Ex Parte Selle

Board of Patent Appeals and Interferences

Jan 22, 2009

10824915 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte STEPHEN SELLE
____________

Appeal 2007-2787
Application 10/824,915
Technology Center 3600
____________

Decided: January 22, 2009
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and STEFAN
STAICOVICI Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Stephen Selle (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-11. We have jurisdiction over this
appeal under 35 U.S.C. § 6 (2002).

Appeal 2007-2787
Application 10/824,915

THE INVENTION
The Appellant’s invention is drawn towards an adjustable threshold
fastener 300 including a threaded stud 320 having receptacles 301 and 307
and a rectangular shaped nut 321 having a frontward flange 305A and a
rearward flange 305B (Spec. 6, ll. 17-20 and fig. 3). The Appellant’s
invention is further drawn to a curvilinear track 423 holding a plurality of
the threshold fasteners 300 including a nut guide 422, a support guide (head
guide) 421, and a rimmed portion or edge 420 (Spec. 7, ll. 17-19 and figs. 4
and 5).

Claims 1 and 11 are representative of the claimed invention and read
as follows:
1. A fastener comprising:
a threaded stud;
a rectangularly-shaped nut having first and second ends;
said first and second ends each having a raised flange;
and, said threaded stud interengaging said rectangularly-
shaped nut.

11. A curvilinear delivery track for delivering a plurality of
fasteners, said delivery track includes a head guide and a
flange guide, wherein:

each of said fasteners comprises a U-shaped in cross-
section nut adapted to receive a threaded stud;
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each said stud includes a support head;
each of said U-shaped nuts includes a forward and a
rearward flange;
said head guides of said delivery track engage said
support heads of said fasteners preventing excessive
rotation or vertical displacement of said fastener; and,
said support heads of said fasteners in combination with
said head guide prevent shingling and/or jamming of the
delivery track.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:

Bursk US 4,352,258 Oct. 5, 1982
Selle1 US 5,993,320 Nov. 30, 1999
Mettler US 6,185,870 B1 Feb. 13, 2001
Leistner US 6,209,722 B1 Apr. 3, 2001
Selle2 US 6,640,968 B2 Nov. 4, 2003
Appellant’s Admitted Prior Art (AAPA) Spec. 3, ll. 1-3; fig. 1B

The following rejections are before us for review: 3,4

1 Hereinafter referred to as Selle ‘320.
2 Hereinafter referred to as Selle ‘968.
3 The rejection of claim 4 under 35 U.S.C. § 112, second paragraph, as
being indefinite, has been withdrawn by the Examiner (Ans. 3).
4 The rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over the AAPA in view of Selle ‘968 or Leistner has been withdrawn by the
Examiner (Ans. 3).

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The Examiner rejected claims 1-3 and 5-10 under 35 U.S.C. § 102(b)
as anticipated by Bursk.
The Examiner rejected claim 11 under 35 U.S.C. § 102(b) as
anticipated by Selle ‘320.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Bursk in view of Mettler.
The Examiner rejected claims 1 and 3-11 under 35 U.S.C. § 103(a) as
unpatentable over the AAPA in view of Selle ‘968 or Leistner.5

THE ISSUES
1. The Appellant argues that Bursk fails to disclose a number of features
required by claims 1-3 and 5-10 and thus does not anticipate the
claimed subject matter. In particular, the issue turns on whether the
Appellant has demonstrated that Bursk lacks:
(a) a rectangular-shaped nut having first and second “ends”
that include a “raised flange,” as required by claim 1;
(b) a rectangular-shaped nut having a raised crown with
interior threads thereon, as required by claim 2;
(c) a rectangular-shaped nut having raised flanges that
partially “envelope” a threaded stud, as required by claim
3; and
(d) a rectangular-shaped nut having “flanges” residing in a
“channel” of a threshold, as required by claim 5.

