Ex Parte Cantlon et al

Board of Patent Appeals and Interferences

Oct 27, 2009

11125840 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NATHAN C. CANTLON, JESSE CROFT, and
W. ROBERT CORNWELL
____________

Appeal 2009-001530
Application 11/125,840
Technology Center 3700
____________

Decided: October 27, 2009
____________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and MICHAEL W.
O'NEILL, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-001530
Application 11/125,840

2
STATEMENT OF THE CASE
Nathan C. Cantlon et al. (Appellants) appeal under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claims 1-8, which are all of
the claims pending in the application. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

The Invention
Appellants’ claimed invention is directed to a fastener driver having a
fastener guide. Spec. 1:4-5. Appellants’ fastener guide is a tubular sleeve
26 coupled to driver body 22 for slidable movement thereon. Spec. 2:24-25
and 3:19-21. Sleeve 26 has an inner diameter that is slightly larger than an
outer diameter of the driver body 22. Spec. 3:17-19. A retention
mechanism 24, in the form of a C-spring, is received within an annular
groove 34 formed in the outer surface of driver body 22. Spec. 3:9-10.
Sleeve 26 is provided with first and second retention grooves 42 and 44
sized to lockingly receive the retention mechanism 24 and longitudinally
spaced to define a length of travel of the sleeve 26, between an extended
position, shown in figure 4, in which a fastener can be received within both
the cavity/channel 40 defined by the sleeve 26 and the fastener cavity 30
formed in the fastener driver body 22, and a retracted position, shown in
figure 3, during operation of the fastener driver 20. Spec. 2:29-30, 3:16-17,
3:23-26, and 4:2-4; figs. 3 and 4. When the sleeve 26 is in the extended
position, the sleeve 26 assists in retaining the fastener within the fastener
retention cavity 30 and guides the fastener during operation of the fastener
driver 20. Spec. 4:4-6. During use, as the fastener is driven into the
workpiece, the free end of sleeve 26 contacts the workpiece and is subjected
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Application 11/125,840

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to a resistance force from the workpiece, which overcomes the locking
resistance between the retention mechanism 24 and the second retention
groove 44 and gradually displaces the sleeve 26 into the retracted position.
Spec. 4:8-15; figs. 3 and 4.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A fastener driver for a hand tool, comprising:
(a) a driver body having a cavity formed in
one end and an attachment shank formed in a
second end, wherein the cavity is geometrically
shaped to receive a correspondingly shaped end of
a fastener; and
(b) a guide slidably attached to the driver
body and positioned for selectively retaining a
fastener within the cavity during use of the fastener
driver, wherein the guide is positionable relative to
the driver body between an extended position,
wherein the guide substantially retains the fastener,
and a retracted position.

The Rejection
Appellants seek review of the Examiner’s rejection of claims 1-8
under 35 U.S.C. § 102(b) as being anticipated by Chen (US 6,644,150 B2,
issued Nov. 11, 2003).

SUMMARY OF DECISION
We AFFIRM.

Appeal 2009-001530
Application 11/125,840

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ISSUES
The Examiner finds that Chen describes a fastener driver comprising a
body (inner tube 20) having a cavity (compartment 22) configured for
engagement with a similarly shaped workpiece, such as hexagonally shaped
fasteners, and a guide (outer tube 30) slidably attached to the inner tube so as
to be slidable from a retracted position to an extended position. Ans. 3.
Appellants argue that Chen does not anticipate the subject matter of
independent claims 1, 3, and 7, because Chen’s compartment 22 is adapted
to receive a tool bit 50, which is a driver, not a fastener. App. Br. 10, 11,
and 12. Thus, according to Appellants, Chen lacks a driver body having a
cavity geometrically shaped to receive a correspondingly shaped end of a
fastener, as called for in claim 1, a fastener receiving end, as called for in
claim 3, or a retention end being shaped to receive a correspondingly shaped
end of a fastener, as called for in claim 7. Id.
Appellants argue that Chen does not anticipate the subject matter of
independent claims 1, 3, and 7, or their dependent claims, because Chen
does not teach a guide positionable into an extended position wherein the
guide substantially retains the fastener. App. Br. 11-13. In particular,
Appellants argue that the outer tube 30 of Chen does not extend beyond the
upper surface of the inner tube 20, and thus cannot substantially retain the
fastener, as required by Appellants’ claims. Reply Br. 4. According to
Appellants, Chen does not disclose using the outer tube 30 to retain a
fastener, and figure 2 of Chen shows the tube 30 not extending beyond the
top portion of the inner tube 20. Reply Br. 4. Instead, according to
Appellants, Chen uses a retaining clip 40 and magnet 23 to retain the tool bit
50 within the cavity 22 of inner tube 20. App. Br. 10-11; Reply Br. 7.
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Application 11/125,840

