Ex Parte King et al

Patent Trial and Appeal Board

Dec 21, 2018

13888658 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/888,658
27717 7590
Seyfarth Shaw LLP
233 S. Wacker Drive
Suite 8000
FILING DATE
05/07/2013
12/26/2018
Chicago, IL 60606-6448
FIRST NAMED INVENTOR
Jerry A. King
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
25493-466800 4540
EXAMINER
SHAKER!, HAD!
ART UNIT PAPER NUMBER
3723
NOTIFICATION DATE DELIVERY MODE
12/26/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patentdocket_chi@seyfarth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY A. KING, DUANE A.VALLEJOS, ANDREW R. LOBO,
CHRIS LAWTON, and NATHAN LEE
Appeal2018-004597
Application 13/888,658
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jerry A. King et al. ("Appellants") 1 appeal under 35 U.S.C. § 134(a)
from the Examiner's decision rejecting claims 1-5, 8-17, and 20-22, which
are all the pending claims. See Br. 3. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We AFFIRM.
According to Appellants, the real party in interest is Snap-on
Incorporated. Br. 4.
Appeal2018-004597
Application 13/888,658
CLAIMED SUBJECT MATTER
Appellants' disclosed invention "relates to tools adapted to apply
torque to a workpiece." Spec., p. 1, 1. 7. Claims 1, 9, and 16 are
independent. Claim 1, reproduced below, is illustrative of the subject matter
on appeal.
1. A tool having a drive head with a drive head length and a
drive lug, an adapter extension with an extension length
adapted to be coupled to and extend from the drive lug to apply
a torque to a work piece, and a torque sensor operably coupled
to the drive head and adapted to measure an amount of the
torque applied to the work piece, thereby creating a measured
torque value, comprising:
an input interface adapted to receive a drive head input
corresponding to the drive head length and an extension input
corresponding to the extension length; and
a processor in operable communication with the input
interface and the torque sensor, the processor adapted to apply a
correction factor to the measured torque value to create a
corrected torque measurement value, wherein the correction
factor is based on the drive head and extension inputs.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Li
Hsieh
US 2012/0312132 Al
US 9,032,848 B2
REJECTION
Dec. 13, 2012
May 19, 2015
The following rejection is before us for review: Claims 1-5, 8-17,
and 20-22 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Li and Hsieh. Final Act. 2-3.
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Appeal2018-004597
Application 13/888,658
ANALYSIS
Appellants present arguments for independent claims 1, 9, and 16
together as a group (see Br. 10-14), and rely on the same arguments for
dependent claims 2-5, 8, 10-15, 17, and 20-22 (see id. at 14). We select
claim 1 as representative of the issues that Appellants present in the appeal
of this rejection, and claims 2-5, 8-17, and 20-22 stand or fall therewith.
See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner found that Li discloses, inter alia,
an input interface 160 adapted to receive a drive head ... input
corresponding to the extension input corresponding to the
extension length defined by the type of the head; and a
processor 140 in operable communication with the input
interface and the torque sensor, the processor adapted to apply a
correction factor to the measured torque value to create a
corrected torque measurement value using a correction factor
based on the extension inputs [0023] meeting the associated
method.
Final Act. 2 (boldface omitted). The Examiner acknowledged that Li does
not disclose "an interchangeable drive head having a drive lug and a drive
head length, the drive head disposed in the receiving head." Id. (boldface
omitted). However, the Examiner found that "Hsieh teaches a torque
wrench having a driving head 600 with a drive lug 601 disposed in the
receiving head 321 that is adapted to couple with an extension 400." Id. at 3
(boldface omitted). The Examiner concluded that, given the teachings of the
prior art, it would have been obvious "to modify the invention of Li with the
drive head 600 as taught by Hsieh so that the tool is capable of
accommodating a further effective drive length." Id.
The Examiner clarifies in the Answer that Li "disclose[ s] an interface
that receives an input, i.e., a length of an extension and a processor that
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Appeal2018-004597
Application 13/888,658
corrects for actual torque applied based on the length input" (Ans. 4), and
Hsieh "teach[ es] providing an auxiliary drive head 600 f-1 ro ]m which an
extension 400 extends, thus providing a tool which discloses a drive head
