Ex Parte Castellon

Board of Patent Appeals and Interferences

Jun 5, 2009

11085513 (B.P.A.I. Jun. 5, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MELCHOR DAUMAL CASTELLON
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Appeal 2009-001450
Application 11/085,513
Technology Center 3600
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Decided: 1 June 5, 2009
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

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Application 11/085,513

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STATEMENT OF THE CASE
Melchor Daumal Castellon (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 4-9 and 11. Claims 1-3 and
10 have been canceled. We have jurisdiction over this appeal under 35
U.S.C. § 6 (2002).

THE INVENTION
The Appellant’s invention is drawn toward a mounting assembly for a
drive shaft in a universal joint yoke. Specification 1, ll. 1-2 and fig. 1. The
mounting assembly 1 includes a sleeve 13 surrounding the stem of a bolt 8.
The sleeve 13 expands outwardly against an outer surface of a driving shaft
15 to press the shaft against the bottom of yoke 2 such as to fix it axially in
position. Specification 6, l. 34 through 7, l. 5 and fig. 6.
Claim 6 is representative of the claimed invention and reads as
follows:
6. A mounting assembly for a universal joint,
comprising of:

a yoke including first and second wings
having respective first and second
holes, said first and second wings being
configured to receive a driving shaft;

a bolt having a head, and having a stem
receivable in said first and second holes,
said bolt including a first threaded end
portion, a second non-threaded portion
adjacent to said first threaded end portion,
and a third non-threaded end portion; and

a sleeve disposed over said second non-
threaded portion of said bolt wherein no
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portion of said sleeve is received in either of
said first and second holes when said bolt is
assembled with said yoke.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Debisschop US 6,135,667 Oct. 24, 2000
Ikeda US 6,443,650 B2 Sep. 3, 2002

The following rejections are before us for review:
The Examiner rejected claims 6, 8, 9, and 11 under 35 U.S.C.
§ 102(b) as anticipated by Debisschop.
The Examiner rejected claims 4, 5, and 7 under 35 U.S.C. § 103(a) as
unpatentable over Debisschop and Ikeda.

THE ISSUE
Has the Appellant demonstrated that the Examiner’s reading of the
teachings of Debisschop is unreasonably broad? Specifically, has the
Examiner erred in interpreting the two-piece structure formed by the bolt 20
and the sleeve portion 82 of Debisschop as the claimed “bolt”?

SUMMARY OF DECISION
We REVERSE.

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PRINCIPLES OF LAW
Claim Construction
When construing claim terminology 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).
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros, Inc. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).

