Ex Parte Jones et al

Board of Patent Appeals and Interferences

May 15, 2012

10430742 (B.P.A.I. May. 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.
10/430,742 05/06/2003 Steven V. Jones 0275G-000733/US 3143
27572 7590 05/15/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
GALL, LLOYD A
ART UNIT PAPER NUMBER
3673
MAIL DATE DELIVERY MODE
05/15/2012 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 STEVEN V. JONES, STEPHEN MORRIS, and JAMES HUGHES
____________________

Appeal 2010-005656
Application 10/430,742
Technology Center 3600
____________________

Before: JOHN C. KERINS, EDWARD A. BROWN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-005656
Application 10/430,742
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 17-20, 27-32, 34-43, 45-53, 55-60, and 62-66. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The Claimed Subject Matter
Claim 27, reproduced below, is illustrative of the claimed subject
matter.
27. A rivet system comprising:
at least one workpiece having an outer
surface and an inner surface, each surface
including a counter-sunk cavity therein connected
by a hole; and
a hollow blind rivet body including a first
transversely enlarged flange at a first end and a
second transversely enlarged flange at a second
and opposite end;
wherein the first flange has an outwardly
expanded and externally curved surface located in
the counter-sunk cavity in the outer surface of the
at least one workpiece after setting;
wherein the second flange has a
substantially conical outside surface located in the
counter-sunk cavity in the inner surface of the at
least one workpiece such that a flat end of the
second flange is substantially flush with or
recessed below the inner surface after setting; and
wherein a hollow portion of the blind rivet
body is unobstructed after rivet setting.

The References
Heidenwolf
Mohrman
Bryce
Murphy
US 3,047,181
US 4,447,944
US 4,541,761
US 4,736,560
Jul. 31, 1962
May 15, 1984
Sep. 17, 1985
Apr. 12, 1988
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Application 10/430,742
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Bossenmaier
Auriol
O'Brien
US 4,929,137
US 5,651,172
US 5,881,989
May 29, 1990
Jul. 29, 1997
Mar. 16, 1999

The Rejections
Under 35 U.S.C. § 102(b), as anticipated:
I. Claims 17, 19, 45, 48, and 49 by Bossenmaier.
Under 35 U.S.C. § 103(a), as obvious:
II. Claim 46 over Bossenmaier, Auriol, and either Bryce or Heidenwolf.
III. Claims 18 and 52 over Bossenmaier and Auriol.
IV. Claims 20 and 53 over Bossenmaier and O’Brien.
V. Claims 34-39, 42, 47, 50, and 51 over Bossenmaier and Bryce.
VI. Claim 43 over Bossenmaier, Bryce, and O’Brien.
VII. Claim 41 over Bossenmaier, Bryce, and Auriol.
VIII. Claim 40 over Bossenmaier, Bryce, and either Mohrman or
Heidenwolf.
IX. Claims 55-60 over Bossenmaier, Bryce, and Auriol.
X. Claims 62-66 over Bossenmaier, Auriol, and either Mohrman or
Heidenwolf.
XI. Claims 27 and 32 over Bossenmaier, Auriol, and either Murphy or
Bryce.
XII. Claims 28-30 over Bossenmaier, Auriol, and either Murphy or Bryce,
and further in view of Bryce.
XIII. Claim 31 over Bossenmaier, Auriol, and either Murphy or Bryce, and
further in view of O’Brien.

