipri and Woodard does not
cure the deficiencies in the Examiner's reasoning.
Accordingly, we do not sustain the Examiner's rejection of
independent claim 1 and claims 2, 6, 7, 9, and 24--26 depending therefrom.
The Examiner relies on the same reasoning for the conclusion of
obviousness for independent claims 27 and 34 as the Examiner relied upon
with respect to claim 1. Final Act. 9, 10. Thus, we also do not sustain the
Examiner's rejection of independent claims 27 and 34, and claims 28, 31,
and 32 depending therefrom.
Claims 3 and 4- Obviousness over Ipri, Woodard, and Coffia
The Examiner's rejection of claims 3 and 4 under 35 U.S.C. § 103(a)
as being unpatentable over Ipri, Woodard, and Coffia suffers from the same
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Application 12/663,702
deficiency as discussed supra, in that the rejection is based on inadequate
reasoning to modify Ipri in view of Woodard. Thus, we also do not sustain
the Examiner's rejection of claims 3 and 4, which depend from claim 1.
DECISION
The Examiner's rejections of claims 1--4, 6, 7, 9, 24--28, 31, 32, and
34 under 35 U.S.C. § 103(a) is REVERSED.
REVERSED
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