Ex Parte Marshall et al

Board of Patent Appeals and Interferences

Aug 13, 2012

11313551 (B.P.A.I. Aug. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ALAN J. MARSHALL and SHANTANU N. SWADI
____________________

Appeal 2010-008583
Application 11/313,551
Technology Center 3600
____________________

Before JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
SCOTT E. KAMHOLZ, Administrative Patent Judges.

KAMHOLZ, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants seek review of the Examiner’s rejection of claims 1-8 and
10-24 under 35 U.S.C. § 103(a) as encompassing subject matter
unpatentable over Yousef (US 5,163,523; iss. Nov. 17, 1992) in view of
McGovern (US 6,101,907; iss. Aug. 15, 2000). We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
THE CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to percussion hammer drill bits.
Spec., para. [0003].
Independent claim 16 is illustrative:
16. A drill bit for use in a percussion drilling apparatus of the
type for boring into the earth, said drill bit comprising:
an elongate body;
a plurality of external splines disposed on said elongate
body, wherein at least one of said plurality of external splines
comprises a first and second planar surface angled relative to
one another and configured to form an angle therebetween of
between 20 and 90 degrees; and
a root adjacent the first angled surface, wherein the root
comprises a curved surface having a radius at the intersection of
the root and the first planar surface.
GROUPING OF CLAIMS
Appellants present a single argument for independent claims 1, 10, 16,
and 23 and do not base any argument upon distinctions among the claims.
As such, we select claim 16 as representative, and claims 1, 2, 4-6, 10-13,
15, and 17-24 stand or fall with claim 16. App. Br. 14-24; see 37 C.F.R.
§ 41.37(c)(1)(vii) (2011). Appellants present additional argument for
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dependent claims 3, 7, 8, and 14 as a group, and we select claim 3 as
representative. See App. Br. 24; 37 C.F.R. § 41.37(c)(vii).
FINDINGS OF FACT (FF)
Yousef Reference
The Examiner found (Ans. 3-4) that Yousef discloses:
(1) a drill bit 10 for use in a percussion drilling apparatus of the type for
boring into the earth (col. 1, ll. 14-15);
(2) that the drill bit comprises an elongate body (Figure 2);
(3) that a plurality of external splines (14) are disposed on the elongate
body;
(4) that at least one of the external splines comprises a first and second
planar surface (lateral surfaces of 14); and
(5) that the drill bit comprises a root adjacent the first angled surface
(outward-facing surface of 14).
We agree with the Examiner’s interpretation of Yousef and adopt
these findings of fact. Figure 2 of Yousef shows “the conventional
components forming the front end of the percussion drill” (Yousef, col. 2, ll.
11-13), including drill bit 10 and external splines 14. The figure shows the
drill bit to have an elongate body and at least one external spline that has
first and second planar surfaces with a root adjacent the first planar surface.
Further, Appellants did not contest these findings, and therefore we
accept them as fact. See Ex Parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential) (citing Hyatt v. Dudas, 551 F.3d 1307, 1313-14 (Fed.
Cir. 2008) for the proposition that the Board may treat arguments appellant
failed to make as waived).
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In summary, the Examiner found, and we agree, that Yousef teaches
all limitations of claim 16 except (a) the root comprises a curved surface
having a radius at the intersection of the root and the first planar surface, and
(b) the angle formed between the first and second planar surfaces are
configured relative to each other to form an angle of between 20 and 90
degrees.
McGovern Reference
The Examiner found (Ans. 7) that McGovern discloses:
(6) splines (splines 44) that include a root (valley 68) adjacent the first
planar surface (flat side portion 62), wherein the root (valley 68)
comprises a curved surface having a radius at the intersection of the
root (valley 68) and the first planar surface (flat side portion 62) (col.
3, ll. 31-46; Figure 6).
We agree with the Examiner’s interpretation of McGovern and adopt
this finding of fact. Figure 6A of McGovern shows an expanded view of
portions of two external splines from Figure 6 and indicates a curved surface
68 between the root and the adjacent planar surfaces. McGovern, col. 2, ll.
40-43. McGovern names these surfaces “valleys” and states that each such
valley is “rounded and has a radius” (McGovern, col. 3, ll. 40-41).1 Figure
6A is reproduced below:

