Ex Parte Marshall et al

Board of Patent Appeals and Interferences

Aug 17, 2012

11811608 (B.P.A.I. Aug. 17, 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.
11/811,608 06/11/2007 Rex Allen Marshall JR. 0275MA-001209/CPA 7605
27572 7590 08/20/2012
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
08/20/2012 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 REX ALLEN MARSHALL, JR. and
ANDRZEJ R. WOJCICKI
____________________

Appeal 2010-008986
Application 11/811,608
Technology Center 3700
____________________

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 CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1,
3, 6-9, 11, 12, 14, 17, 19, and 22-24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm-in-part.
THE CLAIMED SUBJECT MATTER
The claims are directed to pneumatic fastening tools. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A pneumatic fastening tool comprising:
a tool housing including a dispensing portion for
dispensing a fastener;
a handle portion;
an inlet configured to receive input of compressed air;
and
a cap assembly comprising:
a cap housing having an opening and mounted to
the tool housing;
a deflector configured to direct exhausted air
through an outlet in a first direction, the deflector having a stem
received in the opening, the stem having a cylindrical body that
defines an outer diameter and defines a bore formed through the
outer diameter of the cylindrical body, the bore extending in a
second direction, the second direction being distinct from the
first direction wherein the deflector is rotatably mounted to the
cap housing and configured to direct exhausted air from the tool
in a plurality of user defined directions depending on a
rotational orientation of the deflector; and
a locking member extending at least partially in the
bore and configured to rotatably capture the deflector relative to
the cap housing;
wherein an inboard surface of the cap housing
defines a recess formed generally adjacent to the opening and
wherein the recess includes an arcuate slot configured to align
with the bore of the stem and slidably accept the locking
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member during installation of the locking member into the
bore.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fisher
Hung
US 3,055,344
US 6,296,168 B1
Sept. 25, 19621
Oct. 2, 2001

REJECTIONS
Appellants seek our review of the rejection of claims 1, 3, 6-9, 11, 12,
14, 17, 19, and 22-24 under 35 U.S.C. §103(a) as being unpatentable over
Hung in view of Fisher. Ans. 3.

EXAMINER’S FINDINGS OF FACT
The Examiner found that:
1. Hung discloses:
[A] pneumatic fastening tool comprising: a tool housing as
shown in Figure 6 including an inherent dispensing portion for
dispensing a fastener; an inherent handle portion as known in
the fastener tool; an inlet (no shown) configured to receive
input of compressed air; and a cap assembly (20) comprising: a
cap housing ( Fig. 2) having an opening and mounted to the tool
housing as shown in Figure 6; a deflector (320) configured to
direct exhausted air through an outlet in a first direction, and
having a stem (331) received in the opening (25).

1 The Examiner’s statement of “Evidence Relied Upon” cites Fisher
3,055,344 (Ans. 2), but the Grounds of Rejection cite Fisher 3,063,421.
Ans. 3. Fisher ’421 is a division of Fisher ’344, and the disclosure on which
the Examiner relies is identical in the two patents. All references to Fisher
in this opinion are to Fisher ’344.
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Ans. 3.
2. Hung further discloses “an inboard surface of the cap housing (20)
defining a recess (25 Fig. 6) formed generally adjacent to the opening.”
Ans. 10.
3. Fisher discloses:
[A]djusting means including stem (32 stud) having a cylindrical
body that defines an outer diameter and defines a bore
(transverse slot) formed through the outer diameter of the
cylindrical body (see Fig.2), the bore extends in a second
direction, distinct from the first direction; and locking member
(37 bar) extending at least partially in the bore, and configured
to rotatably capture the knob (30) relative to the cap housing
(A), for the purpose of adjusting the extent of projection of the
driver and the position of its lower driving edge below the
piston.
Ans. 3.
4. Fisher discloses “an arcuate slot (36 Fisher) configured to align with the
bore (transverse slot Fisher) of the exhaust stem and slidably accept the
locking member (37 bar Fisher) during installation of the locking
member into the bore.” Ans. 4.
5. Fisher shows in Figure 1 that “the locking member, key 37 is held in the
transverse slot of the extended portion 35 of the stem.” Ans. 10.
6. With regard to claim 9, “modified Hung’s elongated pin (37 Fisher Fig.
1) length is accommodated between the outer diameter of the cylindrical
body of the stem and an inner diameter of the cap housing during
installation of the elongated pin into the bore.” Ans. 5.

