Ex Parte Burguete et al

Board of Patent Appeals and Interferences

Oct 22, 2009

10479642 (B.P.A.I. Oct. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RICHARD BURGUETE, ANDREW NIXON,
MARTIN TUDGAY, DAVID R. BENNETT,
JONATHAN GRIFFIN and PHILIP A. BROWN
____________________

Appeal 2009-003664
Application 10/479,642
Technology Center 3600
____________________

Decided: October 22, 2009
____________________

Before LINDA E. HORNER, JOHN C. KERINS
and STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellants’ claims being twice rejected, the Appellants appeal 2
under 35 U.S.C. § 134 (2002) from the Examiner’s decision rejecting claims 3
1-4, 6-9 and 11-16, which are all of the claims remaining in the application.4
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Oral argument was held on September 10, 2009. We have jurisdiction under 1
35 U.S.C. § 6(b) (2002). 2
We sustain the following grounds of rejection: 3
the rejection of claims 1-3, 6-9, 14 and 15 under 35 4
U.S.C. § 103(a) (2002) as being unpatentable over Reid (US 5
5,103,548, issued Apr. 14, 1992) and Heinichen (US 2,276,969, 6
issued Mar. 17, 1942); 7
the rejection of claims 11-13 and 16 under § 103(a) as 8
being unpatentable over Reid, Heinichen and the Appellants’ 9
Admitted Prior Art [“AAPA”], namely, the Examiner’s finding 10
that the Appellants’ Specification discloses “it is known to pass 11
cables through an opening in a wing spar” (see Ans. 5); 12
the rejection of claims 1-4, 6-9, 14 and 15 under § 103(a) 13
as being unpatentable over Kauffman (US 3,281,155, issued 14
Oct. 25, 1966) and Reid; and 15
the rejection of claims 11-13 and 16 under § 103(a) as 16
being unpatentable over Kauffman, Reid and AAPA. 17
We do not sustain the following grounds of rejection: 18
the rejection of claims 1-4 and 6-9 under 35 U.S.C. 19
§ 102(e) (2002) as being anticipated by Djeddah (US 6,395,985 20
B1, issued May 28, 2002); and 21
the rejection of claims 11-13 under § 103(a) as being 22
unpatentable over a more detailed statement of the AAPA, 23
namely, the Examiner’s finding that the Appellants’ 24
Specification discloses “it is known for an airplane to have a 25
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wing with a wing spar and a coupling arrangement for routing 1
wires through the wing” (see Ans. 6), and Djeddah. 2
Claim 1 is typical of the claims on appeal: 3
1. An annular bush fitting assembly for 4
fitting a bush tightly in an aperture defined in a 5
structural member and for sealably connecting said 6
bush to a conduit, the assembly comprising: 7
said bush, said bush including a threaded 8
coupling, said bush locatable in said aperture; 9
means for plastically expanding said bush 10
radially when located in the aperture by the action 11
of a mandrel being passed through a longitudinal 12
passageway defined by the bush and wherein, after 13
said plastic expansion, said bush exerts a 14
compressive force upon the region of the structural 15
member surrounding the bush; and 16
a coupling for sealable attachment of said 17
conduit to the bush. 18
19
ISSUES 20
Only those arguments actually made by the Appellants have been 21
considered in this decision. Arguments that the Appellants did not make in 22
the Appeal Brief or the Reply Brief, including any arguments made for the 23
first time at oral argument, have not been considered and are deemed to be 24
waived. See 37 C.F.R. §§ 41.37(c)(1)(vii) & 41.47(e)(1) (2008). 25
Apart from claim 1 itself, each of the claims rejected under § 102(e) 26
as being anticipated by Djeddah, or under § 103(a) as being unpatentable 27
over the more detailed statement of the AAPA and Djeddah, depends from 28
claim 1. With respect to both grounds of rejection involving Djeddah, the 29
Appellants contend that the Examiner misconstrues claim 1 and that, when 30
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properly construed, claim 1 is not met by any assembly that does not include 1
a mandrel. (App. Br. 8-10; Reply Br. 2-4.) 2
Two issues raised in this appeal are: 3
Have the Appellants shown that the Examiner erred in 4
finding that Djeddah discloses means at least capable of 5
plastically expanding a bush of an annular bush fitting assembly 6
radially when located in an aperture by the action of a mandrel 7
being passed through a longitudinal passageway defined by the 8
bush? 9
If the Examiner erred in finding that Djeddah discloses 10
means at least capable of plastically expanding a bush of an 11
annular bush fitting assembly radially when located in an 12
aperture by the action of a mandrel being passed through a 13