5 Because we are affirming the rejection of claims 1 and 3-11 under 35
U.S.C. § 103(a) as unpatentable over the AAPA in view of Selle ‘968, we do
not reach the merits of the alternative rejection over the AAPA in view of
Leistner.
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2. Has the Appellant shown that the Examiner erred in asserting that the
claimed limitation of “fasteners” in claim 11 is not positively recited
and as such, the structural and functional limitations directed to the
claimed “fasteners” do not carry patentable weight?
3. Has the Appellant shown that the Examiner erred in combining the
teachings of Bursk and Mettler to show that it would have been
obvious to a person of ordinary skill in the art to provide a second
adjustment receptacle as taught by Mettler to the screw of the
adjustable threshold assembly of Bursk?
4. Has the Appellant shown that the Examiner erred in combining the
teachings of the AAPA and Selle ‘968 to arrive at the claimed
invention? The issue turns on whether the Appellant has
demonstrated that the combined teachings of AAPA and Selle ‘968
disclose:
(a) a rectangular-shaped nut having “raised flanges,” as
required by claim 1;
(b) a rectangular-shaped nut having raised flanges that
partially “envelope” a threaded stud, as required by claim
3;
(c) a rectangular-shaped nut having a first and a second
adjustment receptacle, as required by claim 4; and
(d) a threshold assembly including a channel with a bore, an
adjustable threaded stud press-fitted into the bore, and a
nut constrained against rotation by the threshold, as
required by claims 5-10.

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SUMMARY OF DECISION
We AFFIRM.
FINDINGS OF FACT
The following enumerated findings of facts (FF) are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 848 F. 2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. AAPA discloses an adjustable threshold fastener 100 including a
threaded shaft 103 and a flat head 101, a rectangular shaped nut 102,
an upper adjustment receptacle 105 in the head 101, and a lower
adjustment receptacle 104 in the shaft 103 (Spec. 3, ll. 1-8 and figs. 1
and 1B).
2. AAPA further discloses a curvilinear track 223 including a nut guide
222, a head guide 221, and a rimmed edge 220, which when gravity
fed with prior art fasteners 100 results in the shingling and jamming of
the fasteners (Spec. 2, ll. 7-12 and figs. 2 and 2A).
3. AAPA specifically discloses on Page 2, ll. 14-21 of the Specification
that:
The insertion mechanism press-fits a threaded stud into and
through a wall of the threshold. The stud is then rotatably
adjustable with respect to the wall… . A reciprocally threaded
nut is also carried with the stud and when the stud is inserted
into the threshold, one surface of the nut engages the threshold.
The threaded stud has two ends and may be rotated from either
end thereof. When the stud is rotated it has the effect of
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extending the support surface away from the threshold enabling
the threshold to be adjusted vertically.
4. A schematic drawing of the threshold assembly of the AAPA as
understood by a person ordinarily skilled in the art is provided below:
Threshold
channel
Press-fitted
threaded stud
Threaded nut
that engages
the threshold
Threshold
Flat head

The Figure depicts the threshold assembly of the AAPA as
understood by a person ordinarily skilled in the art showing a
threshold having a channel, a press-fitted threaded stud having a flat
head, and a threaded nut that engages the threshold.
5. Bursk discloses an adjustable threshold assembly 10 including a base
20, a metal tread or cladding 24, a threshold 22, a screw 60, and a nut
65 (col. 2, ll. 48-51; col. 3, ll. 33-41; and figs. 4, 8 and 9).
6. Bursk further discloses that the nut 65 includes an inverted channel-
shaped central section with a web 82, and downward legs 83, 84 from
which extend upwardly turned end 85, and raised portion 88 (col. 4, ll.
24-32 and fig. 9).
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7. The upwardly turned end 85 locates the nut 65 within the base 20 (col.
4, ll. 38-43 and fig. 4).
8. The raised portion 88 assures interlocking of the metal cladding 24
with the base 20 (col. 4, ll. 54-57 and fig. 4).
9. The web 82 of the nut 65 includes a semi-helix opening 62 that
receives the threads of the screw 60 (col. 4, ll. 33-37 and figs. 3 and
9).
10. A Modified Figure 9 of Bursk is reproduced below:

62
A
B

The Modified Figure 9 of Bursk depicts nut 65 including crown
A formed by web 82 and legs 83 and 84, transverse portions 86 and B,
semi-helix opening 62, upwardly turned end 85, and raised portion 88.
11. A Modified Figure 4 of Bursk is reproduced below:
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The Modified Figure 4 of Bursk depicts the channel C formed by
legs 52 and 56 of the threshold 22 in which the screw 60 is fitted.
12. A modified Figure 6 of Selle ‘320 is reproduced below:

Flange Guide F
Head guide H
Channel
C
The Modified Figure 6 of Selle ‘320 depicts a curvilinear track
including a flange guide F and a head guide H.
13. Selle ‘320 discloses a nut 10 having a U-shaped barrel 14, a flange
12, a central bore 20 with female threads 22, and pawls 28 (col. 3,
ll. 13-18 and 28-29 and fig. 7).
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14. Selle ‘320 further discloses that the purpose of the flange 12 and
the pawls 28 is to eliminate the problems of jamming and shingling
(col. 3, ll. 60-64).
15. Mettler discloses a rivet 1 for an adjustable threshold assembly
having a head 4 having a first groove 8 and second groove 9 (col.
1, ll. 3-6; col. 3, ll. 28-29; fig. 1).
16. Mettler further discloses that first groove 8 and second groove 9
are provided in order to use either a flathead screwdriver or a
Phillips head (col. 3, ll. 30-32).
17. Selle ‘968 discloses a stud retainer, delivered by a delivery track,
having a body 304, a crown 303, and radially extending lips 301
and 302 (col. 3, ll. 49-60 and fig. 4).
18. Selle ‘968 further discloses pushing the retainers 300 through a
delivery track 600 such that each of the lips 301, 302 of a stud
retainer engages the lips of an adjacent stud retainer, and hence
shingling of the retainers is prevented (col. 4, ll. 30-27 and fig. 6).
19. Selle ‘968 also discloses that the radially extending lips 301 and
302 partially envelope the center crown 303 (fig. 4).
20. The ordinary and customary meaning of the term “flange” is “a rib
or rim for strength, for guiding, or for attachment to another
object.” Merriam Webster’s Collegiate Dictionary 442 (Tenth Ed.
1997).
21. The screw 60 of Bursk is enveloped by the legs 83 and 84, and also
by the upwardly turned end 85 and the raised portion 88 (figs. 4
and 9 of Bursk).

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PRINCIPLES OF LAW
Claim construction
When construing claim terminology in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the Specification, reading claim language in
light of the Specification as it would be interpreted by one of ordinary skill
in the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004)).
We must be careful not to read a particular embodiment appearing in
the written description into the claim if the claim language is broader than
the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”) The challenge is to interpret claims in view of the
specification without unnecessarily importing limitations from the
specification into the claims. See E-Pass Techs., Inc. v. 3Com Corp., 343
F.3d 1364, 1369 (Fed. Cir. 2003).

Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631(1987).
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It is not necessary that the reference teach what the subject application
teaches, but only that the claim read on something disclosed in the reference,
i.e., that all of the limitations in the claim be found in or fully met by the
reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (Fed. Cir.
1983).

Obviousness
It is elementary that to support an obviousness rejection all words in a
claim must be considered in judging the patentability of that claim against
the prior art. In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, __,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 127 S. Ct. at 1734 (“While the
sequence of these questions might be reordered in any particular case, the
[Graham] factors continue to define the inquiry that controls.”)
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, "the analysis
need not seek out precise teachings directed to the specific subject matter of
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the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ." KSR,
127 S. Ct. at 1741.
When a work is available in one field of
endeavor, design incentives and other market
forces can prompt variations of it, either in the
same field or a different one. If a person of
ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.
For the same reason, 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.
Id. at 1740. We must ask whether the improvement is more than the
predictable use of prior art elements according to their established functions.
Id.
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. Id. "In such situations, the proper
question is whether the ordinary artisan possesses knowledge and skills
rendering him capable of combining the prior art references." DyStar
Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d
1356, 1368 (Fed. Cir. 2006).

Intended Use
“It is well settled that the recitation of a new intended use for an old
product does not make a claim to that old product patentable.” In re
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Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Further, “[i]f … the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the preamble offers
no distinct definition of any of the claimed invention's limitations, but rather
merely states, for example, the purpose or intended use of the invention, then
the preamble is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.” Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (citations
omitted).