OPINION
Rejection I - Bossenmaier
Independent claims 45 and 48 each describe various structural
features of a rivet and the workpiece in which the rivet lies. In relevant part,
the claims state that the rivet is a “blind rivet.” The Examiner found that
Bossenmaier teaches the relevant structural features of the rivet of
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independent claims 45 and 48. Ans. 3-4, 11-12. The Examiner, however,
considers “blind” to refer to the manner by which the rivet is installed, rather
than referring to any particular structural limitations of the rivet. Ans. 11-
12.
Appellants argue that Bossenmaier does not teach a blind rivet and
that the Examiner has not appropriately considered this claim limitation.
App. Br. 19-21.
At the outset, we agree with Appellants that a blind rivet refers to a
particular type of rivet, viz., a rivet installed using a mandrel and stem to
form the rivet into the appropriate shape. See, e.g., Spec., paras. [0002]-
[0003]. In claims 45 and 48, however, neither the mandrel nor the stem are
included in or implied by the claim. Instead, the claims are directed to the
rivet once it has been deployed. For example, claim 45 discusses the shape
of the deformed blind end of the rivet; claim 48 similarly discusses an
enlarged flange deployed in its flush configuration. See also Spec., para.
[0029] and fig. 2. Accordingly, for these claims, that the rivet is “blind”
specifies how the rivet was installed, or, in other words, the process by
which the claimed product was made. Patentability must be determined
based on the structure claimed, however, not the underlying process that
resulted in that structure. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985)
(“even though product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product itself”).
Accordingly, if the workpiece and peened rivet in Bossenmaier have the
same structure as that required by the workpiece and blind rivet of the
claims, we are constrained to sustain the Examiner’s finding of anticipation,
even though Bossenmaier does not use the same technique to deploy its
rivet.
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The Examiner found that the rivet in Bossenmaier satisfies the
structural limitations of the rivet in claims 45 and 48. Ans. 3-4, 11. The
Examiner adds that “blind” does not add any structural limitation not taught
by Bossenmaier. Ans. 11-12. We find no evidence or technical reasoning
set forth by Appellants that suggests that Bossenmaier’s rivet, installed by
peening, does not have the structural features required by the claim’s rivet,
installed as a blind rivet. See Thorpe, 777 F.2d at 698 (after the PTO
appropriately noted the similarity of the products, “the burden had shifted to
[Appellant] ‘to prove that the prior art products do not necessarily or
inherently possess the characteristics of his claimed product’”) (citing In re
Fitzgerald, 619 F.2d 67, 70 (CCPA 1980); In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (“when the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not”). Accordingly, we find that the
Examiner did not err in finding that Bossenmaier anticipates the claimed
subject matter of claims 45 and 48.
Appellants separately argue dependent claims 17, 19, and 49 but do
not raise any separate issues with respect to these claims. Accordingly, we
sustain the Examiner’s rejection of claims 17, 19, 45, 48, and 49.
Rejection II – Bossenmaier, Auriol, and Bryce or Heidenwolf
Claim 46 depends from independent claim 45 and requires, in relevant
part, the flange (exposed) side of the rivet to have a conical surface and the
blind (tail) side of the rivet to have a cup-like shape. The Examiner found
that Auriol teaches a conical surface and that both Bryce (flange 18’) and
Heidenwolf (A) teach cup-like flanges formed in the tail end of a rivet. Ans.
4.
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Appellants reiterate the claim language and state that “the cited
references do not teach such.” App. Br. 25. This argument does not serve to
identify an error in view of the Examiner’s explicit factual findings
regarding these limitations. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir.
2011) (arguments merely identifying what the claim recites and what the
prior art teaches but failing to “articulate what gaps, in fact, exist” are
generally not persuasive). Accordingly, we sustain the Examiner’s rejection
of claim 46.
Rejection III – Bossenmaier and Auriol
Claims 18 and 52 depend from independent claims 45 and 48,
respectively. They require, in relevant part, that both countersunk cavities in
which the two ends of the rivets sit are “substantially frusto-conical.” The
Examiner found that Auriol teaches a rivet sitting in opposed frusto-conical
depressions. Ans. 5. The Examiner concluded that it would have been
obvious to utilize these frusto-conical shapes because “any well-known
shape would function just as well in connecting the workpieces.” Id.
Appellants first argue that Auriol teaches away from the claimed blind
rivet by discussing “drawbacks of blind processes.” App. Br. 25-26.
Appellants fail to consider the context of Auriol’s discussion, however.
When considering a “teaching away” argument, “the nature of the teaching
is highly relevant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Auriol
cautions against using blind rivets when riveting brittle, fibrous materials
because of the potential damage inflicted by the deformation of the rivet
against the fibrous material. Auriol, col. 1, ll. 24-35. This caution is not
relevant to the present invention or to Bossenmaier, both of which include
non-fibrous workpieces. Spec., para. [0005] (computer cabinets),
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Bossenmaier, col. 2, l. 5 (aluminum, plastic). Accordingly, Auriol does not
teach away and is properly combinable with Bossenmaier.
Appellants next argue that the Examiner’s “comments” about well-
known shapes functioning just as well in connecting the workpieces is
“unsupported and incorrect.” App. Br. 25-26. Appellants allege that
unspecified “articles” in Appendix B demonstrate this point but Appendix B
and the Evidence Appendix are empty. App. Br. 51. Further, the
Examiner’s statement that one shape would function just as well does not
appear to be drawn towards the particular performance characteristics of
rivets, as Appellants appear to believe, but rather towards the simple ability
of the rivet to hold workpieces in place. See Ans. 5 (“any well-known shape
would function just as well in connecting the workpieces”) (emphasis
added). For example, Bossenmaier utilizes a flat flange and a conical flange
to hold the rivet in place (fig. 2), whereas Auriol utilizes two conical flanges
(fig. 9). Predictably, either shape will hold the rivet in place as each flange
bears against the workpiece to resist withdrawal from a push on that side.
The grip-ability or form-ability of the rivet may be different when using
different flange shapes, but the ability of either shape to function in
connecting is demonstrated by the references. See KSR Int'l Co. v. Teleflex,
Inc., 550 U.S. 398, 417 (2007) (“when a patent ‘simply arranges old
elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.”) citing Sakraida v. Ag Pro, Inc.,
425 U.S. 273, 282 (1976). Accordingly, we are not apprised of error in the
Examiner’s rejection of claims 18 and 52.