1 McGovern refers to “Each valley 62,” but this is a clear typographical
error; reference number 62 consistently refers to the flat portions, while
reference number 68 refers to the valleys. See e.g., col. 3, ll. 35-38; Figs. 6,
6A.
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We further find that:
(9) McGovern explains (col. 1, ll. 14-22) that conventional internal and
external splines had a hoop-stress problem:
The internal and external splines were usually
similarly shaped and each included a crest and side
flats and was separated from adjacent splines on
the member by valleys. Typically, when the first
and second members were pressed together, they
contacted each other at the crests, side flats, and
valleys. Though this structure provided a good
connection, the interference between the crests and
valleys created hoop stress on the outer member
and many times would cause cracking of the outer
member.
(10) McGovern’s invention is directed toward “minimizing radial hoop
stress” in order to correct the hoop-stress problem (col. 1, l. 57).

ANALYSIS
Appellants attack the rejection on a number of grounds, which we
consider in turn.4
1. Rationale for combining prior-art references
The Examiner found that Yousef discloses all limitations of claim 16
except (a) the root comprises a curved surface having a radius at the
intersection of the root and the first planar surface, and (b) the angle formed
between the first and second planar surfaces is between 20 and 90 degrees.
The Examiner cited McGovern for these limitations and found that it would