longitudinal passageway defined by the bush, have the 14
Appellants shown that the Examiner failed to articulate 15
reasoning with some rational underpinning sufficient to support 16
the conclusion that an annular bush fitting assembly including 17
such means as recited in claim 1 would have been obvious from 18
the teachings of the AAPA and Djeddah? 19
The Appellants do not contest the rejection of any of dependent 20
claims 2, 3 and 6-9 under § 103(a) as being unpatentable over Reid and 21
Heinichen separately from the rejection of claim 1 on the same ground. (See 22
App. Br. 11-12; Reply Br. 7-8) Neither do the Appellants contest the 23
rejections of independent claims 14 and 15 under § 103(a) as being 24
unpatentable over Reid and Heinichen separately from the rejection of claim 25
1 on the same ground. (See id.) In particular, the Appellants provide no 26
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guidance as to how the recitation of methods rather than apparatuses in 1
claims 14 and 15, or how particular method steps recited in claims 14 and 2
15, might distinguish over the combined teachings of Reid and Heinichen if 3
the subject matter of claim 1 does not distinguish those teachings. 4
Therefore, the Appellants argue claims 1-3, 6-9, 14 and 15 as a group for 5
purposes of this ground of rejection. Claim 1 is representative of the group. 6
See 37 C.F.R. § 41.37(c)(1)(vii) (2008). 7
The Examiner finds that Reid discloses expanding the body of a bush 8
located in an aperture by passing a mandrel through a longitudinal 9
passageway of the bush. (Ans. 3-4.) The Examiner also finds that 10
Heinichen discloses a coupling for sealably attaching a conduit to the bush. 11
(Ans. 4.) The Examiner concludes that it would have been obvious “to 12
modify the shape of Reid’s bush with the coupling features of Heinichen to 13
ensure an effective seal around a cable/conduit passing therethrough.” (Ans. 14
4.) The Appellants contend that neither Reid nor Heinichen recognizes the 15
problem of sealably fitting a conduit through a structural member; that the 16
Examiner has not articulated a reason why one of ordinary skill in the art 17
would have combined the teachings of Reid and Heinichen in a manner 18
which would have met the limitations of claim 1; that Reid and Heinichen 19
collectively did not disclose the recited bush, coupling and means for 20
plastically expanding the bush radially when located in the aperture by the 21
action of the mandrel being passed through the longitudinal passageway 22
defined by the bush; and that Reid and Heinichen taught away from the 23
subject matter of claim 1. (App. Br. 11 and 14; Reply Br. 7-8.) 24
Two more issues raised in this appeal are: 25
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Have the Appellants shown that the Examiner erred in 1
finding that Reid and Heinichen collectively disclosed a bush, a 2
coupling and a means for plastically expanding the bush 3
radially when located in the aperture by the action of the 4
mandrel being passed through the longitudinal passageway 5
defined by the bush? 6
Have the Appellants shown that the Examiner failed to 7
articulate reasoning with some rational underpinning sufficient 8
to support the conclusion that the subject matter of claim 1 9
would have been obvious from Reid and Heinichen? 10
The Appellants argue dependent claims 11-13 and independent claim 11
16 as a group for purposes of the rejection of those claims under § 103(a) as 12
being unpatentable over Reid, Heinichen and the AAPA. (App. Br. 12-14; 13
Reply Br. 8.) Claim 11, which depends from claim 1, is representative of 14
the group. See 37 C.F.R. § 41.37(c)(1)(vii). With respect to claim 11, the 15
Appellants repeat the contentions directed against the rejection of claim 1 16
under § 103(a) as being unpatentable over Reid and Heinichen. In addition, 17
the Appellants contend that the AAPA fails to make up the deficiencies of 18
the combined teachings of Reid and Heinichen with respect to the subject 19
matter of claim 16. More specifically, the Appellants contend that Reid, 20
Heinichen and the AAPA collectively did not disclose each element of claim 21
11; and that the Examiner has not articulated a reason why one of ordinary 22
skill in the art would have combined the teachings of Reid and Heinichen in 23
a manner which would have met the limitations of claim 16. (App. Br. 13.) 24
Two more issues raised in this appeal are: 25
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Have the Appellants shown that the Examiner erred in 1
finding that each element recited in claim 11 was disclosed in at 2
least one of Reid, Heinichen and the AAPA? 3
Have the Appellants shown that the Examiner failed to 4
articulate reasoning with some rational underpinning sufficient 5
to support the conclusion that the subject matter of claim 11 6
would have been obvious from Reid, Heinichen and the 7
AAPA? 8
The Appellants argue claims 1-4, 6-9, 14 and 15 as a group for 9
purposes of the rejection of those claims under § 103(a) as being 10
unpatentable over Kauffman and Reid. (App. Br. 14-15; Reply Br. 8-10.) 11
Claim 1 is representative of the group. See 37 C.F.R. § 41.37(c)(1)(vii). 12
With respect to claims 1 and 14, the Examiner finds that Kauffman discloses 13
an annular bush fitting assembly including a bush and a coupling for 14
sealable attachment of a conduit to the bush. (Ans. 5.) The Examiner 15
concludes that it would have been obvious to use a method in which a 16
mandrel passes through a passageway in a body of a bush similar to the bush 17
described by Kauffman to radially expand the bush into a secure interference 18
fit in an aperture. (Ans. 5-6.) The Appellants contend that the Examiner has 19
not articulated a reason why one of ordinary skill in the art would have 20
combined the teachings of Kauffman and Reid in a manner which would 21
have met the limitations of claim 1; that Reid and Heinichen collectively did 22
not disclose each element recited in claim 1; and that Kauffman taught away 23
from the subject matter of claim 1. (App. Br. 15; Reply Br. 9.) 24
Two more issues raised in this appeal are: 25
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Have the Appellants shown that the Examiner erred in 1
finding that each element recited in claim 1 was disclosed in at 2
least one of Kauffman and Reid? 3
Have the Appellants shown that the Examiner failed to 4
articulate reasoning with some rational underpinning sufficient 5
to support the conclusion that the subject matter of claim 1 6
would have been obvious from Kauffman and Reid? 7
The Appellants argue dependent claims 11-13 and independent claim 8
16 as a group for purposes of the rejection of those claims under § 103(a) as 9
being unpatentable over Kauffman, Reid and the AAPA. (App. Br. 12-14; 10
Reply Br. 10.) Claim 11 is representative of the group. See 37 C.F.R. 11
§ 41.37(c)(1)(vii). With respect to claim 11, the Appellants repeat their 12
contentions directed against the rejection of claim 1 under § 103(a) as being 13
unpatentable over Kauffman and Reid. In addition, the Appellants contend 14
that Kauffman, Reid and the AAPA collectively do not disclose each 15
element of claim 11; that the Examiner has not articulated a reason why one 16
of ordinary skill in the art would have combined the teachings of Kauffman, 17
Reid and the AAPA in a manner which would have met the limitations of 18
claim 11; and that Kauffman teaches away from the subject matter of claim 19
11. (App. Br. 15.) 20
The last two issues raised in this appeal are: 21
Have the Appellants shown that the Examiner erred in 22
finding that each element recited in claim 11 is disclosed in at 23
least one of Kauffman, Reid and the AAPA? 24
Have the Appellants shown that the Examiner failed to 25
articulate reasoning with some rational underpinning sufficient 26
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to support the conclusion that the subject matter of claim 11 1
would have been obvious from Kauffman, Reid and the AAPA? 2
3
FINDINGS OF FACT 4
The record supports the following findings of fact (“FF”) by a 5
preponderance of the evidence. 6
1. Djeddah discloses a sealed bulkhead bushing. Djeddah’s sealed 7
bulkhead bushing includes a cylindrical rod 10. (Djeddah, col. 4, l. 66 – col. 8
5, l. 2.) Djeddah’s sealed bulkhead bushing also includes a first insulating 9
tubular body 20 slipped over the cylindrical rod 10. (Djeddah, col. 5, ll. 7-10
12.) Djeddah’s sealed bulkhead bushing also includes a ring-shaped tubular 11
metal cap 32 slipped over a portion of the first insulating tubular body 20. 12
(Djeddah, col. 5, ll. 28-29.) Djeddah describes the ring-shaped tubular metal 13
cap 32 of the sealed bulkhead bushing as having a threaded surface 44 which 14
engages a tapped hole in a frame. (Djeddah, col. 6, ll. 10-12.) 15
2. Djeddah does not disclose any structure even capable of 16
plastically expanding a bush of an annular bush fitting assembly radially 17
when located in an aperture by the action of a mandrel being passed through 18
a longitudinal passageway defined by the bush. 19
3. The Examiner’s finding (see Ans. 7) that the bore through the 20