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The Examiner’s position that Chen’s outer tube is attached or coupled
to the inner tube 20 so as to be slidable to an extended position in which it
substantially retains, or is adapted to retain, the fastener appears to be
grounded in part on a finding that outer tube 30 is attached or coupled to
inner tube 20 so as to be slidable to a position in which it extends above the
upper end of inner tube 20, as oriented in figures 1, 2, 4, and 5. See Ans. 3.
The Examiner contends that Chen’s use of additional retaining means,
such as clip 40 and magnet 23, to retain the fastener in the cavity 22 of
Chen’s inner tube 20 does not undermine the Examiner’s characterization of
Chen’s outer tube 30, in the extended position, as substantially retaining the
fastener. See Ans. 4.
Appellants do not present any separate arguments for the dependent
claims apart from the independent claims from which they depend. Thus, in
accordance with 37 C.F.R. § 41.37(c)(1)(vii) (2007), dependent claims 2, 4-
6, and 8 stand or fall with the independent claim from which they depend.
Accordingly, the following issues are presented in this appeal:
(1) Have Appellants demonstrated that the Examiner erred in finding
that hexagonal compartment 22 of Chen’s inner tube is configured
for receiving a correspondingly shaped fastener?
(2) Have Appellants demonstrated that the Examiner erred in finding
that Chen’s outer tube 30 is slidable to a position in which it
extends above the upper end of inner tube 20?
(3) Have Appellants demonstrated that Chen’s use of additional
retaining structure, such as the clip 40 and magnet 23, for engaging
and retaining the tool bit within the compartment 22 of inner tube
20 undermines the Examiner’s characterization of outer tube 30 as
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Application 11/125,840

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being slidable into an extended position in which it substantially
retains, or is adapted to substantially retain, a fastener within the
compartment 22?

FACTS PERTINENT TO THE ISSUES
Chen describes a tool bit holding device 10 comprising an inner tube
20, and an outer tube 30 mounted around the inner tube 20 and slidable in a
longitudinal direction along the inner tube 20. Chen, col. 2, ll. 18-22. Chen
does not specify the function of the outer tube 30. In particular, Chen does
not describe the outer tube 30 as functioning to retain a fastener within the
compartment 22 of inner tube 20. Chen describes a magnet 23 and C-shaped
clip 40 for engaging and retaining a tool bit 50 within hexagonal
compartment 22. Chen, col. 2, ll. 26-27 and col. 2, l. 53 to col. 3, l. 7.
While Chen does not describe a fastener received in compartment 22,
by virtue of its hexagonal shape, compartment 22 is geometrically shaped to
receive a correspondingly shaped, that is, a hexagonally-shaped, fastener.
Chen discloses annular positioning grooves 26 and 27, fitted with
retainer rings 28 and 29, on the outer periphery of inner tube 20. Chen, col.
2, ll. 35-42. Chen’s outer tube 30 includes an annular groove 31 defined in
its inner periphery. Chen, col. 2, ll. 46-48. When the outer tube 30 is
positioned so that annular groove 31 is moved to retainer ring 28, the
retainer ring 28 stops further sliding movement of outer tube 30. Chen, col.
2, ll. 49-51. According to Chen, “[t]he retainer rings 28 and 29 limit the
longitudinal sliding motion of the outer tube 30 along the outer periphery of
the inner tube 20.” Chen, col. 2, ll. 42-44. In order for the annular groove
31 to be moved to retainer ring 28, outer tube 30 must be slid into a position
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Application 11/125,840

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so as to extend above the upper end of inner tube 20, that is, beyond the
upper end of compartment 22. Fig. 2. In such position, the outer tube 30 is
positioned so that a tool bit 50, or hexagonally-shaped fastener, received
within the compartment 22 is received in both the compartment 22 of inner
tube 20 and the channel defined by the portion of outer tube 30 extending
above the compartment 22. Thus, in the extended position, Chen’s outer
tube 30 is capable of assisting in retaining a fastener within the compartment
22, and guiding the fastener during operation of the device, in much the
same manner as Appellants’ sleeve 26. See Spec. 4:2-7.

