Ex Parte Johnson

Patent Trial and Appeal Board

Nov 25, 2014

12133341 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ORREN S. JOHNSON
____________

Appeal 2012-005960
Application 12/133,341
Technology Center 3600
____________

Before JOHN C. KERINS, MICHAEL L. HOELTER, and
BRANDON J. WARNER, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge WARNER.

Opinion Dissenting filed by Administrative Patent Judge KERINS.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Orren S. Johnson (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1–3, which are all the pending claims.
Appeal Br. 3. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

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Application 12/133,341

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates to “a threaded connection and,
in particular, a threaded connection that can withstand momentary torque
overload.” Spec. ¶ 2. Claim 1, reproduced below with disputed limitations
italicized for emphasis, is the sole independent claim appealed and is
representative of the subject matter on appeal.
1. A threaded connection, comprising:
an externally threaded pin connection having a proximate
end, a distal end, a pin shoulder at the proximate end and a
distal contact surface at the distal end, the pin connection
having tapered thread;
an internally threaded box connection having a proximate
end, a distal end, an internal contact surface at the proximate
end and an external shoulder at the distal end, the box
connection having tapered thread;
each of the pin connection and the box connection having
threads with a non-load bearing flank which does not bear a
load when the threads are engaged; and
at least one metal deformable element positioned
between the pin shoulder of the pin connection and the external
shoulder of the box connection or between the distal contact
surface of the pin connection and the internal contact surface of
the box connection, the deformable element being of a softer
material than that of the pin connection and the box connection,
such that the deformable element deforms in response to a
momentary torque overload;
the tapered thread of the pin connection and the tapered
thread of the box connection when engaged providing sufficient
clearance at the non-load bearing flank of each thread to
provide for axial movement between the pin connection and the
box connection when the metal deformable element is in a non-
deformed state to allow for a desired amount of deformation of
the metal deformable element before axial force is transmitted
from the pin connection to the box connection via the threads.
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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Allen US 5,779,276 July 14, 1998
Carstensen US 5,895,079 Apr. 20, 1999
Haines US 2003/0155769 A1 Aug. 21, 2003

REJECTIONS
The following rejections are before us for review:
I. Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haines and Allen.
II. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haines, Allen, and Carstensen.