Djeddah’s ring-shaped tubular cap 32 is a means for plastically expanding 21
said bush radially when located in the aperture by the action of a mandrel 22
being passed through a longitudinal passageway defined by the bush is not 23
supported by substantial evidence. Even assuming for purposes of this 24
appeal only that a mandrel passing through the bore might act on the 25
material surrounding the bore so as to plastically expand the tubular cap 32 26
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radially, the bore itself would not perform the exact function of plastically 1
expanding the tubular cap 32 radially by action of the mandrel being passed 2
through the bore. The Examiner identifies nothing in Djeddah which would 3
have provided the Examiner a reasonable basis for belief that the bore 4
necessarily is capable of performing this exact function itself. 5
4. Reid discloses a method permitting an operator to install a 6
bushing 68 within an aperture or opening 88 in a structural member 84 such 7
as a wall. (Reid, col. 4, ll. 10-12 and col. 5, ll. 28-31.) 8
5. Reid’s method includes slipping a split sleeve 66 over a 9
mandrel 10; slipping the bushing 68 over the split sleeve 66 and the mandrel 10
10; and locating the bushing 68 within the opening 88. (Reid, col. 4, ll. 35-11
40.) 12
6. Reid’s method further includes pulling the mandrel 10 through 13
the split sleeve 66 (Reid, col. 4, ll. 46-51.) As the mandrel 10 is pulled 14
through the split sleeve 66, the mandrel 10 passes through a longitudinal 15
passageway defined in the body of the bushing 68. (See Reid, figs. 12 and 16
13.) 17
7. Reid discloses that the mandrel 10 and the split sleeve 66 are so 18
dimensioned that the passage of the mandrel 10 through the longitudinal 19
passageway defined in the bushing or bush 68 plastically expands the 20
bushing 68 radially. The plastic expansion of the bush 68 creates a tight 21
interference fit between the outer surface of the bush 68 and the sidewall of 22
the opening 88 (See Reid, col. 4, ll. 51-64.) The creation of the tight 23
interference fit implies that the bush 68 exerts a radial compressive force on 24
the region of the structural member surrounding the bush. 25
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8. Therefore, Reid discloses that the bush 68 plastically expands 1
radially when located in the opening 88 by the action of the mandrel 10 2
being passed through the longitudinal passageway defined by the bush 68. 3
The creation of the tight interference fit implies that, after the plastic 4
expansion, the bush 68 exerts a compressive force on the region of the 5
structural member surrounding the bush. 6
9. Heinichen describes a connector including a tubular casing 12 7
having an enlarged outer end 13. The casing 12 is mounted in an entrance 8
opening in a wall. (Heinichen, col. 2, ll. 6-13.) The casing 12 is adapted to 9
receive a cable 16. (See Heinichen, col. 2, ll. 13-15 and fig. 2.) As such, 10
Heinichen’s tubular casing 12 is structured and arranged to serve as a bush. 11
10. Heinichen’s connector also includes a connector assembly 14. 12
The components of Heinichen’s connector assembly 14 include enlarged, 13
centrally located apertures 20, 21, 22 for receiving a cable 16. (Heinichen, 14
col. 2, ll. 31-36.) Heinichen’s connector assembly provides a secure, water-15
tight, holding engagement between the cable 16 and the inner wall of the 16
casing 12. (Heinichen, col. 2, ll. 16-26 and col. 3, ll. 46-50.) 17
11. The enlarged, centrally located apertures 20, 21, 22 of the 18
components of Heinichen’s connector assembly 14 are capable of engaging 19
a conduit having an outer configuration complementary to the shapes of the 20
apertures 20, 21, 22 so as to form a seal with the outer surface of the conduit. 21
Hence, Heinichen’s connector assembly 14 is structured and arranged to 22
serve as a coupling for sealably connecting the tubular casing 12 to a 23
suitable conduit. 24
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12. Heinichen discloses mounting the tubular casing 12 in the 1
entrance opening in the wall 10 by means of screw threads. (Heinichen, col. 2
2, ll. 6-13.) 3
13. Kauffman describes a pressure fitting for providing a fluid seal 4
between a pressure hull and an electrical cable. (Kauffman, col. 1, ll. 12-16.) 5
14. Kauffman’s pressure fitting includes a sleeve 10 having a 6
centrally disposed, axial aperture 11. The sleeve 10 is adapted to snugly 7
receive a cable 12 through the aperture 11. (Kauffman, col. 2, ll. 58-63.) 8
15. A deck fitting 18 encompasses Kauffman’s sleeve 10. 9