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ANALYSIS
Appellants do not challenge any of the Examiner’s findings
concerning Hung’s disclosures, nor do they challenge the Examiner’s
combination of Hung and Fisher.2 Instead, they direct their arguments
toward the Examiner’s characterization of Fisher. We therefore accept the
Examiner’s findings of fact concerning Hung (Findings of Fact 1, 2, and 6,
above) as fact and confine our analysis to the issues Appellants raise. 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).
1. Claims 1, 3, 6-8, and 11
Appellants argue that the Examiner’s characterization of Fisher is
erroneous because: “Initially, the feature the Examiner identifies as an
arcuate slot is a recess 36 formed into the top wall of the head H (see column
4, lines 18-20). The bar 37 is never and can never be slidably accepted into
the recess 36” (emphasis omitted). App. Br. 9; see also Reply Br. 2.
We find this argument unconvincing. While we agree with
Appellants that recess 36 does not accept key element 37,3 the Examiner
later clarified the findings to establish that key element is in fact received in
a transverse slot in head 35. See Finding of Fact 5. We agree with the
Examiner’s clarified findings. Fisher clearly discloses that key element 37
“is held in a transverse slot on the under side of the enlarged head 35 with its

2 Appellants do not address combinability at all in the Appeal Brief. In the
Reply Brief, they assume for the sake of argument that one of ordinary skill
would have had motivation to combine the teachings of Hung and Fisher.
Reply Br. 2.
3 We therefore hold Finding of Fact 4 to be in error.
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end projecting radially therefrom to provide a key-like wrench” (Col. 4, ll.
12-15). As head 35 has a “disk-like” shape (Col. 4, l. 10), the ends of the
transverse slot are curved; therefore the slot is arcuate.4 Appellants do not
challenge the Examiner’s finding that key element 37 is received in a
transverse slot in head 35; rather, they persist in arguing merely that element
37 is not received in recess 36. Reply Br. 2. This argument is non-
responsive to the Examiner’s findings and therefore unconvincing.
Appellants have not identified any reversible error in the rejection.
2. Claims 9 and 23
Claims 9 and 23 depend, directly or indirectly, from independent
claim 1.
Appellants argue that in Fisher “the bar 37 can never be
accommodated between the body H and the head 35.” App. Br. 10; Reply
Br. 3.
We find this argument unconvincing. The claim requires that a length
of an elongated pin be “accommodated between” two particular diameters.
Appellants’ argument appears to be directed an interpretation of the claim
language other than the interpretation the Examiner has adopted. It is
therefore nonresponsive to the Examiner’s finding. We find no error in the
Examiner’s interpretation of this limitation or in the finding that it
encompasses the arrangement shown in Hung as modified by Fisher.
3. Claim 22
We cannot say with any certainty that we understand the Examiner’s

4 Appellants do not define what they mean by “arcuate slot” except by
reference to element 368 in their Figure 13. Spec. [0049], [0054]. There is
no limitation in claim 1 that distinguishes the recited arcuate slot from that
shown in Fisher.
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explanation of how the structures in Hung and Fisher meet the limitations of
claim 22 (Ans. 9, 10). We therefore find that the Examiner has not made out
a prima facie case of obviousness and reverse the rejection of this claim.
4. Independent claim 12 and its dependent claims 14, 17, and 19
Appellants refer to their arguments for claim 1 and do not base any
additional arguments on differences between claim 1 and claim 12. App. Br.
11; Reply Br. 2. Our analysis for claim 1 therefore applies to claim 12 and
its dependent claims. Appellants have identified no reversible error in the
rejection, for the reasons given above.
5. Independent claim 24
Appellants refer to their arguments for claim 9 and do not base any
additional arguments on differences between claim 9 and claim 24. App. Br.
11; Reply Br. 3. Our analysis for claim 9 therefore applies to claim 24.
Appellants have identified no reversible error in the rejection, for the reasons
given above.

DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3, 6-9,
11, 12, 14, 17, 19, 23, and 24 is AFFIRMED, and the Examiner’s rejection
of claim 22 is REVERSED.

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) (2009).

AFFIRMED-IN-PART

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MP