OPINION
Issue (1)
Claim 1
First, the Appellant argues that Bursk does not anticipate the subject
matter of claim 1 because the parts 85 and 88 of Bursk “are not raised
flanges,” but rather are “fittings which interengage other components of the
sill to hold the adjustment mechanism in place” (App. Br. 6 10 and Reply Br.
11). Second, the Appellant argues that in contrast to the claimed invention,
the parts 85, 88 of Bursk are located “on the sides of the nut” rather than the
“ends of the rectangularly-shaped nuts,” as required by claim 1 (App. Br.
10).
With respect to the Appellant’s first point, the Examiner takes the
position that the meaning of the term “flange” is “a projection used for

6 We refer herein to the Appeal Brief (“App. Br.”), filed August 4,
2006, the Reply Brief (“Reply Br.”), filed December 14, 2006, and the
Examiner’s Answer (“Ans.”), mailed November 15, 2006.
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strength or for attaching to another object” or a “projecting rim or edge”
(Ans. 18) and as such, the upwardly turning parts 85, 88 of Bursk “may be
broadly construed as a ‘flange’ ” (Ans. 18). Similar to the Examiner’s
position, we find that the ordinary and customary meaning of the term
“flange” is “a rib or rim for strength, for guiding, or for attachment to
another object.” Merriam Webster’s Collegiate Dictionary 442 (Tenth Ed.
1997) (FF 20). Moreover, we note that the Appellant’s Specification does
not provide a definition of the term “flange” that is contrary to its ordinary
and customary meaning. Bursk discloses a nut 65 having extending portions
86 and B which define an upwardly turned end 85 and a raised portion 88
(FF 6 and 10). Bursk further discloses that the upwardly turned end 85
locates (guides and attaches) the nut 65 within the base 20 (FF 7).
Furthermore, the raised portion 88 assures interlocking (attaching) of the
metal cladding 24 with the base 20 (FF 8). Hence, a person of ordinary skill
in the art would recognize that the upwardly turned end 85 and the raised
portion 88 of the nut 65 constitute a rib and a rim, respectively, for guiding
and attachment to other objects. Therefore, we agree with the Examiner that
the upwardly turned end 85 and raised portion 88 constitute “flanges.”
With respect to the Appellant’s second point that the parts 85, 88 of
Bursk are located on the “sides” of the nut 65, rather then the “ends,” the
Examiner contends that a person of ordinary skill in the art, when viewing a
rectangular shaped object, would not make a distinction between the “sides”
and the “ends” of a rectangle (Ans. 18-19). Furthermore, we note that the
Appellant has not explicitly defined the term “end.” As such, we find that
the ordinary and customary meaning of the term “end” is “the part of an area
that lies at [a] boundary.” Merriam Webster’s Collegiate Dictionary
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381(Tenth Ed. 1997). In this case, the upwardly turned end 85 and the
raised portion 88 of the nut 65 extend from the transverse portions 86 and B,
respectively (FF 10). Hence, a person of ordinary skill in the art would
readily recognize that the upwardly turned end 85 and the raised portion 88
extend from the “ends” of the transverse portions 86 and B, respectively.
In light of the above, the Appellant’s arguments do not persuade us
that the Examiner’s rejection of claim 1 as anticipated by Bursk is in error.

Claim 2
The Appellant argues that the nut 65 of Bursk does not include a
“raised crown having interior threads thereon” (App. Br. 11 and Reply Br.
11-12). As noted in our findings above, we find that the nut 65 of Bursk
includes a crown A formed by web 82 and legs 83 and 84 (FF 10).
Furthermore, Bursk specifically discloses that the screw 60 is received by
the semi-helix opening 62 (FF 9). The ordinary and customary meaning of
the term “thread” is “a helical rib.” Merriam Webster’s Collegiate
Dictionary 1228 (Tenth Ed. 1997). A person of ordinary skill in the art
would readily understand that the semi-helix opening 62 of Bursk constitutes
a “thread.” Therefore, the nut 65 of Bursk includes a “raised crown having
interior threads thereon,” as required by claim 2. In conclusion, the
Appellant’s arguments fail to persuade us the Examiner erred in rejecting
claim 2 as anticipated by Bursk.