(Kauffman, col. 3, ll. 1-4.) Kauffman’s deck fitting 18 includes a 10
counterbored portion 20 at an end of the deck fitting 18 threaded to form a 11
threaded coupling. (Id.; Kauffman, col. 3, ll. 36-39 and fig. 1.) Kauffman 12
discloses locating and securing the deck fitting 18 in an aperture or opening 13
in a wall 24. (Kauffman, col. 3, ll. 8-11.) 14
16. Kauffman describes a toroidally shaped retaining plug 28 which 15
is threaded into the end of the deck fitting 18 to preclude movement of the 16
sleeve 10. (Kauffman, col. 3, ll. 36-39.) Kauffman also describes disposing 17
an O-ring 21 within the counterbored portion 20 to provide a fluid seal 18
between the sleeve 10 and the deck fitting 18. (Kauffman, col. 3, ll. 4-8.) In 19
other words, the combination of the retaining plug 28 and the O-ring 20 is a 20
coupling which sealingly attaches the sleeve 10 to the deck fitting 18. 21
17. Kauffman discloses that the deck fitting 18 is “welded or 22
otherwise secured in fluid tight relationship” in the opening in the wall 24. 23
(Kauffman, col. 3, ll. 8-11.) 24
18. The Examiner finds (see Ans. 5) that the Appellants admit it 25
was known to those of ordinary skill in the art to which the subject matter of 26
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the claims pertained to pass cables through an opening in a wing spar. This 1
finding is supported by the third paragraph of the first page of the 2
Appellants’ Specification. The Appellants nowhere expressly challenge the 3
accuracy of the fact which the Examiner finds to be admitted. 4
5
PRINCIPLES OF LAW 6
“[W]hen a patent claims a structure already known in the art that is 7
altered by the mere substitution of one element for another known in the 8
field, the combination must do more than yield a predictable result” to be 9
non-obvious under § 103(a). KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 10
416 (2007) (citing United States v. Adams, 383 U.S. 39 (1966)). Otherwise, 11
an examiner need look no farther for an apparent reason to have combined 12
the known elements in the fashion claimed. See id. at 417. 13
A reference teaches away from the subject matter of a claim only if “a 14
person of ordinary skill, upon reading the reference, would be discouraged 15
from following the path set out in the reference, or would be led in a 16
direction divergent from the path that was taken by the applicant.” In re 17
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Prior art does not teach away 18
from claimed subject matter merely by disclosing a different solution to a 19
similar problem unless the prior art also criticizes, discredits or otherwise 20
discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 21
(Fed. Cir. 2004). 22
23
ANALYSIS 24
If one interprets the limitation “means for plastically expanding said 25
bush radially when located in the aperture by the action of a mandrel being 26
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passed through a longitudinal passageway defined by the bush” in claim 1 1
under the sixth paragraph of 35 U.S.C. § 112 (2002), then the limitation 2
excludes any means which does not perform the exact function recited in the 3
claim. See Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931, 934 4
(Fed. Cir. 1987)(en banc)(a “means-plus-function” limitation is met only by 5
means which perform the exact function recited in the limitation). If one 6
interprets the limitation without reference to the sixth paragraph of § 112, 7
then the limitation excludes any structure incapable of performing the 8
function recited in the claim. See In re Wilson, 424 F.2d 1382, 1385 (CCPA 9
1970)(“All words in a claim must be considered in judging the patentability 10
of that claim against prior art.”). 11
Djeddah does not disclose any structure even capable of plastically 12
expanding a bush of an annular bush fitting assembly radially when located 13
in an aperture by the action of a mandrel being passed through a longitudinal 14
passageway defined by the bush. (FF 2; see also FF 3.) With respect to the 15
rejection of claims 11-13, the Examiner identifies nothing in the AAPA 16
which would make up this deficiency in the teachings of Djeddah. The 17
Examiner provides no reasoning other than the erroneous finding that 18
Djeddah discloses the recited means which might suffice to support the 19
conclusion that an annular bush fitting assembly including such means might 20
have been obvious. 21
Heinichen disclosed a bush and a coupling. (FF 9-11.) Heinichen 22
also disclosed mounting the tubular casing 12 in the entrance opening in the 23
