Ex Parte Sarnowski et al

Patent Trial and Appeal Board

Nov 7, 2017

13631023 (P.T.A.B. Nov. 7, 2017)

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.
13/631,023 09/28/2012 Jason Sarnowski 38699-401900 5898
27717 7590
Seyfarth Shaw LLP
233 S. Wacker Drive
Suite 8000
Chicago, IL 60606-6448
11/09/2017 EXAMINER
SAN, JASON W
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
11/09/2017 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 JASON SARNOWSKI,
ERLE MATTHEW BRIDGEWATER, and
ERIK D. SPILLING
Appeal 2016-001203
Application 13/631,023
Technology Center 3600
Before MICHELLE R. OSINSKI, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
GEM Products, Inc. (Appellant)1 appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1—5, 7—12, and 14—21, which are all
of the pending claims. An oral hearing was held on October 3, 2017.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 GEM Products, Inc. is the applicant as provided in 37 C.F.R. § 1.46 and is
identified as the real party in interest. Appeal Br. 1.
2 The record includes a transcript of the oral hearing (“Tr.”).
Appeal 2016-001203
Application 13/631,023
THE CLAIMED SUBJECT MATTER
Claims 1, 12, and 21 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
1. An adjustable friction hinge comprising;
a first leaf including a first-curled portion;
a second leaf hingedly coupled to the first leaf, the second
leaf including a second curled portion;
a sex bolt disposed within the first and second curled
portions, the sex bolt including a female portion with a female
portion head and a tubular cavity extending from the female
portion head through a first length of the first curled portion and
a part of a second length of the second curled portion, and a male
portion having a male portion head and an externally threaded
shaft extending from the male portion head into the tubular cavity
and through the second length of the second curled portion and a
part of the first length of the first curled portion;
a gap having a gap distance between an end of the tubular
cavity of th
the male portion
a first washer component circumferentially disposed about
the sex bolt and frictionally engaging the female portion head
and the first curled portion;
a second washer component circumferentially disposed
about the sex bolt and frictionally engaging the first and second
curled portions; and
a third washer component circumferentially disposed
about the sex bolt and frictionally engaging the male portion head
and the second curled portion, and
wherein the externally threaded shaft extends through the
second washer component and rotation of at least one of the male
portion head and the female portion head decreases the gap
distance and increases a compressive force applied to each of the
first, second, and third washer components to thereby increase
friction applied to each of the first, second, and third washer
components and increase a rotational force required to rotate the
first and second leaves.
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Appeal 2016-001203
Application 13/631,023
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Jacobs
Gergonne3
Fukuoka4
Clement
US 2,458,707
FR 2739650 A1
JP 2003295123 A
CA 2448877 A1
Jan. 11, 1949
Apr. 11, 1997
Oct. 15,2003
May 17, 2005
THE REJECTIONS
I. Claims 1, 5, 7, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Clement and Fukuoka. Final Act. 2—5.
II. Claims 2-4, 12, and 14—17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Clement, Fukuoka, and Gergonne. Id. at 5—10.
III. Claims 9—11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Clement, Fukuoka, and Jacobs. Id. at 11.
IV. Claims 18—21 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Clement, Fukuoka, Gergonne, and Jacobs. Id. at 11—15.
OPINION
Rejection I
The Examiner finds that Clement teaches most of the limitations of
independent claim 1, but does not explicitly disclose that bolt E disposed
within the first and second curled portions A, B is a sex bolt. Final Act. 3.
Instead, Clement discloses that bolt E has threaded ends with nuts C at both
3 All references to the text of Gergonne are to the machine translation
entered into the record as an attachment to the Final Action of December 18,
2013.
4 All references to the text of Fukuoka are to the machine translation entered
into the record as an attachment to the Final Action of December 18, 2013.