ANALYSIS
Rejection I – Claims 1 and 2 as unpatentable
over Haines and Allen
Claim 1
The Examiner correctly found that Haines discloses a threaded
connection including all the structural limitations as recited in claim 1,
except that “Haines does not expressly disclose that the deformable element
is of a softer material than that of the pin connection and the box
connection.” Ans. 5 (citing Haines, Fig. 3). Next, the Examiner correctly
found that Allen teaches that a pin connection and a box connection “can be
formed of a high alloy steel,” while interposed deformable seal elements
“can be formed of a softer metallic material.” Ans. 5–6 (citing Allen, col. 3,
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ll. 48–67; col. 5, ll. 54–59). The Examiner then concluded that it would
have been obvious to one having ordinary skill in the art at the time of
invention “to have formed the pin and the box from a high alloy steel to
provide fluid resistance for handling corrosive or other hard[-]to[-]handle
fluids and to [have formed] the seal from a softer metallic material having at
least partial resiliency to achieve a slidable interface as taught by Allen.”
Ans. 6.
Appellant argues generally that “Haines does not teach a deformable
ring,” and more specifically that “Haines cannot be read as teaching a
‘deformable element . . . [that] deforms in response to a momentary torque
overload,’ as claimed.” Appeal Br. 9 (emphasis omitted). We are not
persuaded by Appellant’s argument. As the Examiner correctly notes,
“while features of an apparatus may be recited either structurally or
functionally, claims directed to an apparatus [as here] must be distinguished
from the prior art in terms of structure rather than function.” Ans. 7 (citing
MPEP § 2114); see In re Schreiber, 128 F.3d 1473, 1477–78 (Fed. Cir.
1997); Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468
(Fed. Cir. 1990) (“apparatus claims cover what a device is, not what a device
does”).
In this regard, we agree with the Examiner that “Haines teaches a
deformable element that is capable of performing the functional limitation as
recited in claim 1” and “therefore, Haines meets this limitation” as claimed.
Ans. 8; see also id. at 13 (the deformable ring element of Haines meets the
structural limitations as set forth in the claim and thus is capable of
performing the corresponding function as also set forth in the claim). In
other words, because the Examiner correctly found that Haines discloses a
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metal ring that is “capable of deforming” in response to a momentary torque
overload, this disclosure “meets the limitation of being a [metal] deformable
element” as claimed. Id. at 8; see also id. at 11 (citing Haines ¶ 48
(disclosing that the ring can be made from various deformable materials)).
Thus, Appellant does not apprise us of error in the Examiner’s findings,
which are supported by a preponderance of the evidence.
Appellant also asserts that Haines “teaches away” from a ring that is
capable of deforming as claimed. See Appeal Br. 9; Reply Br. 4–5. We
initially note that this assertion is contradicted by the findings discussed
supra. We further note that Appellant does not point to any passage in
Haines that criticizes, discredits, or otherwise discourages modification of
the materials used, as reasoned by the Examiner, and we therefore are not
persuaded that Haines teaches away from the combination used in the
rejection of record. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(prior art does not teach away from claimed subject matter merely by
disclosing a different solution to a similar problem unless the prior art also
criticizes, discredits or otherwise discourages the solution claimed). It is
well established that the disclosure of a particular embodiment, even a
preferred embodiment, in the prior art—absent such criticizing, discrediting,
or otherwise discouraging—is not a teaching away. See DyStar Textilfarben
GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006) (“We will
not read into a reference a teaching away from a process where no such
language exists.”).
Appellant further argues that there is “[n]o motivation to combine
Haines and Allen.” Appeal Br. 12 (emphasis omitted); see id. at 12–14
(discussing details and asserted differences of each reference individually).
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We are not persuaded by Appellant’s argument. As the Examiner correctly
explains in the Answer, the rejection of record combines the teachings of
Haines and Allen “to teach a threaded connection with a pin connection, a
box connection, and at least one metal deformable element where the pin
and box connection are formed of a harder material [than] the at least one
metal deformable element,” as discussed in detail supra. Ans. 15.
Moreover, in support of the legal conclusion of obviousness based on
the combination of Haines and Allen, we note that the Examiner articulated
detailed reasoning based on rational underpinnings to explain why a person
of ordinary skill in the art would have been led to combine the teachings as
applied in the rejection of record, as discussed supra. See Ans. 6; see also
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Additionally, the
Examiner correctly notes in the Answer that the reasons to combine the
teachings are found in Allen. See Ans. 15–16 (citing Allen, col. 3, ll. 48–67;
col. 5, ll. 54–59). We also note that the reason to modify a reference may
often prompt a person of ordinary skill in the art to do what the inventor has
done, but for a different purpose or to solve a different problem; it is not
necessary that the prior art suggest the combination to achieve the same
advantage or result discovered by an applicant. See, e.g., In re Kahn,
441 F.3d 977, 987 (Fed. Cir. 2006). Thus, Appellant does not apprise us of
error in the Examiner’s conclusion of obviousness.
Accordingly, for the foregoing reasons, we sustain the rejection of
claim 1 under 35 U.S.C. § 103(a) as being unpatentable over Haines and
Allen.

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Claim 2
With respect to the rejection of claim 2, Appellant does not set forth
any additional substantive arguments separate from the arguments discussed
supra. See Appeal Br. 14–15. Accordingly, for the same reasons, we
likewise sustain the rejection of claim 2 under 35 U.S.C. § 103(a) as being
unpatentable over Haines and Allen.

Rejection II – Claim 3 as unpatentable
over Haines, Allen, and Carstensen
The Examiner relied on Carstensen for teaching that “the metal
deformable element can be an internal metal deformable element positioned
between the distal contact surface of the pin connection and the internal
contact surface of the box connection to provide sealing and stress
equalization.” Ans. 6–7 (citing Carstensen, col. 9, ll. 60–65; Fig. 6).
Appellant asserts that Carstensen “do[es] not teach anything
positioned between the distal contact surface of a pin connection and the
internal contact surface of a box connection.” Appeal Br. 15. We are not
persuaded by Appellant’s assertion because we agree with the Examiner’s
finding that Carstensen teaches this limitation. See Ans. 16–17 (citing
Carstensen, Fig. 6, as reproduced and annotated in the Answer). Appellant
does not provide any factual evidence or persuasive technical reasoning to
contradict this finding and thus does not apprise us of error.
Accordingly, we sustain the rejection of claim 3 under 35 U.S.C.
§ 103(a) as being unpatentable over Haines, Allen, and Carstensen.