Claim 3
The Appellant argues that the “parts 85, 88 of Bursk…do not in any
way envelope or surround the stud.” According to the Appellant, it is the
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“legs 83 and 84 [that] surround or envelop[e] the screw 60” (App. Br. 12 and
Reply Br. 12). It appears that the Appellant is interpreting the term
“envelop” to require that no other structure be present between the stud and
the raised flanges. The ordinary and customary meaning of the term
“envelop” is to “enclose or enfold.” Merriam Webster’s Collegiate
Dictionary 388 (Tenth Ed. 1997). In this case, although the Appellant is
correct that the screw 60 of Bursk is enveloped by the legs 83 and 84, the
screw is also enveloped by the upwardly turned end 85 and the raised
portion 88 (FF 21). The term “envelop” is not so limiting as to exclude the
presence of additional structures between the enveloping structure and the
enveloped structure. Hence, claim 3 does not exclude the presence of an
additional structure between the parts 85 and 88 and the screw 60 of Bursk.
As long as the screw 60 of Bursk is partially “enclosed” by the nut 65 the
limitation has been met. Bursk specifically discloses that the semi-helix
opening 62 receives the screw 60 (FF 9). When looking at Figure 3 of Bursk
a person of ordinary skill in the art would readily understand that the
upwardly turned end 85 and the raised portion 88 of the nut 65 of Bursk
partially “enclose” (envelop) the threaded stud 60 (FF 21). Lastly, we note
that the use of the transitional term “comprising” in claim 1, from which
claim 3 depends, is inclusive or open-ended and does not exclude additional,
unrecited elements or method steps. Mars Inc. v. H.J. Heinz Co., 377 F.3d
1369, 1376 (Fed. Cir. 2004). Therefore, in addition to the upwardly turned
end 85 and the raised portion 88, the screw 60 of Bursk may also be
“enveloped” by the legs 83 and 84, and still satisfy the limitations of claim
3. In conclusion, the Appellant’s argument does not persuade us the
Examiner erred in rejecting claim 3 as anticipated by Bursk.
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Claim 5
Claim 5 specifically requires that the flanges reside in a channel of the
threshold. We understand the Appellant’s argument to be that Bursk does
not disclose that the flanges of the nut reside in the channel of the threshold
(App. Br. 13). The modified Figure 4 of Bursk clearly shows a channel C
formed by the legs 52 and 56 of the threshold 22 (FF 11). However, when
viewing Figure 3 of Bursk, a person of ordinary skill in the art would readily
recognize that the upwardly turned end 85 and the raised portion 88
(flanges) are not “residing” in the channel C, as required by claim 5.
Therefore, we find that the Examiner erred in rejecting claim 5 as anticipated
by Bursk. Hence, the rejection of claim 5 cannot be sustained. Likewise,
the rejection of claims 6-10, which depend from claim 5, cannot be
sustained.
In conclusion, because Bursk does not disclose all the claim
limitations of claim 5, the rejection cannot be sustained. Similarly, the
rejection of claims 6-10, which depend from claim 5, cannot likewise be
sustained.