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Application 13/631,023
threaded ends of the bolt. Clement, 2—3. Two nylon washers D are provided
at each of the ends of the bolt, and at the middle of the bolt. Id. Tightening
of the nuts C creates friction on the nylon washers D. Id. The Examiner
turns to Fukuoka and finds that it teaches a sex bolt with female portion 19
and male portion 23/24 in a hinge. Final Act. 3. In particular, the Examiner
finds that “the male portion [20], is screwed into the female portion 19 of the
fastening pin 15 as depicted in [Fukuoka’s] Figure 7” and that “the male
thread 24 of the leg portion 23 is screwed into the female screw 19 of the leg
portion 18, and the components are tightened with torque.” Ans. 3. The
Examiner concludes that it would have been obvious to modify Clement’s
bolt with Fukuoka’s fastening member having male and female portions “in
order to yield the predictable result of imparting a force and preventing
shifting from motion.” Final Act. 4.
As to (i) the tubular cavity of the female portion extending from the
female portion head through (a) a first length of the first curled portion and
(b) a part of a second length of the second curled portion; (ii) the externally
threaded shaft of the male portion extending from the male portion head into
the tubular cavity through (a) the second length of the second curled portion
and (b) a part of the first length of the first curled portion; and (iii) a gap
having a gap distance between an end of the tubular cavity of the female
portion opposite the female portion head and the male portion head, the
Examiner determines that
it would have been an obvious matter of design choice to adjust
the length of the male and female components inside a length of
the curled portions, since [Appellants] ha[ve] not disclosed that
the lengths of the sex bolt components solves any stated problem
or is for any particular purpose and it appears that the invention
would perform equally well with a known sex bolt with male and
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Application 13/631,023
female components of suitable length for a hinge as disclosed in
[Fukuoka]. Figure 7 of [Fukuoka] shows the male portion with
a length in a female portion where there is a gap, as the male
portion does not extend all the way through the female portion.
It would be obvious to one of ordinary skill in the art at the time
the invention was made to have adjusted the length, thereby
adjusting the gap, as the length of the male portion is irrelevant
and each end of the sex bolt is still compressing and imparting a
force on the curled po[r]tions/knuckles as the male portion is
tightened in the female portion. In a sex bolt, the [Ejxaminer’s
position is that it is inherent that as the male portion... is inserted
into a female portion, a gap between the two components will
decrease as the male and female portions are tightened with
respect to each other.
Final Act. 4.5
Appellants argue that Fukuoka's male portion would only extend
through the second curled portion, “but not into any part of the first curled
[portion].” Reply Br. 5 (emphasis omitted); see also Appeal Br. 14 (noting
the Examiner’s acknowledgment that Fukuoka fails to teach externally
threaded shaft of the male portion extending through a part of the first length
of the first curled portion). Appellants argue that the Examiner erred in
“summarily concluding] that the [threaded shaft of the male portion
extendi ng through the second length of the second curled portion and a part
of the first length of the first curled portion] would have been an obvious
5 We have considered Appellants’ argument that Clement fails to teach a
sex bolt (Appeal Br. 12—14), but do not find it persuasive to the rejection as
clarified by the Examiner in which the Examiner relies on Fukuoka for the
sex bolt. We have also considered Appellants’ argument that “Fukuoka
relates to two screws 15, 20 inserted into opposite ends of a hollow tube 19”
and “fails to remedy the deficiencies of Clement.” Id. at 14. We, however,
determine that the Examiner’s finding that male portion 20 is screwed into
female portion 19 of fastening pin 15 such that Fukuoka “disclose[s] a sex
bolt” (Ans. 3) is supported by a preponderance of the evidence.
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Application 13/631,023
design choice.” Appeal Br, 14, According to Appellants, the claimed length
of the threaded shaft provides structural stability and “is an incredibly
important and distinguishing feature to the present invention.” Id. at 15
(citing Spec., fff 6, 16, 18; Abstract); see also Reply Br. 5-6. Appellants
argue that Fukuoka’s bolt “is weak and fails to extend the leg 23 past the
middle of the fastening pin 15, which ultimately leads to failure” and
supports that Fukuoka’s bolt “is not functionally equivalent: to” the claimed
bolt. Reply Br. 6. Appellants add that the Examiner relied on impermissible
hindsight reconstruction to arrive at the claimed invention. Appeal Br. 18.
We have considered these arguments, but we ultimately do not find
them convincing. The Examiner mai ntains that it would be “an obvious
matter of design choice to len gthen the male portion of the screw as bolts
come in various lengths.” Ans. 3.6 Appellants do not provide persuasive
evidence as to the criti cality of the claimed length of the threaded shaft of
the male portion as they point only to statements made in the Specification
that are unsupported by factual evidence. “[I]t is well settled that
unexpected results must be established by factual evidence. ‘Mere argument
or conclusory statements in the specification does not suffice.’” In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe,
736 F,2d 699, 705 (Fed. Cir. 1994) and citing In re Soni, 54 F.3d 746, 750
(Fed. Cir. 1995)). .Vce also In re Wood, 582 F.2d 638, 642 (CCPA 1978)
(“Mere lawyer’s arguments and conclusory statements in the specification
unsupported by objective evidence, are insufficient to establish unexpected
6 We note that we do not rely on the Examiner’s finding that “the male
portion of [Fukuoka’s] Figure 7 would be through the first arm and part of
the second arm of the hinge as depicted in [Fukuoka’s] Figure 3.” Ans. 3,
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Application 13/631,023
results.'’). Moreover, even when considering the statements in the
Specification, the identified statements support the criticality of having a sex
bolt in general (as opposed to a fastener and nut conventionally found in
hinges) in order to provide structural stability, rather than supporting the
criticality of any particular length of the threaded shaft of the male portion
(i.e., its extension into a part of the first length of the first curled portion, in
ar).
To the extent Appellants are arguing that (i) Fukuoka is not a sex bolt
because “the length of the threaded male portion is exactly what makes it a
sex bolt” (Appeal Br. 14—15; see also Tr. 10:3—5 (“[a] sex bolt is a female
portion with a male portion inserted substantially inside the female portion”)
and (ii) thus, the Examiner is essentially trying to use design choice to
modify Clement so as to include a sex bolt generally (and not merely to
change the length of the threaded shaft) (see Tr. 6:3—4 (“Arguing that [the
sex bolt itself] as being a mere design choice is improper.”)), we are not
persuaded of error. Appellants have not pointed us to an explicit definition
for “sex bolt” in their Specification, nor have Appellants provided
persuasive evidence or reasoning to support that the term “sex bolt” is a term
of art to which a person of ordinary skill in the art would ascribe a particular
meaning. See Ans. 2 (the Examiner indicating only that “[t]he term ‘sex
bolt’ is generally known in the art to be a bolt with male and female portions
that have mating threads,” and not necessarily that it is known in the art to
have any particular length for its male portion). We have also considered
Appellants’ argument that “[t]he definition of ‘sex bolt’ is explicitly recited
in the claims” (Appeal Br. 15) but are not persuaded that the claims
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Application 13/631,023
explicitly define “sex bolt,” but rather that the claims merely further limit the
claimed sex bolt to have certain more particular characteristics.
Appellants also argue that it would not have been obvious to modify
Clement with the fastener of Fukuoka because it would change the principle
of operation of Clement. Appeal Br. 19 (citing MPEP § 2143.01 (VI)).
More particularly, Appellants argue that Clement “relates to a friction hinge
for a door, where the hinge resists movement: of the door in virtually any
position,” whereas Fukuoka “relates to an eyeglass hinge with only two
lockable orientations.” Id. Appellants argue that restricting Clement to only
two lockable orientations would change its principle of operation. Id.