wall 10 by means of screw threads. (FF 12.) Reid disclosed a means, 24
namely, a suitably-dimensioned mandrel, for plastically expanding a bush 25
radially when located in the aperture by the action of the mandrel being 26
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passed through a longitudinal passageway defined by the bush. (See FF 5 1
and 8.) It would have been obvious to substitute the plastic expansion of the 2
bush radially by the action of a mandrel being passed through a longitudinal 3
passageway defined by the bush, as taught by Reid, for the engagement of 4
threads, as taught by Heinichen, to mount a bush of an annular bush fitting 5
assembly tightly in an aperture defined in a structural member. 6
Kauffman disclosed a bush (see FF 15) and a coupling (FF 16). 7
Kauffman disclosed welding or otherwise securing the bush in an opening in 8
a wall. (FF 17.) It would have been obvious to substitute the plastic 9
expansion of the bush radially by the action of a mandrel being passed 10
through a longitudinal passageway defined by the bush, as taught by Reid, 11
for welding, as taught by Heinichen, to mount a bush of an annular bush 12
fitting assembly tightly in an aperture defined in a structural member 13
The only element of representative claim 11 not described in either 14
Reid or Heinichen, or in either Kauffman or Reid, is the wing spar. The 15
AAPA discloses passing cables through an opening in a wing spar. (FF 18.) 16
It would have been obvious to substitute a connector similar to that disclosed 17
by Kauffman for known structures used to pass cables through an opening in 18
a wing spar, and to substitute plastic expansion of the bush or deck fitting by 19
the action of a mandrel being passed through a longitudinal passageway 20
through the bush as taught by Reid, for the threaded connection taught by 21
Kauffman to secure the bush in the opening. It also would have been 22
obvious to substitute a fitting assembly similar to that disclosed by 23
Kauffman for known structures used to pass cables through an opening in a 24
wing spar, and to substitute plastic expansion of the bush or deck fitting by 25
the action of a mandrel being passed through a longitudinal passageway 26
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through the bush as taught by Reid, for welding as taught by Kauffman, to 1
secure the bush in the opening. 2
The Appellants have provided no persuasive reason why the 3
implementation of any of these proposed substitutions might have been 4
beyond the level of ordinary skill in the art. For example, the Appellants’ 5
Specification discloses neither a particular mandrel configuration, a 6
particular apparatus for drawing the mandrel through the bush, nor a 7
particular configuration or material for fabricating a bush suitable for plastic 8
expansion by the action of a mandrel. From this omission, one may presume 9
that the level of ordinary skill in the art would have been sufficient to design 10
a suitable bush (e.g., a suitable bush similar in configuration to that disclosed 11
by Heinichen or that disclosed by Kauffman), as well as a suitable mandrel 12
and mandrel drawing apparatus, for implementing either of the proposed 13
substitutions. 14
The subject matter of representative claim 1 is no more than a 15
predictable use of elements disclosed by Reid and Heinichen, and separately 16
by Kauffman and Reid, according to their established functions. Likewise, 17
the subject matter of representative claim 11 is no more than a predictable 18
use of elements disclosed by Reid, Heinichen and the AAPA, and separately 19
by Kauffman, Reid and the AAPA, according to the established functions of 20
those elements. Plastic expansion of a bush by the action of a mandrel being 21
passed through a longitudinal passage defined by the mandrel serves to 22
mount the bush recited in claim 1 in an aperture in a structural member in 23
the same way that plastic expansion of Reid’s bushing 68 serves to mount 24
the bushing in an opening in a structural member. In both cases, the action 25
of the mandrel causes the bush to exert a compressive force on the region of 26
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the structural member surrounding the bush. (As to the plastic expansion of 1
Reid’s bushing, see FF 7 and 8.) 2
The Appellants have not shown that Reid, Heinichen or Kauffman 3
teaches away from the combination recited in claim 1. Nor have the 4
Appellants shown that Reid, Heinichen, Kauffman or the AAPA teaches 5