Issue (2)
The Appellant argues that the Examiner was incorrect to ignore
certain claim limitations and to reject other claim limitations based on the
use of the term “for” in the preamble of independent claim 11 (Reply Br. 20-
21). In response, the Examiner takes the position that the structural term
“fasteners” is not positively recited because the preamble of independent
claim 11 “only positively recites … the intended use of the curvilinear
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delivery track for delivering a plurality of fasteners” (Ans. 13). The
Examiner goes on to state that although the plurality of fasteners are not
positively recited, nonetheless, the “curvilinear delivery track disclosed by
the Selle [‘320] reference is inherently capable of performing the claimed
intended use” (Ans. 14). We agree with the Examiner. Claim 11 is drawn to
a “curvilinear delivery track” for delivering “fasteners” which possess
certain characteristics (e.g., a U-shaped cross section nut, a threaded stud
with a support head, forward and rearward flanges, preventing shingling)
and does not positively recite the structural limitation of the “fastener.” As
such, independent claim 11 merely requires that the curvilinear delivery
track be capable of delivering fasteners possessing the recited
characteristics. As noted above, Selle’320 discloses a curvilinear track for
delivering a plurality of fasteners including a flange guide and a head guide
(FF 12). Further, Selle ‘320 discloses a U-shaped nut having forward and
rearward flanges (pawls 28) and internal female threads adapted to receive a
threaded stud (FF 13). Moreover, Selle ‘320 discloses that the forward and
rearward flanges (pawls 28) eliminate the problems of jamming and
shingling (FF 14). We appreciate the Examiner’s detailed figure on page 15
of the Answer showing, in dotted lines, the capability of the curvilinear
delivery track of Selle ‘320 to deliver “fasteners” that include a U-shaped
nut adapted to receive a threaded stud, forward and rearward flanges, and a
support head on the threaded stud. In conclusion, because the curvilinear
delivery track of Selle ‘320 is capable of delivering fasteners possessing the
claimed characteristics, we find that Selle ‘320 satisfies the claimed
limitations. Therefore, the Appellant’s argument does not persuade us the
Examiner erred in rejecting claim 11 as anticipated by Selle ‘320.
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Issue (3)
The Appellant argues that Mettler does not disclose “two adjustment
receptacles 301, 307 as claimed” in claim 4 (App. Br. 18-19). That is, the
Appellant appears to argue that Mettler does not disclose a threaded stud
having an adjustment receptacle at each end of the threaded stud as shown in
Figure 3B of the Appellant’s drawings. The Appellant’s argument is not
persuasive, because claim 4 does not require that the adjustment receptacles
be located at opposite ends of the threaded stud. Limitations not appearing
in the claims cannot be relied upon for patentability. In re Self, 671 F.2d
1344, 1348 (CCPA 1982). Mettler specifically discloses an adjustable
threshold assembly including a threaded stud having two adjustment
receptacles (first groove 8 and second groove 9) (FF 15). Mettler further
discloses that the two adjustment receptacles are provided in order to use
either a flathead screwdriver or a Phillips head (FF 16). Therefore, we agree
with the Examiner that it would have been obvious for a person of ordinary
skill in the art to provide two adjustment receptacles as taught by Mettler to
the threaded stud of Bursk “in order to allow both [a] Phillips head
screwdriver and a flat head screwdriver to enter therein, making it more
convenient to adjust the threaded screw regardless of which type of
screwdriver is readily available” (Ans. 16).
The Appellant further argues that the teachings of Bursk and Mettler
cannot be combined because although they both involve threshold design,
“they do not employ the same technology” (App. Br. 19 and Reply Br. 21).
This argument is not persuasive. “When a work is available in one field of
endeavor, design incentives and other market forces can prompt variations of
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it, either in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, § 103 likely bars its patentability.” KSR
Int'l. Co. v. Teleflex lnc., 550 U.S. 398, _, 127 S. Ct. 1727, 1740 (2007). As
noted above, the Examiner’s reasons that such a combination would have
been obvious “in order to allow both [a] Phillips head screwdriver and a flat
head screwdriver to enter therein, making it more convenient to adjust the
threaded screw regardless of which type of screwdriver is readily available”
(Ans. 16). The Appellant has not explained why any differences in
technologies between Bursk and Mettler are of such a nature as to have
dissuaded a person of ordinary skill in the art at the time of Appellant’s
invention from providing two adjustment receptacles as taught by Mettler to
the threaded stud of Bursk to make it more convenient to adjust the threaded
screw using either a flathead screwdriver or a Phillips head, as reasoned by
the Examiner.
In conclusion, the Appellant’s arguments do not persuade us the
Examiner erred in rejecting claim 4 as unpatentable over Bursk in view of
Mettler. Therefore, the rejection is sustained.