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Rejection IV – Bossenmaier and O’Brien
Claims 20 and 53 ultimately depend from independent claims 45 and
48, respectively. These claims require, in relevant part, that one of the
workpieces defines part of a computer. The Examiner found that O’Brien
teaches fasteners used in a computer and concluded it would have been
obvious to use the fastener in Bossenmaier with workpieces of a computer
cabinet to provide a secure connection therefor. Ans. 5.
Appellants argue that the plastic snaps of O’Brien do not rigidly
secure a computer workpiece and thus O’Brien is uncombinable with
Bossenmaier. App. Br. 27. Such an argument fails to consider the
Examiner’s rejection. The Examiner merely points to O’Brien to show that
fasteners are used in computers. This is a well-known application (see
Spec., para. [0005]), and to utilize rivets in such an application amounts to
nothing more than the predictable use of a prior art element according to its
established function. KSR, 550 U.S. at 417 (“a court must ask whether the
improvement is more than the predictable use of prior art elements according
to their established functions”). As such, we are not apprised of error in the
Examiner’s rejection of claims 20 and 53.
Rejection V – Bossenmaier and Bryce
Independent claims 34 and 38 require, in relevant part, a blind rivet
having a mandrel and stem. The Examiner found that Bossenmaier teaches
the particular shape of the rivet (once deployed) but not the mandrel and
stem. Ans. 6. The Examiner found that Bryce teaches a rivet having a
mandrel and stem and concluded that it would have been obvious to form the
rivet in Bossenmaier using a mandrel and stem configuration, as taught in
Bryce, “to simplify installation of the rivet of Bossenmaier.” Ans. 5-6.
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Appellants first argue that “both of the cited references would defeat
the substantially flush or below flush nature of the fastener” of claim 34, in
view of that claim’s requirement that “said expanded tail end [of the rivet]
does not extend substantially above said blind surface.” App. Br. 28.
Appellants’ argument is unpersuasive because the expanded tail end of the
rivet in Bossenmaier does not extend substantially above the blind surface.
See Bossenmaier, col. 3, ll. 65-67 (“the two rivet ends are accommodated
completely in countersunk recesses”), col. 4, ll. 3-5 (“it is important that the
lower peened-over rivet end 9 does not protrude out of the conical
countersunk recess 11”), fig. 2 (noting rivet end 9 does not extend past the
surface of wall 4). The Examiner does not propose to modify the shape of
the Bossenmaier’s rivet but rather to include a mandrel and stem
configuration to effect deployment of the rivet (or, in other words, to make
Bossenmaier’s rivet a blind rivet). See Ans. 5-6, 13-14.
Further, Appellants’ argument regarding the bolt head 6 extending
beyond the workpiece surface of Bossenmaier is unpersuasive because the
bolt head is not a part of the rivet. See App. Br. 28; see also Bossenmaier,
fig. 2. Accordingly, Appellants’ first argument is unpersuasive.
Appellants next argue that Bossenmaier does not teach a blind rivet.
App. Br. 29. However, the Examiner’s proposed combination is to use a
mandrel and stem, as taught in Bryce, to deploy the rivet in Bossenmaier
(thus making Bossenmaier’s rivet a blind rivet). Ans. 5-6. Accordingly,
Appellants’ argument fails to consider the Examiner’s rejection.
Appellants argue that Bryce is “not combinable with” Bossenmaier
because the Bryce rivet is intended to be temporary, which would defeat the
safety features of the Bossenmaier rivet. App. Br. 29. However, the feature
resulting in the temporary-ness of Bryce is the tab 40. Bryce, col. 2, ll. 62-
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65. The mandrel and stem features are conventional. Id. at col. 2, ll. 38-41,
57-62. In combining the teachings of references, the Examiner need not
bodily incorporate all the features of one reference into another. We find no
reason why the Examiner is constrained to incorporate the tab when
incorporating the conventional mandrel and stem of Bryce. Reviewing the
Bryce disclosure, we find that the two structures are clearly not co-
dependent. Accordingly, we are not persuaded that Bryce is not combinable