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DECISION
We AFFIRM the Examiner’s decision rejecting claims 1 and 2 under
35 U.S.C. § 103(a) as being unpatentable over Haines and Allen.
We AFFIRM the Examiner’s decision rejecting claim 3 under
35 U.S.C. § 103(a) as being unpatentable over Haines, Allen, and
Carstensen.
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).

AFFIRMED

Klh

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ORREN S. JOHNSON
____________

Appeal 2012-005960
Application 12/133,341
Technology Center 3600
____________

Before JOHN C. KERINS, MICHAEL L. HOELTER, and
BRANDON J. WARNER, Administrative Patent Judges.

KERINS, Administrative Patent Judge, dissenting.

I respectfully dissent.
In my view, the Haines patent does not evidence that the torque
reducing ring 124 is, as used in the coupling disclosed therein, intended to be
deformable. It is not sufficient to take the position that the torque reducing
ring is capable of being deformed, as it appears that my colleagues have
done, rather it must be determined that, when the coupling is made up as
intended by its design, the torque reducing ring will be or is intended to be
deformed. The former position is tantamount to finding that all materials are
deformable to some extent, which effectively and improperly reads the
limitation out of the claim. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d
1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render
phrases in claims superfluous).
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Although Haines does not expressly state that the torque reducing ring
is intended not to deform, Haines does discuss that, in certain embodiments,
the load imposed on the torque reducing ring is decreased (relative to other
embodiments), thereby allowing a “softer” ring to be used. Haines ¶ 60.
This implies that, in the embodiments in which a higher load is to be
imposed on the torque reducing ring, a suitable harder material that will
retain its shape and not be “squashed out of shape.” Id. ¶ 50. As such, I am
of the opinion that the Examiner’s finding that torque reducing ring 124
meets the limitation in claim 1 directed to “at least one metal deformable
element” is in error.
That being the case, the Examiner’s proposed modification to the
Haines coupling in view of the teachings of Allen is not sustainable. As
pointed out by Appellant, a modification to Haines to provide a torque
reducing ring that is intended to deform upon joint makeup would appear to
render Haines incapable of functioning as intended, in that the ring would
lose its ability to maintain separation between the opposing faces of the pin
and box connectors. Reply Br. 4–5. At a minimum, making such a
modification would not predictably lead to a connector having any particular
advantage over the unmodified coupling.
As to this latter point, even if it were proper to regard the torque
reducing ring in Haines as a deformable metal element, the reasons
articulated by the Examiner for modifying Haines in view of Allen are not
supported by rational underpinnings. The Examiner states that it would have
been obvious to modify Haines such that the pin and box would be made of
a high alloy steel to provide fluid resistance for handling corrosive or other
hard-to-handle fluids, and such that a “seal” would be made of a softer
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metallic material to achieve a slidable interface. Ans. 6. The majority
points out that those reasons are explicitly set forth in the Allen patent. The
question, however, is do those reasons have applicability to the Haines
coupling. In the present case, the latter proposed modification, to use a
softer metallic material for the torque reducing ring to achieve a slidable
interface, does not appear to be compatible with the operation of the Haines
coupling.
The Examiner never takes the position that the torque reducing ring in
Haines is to be deformed when the joint is made up, only that the ring is
capable of being deformed. As discussed above, the use of a softer,
deformable material would appear to interfere with the proper and intended
operation of the torque reducing ring. Further, as Appellant points out, the
materials which Haines employs already achieve a slidable, low friction,
interface. Appeal Br. 14; Haines ¶ 48. Finally, it is not specifically the use
of a deformable metal for the gasket in Allen that provides a slidable
interface; rather, Allen discloses that whatever deformable material among
those mentioned for use would have to have the characteristic of “lubricity”
in order to achieve the slidable interface. Allen, col. 6, ll. 54–59.
I would reverse the Examiner’s rejections of claims 1–3.

JCK