10389761 (B.P.A.I. May. 14, 2012)

Ex Parte Schmidt

Board of Patent Appeals and InterferencesMay 14, 2012

10389761 (B.P.A.I. May. 14, 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. 10/389,761 03/18/2003 Heiko Schmidt A-8432 .RNEMP/cat 3690 21884 7590 05/15/2012 WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 EXAMINER KOEHLER, CHRISTOPHER M ART UNIT PAPER NUMBER 3726 MAIL DATE DELIVERY MODE 05/15/2012 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 HEIKO SCHMIDT ____________________ Appeal 2010-001205 Application 10/389,761 Technology Center 3700 ____________________ Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEFAN STAICOVICI, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-001205 Application 10/389,761 2 STATEMENT OF CASE Heiko Schmidt (Appellant) appeals under 35 U.S.C. § 134 from a rejection of claims 1, 2, and 4-23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. The Claimed Subject Matter Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A punching head for insertion of joining parts into workpieces, the punching head having a loading channel, which is a component of a feed for feeding the joining parts from an external supply unit and which ends at a readiness position formed in a joining channel, the joining channel having a joining channel inlet at an axial distance from the readiness position, and with a plunger which can be moved between an initial position in which a plunger surface of the plunger is located outside the joining channel and outside the readiness position on a side of the readiness position facing away from the joining opening, and a joining position, in which the plunger with the plunger surface is located in the joining channel, means on the punching head or in the area of the punching head for moving the joining parts within the punching head, wherein the means for moving the joining parts within the loading channel is delivery air produced on the punching head or in the area of the punching head, the loading channel extending impediment free into the readiness position, and spring loaded catches having top sides in the readiness position, the top sides of the catches forming impediment free continuations of the guide surface of the loading channel in the readiness position, such that the top sides of the catches are arranged in a common plane with the at least one guide surface of the loading channel. Appeal 2010-001205 Application 10/389,761 3 References The prior art relied upon by the Examiner in rejecting the claims on appeal is: Massey US 1,713,974 May 21, 1929 Sawdon Müller Blacket US 4,574,473 US 4,610,072 US 5,813,114 Mar. 11, 1986 Sep. 9, 1986 Sep. 29, 1998 Altrock US 6,018,863 Feb. 1, 2000 Rejections The Examiner rejected claims 1, 2, 4, 9-12, 17-19, and 21-23 under 35 U.S.C. § 103(a) as unpatentable over Sawdon and Blacket. The Examiner rejected claims 5-8 and 20 under 35 U.S.C. § 103(a) as unpatentable over Sawdon, Blacket, and Müller. The Examiner rejected claims 13 and 14 under 35 U.S.C. § 103(a) as unpatentable over Sawdon, Blacket, and Altrock. The Examiner rejected claims 15 and 16 under 35 U.S.C. § 103(a) as unpatentable over Sawdon, Blacket, and Massey. OPINION Appellant’s Appeal Brief lists claims 1, 2, and 4-23 (all of the pending and rejected claims) as involved in this appeal (App. Br. 1), but does not list the rejections of claims 5-8, 13-16, and 20 as grounds of rejection to be reviewed on appeal (see App. Br. 3) and does not present any arguments against these rejections (see App. Br. 3-4). Thus, like the Examiner (Communication mailed October 16, 2009), we understand Appellant to be relying on the arguments asserted against the rejection of claims 1, 2, 4, 9- 12, 17-19, and 21-23 as unpatentable over Sawdon and Blacket in contesting the rejections of claims 5-8, 13-16, and 20. Appeal 2010-001205 Application 10/389,761 4 Appellant presents a separate argument for claim 22, but otherwise argues against the rejection of claims 1, 2, 4, 9-12, 17-19, and 21-23 without regard to any particular claim. App. Br. 3-4. Thus, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), dependent claims 2, 4, 9-12, 17-19, 21, and 23 stand or fall with representative claim 1. We address claim 22 separately. We agree with and adopt the Examiner’s findings, reasoning, and conclusion of obviousness of the subject matter of claim 1. See Ans. 3-4, 12. Appellant’s argument that Blacket’s spring loaded balls 60A are below the plane of the guide surface forming a step between the loading channel and the readiness position, thus causing fasteners to fall to the ball catch 60A, losing their intended orientation (App. Br. 3), is not convincing, because it is not directed to the combination of Sawdon and Blacket proposed by the Examiner. As explained by the Examiner (Ans. 12), the only modification of Sawdon proposed by the Examiner is the removal of the stop element (retractable pin 148) of Sawdon, thereby rendering the loading channel impediment-free into the readiness position. The Examiner does not propose to incorporate the ball catch 60A of Blacket into Sawdon’s device, or to relocate the balls 152 of Sawdon. Appellant’s argument that Sawdon’s balls 152 have “an arcuate surface which cannot form a continuation of the flat surface of the guide channel” (App. Br. 3) also is not convincing. Claim 1 requires neither that the top sides of the catches be flat nor that the guide surface and the top sides of the catches have the same contour.1 As noted by the Examiner 1 See, e.g., http://www.merriam-webster.com/dictionary/continuation (last visited April 28, 2012) (defining “continuation” as “resumption after an interruption”). Appeal 2010-001205 Application 10/389,761 5 (Ans. 12-13), there is “no change in the height of the fastener between where the subsequent fastener is held (at 148) and where the fastener to be driven is supported by the spring loaded catches (152) in the readiness position.” See Sawdon, fig. 10 (depicting the tops of the balls 152 at the same height as the bottom guide surface of the fastener feed chute 142, with no change in height of the fastener 12 from the exit of the chute into the readiness position in which it is supported by balls 152). Thus, we agree with the Examiner that the balls 152 are “continuations of the guide surface of the loading channel in the readiness position” as called for in claim 1. We sustain the rejection of claim 1 and of dependent claims 2, 4, 9-12, 17-19, 21, and 23, which fall with claim 1, as unpatentable over Sawdon and Blacket. Inasmuch as Appellant relies on the same arguments asserted against the rejection of claim 1, we also sustain the rejections of claims 5-8 and 20 as unpatentable over Sawdon, Blacket, and Müller, of claims 13 and 14 as unpatentable over Sawdon, Blacket, and Altrock, and of claims 15 and 16 as unpatentable over Sawdon, Blacket, and Massey. We do not, however, sustain the rejection of claim 22 as unpatentable over Sawdon and Blacket. First, it is not clear exactly how the Examiner proposes to modify the ball catches (balls 152) of Sawdon. The Examiner states on page 6 of the Answer that none of the embodiments of spring biased catches of either Sawdon or Blacket has a first and second leg, as called for in claim 22, thus implying that the Examiner proposes to replace Sawdon’s ball catches with a structure not taught by either Sawdon or Blacket. By contrast, in responding to Appellant’s argument, the Examiner “suggests as one embodiment that the ball catches of Sawdon could be replaced with the leg catches of Blacket shown in figures 23 and 24.” Ans. 13-14. In any event, it is not apparent, Appeal 2010-001205 Application 10/389,761 6 and the Examiner has not adequately explained, how the Examiner proposes to modify the ball catches of Sawdon such that each catch has a first and second leg and the top side of the second leg forms an impediment free continuation of the guide surface in the readiness position, and such that the top sides of the catches are arranged in a common plane with the guide surface, as called for in claim 22. See App. Br. 3-4. DECISION The Examiner’s rejection of claims 1, 2, and 4-23 is affirmed as to claims 1, 2, 4-21, and 23 and reversed as to claim 22. 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-IN-PART hh