with Bossenmaier.
Appellants argue that neither reference teaches the cross-sectional
wall thickness limitation. App. Br. 29. However, Appellants set forth no
arguments identifying the deficiency in the Examiner’s rejection with
respect to this limitation. See Ans. 5; In re Jung, 637 F.3d at 1363.
Accordingly, we are not apprised of error in the Examiner’s finding that
Bossenmaier describes the wall thickness limitation.
Lastly, for claim 38, Appellants argue that both references have
“entirely obstructed rivet bores,” thus teaching away from the
“unobstructed” limitation of the claim. App. Br. 30. However, as we have
discussed above, the bolt in Bossenmaier is a bolt, not a part of the rivet;
figure 2 shows the rivet without the bolt installed. With respect to Bryce,
the Examiner does not propose to incorporate the rivet body of Bryce, which
encases the mandrel head. See, e.g., Bryce, fig. 3. Instead, the Examiner
proposes to retain the Bossenmaier rivet’s shape but to form that rivet using
a mandrel and stem, as taught in Bryce. Ans. 5-6. Appellants do not set
forth any arguments explaining how the Examiner’s proposed combination
will not result in the claimed invention but rather focus on the individual
teachings of the references in isolation. See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986).
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In light of the above, we are not apprised of error in the Examiner’s
rejection of independent claims 34 and 38.
Appellants separately argue claims 35-37, which depend from claim
34. App. Br. 31-33. These claims require certain angles, diameters, and
lengths for the rivet. For these claims, the Examiner found that selecting
these quantitative values would have been obvious as merely “discovering
an optimum value of a result effective variable.” Ans. 6. Appellants argue
that these values provide certain benefits, are not the substitution of known
parts, and that the Examiner’s rejection is unsupported. App. Br. 31-33.
Given that the Examiner does not provide any evidence or technical
reasoning supporting the finding that these values were known to be result-
effective, we cannot sustain the Examiner’s rejection of claims 35-37. See,
e.g., In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (reversing a rejection
when the parameter was not recognized to be a result effective variable).
Appellants separately argue claims 39, 42, and 47, which depend from
claims 38 or 45, but do not identify any particular errors in the Examiner’s
rejection. App. Br. 33. As such, we sustain the Examiner’s rejection of
claims 39, 42, and 47.
Appellants separately argue claim 50, but this argument is cumulative
and unpersuasive for the reasons expressed above. See App. Br. 34.
Appellants separately argue claim 51, which depends from
independent claim 48. App. Br. 34. Claim 51 requires, in relevant part, that
the mandrel head includes a conical section, this section “operably creating
the first flange during setting.” The Examiner found that the conical portion
(36) of Bryce’s head is operable to form the conical portion of the rivet.
Ans. 15. Appellants argue that rivet-contacting surface of the Bryce head is
flat. App. Br. 34. While the conical portion 36 of Bryce’s head may be
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involved in forming the rivet, in that it essentially stops the mandrel from
applying further force to the rivet body, the conical portion 36 does not
touch the rivet body and does not create the flange. See Bryce, figs 2-3
(noting that the conical portion 36 does not touch the rivet body).
Accordingly, the conical portion 36 is not “operably creating the first flange
during setting,” and we cannot sustain the Examiner’s rejection of claim 51.
Rejections VI-VIII
Appellants’ arguments with respect to these rejections are cumulative
to those found unpersuasive above. See App. Br. 34-36. We sustain the
Examiner’s rejection of claims 40, 41, and 43.
Rejection IX – Bossenmaier, Bryce, and Auriol
Appellants’ arguments with respect to claims 55, 56, and 60 of this
rejection are cumulative to those found unpersuasive above. See App. Br.
37-38, 41. We sustain the Examiner’s rejection of claims 55, 56, and 60.
Appellants’ arguments with respect to claims 57-59 are persuasive
because, as we explained above, the Examiner has not shown that the