away from the combination recited in claim 11. Although Heinichen and 6
Kauffman disclose alternative solutions to the problem of mounting a bush 7
in an aperture in a structural member, and even assuming for purposes of 8
this appeal only that the solutions disclosed by Heinichen and Kauffman 9
might not be suitable for mounting a bush in an aperture in a wing spar (see, 10
e.g., App. Br. 17), neither reference criticizes or discredits the use of a tight 11
interference fit according to the teachings of Reid. Kauffman actually 12
teaches that means other than welding may be used to secure a bush in an 13
aperture. (See FF 17.) 14
15
CONCLUSIONS 16
The Appellants have shown that the Examiner erred in finding that 17
Djeddah discloses means at least capable of plastically expanding a bush of 18
an annular bush fitting assembly radially when located in an aperture by the 19
action of a mandrel being passed through a longitudinal passageway defined 20
by the bush. Therefore, the Appellants have shown that the Examiner erred 21
in rejecting claims 1-4 and 6-9 under § 102(e) as being anticipated by 22
Djeddah. 23
The Appellants have shown that the Examiner failed to articulate 24
reasoning with some rational underpinning sufficient to support the 25
conclusion that an annular bush fitting assembly including such means as 26
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recited in claim 1 would have been obvious from the teachings of the AAPA 1
and Djeddah. Therefore, the Appellants have shown that the Examiner erred 2
in rejecting claims 11-13 under § 103(a) as being unpatentable over the 3
AAPA and Djeddah. 4
The Appellants have not shown that the Examiner erred in finding that 5
Reid and Heinichen collectively disclosed a bush, a coupling and a means 6
for plastically expanding the bush radially when located in the aperture by 7
the action of the mandrel being passed through the longitudinal passageway 8
defined by the bush. 9
The Appellants have not shown that the Examiner failed to articulate 10
reasoning with some rational underpinning sufficient to support the 11
conclusion that the subject matter of claim 1 would have been obvious from 12
Reid and Heinichen. Therefore, the Appellants have not shown that the 13
Examiner erred in rejecting claims 1-3, 6-9, 14 and 15 under § 103(a) as 14
being unpatentable over Reid and Heinichen. 15
The Appellants have not shown that the Examiner erred in finding that 16
each element recited in claim 11 was disclosed in at least one of Reid, 17
Heinichen and the AAPA. 18
The Appellants have not shown that the Examiner failed to articulate 19
reasoning with some rational underpinning sufficient to support the 20
conclusion that the subject matter of claim 11 would have been obvious 21
from Reid, Heinichen and the AAPA. Therefore, the Appellants have not 22
shown that the Examiner erred in rejecting claims 11-13 and 16 under 23
§ 103(a) as being unpatentable over Reid, Heinichen and the AAPA. 24
Appeal 2009-003664
Application 10/479,642

19
The Appellants have not shown that the Examiner erred in finding that 1
each element recited in claim 1 was disclosed in at least one of Kauffman 2
and Reid. 3
The Appellants have not shown that the Examiner failed to articulate 4
reasoning with some rational underpinning sufficient to support the 5
conclusion that the subject matter of claim 1 would have been obvious from 6
Kauffman and Reid. Therefore, the Appellants have not shown that the 7
Examiner erred in rejecting claims 1-4, 6-9, 14 and 15 under § 103(a) as 8
being unpatentable over Kauffman and Reid. 9
The Appellants have not shown that the Examiner erred in finding that 10
each element recited in claim 11 is disclosed in at least one of Kauffman, 11
Reid and the AAPA. 12
The Appellants have not shown that the Examiner failed to articulate 13
reasoning with some rational underpinning sufficient to support the 14
conclusion that the subject matter of claim 11 would have been obvious 15
from Kauffman, Reid and the AAPA. Therefore, the Appellants have not 16
shown that the Examiner erred in rejecting claims 11-13 and 16 under 17
§ 103(a) as being unpatentable over Kauffman, Reid and the AAPA. 18
19
DECISION 20
We AFFIRM the Examiner’s decision rejecting claims 1-4, 6-9 and 21
11-16. 22
No time period for taking any subsequent action in connection with 23
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 24
§ 1.136(a)(1)(iv) (2007). 25
AFFIRMED 26
Appeal 2009-003664
Application 10/479,642

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NIXON & VANDERHYE, PC 9
901 NORTH GLEBE ROAD, 11TH FLOOR 10
ARLINGTON, VA 22203 11