and an extension" (id. at 5 (boldface omitted)). The Examiner explains that
"Li is modified by Hsieh to take an auxiliary drive head, thus the
combination would result in a modified interface, which would receive and
compensate inputs for both the drive head (auxiliary drive head taught by
Hsieh) and the extension (as disclosed by base reference, Li)." Id.
Appellants argue that
Li does not disclose an input interface adapted to receive a drive
head input corresponding to the drive head length and an
extension input corresponding to the extension length of an
adapter extension that extends from the drive head; and a
processor that is adapted to apply a correction factor to the
measured torque value to create a corrected torque measurement
value, wherein the correction factor is based on the drive head
and extension inputs, as claimed.
Br. 11 ( emphasis omitted). Appellants also argue that Hsieh does not
disclose these features. See id. at 12. We are not persuaded by this line of
argument because it attacks each reference individually, where the rejection
is predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413,
425 (CCPA 1981)). Here, as discussed supra, the Examiner's rejection is
based on the combined teachings of Li and Hsieh. See Final Act. 2-3;
Ans. 4--5.
Appellants argue that the Examiner's proposed combination of Li and
Hsieh does not render obvious a tool that applies a correction factor based on
two inputs (i.e., drive head length and extension length) as claimed. See
Br. 12-13. Appellants assert that, "like Li, Hsieh discloses only use of a
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Appeal2018-004597
Application 13/888,658
single input corresponding to the length of the combination of the first
driving arm 400 and the driving unit 600." Id. at 12 ( emphasis omitted).
According to Appellants, "even if the driving arm 400 and driving unit 600
of Hsieh were coupled to the torque bar 120 of Li, the combination still fails
to disclose a tool having more than one input, as claimed." Id. This
argument does not identify error in the Examiner's conclusion of
obviousness.
As discussed supra, the Examiner takes the position that the proposed
combination of Li and Hsieh would result in a tool having a modified
interface that receives both a drive head input and an extension input. See
Ans. 5. The Examiner reasons that it would have been obvious to one of
ordinary skill in the art "to adapt the input interface [of Li] for individually
receiving the length for the head and the extension to eliminate human
error." Id. at 8. In this regard, Appellants do not specifically address or
identify fault in the reasoning articulated by the Examiner in support of the
conclusion of obviousness.
Moreover, we note that, "if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). Appellants have not provided any
factual evidence or persuasive technical reasoning to explain why modifying
Li's interface to individually receive drive head and extension inputs, as
proposed by the Examiner (see Ans. 5, 8), would yield anything other than a
predictable result, or that doing so would be somehow beyond the level of
ordinary skill in the art.
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Application 13/888,658
Appellants also argue that the Examiner's rejection is based on
impermissible hindsight reconstruction. See Br. 13-14. This argument is
unpersuasive because Appellants do not identify any knowledge relied upon
by the Examiner that was gleaned only from Appellants' disclosure and that
was not otherwise within the level of ordinary skill at the time of the
invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971) (so
long as a conclusion of obviousness is based on a reconstruction that "takes
into account only knowledge which was within the level of ordinary skill at
the time the claimed invention was made and does not include knowledge
gleaned only from [Appellants'] disclosure, such a reconstruction is
proper"). Thus, Appellants' assertion of improper hindsight is unsupported.
After careful consideration of the evidence of record, Appellants'
arguments do not apprise us of error in the Examiner's determination that
the subject matter of claim 1 would have been obvious. Accordingly, we
sustain the rejection of claim 1, and of claims 2-5, 8-17, and 20-22 falling
therewith, under 35 U.S.C. § 103 as being unpatentable over Li and Hsieh.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-5, 8-17, and
20-22 under 35 U.S.C. § 103 as being unpatentable over Li and Hsieh.
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)(l )(iv).
AFFIRMED
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