PRINCIPLES OF LAW
Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention. RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984).
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).

ANALYSIS
Chen’s compartment 22, by virtue of its hexagonal shape, is
geometrically shaped to receive a correspondingly shaped, that is, a
hexagonally-shaped, fastener. Therefore, the Examiner did not err in finding
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Application 11/125,840

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that Chen’s compartment 22 is geometrically shaped to receive a
correspondingly shaped end of a fastener, as called for in claim 1, and
shaped to drive a correspondingly shaped end of a fastener, as called for in
claim 7, or that it is a fastener receiving end, as called for in claim 3. The
fact that Chen discloses tool bits 50, not fasteners, received in compartment
22 does not negate anticipation in this case, because claims 1, 3, and 7 do
not require fasteners. It is well established that limitations not appearing in
the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
As shown in our findings above, Chen discloses the outer tube 30
extending beyond the upper end of inner tube 20, that is, beyond the upper
end of compartment 22. Specifically, given the location of annular groove
31 on outer tube 30 and the location of retainer ring 28 on inner tube 20 (fig.
2), in order for the annular groove 31 to be moved to retainer ring 28, as
described by Chen, outer tube 30 must be slid into a position so as to extend
above the upper end of inner tube 20, that is, beyond the upper end of
compartment 22. Thus, Chen’s outer tube 30 is slidable to a position in
which it extends above the upper end of inner tube 20.
In the extended position, the outer tube 30 is positioned so that a tool
bit 50, or hexagonally-shaped fastener, received within the compartment 22
is received in both the compartment 22 of inner tube 20 and the channel
defined by the portion of outer tube 30 extending above the compartment 22.
Thus, in the extended position, Chen’s outer tube 30 is capable of assisting
in retaining a fastener within the compartment 22, and guiding the fastener
during operation of the device, in much the same manner as Appellants’
sleeve 26. Inasmuch as Appellants’ fastener cavity 30 comprises structure
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Application 11/125,840

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for receiving and retaining a fastener therein, the claim language directed to
the guide or sleeve substantially retaining, or being adapted to substantially
retain, a fastener cannot be read consistently with Appellants’ Specification
as excluding additional structure for assisting in retaining the fastener in the
fastener receiving end or cavity of the driver body. Thus, Chen’s use of
additional retaining structure, such as the clip 40 and magnet 23, for
engaging and retaining the tool bit within the compartment 22 of inner tube
20 in no way undermines the Examiner’s characterization of outer tube 30 as
being slidable into an extended position in which it substantially retains, or
is adapted to substantially retain, a fastener within the compartment 22.

CONCLUSIONS
(1) Appellants have not demonstrated that the Examiner erred in
finding that hexagonal compartment 22 of Chen’s inner tube is
configured for receiving a correspondingly shaped fastener.
(2) Appellants have not demonstrated that the Examiner erred in
finding that Chen’s outer tube 30 is slidable to a position in which
it extends above the upper end of inner tube 20.
(3) Appellants have not demonstrated that Chen’s use of additional
retaining structure, such as the clip 40 and magnet 23, for engaging
and retaining the tool bit within the compartment 22 of inner tube
20 undermines the Examiner’s characterization of outer tube 30 as
being slidable into an extended position in which it substantially
retains, or is adapted to substantially retain, a fastener within the
compartment 22.
Appeal 2009-001530
Application 11/125,840

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Therefore, Appellants have not shown error in the Examiner’s
rejection of independent claims 1, 3, and 7, or dependent claims 2, 4-6, and
8, which fall with the independent claim from which they depend.

DECISION
The Examiner’s decision is affirmed.
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) (2007).
AFFIRMED

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