Appellants argue that “the very purpose of Fukuoka is to reduce the number
of times a user must ti ghten his or her eyeglasses,” whereas “the purpose of
Clement is to allow' the hinge to be tightened at: many different: angles for a.
more customized experience.” Reply Br. 9. Appellants also argue that
Fukuoka has “no apparent need for an adjustable friction feature because the
locking function is already accomplished by the interaction between an
elastic material member 25 and recesses 6, 12,” Appeal Br. 19.
We are not persuaded by Appellants’ argument in that it too narrowly
defines the principle of operation of Clement. The “principle of operation”
referred to by Appellants relates to the “basic principles” under which the
prior art device was designed to operate. In re Ratti, 270 F.2d 810, 813
(CCPA 1959) (“This suggested combination of references would require a
substantial reconstruction and redesign of the elements shown in [the
primary reference] as well as a change in the basic principles under which
the [primary reference] construction was designed to operate.”) (emphasis
added). Under Ratti, “a change in the basic principles” refers to change that
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Application 13/631,023
is fundamental in scope so as to relate to scientific or technical principles
under which the invention is designed to operate. The Examiner maintains
that the principle of operation is not being changed in that “the pieces of
prior art are in the related fields of hinges and solve[] a common problem.”
Ans. 5. The Examiner finds that “there are multiple possible positions of
eyeglass hinges as well, not just fully open or fully closed,” Id. We agree
that a “change in basic principles” does not occur by the Examiner’s
proposed modification. A difference in the bolt of Clement does not affect
the overall principle of operation of a hinge to create resistance to hold the
door in an open position. Clement, Abstract.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of independent claim 1 is unpatentable
over Clement and Fukuoka. We sustain the rejection of claim 1, and claims
5,7, and 8 which depend therefrom and for which Appellants rely on the
same arguments as independent claim 1, as unpatentable over Clement and
Fukuoka.
Rejection II
The Exam iner acknowledges that the combination of Clement and
Fukuoka fails to teach that the first, second, and third washer components
each include three washers “composed of at least one metal material, and
wherein the metal material is selected from the group consisting of phosphor
bronze, beryllium copper, brass, stainless steel, and 17-4 PH hardened
stainless steel.” Final Act. 5 (emphasis omitted). The Examiner finds that
Gergonne teaches “multiple adjacent washers.” Id. The Examiner
concludes that it would have been obvious to one of ordinary skill in the art
to have modified the Clement/Fukuoka washer components each having two
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Application 13/631,023
washers so as to have three washers as taught by Gergonne “to yield the
predictable result of having 3 washers that act frictionally against each other
when tightened,'” Id. at 5—6. The Examiner further takes the position that
“mere duplication of the essential working parts of a device involves only
routine skill in the art” and that Appellants “ha[ve] not disclosed any
criticality for the claimed limitations.” Id. at 6 (citing St. Regis Paper Co. v.
Bemis Co., 549 F.2d 833 (7th Cir. 1977)).
As to the particular material of the washers, the Examiner finds that
Gergonne teaches “that it is known to provide a washer made of a metal
such as brass or bronze” and that “steel against steel washers have been
previously used and [are] known in the art.” Id. As to the particular
configuration of the first washer being phosphor bronze, the second stainless
steel, and the third being phosphor bronze as set forth in dependent claim 3,
the Examiner determines that “it would have been an obvious matter of
design choice to a person of ordinary skill in the art to have used the
materials of stainless steel and phosphor bronze because [Appellants] ha[ve]
not disclosed that having the first and third washer made of phosphor bronze
and a second washer made of stainless steel provides an advantage, is used
for a particular purpose, or solves a stated problem; criticality has not been
disclosed.” Id.
Appellants argue that design choice is not an appropriate rationale
where the “washer configuration claimed in the present application is not a
functional equivalent to the washers disclosed in the applied prior art”
(Appeal Br. 16 (citing Spec, f 20); Reply Br. 10), but is instead described as
being “advantageous to prior art washer configurations” (Appeal Br. 17).