OPINION
The anticipation rejection
Independent claim 6 requires a yoke having first and second holes, a
bolt, and a sleeve disposed over a “non-threaded portion” of the bolt, such
that “no portion of said sleeve is received in either of said first and second
holes.”
We find that Debisschop teaches a mounting assembly for securing a
shaft 10 in a universal joint yoke 30. Debisschop, col. 1, ll. 4-11; col. 3, l.
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57; and fig. 4. In a first embodiment, the mounting assembly of Debisschop
includes a bolt 40 and a cylindrical jacket 60 (sleeve) that surrounds the stem
of the bolt 40, and which is inserted through a first hole of the yoke 30 such
that it rests between the head of the bolt 40 and the wall of the yoke 30.
Debisschop, col. 2, l. 63 through col. 3, l. 7 and fig. 4. When the bolt 40 is
tightened the jacket 60 (sleeve) is compressed axially, which results in an
outward expansion such that it presses against the surface of a shaft 10 and
fixes the shaft against the bottom of the yoke 30. Debisschop, col. 2, ll. 62-
63 and col. 3, ll. 7-10 and fig. 4. Since the cylindrical jacket 60 (sleeve) of
Debisschop is inserted through the first hole, Debisschop does not teach a
sleeve disposed over a bolt such that “no portion of said sleeve is received in
either of said first and second holes,” as required by claim 6.
In order to overcome the deficiency of the first embodiment of
Debisschop, the Examiner turns to a second embodiment including a bolt 20
having a drive head 21 and a shoulder 22 fitted within the first hole of the
yoke 30, such that it “provides slightly less play in the first hole than does
the jacket /bolt combination.” Debisschop, col. 3, ll. 35-37. The Examiner
further looks to a separate embodiment of the jacket (sleeve) in which the
jacket (sleeve) 80 is formed by two tapered cylindrical pieces 82 and 83,
“whose tapers cause radial expansion as the jacket is axially compressed.”
Debisschop, col. 3, ll. 22-24 and fig. 5c. Finally, the Examiner proceeds to
equate the combined portion 82 of the jacket (sleeve) 80 and the bolt 20 to
the claimed bolt, and the portion 83 of the jacket (sleeve) 80 to the claimed
sleeve. Ans. 8
However, we find the Examiner’s interpretation of the teachings of
Debisschop unreasonable. The Appellant’s Specification does not expressly
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define the term “bolt” or otherwise indicate that this term is used in a
manner other than its ordinary and customary meaning. Accordingly, we
construe this term in accordance with its ordinary and customary meaning.
An ordinary and customary meaning of the term “bolt” is “a metal rod or pin
for fastening objects together that usually has a head at one end and a screw
thread at the other and is secured by a nut.” MERRIAM WEBSTER’S
COLLEGIATE DICTIONARY 129 (Tenth Ed. 1997). That is, a bolt includes a
rod or pin portion, a head at one end, and a screw thread at the other, all
forming a single, unitary structure for fastening objects together using a nut
that connects to the threaded end. According to the Examiner’s
interpretation of Debisschop, the bolt 20 includes a stem (a rod or pin
portion), a head at one end, a threaded portion, and a sleeve portion 82.
However, the sleeve portion 82 of Debisschop is merely positioned over the
stem of the bolt 20 and does not form a single unitary structure with the bolt
20. Furthermore, we do not see any structural difference between the
tapered cylindrical parts 82 and 83 that would have suggested to a person of
ordinary skill in the art that the tapered cylindrical parts 82 and 83 are so
different as to constitute a “bolt portion” and a “sleeve,” respectively.
As such, we do not find that a person of ordinary skill in the art would
have reasonably contemplated that the bolt 20 and the sleeve portion 82 of
Debisschop constitute a “bolt,” but rather a bolt 20 covered by a sleeve 80
having two tapered cylindrical portions 82 and 83. Since Debisschop
discloses that the jacket (sleeve) 80 is not inserted through the first hole of
the yoke 30 because of the shoulder 22 of the bolt 20, we agree with
Appellant that the sleeve 80 would have to cover the threaded portion of the
bolt 20 and not the non-threaded portion of the shoulder 22. Therefore,
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Debisschop does not teach a sleeve disposed over a “non-threaded portion”
of a bolt as required by claim 6.
Inasmuch as we found that Debisschop does not teach a sleeve
disposed over a “non-threaded portion” of a bolt such that “no portion of
said sleeve is received in either of said first and second holes,” as required
by claim 6, Debisschop does not teach all the elements of independent claim
6. Accordingly, the rejection of claims 6-9 and 11 under 35 U.S.C. § 102(b)
as anticipated by Debisschop cannot be sustained.

The obviousness rejection
Independent claim 4 requires a bolt having “at least a first, threaded
end portion, a second, non-threaded adjacent portion, and a third portion”
that “is received in one of said holes with no part of said third portion being
covered by said sleeve….” In other words, the claimed bolt requires at least
three distinct portions.
As noted above, we do not find that a person of ordinary skill in the
art would have reasonably understood that the bolt 20 and the sleeve portion
82 of Debisschop constitute a “bolt,” but rather a bolt 20 covered by a sleeve
80 having two tapered cylindrical portions 82 and 83. As such, we agree
with the Appellant that the only portion of the bolt 20 that is received within
a hole of the yoke and is not covered by the sleeve 80 is the shoulder 22.
App. Br. 8. Hence, we find that the shoulder 22 of the bolt 20 of Debisschop
satisfies the limitation of a “third portion.” We further agree with the
Appellant that the stem of bolt 20 constitutes a threaded portion (first,
threaded end portion). Id. However, claim 4 also requires a second, non-
threaded portion adjacent the first, threaded portion, and different than the
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third portion. In contrast, Debisschop merely teaches that the stem of bolt
20 (threaded portion) is adjacent the shoulder 22 (third portion), but does not
teach a separate non-threaded portion adjacent the stem (first, threaded
portion) and different than the shoulder 22 (third portion).
In conclusion, Debisschop does not teach a “second, non-threaded
portion,” as required by claim 4. Since the Examiner does not rely on the
teachings of Ikeda to make up for the deficiency of Debisschop as discussed
above, the rejection of claim 4 cannot be sustained. Therefore, we will not
sustain the rejection of claim 4 or its dependent claim 5. See In re Fine,
837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an independent claim is
nonobvious under 35 U.S.C. § 103, then any claim dependent therefrom is
nonobvious).
With respect to claim 7, which depends from independent claim 6, the
teachings of Ikeda do not remedy the deficiency of Debisschop as discussed
above. Therefore, the rejection of claim 7 under 35 U.S.C. § 103(a) as
unpatentable over Debisschop and Ikeda likewise cannot be sustained.

CONCLUSION
The Appellant has demonstrated that the Examiner erred in
interpreting the two-piece structure formed by the bolt 20 and the sleeve
portion 82 of Debisschop as the claimed “bolt.”

DECISION
The Examiner’s rejection of claims 4-9 and 11 is reversed.

REVERSED

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