4 Appellants’ arguments directed to McGovern’s splines 42 (App. Br. 16-23)
are not relevant because the Examiner relies upon splines 44 (Ans. 7).
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have been obvious to modify Yousef to include these features of McGovern
because “it is well known to use V-shaped splines to impart rotational
movement and to transfer torque between elements in a drive shaft, and
since v-shaped splines allow for better distribution of axial loads effective to
reduce the overall wear of the splines” (Ex. Ans. 7-8).
According to Appellants, the Examiner “has not provided a citation to
any prior art reference, and thus, it is unclear whether the Examiner is taking
Official Notice without documentary evidence” (Rep. Br. 6).
To the extent that Appellants’ argument suggests the rationale must be
found within one of the references, such argument is not persuasive. See
KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (rejecting the rigid
requirement of a teaching, suggestion or motivation to combine known
elements in order to show obviousness).
Regarding Appellants’ Official Notice assertion, the Examiner did not
take Official Notice. Ans. passim. Rather, the Examiner found that V-
shaped splines were known in the prior art and were recognized to improve
axial load distribution and reduce wear, based upon disclosures in
McGovern. See Ans. 7-8; see also FF (9), (10). Appellants’ arguments and
evidence in response do not convince us that the Examiner’s findings were
unsound.
2. Whether the proposed modification renders Yousef unsatisfactory
for its intended purpose.
Appellants argue that modifying Yousef to include features from
McGovern would render Yousef unsatisfactory for its intended purpose
because McGovern’s interference fit between the internal and external
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splines is incompatible with Yousef’s need to permit the drill bit to move
axially with respect to the driver sub. Appellants point to paragraph [0022]
of their disclosure and to a Declaration under 37 C.F.R. § 1.132 of Lance D.
Underwood to support their assertion that a percussion drilling apparatus
requires such axial freedom of movement in the drill bit.
We find this argument unconvincing. The Examiner did not propose
to modify Yousef to have an interference fit between internal and external
splines; rather, the Examiner proposed merely to change the shape of
Yousef’s external spline to that of McGovern as a matter of design choice.
Ans. 7 (“Examiner emphasizes that McGovern et al. was only cited to teach
that it is known in the art to use V-shaped splines to transfer torque and
impart rotational movement between head splines and pin splines.”); see
also Ans. 3-4, 6-9. It does not follow that the resulting modified external
spline must be sized and configured to engage its mate in an interference fit.
The choice of a V-shape for an external spline does not lead inevitably to the
use of an interference fit; one having ordinary skill need not employ both
simultaneously in order to enjoy the benefits of either. McGovern’s
interference fit is therefore an incidental feature in the context of this
combination, is not part of the proposed modification, and therefore does not
render Yousef unsatisfactory for its intended purpose.
Appellants have not argued or shown otherwise why an interference
fit would necessarily result from adopting the V-shape of McGovern’s
splines. Mr. Underwood’s Declaration does not address this issue.
3. Non-analogous art
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Appellants assert that McGovern is non-analogous art because it is
from a field of endeavor (“hand-held tools”) different from that of the
present application (“percussion drilling assemblies”) and would not have
commended itself to an inventor’s attention because of differences in use
and operating conditions (“forces, torques, and environments”) (App. Br.
23).
We find this argument unconvincing. Appellants’ disclosure states
that mechanical failure of splines due to forces transmitted between splines
(torque) was a known problem, and their claimed invention seeks to improve
the service life of these parts. Spec., paras. [0007], [0009]. McGovern is
concerned with, among other things, reducing stress-related cracking during
transmission of torque between splines. See FF (9), (10). Just as an inventor
considering a hinge and latch mechanism for portable computers would
naturally look to references employing other “housings, hinges, latches,
springs, etc.,” so a person of ordinary skill in the art considering the
improving of the service life of splines would consider a reference
describing reducing stress-related cracking during transmission of torque
between splines, as disclosed by McGovern. See In re ICON Health &
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007). Thus, a person of
ordinary skill in the art would have considered McGovern.
4. Obviousness of angle range
Appellants argue that McGovern’s drawings cannot be fairly read to
disclose an angle of between 20 and 90 degrees because the drawings are not
indicated as being to scale, and that even if McGovern is fairly read to show
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an angle of approximately 90 degrees, this teaching does not meet the recited
range of between 20 and 90 degrees (Rep. Br. 4-5).
While patent drawings not designated as being drawn to scale cannot
be relied upon to define precise proportions of elements if the specification
is completely silent on the issue, Hockerson-Halberstadt, Inc. v. Avia Group
Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir. 2000), that does “not mean that
things patent drawings show clearly are to be disregarded.” In re Mraz, 455
F.2d 1069, 1072 (CCPA 1972). A drawing teaches all that it reasonably
discloses and suggests to a person of ordinary skill in the art. In re Aslanian,
590 F.2d 911, 914 (CCPA 1979) (citation omitted).
In this case, simple observation of McGovern’s Figure 6 would
reasonably convey to one of ordinary skill in the mechanical arts that first
and second planar surfaces (flat side portions 62) are angled relative to one
another and configured to form an angle therebetween of approximately 90
degrees. We therefore find no error in the Examiner’s interpretation of
Figure 6.
Moreover, we find that this illustrated angle falls within the claimed
range of “between 20 and 90 degrees” or is at most insubstantially different
from it and therefore obvious from it. Appellants have presented no
evidence of criticality of this range. We therefore find no error in the
Examiner’s determination that McGovern’s illustrated angle meets the
claimed range.
4. Claims 3, 7, 8, and 14
Appellants contend that the Examiner provided “no reasoning which
can support a legal conclusion of obviousness” for the proposed
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modification to the indexing splines 42 of McGovern. App. Br. 24. Here
again, Appellants’ argument is not responsive to the rejection as articulated
by the Examiner, which is based upon McGovern’s splines 44, not splines
42. See Ans. 7.
Weighing the evidence for and against obviousness in light of
Appellants’ arguments, we conclude that the subject matter of claim 16 and
3 would have been obvious over Yousef in view of McGovern.
Accordingly, we sustain the rejection of claims 1-8 and 10-24.
DECISION
The decision of the Examiner to reject claims 1-8 and 10-24 is
AFFIRMED.
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

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