particularly claimed values were known to be result-effective variables. See
App. Br. 39-40; Ans. 8. We do not sustain the Examiner’s rejection of
claims 57-59.
Rejection X – Bossenmaier, Auriol, and Mohrman or Heidenwolf
Appellants’ arguments with respect to claims 62 and 66 of this
rejection are cumulative to those found unpersuasive above. See App. Br.
42-43, 45. We sustain the Examiner’s rejection of claims 62 and 66.
Appellants’ arguments with respect to claims 63-65 are persuasive
because, as we explained above, the Examiner has not shown that the
particularly claimed values were known to be result-effective variables. See
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App. Br. 43-45; Ans. 9. We do not sustain the Examiner’s rejection of
claims 63-65.
Rejection XI – Bossenmaier, Auriol, and Murphy or Bryce
Independent claim 27 requires, in relevant part, a hollow blind rivet
body having particularly-shaped flanges and a hollow portion unobstructed
after rivet setting, the rivet in a workpiece having particularly-shaped
cavities. The Examiner found that Auriol teaches the workpiece cavity
shapes and that Murphy and Bryce teach the flange shapes. Ans. 9.
Appellants first argue that neither Bossenmaier nor Auriol teach blind
rivets. App. Br. 46. However, for the reasons expressed above, this
argument does not tend to show non-obviousness because the claim is
directed to the installed rivet, “blind” merely specifies the process by which
the rivet was installed, and Appellants have not argued why the structure of
the claimed invention differs from the Examiner’s proposed combination.
Appellants next argue that Auriol teaches away from blind rivets.
App. Br. 46. This argument is cumulative and unpersuasive for the reasons
set forth above.
Appellants lastly argue that the Examiner’s proposed combination
does not meet the “unobstructed after rivet setting” limitation. App. Br. 46.
However, in Bossenmaier, which the Examiner finds teaches the hollow
body limitation, the rivet is hollow and unobstructed. See Ans. 9;
Bossenmaier, fig. 2. As we discussed above, the bolt is not a part of the
rivet. Appellants do not set forth any reasons why the Examiner’s proposed
modification to the shape of the flanges of Bossenmaier’s rivet would cause
the hollow body to become obstructed. In view of the above, Appellants’
argument is unpersuasive.
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Appellants do not raise separate issues with respect to dependent
claim 32. Accordingly, we sustain the Examiner’s rejection of claims 27
and 32.
Rejection XII – Bossenmaier, Auriol, Murphy or Bryce, and Bryce
Appellants’ arguments with respect to this rejection do not allege any
specific error in the Examiner’s findings or conclusions. See App. Br. 47-
48. Appellants do not articulate any reason why the particular references are
not combinable. Simply that there are differences between references is
insufficient to establish that such references teach away from any
combination thereof. See In re Beattie, 974 F.2d 1309, 1312-13 (Fed. Cir.
1992); In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the
teachings of references does not involve an ability to combine their specific
structures”). One of ordinary skill is not compelled to blindly follow the
teaching of one prior art reference over the other without the exercise of
independent judgment. See Lear Siegler, Inc. v. Aeroquip Corp., 733 F.2d
881, 889 (Fed. Cir. 1984); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
(“The test for obviousness is not whether the features of a secondary
reference may be bodily incorporated into the structure of the primary
reference”). Accordingly, we sustain the Examiner’s rejection of claims 28-
30.
Rejection XIII – Bossenmaier, Auriol, Murphy or Bryce, and O’Brien
Appellant’s arguments with respect to this rejection are cumulative to
those found unpersuasive above. See App. Br. 48-49. As such, we sustain
the Examiner’s rejection of claim 31.
DECISION
We affirm the Examiner’s decision regarding claims 17-20, 27-32, 34,
38-43, 45-50, 52, 53, 55, 56, 60, 62, and 66.
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We reverse the Examiner’s decision regarding claims 35-37, 51, 57-
59, 63-65.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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