Ex Parte Jackson

Board of Patent Appeals and Interferences

Mar 15, 2012

10783889 (B.P.A.I. Mar. 15, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/783,889 02/20/2004 Roger P. Jackson 10,193 6965
7590 03/16/2012
John C. McMahon
PO Box 30069
Kansas City, MO 64112
EXAMINER
COMSTOCK, DAVID C
ART UNIT PAPER NUMBER
3733
MAIL DATE DELIVERY MODE
03/16/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROGER P. JACKSON
____________

Appeal 2011-001384
Application 10/783,889
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
STEPHEN WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
1

This appeal under 35 U.S.C. § 134 involves claims 21-23 (App. Br.
3). We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a closure for setting engagement with a
structural member. Claim 21 is representative and is reproduced in the
“CLAIMS APPENDIX” of Appellant‟s Brief (App. Br. 26-27).

1
This Appeal is related to Appeal No. 2010-0011356, Application No.
10/784,006.
Appeal 2011-001384
Application 10/783,889

2
Claims 21-23 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Schäfer.
2

Claims 21-23 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Morrison.
3

We affirm.

The rejection over Schäfer:
ISSUE
Does the preponderance of evidence on this record support
Examiner‟s finding that Schäfer teaches the claimed invention?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Schäfer teaches a device as set forth in
Appellant‟s claim 21, including a substantially continuous guide and
advancement flange extending helically around the outside of a cylindrical
surface (Ans. 4-5).
FF 2. Examiner finds that “[t]he translation provided by Appellant in the
reply filed 05 November 2007 . . . teaches not only that the device has
threads but that the anti-splay grub screw is screwed in” (Ans. 6; see also id.,
citing, Schäfer Translation (PTO 10-3621) 7: 6-14).
FF 3. Examiner finds that Schäfer suggests that the closure is a setscrew
that forms a friction lock with the undercut and lug of the tread of the head
(Ans. 8).

2
Schäfer, DE 298 10 798 U1, published February 12, 1999, as translated in
PTO 10-3621 (May 2010).
3
Morrison et al., US 6,296,642 B1, issued October 2, 2001.
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Application 10/783,889

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FF 4. Schäfer „7494 distinguishes between a “bayonet joint” that is “closed
merely in one rotational direction” and a “set screw” that “is screwed into [a]
. . . threaded bore” (Schäfer „749, col. 3, ll. 17-20).
ANALYSIS
The claims have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 21 is representative.
While Appellant recognizes that Schäfer speaks in terms of a device
that is “screwed in,” Appellant contends that with respect to Schäfer‟s first
embodiment, “the term screw can mean simple rotation into something”
(App. Br. 17; see also Reply Br. 2). In this regard, Appellant contends that
Schäfer‟s use of the term “screwed in” refers to “a push down and twist
structure” (id.). Appellant contends that their “interpretation is supported by
the Schäfer specification and is consistent with other [unidentified] devices
that Schäfer patented and produced” (id.). In addition, Appellant contends
that “a structure that mates upon rotation 90° can be called a grub screw and
rotation or twisting can be interpreted and translated from the German into
English as being „screwed in‟” (App. Br. 21-22; see also Reply Br. 2-4). We
are not persuaded (FF 1-2; Ans. 6-7). In re Geisler, 116 F.3d 1465, 1471
(Fed. Cir. 1997) (argument by counsel cannot take the place of evidence).
Appellant contends that Schäfer‟s second embodiment “neither shows
or teaches a closure” (App. Br. 18; Reply Br. 4-5). We are not persuaded
(FF 3). In addition, Appellant contends that Schäfer‟s figure 2 does not
illustrate a pitch to the tiers of the treads, and therefore “it is impossible for
such tiers to be helically wound” (App. Br. 19; see also 20-22; Reply Br. 4-
5). We are not persuaded. As Examiner explains, “given the very small

4
Schäfer et al., US 6,540,749 B2, issued April 1, 2003.
Appeal 2011-001384
Application 10/783,889

4
portion of the entire circumference of the threads” illustrated in Schäfer‟s
figure 2, a conclusion cannot be drawn as to the pitch of the threads.
Instead, one must consider Schäfer‟s disclosure and “Appellant‟s argument
runs counter to the express teaching of” Schäfer (Ans. 7; see FF 2).
Appellant directs attention to Schäfer „749 to support the contention
that Schäfer‟s device is limited to a push down and twist structure (App. Br.
22-24). We are not persuaded for the reasons provided by Examiner (Ans.
8-9; FF 4).
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner‟s
finding that Schäfer teaches the claimed invention. The rejection of claim
21 under 35 U.S.C. § 102(b) as being anticipated by Schäfer is affirmed.
Because they are not separately argued claims 22 and 23 fall together with
claim 21. 37 C.F.R. § 41.37(c)(1)(vii).

The rejection over Morrison:
ISSUE
Does the preponderance of evidence on this record support
Examiner‟s finding that Morrison teaches the claimed invention?
FACTUAL FINDINGS (FF)
FF 5. Examiner finds that Morrison teaches a device as set forth in
Appellant‟s claim 21, including a substantially continuous flange helically
around the outside of a cylindrical surface “having reverse angle threads
facing the closure axis of the device” (Ans. 5-6).
FF 6. Examiner finds that “the very purpose of the reverse angle thread is
to radially interlock with the arms and prevent outward splaying of the arms
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Application 10/783,889

5
upon tightening of the closure” (Ans. 9; see also Ans. 10 (“it is because of
the relatively enlarged portion of the reverse-angle thread above horizontal
(vis-à-vis a traditional thread design) that a radially interlocking relationship
between the closure and legs is created”)).
ANALYSIS
The claims have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 21 is representative.
Appellant contends that “[w]hile Morrison, et al. teaches a closure
with a helically wound thread, it is a simple V-thread of the reverse angle
type” (App. Br. 24). Accordingly, “for the same reasons as were discussed
with respect to Schafer [sic], it is urged that Morrison, et al. does not
anticipate applicant‟s claimed structure” (id. at 25). For the reasons set forth
above, we are not persuaded by Appellant‟s contentions regarding Schäfer.
Further, Appellant failed to provide persuasive reasoning or evidence to
support finding that Morrison fails to teach the invention of Appellant‟s
claim 21.
We are also not persuaded by Appellant‟s contention that “[n]othing
in Morrison, et al., in any way shows, suggests or teaches providing a
closure that has structure which radially interlocks with the receiver arms”
(App. Br. 24-25). In this regard, Appellant contends that “it is not possible
for Morrison, et al., to anticipate Claim[ ] 21 . . . because it has smooth and
radially linear thread surfaces which cannot interlock with a mating surface
of the receiver, since those surfaces are also smooth and radially linear”
(Reply Br. 5). We are not persuaded (FF 6). Appellant fails to provide
persuasive reasoning or evidence to support finding that Examiner‟s
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rationale relating to Morrison‟s radially interlocking structure is incorrect.
In re Geisler, 116 F.3d at 1471.
CONCLUSION OF LAW
The preponderance of evidence on this record supports Examiner‟s
finding that Morrison teaches the claimed invention. The rejection of claim
21 under 35 U.S.C. § 102(b) as being anticipated by Morrison is affirmed.
Because they are not separately argued claims 22 and 23 fall together with
claim 21. 37 C.F.R. § 41.37(c)(1)(vii).

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc