Ex Parte Kanflod et al

Board of Patent Appeals and Interferences

Aug 14, 2012

10539148 (B.P.A.I. Aug. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MORGAN KANFLOD, FREDRIK OBERG,
and BERTIL STENBERG
____________

Appeal 2012-005389
Application 10/539,148
Technology Center 3600
____________

Before RICHARD TORCZON, SALLY C. MEDLEY and
MICHAEL P. TIERNEY, Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Atlas Copco Rock Drills AB (“Atlas”), the real party in interest (Brief
at 2), seeks review under 35 U.S.C. § 134(a) of a rejection of claims 1 and 2.
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
Application 10/539,148 was involved in a previous ex parte appeal;
appeal 2009-006604. The prior art rejections of claim 1 were reversed, but
the Board entered a new grounds of rejection for claim 1 pursuant to 37 CFR
§ 41.50(b). Atlas elected to reopen prosecution. 37 CFR § 41.50(b)(1).
Atlas subsequently amended claim 1 and added claim 2. The Examiner
twice rejected claims 1 and 2 on various grounds.
Atlas appeals the objections to:
The drawings filed 10 March 2011 as containing new matter;
The amendment filed 10 March 2011 as containing new matter; and
Claim 1 since certain limitations are not shown in the drawings or
described in the written description1.
Atlas appeals the rejections of:
Claims 1 and 2 under 35 U.S.C. § 112, ¶ 1, written description;
Claims 1 and 2 under 35 U.S.C. § 112, ¶ 2;
Claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over
Arvidsson and Sanderson; and

1 The Examiner has withdrawn the objection to the drawings filed 10 March
2011 as containing new matter. (Ans. at 18:3-4). The remaining objections
are properly reviewed by way of appeal rather than petition. MPEP
608.04(c) and 2163.06(II).
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Claims 1 and 2 under 35 U.S.C. § 103(a) as unpatentable over
Arvidsson, Sanderson, and the Lars Persson Declaration (“Persson
Declaration”).2
The Invention
Atlas discloses, referring to Atlas’ figure 2 below [numbers from
figure 1 inserted], a coupling sleeve for coupling a threaded rock bolt [1] to
a rock drilling machine [2]. The coupling sleeve includes internal threads
(not numbered) and a locking device [7]. Spec. ¶¶ 1, 6.
Atlas’ figure 1 is below:

Figure 1 depicts a coupling sleeve, a bolt and drilling machine.
Claim 1 is illustrative (Appeal Br. Appendix):
Coupling sleeve connecting a threaded rock bolt (1) to an
impact rock drilling machine (2), said coupling sleeve
comprising a first part (3) provided with an internal thread (4)
for connection of the rock bolt (1), and a second part (5)
provided with an internal thread (6) for connection of the rock
drilling machine (2), characterized in that the second part (5)
comprises a locking device (7) arranged substantially
transversely to a longitudinal axis (9) of the coupling sleeve,
said locking device cooperating with a region (8) on the rock
drilling machine (2) for preventing separation of the coupling
sleeve and the rock drilling machine (2), wherein percussion

2 Although not listed in Atlas’ Appeal Brief, the Examiner lists this as a
separate rejection. For reasons discussed infra, we treat the rejection of
claims 1 and 2 as unpatentable under 35 U.S.C. § 103(a) over Arvidsson and
Sanderson and the rejection of claims 1 and 2 as unpatentable under
35 U.S.C. § 103(a) over Arvidsson, Sanderson and the Persson Declaration
as one rejection.
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energy is transmitted from the rock drilling machine to the rock
bolt during a percussion operation when the locking device is
unloaded, and said locking device is loaded to retain the rock
drilling machine connected to the coupling sleeve only when
said rock bolt is disconnected from said coupling sleeve by
rotation of said rock drilling machine in a direction for
disconnecting said first part of said coupling sleeve from said
rock bolt for reinforcing a rock with said rock bolt.

The Examiner relies on the following references:
Arvidsson WO 02/057591 July 25 2002
Sanderson 1,994,792 Mar. 19, 1935

Persson Declaration, executed 17 January 2011, and filed 10 March
2011.

DISCUSSION AND FINDINGS OF FACT
Atlas does not make any separate arguments with respect to dependent
claim 2, but focuses solely on claim 1. (Appeal Br. at 7:6-10). Accordingly,
the focus of our discussion is on claim 1.
The indefiniteness rejection
The claim limitations at issue in this rejection are with respect to
claim 1. Claim 2 depends directly or indirectly from claim 1 and thus also
includes the features at issue.
The Examiner rejected claim 1 on two separate grounds. Atlas
addresses the first ground. However, the second ground, explained for
example on page 10, lines 9-22 of the 6 June 2011 Non-final Rejection and
again on pages 10-11, lines 12 to 3 of the Answer, is not addressed by Atlas.
(App. Br. 9-12). Since Atlas has not addressed the second ground for
rejecting claim 1, we do not disturb the Examiner’s decision in that regard.
Moreover, we need not and do not reach the merits of the first ground for
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rejecting the claim 1. For these reasons, the rejection of claims 1 and 2
under 35 U.S.C. § 112, ¶ 2 is sustained.
The new matter objections and rejections
During prosecution, Atlas amended the wherein clause of claim 1.
The remainder of claim 1 stayed the same. The wherein clause, which is the
subject of dispute, reads as follows (amendment additions underlined and
amendment deletions in strikethrough):
wherein percussion energy is transmitted from the rock drilling
machine to the rock bolt during a percussion operation when
the locking device is unloaded, and said locking device is
loaded to retain retains the rock drilling machine connected to
the coupling sleeve only when said rock bolt is disconnected
from said coupling sleeve by rotation of said rock drilling
machine in a direction for disconnecting said first part of said
coupling sleeve from said rock bolt for reinforcing a rock with
said rock bolt.

(Oct. 12, 2010 Amendment).
The Examiner rejected claims 1 and 2 under 35 USC § 112, the
written description requirement, as the specification allegedly does not
provide description for the phrase “said locking device is loaded to retain the
rock drilling machine connected to the coupling sleeve only when said rock
bolt is disconnected from said coupling sleeve… .” The Examiner also
objected to claim 1 for the same reason. (Rejection at 53).
The bases for the rejection of the claim 1 and the objection to the
claim 1 are similar. The Examiner finds that there is no described structure
in the original specification which describes keeping the locking device
loaded only when the rock bolt is disconnected. Rather, the Examiner finds

3 References to ‘Rejection’ in the opinion are with reference to the 6 June
2011 non-final rejection.
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that the locking device 7 can be loaded during attempted separation of the
rock drilling machine from the sleeve regardless of whether bolt 1 is
connected or disconnected to the sleeve. (Ans. at 6-8). The Examiner’s
arguments are misplaced.
The Examiner incorrectly interprets the disputed limitation to mean
that the locking device is loaded only when the rock bolt is disconnected
from the coupling sleeve. (See, e.g., Ans. at 6:5 to 7:14). It is based on that
interpretation that the Examiner finds that there is no written description
support for loading the locking device only when the rock bolt is
disconnected from the coupling sleeve. The Examiner appears to be reading
a portion of the above wherein clause in isolation from the remainder of the
claim which clarifies that the locked or loaded state occurs during a time
when the rock bolt is being disconnected from the coupling sleeve and
drilling machine; not after the rock bolt has been disconnected.
A person skilled in the art would understand the above limitation to
mean that the locking device is loaded just prior to disconnection of the rock
bolt from the sleeve, i.e., when the rock bolt is still connected to the
coupling sleeve. The Examiner improperly interprets the limitation to mean
that the locking device is loaded only after disconnection of the rock bolt
from the sleeve.
We agree with Atlas that there is written description support in the
specification as originally filed for the disputed limitation when the
limitation is properly interpreted. The specification as originally filed
explains that (1) during drilling the locking device 7 is unloaded (Spec. at
2:13-14) and (2) after drilling the locking device is loaded to disconnect the
rock bolt from the coupling sleeve (Spec. at 2:14-19). For these reasons, we
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do not sustain the rejection of claims 1 and 2 under 35 U.S.C. § 112, ¶ 1,
written description or the objection to claim 1.
The Examiner objected to the amendment filed 10 March 2011 as
introducing new matter. (Rejection at 3-4). Specifically, the Examiner
objects to the amendment to the specification which describes figure 2 as
showing the locking device unloaded, since the figure 2 shows the locking
device loaded. The objection is misplaced. The amendment to the
specification was accompanied by a new figure 2, which shows the locking
device unloaded. For these reasons, we do not sustain the objection to the
amendment to the specification as introducing new matter.
The Examiner also objected to the specification as failing to provide
proper antecedent basis for the word “only” in the above phrase. (Rejection
at 4). The argument is misplaced. It is not necessary for an applicant to
provide ipsis verbis support for claim terms. Rather, the inquiry is whether
one of ordinary skill in the art would have understood that the applicant had
possession of what is claimed. For these reasons, we do not sustain the
objection to the specification as failing to provide proper antecedent basis
for what is claimed.
The prior art rejection
The Examiner rejected claims 1 and 2 as obvious over Arvidsson and
Sanderson and also rejected claims 1 and 2 as obvious over Arvidsson,
Sanderson and the Persson Declaration. (Rejection at 11 and 15; Ans. at 11
and 15). The Examiner did not rely on the Persson Declaration as prior art.
Rather, the Examiner relied on the Persson Declaration to demonstrate the
level of skill in the art, i.e., the knowledge of a person of ordinary skill in the
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art of rock drilling machinery.4 Accordingly, we treat the two rejections as
one.
The Examiner’s rejection
The Examiner maintains and adopts, as his own findings and
rationale, the findings and rationale presented by the Board Decision in
Appeal No. 2009-006604 at pages 7-9 as it applied to claim 1 (previously
amended). (Rejection at 15; Ans. at 15). The relevant portion of the Board
Decision is reproduced here:
Arvidsson describes, referring to Arvidsson’s figures 1
and 2 below [numbers from figures 1 and 2 inserted], a
coupling sleeve comprising a first part [3] with an internal
thread [4] for connection of a bolt [1], a second part [5] with an
internal thread [6] for connection of a drilling machine [2] and a
clamping means [8] arranged transversely to the coupling
sleeve longitudinal axis and cooperating with a region on the
drilling machine [2]. ¶ 5.

Arvidsson’s figures 1 and 2 are below:

Figures 1 and 2 depict a coupling sleeve.

Arvidsson further describes that percussion energy is
transmitted from the drilling machine [2] to the bolt [1] during a
percussion operation when the clamping means [8] is unloaded,
and the clamping means [8] retains the drilling machine [2]
connected to the coupling sleeve when the bolt [1] is

4 The legal determination of obviousness is made on the basis of underlying
factual inquiries including (1) the scope and content of the prior art; (2) the
differences between the claimed invention and the prior art; (3) the level of
ordinary skill in the art; and (4) any objective evidence of unobviousness.
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
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disconnected from the coupling sleeve by rotation of the
drilling machine [2]. ¶ 5. Arvidsson’s also describes that the
joint which should be more difficult to loosen by means of a
mechanical joint (i.e., clamping means [8]) is prevented from
loosening when the drilling machine and bolt are separated. ¶
3. However, Arvidsson does not describe a locking device.
Sanderson describes a drill tool including a drill tool
body [1] connected to a rope socket [2] by a threaded stud [3]
on one end and connected to a tip [4] by a pair of threaded studs
[4] on the other end of the drill tool body [1]. P. 2, col. 1, ll.
13-18, 34-39, 58-75. A locking device in the form of a dowel
[15] is arranged transversely to the longitudinal axis of the drill
tool body [1] and cooperates with a portion of the socket [2]
(i.e., the threaded stud [3]). Fig. 2. The dowel [15] prevents
loosening of the socket [2] from the body [1] due to relative
movement therebetween. P. 2, col. 1, ll. 55-58.
It would have been obvious to one with ordinary skill in
the art at the time the invention was made to modify
Arvidsson’s coupling sleeve by substituting a dowel as taught
by Sanderson for the clamping means since both are known for
preventing the loosening of a joint. The predictable result of
the substitution would be the prevention of loosening of
Arvidsson’s drilling machine [2] from the coupling sleeve.
When a structure already known in the prior art is altered by the
substitution of one element for another known in the field, the
combination is obvious when it does no more than yield a
predictable result. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). (Appeal 2009-006604 at 7-9).

The Persson Declaration
The Examiner finds that, to the extent that the combined teachings of
Arvidsson and Sanderson do not teach or suggest the limitation of the
locking device being unloaded during percussion operation and loaded only
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when the rock bolt is disconnected,5 that it would have been obvious for the
combined structural components to cooperate as claimed. Specifically, the
Examiner explained that it would have been obvious to further modify the
combined structural components to cooperate such that the locking device is
unloaded during percussion operation to avoid interference and
inefficiencies. The Examiner further explained that it would have been
obvious to modify the combined structural components to cooperate such
that the locking device is loaded only when the rock bolt is disconnected to
avoid separation of the rock drilling machine while facilitating the desired
separation of the rock bolt. (Ans. at 17). In support of the rationale, the
Examiner relies on the Persson declaration. Specifically, the relevant
portions of the Persson Declaration are reproduced here:
A person of ordinary skill in the relevant art will understand
that it is undesirable to have the locking device loaded (locked)
to lock the rock drilling machine to the coupling sleeve during a
percussion operation because the locking device would interfere
with the transmission of the shock waves and thereby decrease
the efficiency of the percussion operation. (Persson Dec. at
4:10-14).

And:

A person of ordinary skill in the relevant art will recognize that
the locking device must be loaded (locked) to lock the rock
drilling machine to the coupling sleeve when the rock drilling
machine is rotated in a direction to separate the rock bolt from
the coupling sleeve because otherwise the rock drilling machine

5 The claim 1 language is “wherein percussion energy is transmitted from the
rock drilling machine to the rock bolt during a percussion operation when
the locking device is unloaded, and said locking device is loaded to retain
the rock drilling machine connected to the coupling sleeve only when said
rock bolt is disconnected… .” (App. Br. Appendix of appealed claims).
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itself would become separated from the coupling sleeve when
rotated in a direction to separate the rock bolt from the coupling
sleeve thereby preventing the desired separation of the rock bolt
from the coupling sleeve. (Persson Dec. at 4:14-20).

The Examiner explains that he finds the Persson Declaration as
evidence of what a person of ordinary skill in the art would have known at
the time of the invention regarding drilling machines in general. (Ans. at
22).
Atlas’ argument
On page 17 of the Appeal Brief, Atlas argues that neither Arvidsson,
Sanderson, nor the combination of the two teach or suggest a coupling
sleeve in which the clamping/locking means is unloaded during a percussion
operation of a rock drilling machine. Such an argument is not responsive,
however, to the Examiner’s position maintained in the Rejection. The
Examiner explained that to the extent that neither Arvidsson nor Sanderson
explicitly teach to unload the locking device during a percussion operation,
that such feature would have been obvious. (Rejection at 15-17). The
Examiner maintained that position in the Answer. (Ans. at 15-17). It is not
until its reply brief, that Atlas challenges the Examiner’s determination.
There, Atlas argues that the Examiner’s reliance on the Persson declaration
is improper. Specifically, Atlas argues that the Persson declaration is not
relevant to the prior art rejection, as it was submitted for the sole purpose of
overcoming the non-prior art rejections. (Reply Br. at 2-3). The argument is
not persuasive.
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Atlas makes no meaningful attempt to explain why the Persson
declaration is not relevant to the prior art rejection. For that reason alone,
the argument is without merit.
The Examiner explains that the Persson Declaration is evidence of
what a person of ordinary skill in the art would have known at the time of
the invention regarding drilling machines in general and that a person of
ordinary skill in the art would have known at the time of the invention that
unloading a lock during a percussion operation is desirable. (Ans. at 22).
We find nothing wrong with the Examiner’s reliance on the Persson
Declaration as evidence of what a person of ordinary skill in the art would
have known at the time of the invention. That Atlas did not intend for the
declaration to be relied on for prior art purposes is of no moment. The
evidence is what it is. While the Persson declaration is generally related to
the locking device of the invention, it also facially appears to explain what is
not in the Atlas specification, but what one of ordinary skill would have
known. Specifically, Persson explains that a person of ordinary skill in the
art would have understood that it would not be desirable to have the locking
device locked during percussion operation since doing so would interfere
with the transmission of the shock waves and thereby decrease the efficiency
of the percussion operation. We find, as did the Examiner, that that
statement is not necessarily confined to the disclosed invention, but would
also apply to the prior art teachings. There is no indication in the Persson
declaration that the statement means otherwise. The prior art combination of
Arvidsson and Sanderson results in the same structure as claimed (the
Sanderson lock replacing the Arvidsson clamp). Atlas does not dispute
otherwise. Based on the evidence presented, one of ordinary skill in the art
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at the time of the invention would have likewise understood that the
Arvidsson/Sanderson device would also benefit from the unloading of the
locking device during a percussion operation to avoid interference and
inefficiencies. (Ans. 22).
Atlas has not presented an explanation or directed us to evidence that
explains why the Examiner’s reliance on the Persson Declaration is in error.
Atlas could have presented another declaration, explaining or clarifying the
statements made in the Persson declaration. Atlas did not do so, but relies
only on attorney argument. Attorney argument is insufficient to overcome
the Examiner’s findings. See Estee Lauder Inc. v. L'Oreal, S.A., 129 F.3d
588, 595, 44 USPQ2d 1610, 1615 (Fed. Cir. 1997) (Argument of counsel
cannot take the place of evidence lacking in the record).
For these reasons, we sustain the obviousness rejection of claims 1
and 2 over Arvidsson and Sanderson.
DECISION
The rejection of claims 1 and 2 under 35 U.S.C. § 112, ¶ 2 is
AFFIRMED.
The rejection of claims 1 and 2 under 35 U.S.C. § 112, ¶ 1 is
REVERSED.
The objection of claim 1 is REVERSED.
The objection to the specification as introducing new matter is
REVERSED.
The objection to the specification as failing to provide proper
antecedent basis for what is claimed is REVERSED.
The rejection of claims 1 and 2 under 35 U.S.C. 103(a) as
unpatentable over Arvidsson and Sanderson is AFFIRMED.
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AFFIRMED

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