Appellants argue that: “Gergonne is silent with respect to using any
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Application 13/631,023
combination of stainless steel and phosphor bronze washers, let alone
Appellants’] claimed configuration.” Id.
The Examiner responds that “[i]t is notoriously known in the art to
pick materials for washers/hushings” and “[i]t is known to one of ordinary
skill in the art to combine different materials of washers for their properties
and effectuating an increase or decrease in friction.” Ans, 4. The Examiner
finds that: Gergonne teaches “different metal materials o f brass, bronze, and
steel for washers and discusses frictional properties when they are in
contact.” Id. The Examiner concludes that “[i]t would have been obvious to
one of ordinary skill in the art to make a design choice and combine washers
of different materials to reach the configuration that [Appellants] halve]
claimed.” Id. The Examiner asserts that Appellants’ “disclosure states that
"any combination of the above materials, are advantageous for wear
properties/” Id. (quoting Spec. 7:6) (emphasis added).
When considering the Specification, we agree with the Examiner that
the Specification does not support the criticality of the particular claimed
order of materials (he., phosphor bronze first, stainless steel second,
phosphor bronze third in a three-washer component), but rather supports
only that it is critical that the washers be made of any of the listed materials.
That is, the materials are critical to providing the advantageous properties,
but the particular claimed order of materials is exemplary only.
Additionally, the fact that the brass, bronze, and stainless steel washers of
the prior art could be utilized in different combinations, and then arranged in
different orders within those combinations, does not persuade us that the
Examiner’s determination that it would have been obvious to reach the
claimed configuration is incorrect. Here, a person of ordinary skill in the art
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knows that any of brass, bronze, and stainless steel are suitable materials for
washers for hinges. Thus, a person of ordinary skill in the art has good
reason to pursue any of these options for each washer for a hinge. Arriving
at the particular design in which a first and third washer are each phosphor
bronze and a second washer is stainless steel appears to be the product of
ordinary skill and common sense considering the finite number of materials
presented in the prior art, not the product of innovation.
For the foregoing reasons, we find that the Examiner did not err in
concluding that the subject matter of dependent claim 3 is unpatentable over
Clement, Fukuoka, and Gergonne. We sustain the rejection of claim 3, and
claims 2, 4, 12, and 14—17 for which Appellants appear to rely on the same
arguments as claim 3, as unpatentable over Clement, Fukuoka, and
Gergonne.
Rejections III and IV
Claims 9—11 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Clement, Fukuoka, and Jacobs. Final Act. 11. Claims 18—21 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Clement, Fukuoka,
Gergonne, and Jacobs. Id. at 11—15. Appellants present no arguments
against these rejections other than those that relate to the perceived
deficiencies in the combinations of Clement, Fukuoka, and Gergonne.
Because we have found no such deficiencies in such combinations, we also
are not persuaded of error in the Examiner’s rejection of claims 9—11 and
18—21. Accordingly, we sustain, under 35 U.S.C. § 103(a), the rejection of:
claims 9-11 as unpatentable over Clement, Fukuoka, and Jacobs; and claims
18—21 as unpatentable over Clement, Fukuoka, Gergonne, and Jacobs.
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DECISION
The Examiner’s decision to reject claims 1, 5, 7, and 8 under 35
U.S.C. § 103(a) as unpatentable over Clement and Fukuoka is affirmed.
The Examiner’s decision to reject claims 2-4, 12, and 14—17 under 35
U.S.C. § 103(a) as unpatentable over Clement, Fukuoka, and Gergonne is
affirmed.
The Examiner’s decision to reject claims 9—11 under 35 U.S.C.
§ 103(a) as unpatentable over Clement, Fukuoka, and Jacobs is affirmed.
The Examiner’s decision to reject claims 18—21 under 35 U.S.C.
§ 103(a) as unpatentable over Clement, Fukuoka, Gergonne, and Jacobs 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)(l)(iv).
AFFIRMED
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