Issue (4)
Claim 1
The Appellants argue that neither AAPA nor Selle ‘968, alone or in
combination, disclose a fastener having a threaded stud and a nut having
“raised flanges” (App. Br. 21). In response, the Examiner contends that the
meaning of the term “flange” is a “projection used for strength or for
attaching to another object” or a “projecting rim or edge” (Ans. 28) and as
such, the lips or wings 301, 302 of Selle ‘968 “may be broadly construed as
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a ‘flange’ ” (Ans. 28). As noted above, we find that a “flange” is “a rib or
rim for strength, for guiding, or for attachment to another object.” Merriam
Webster’s Collegiate Dictionary 442(Tenth Ed. 1997). Selle ‘968 discloses
a stud retainer, delivered by a delivery track, having a body 304, a crown
303, and radially extending lips 301 and 302 (FF 17). Selle ‘968 further
discloses pushing (guiding) the retainers 300 through a delivery track 600
such that each of the lips 301, 302 of a stud retainer engages the lips of an
adjacent stud retainer (FF 18). Hence, a person of ordinary skill in the art
would recognize that the lips 301, 302 of the retainer 400 constitute a rib or
a rim, respectively, for guiding. Therefore, we agree with the Examiner that
the lips 301, 302 constitute “flanges.”
The Appellant further argues that the teachings of AAPA are not
combinable with the teachings of Selle ‘968 because: (1) the Examiner has
failed to identify any motivation, suggestion or teaching of the desirability to
combine the AAPA and Selle ‘968 to arrive at the Appellant’s invention
(App. Br. 21 and Reply Br. 29); (2) the teachings of AAPA and Selle ‘968
result from different technologies (App. Br. 23); and (3) the teachings of
AAPA and Selle ‘968 teach away from the claimed invention (Reply Br.
29).
With respect to the Appellant’s first point, we note that while the
requirement of demonstrating a teaching, suggestion, or motivation (the
TSM test established by the Court of Customs and Patent Appeals) to
combine known elements in order to show that the combination is obvious
may be “a helpful insight,” it cannot be used as a rigid and mandatory
formula. KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, _, 127 S. Ct. 1727,
1741 (2007).
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Regarding the Appellant’s second point, the Appellant specifically
contends that a person of ordinary skill in the art would not have combined
the teachings of threshold adjustable fasteners (as evidenced by AAPA) with
the teachings of stud retainers (washers) (as evidenced by Selle ‘968) (App.
Br. 23). Specifically, the Appellant argues that in Selle ‘968, “it is the track
603, 604 which restrains the upward movement of the body 304 of the
washer, not the lips 301, 302” (App. Br. 24). Furthermore, according to the
Appellant, the lips 301, 302 of the retainer of Selle ‘968 are used merely for
guidance of the retainer in the track and not to prevent shingling (App. Br.
24).
Although the teachings of AAPA and Selle ‘968 represent different
technologies, obviousness does not require that all of the features of the
secondary reference be bodily incorporated into the primary reference. In re
Keller, 642 F.2d 413, 425 (CCPA 1981). In this case, AAPA discloses a
curvilinear track which when gravity fed with fasteners, having a threaded
stud and nut, results in shingling and jamming of the fasteners (FF 1 and 2).
Selle ‘968 discloses preventing shingling of a plurality of stud retainers
(washers), when fed in a delivery track, by providing radially extending lips
301, 302 to the retainer (raised flanges) (FF 17 and 18). Furthermore, Selle
‘968 specifically discloses that shingling of the retainers is prevented
because each of the lips 301, 302 of a stud retainer engages the lips of an
adjacent stud retainer (FF 18). A person of ordinary skill in the art would
readily appreciate that the benefits gained by providing radially extending
lips (raised flanges) to the retainer of Selle ‘968, could also be achieved in
fasteners for the curvilinear track of AAPA. After all, "[a] person of
ordinary skill is also a person of ordinary creativity, not an automaton."
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KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, _, 127 S.Ct. 1727, 1742 (2007).
Moreover, the Appellant does not provide any evidence to show that
modification of AAPA to provide the radially extending lips (raised flanges)
of Selle ‘968 would have been beyond the technical grasp of a person of
ordinary skill in the art.
Finally, with respect to the Appellant’s third point, the Appellant
argues that the “inclusion of raised flanges on a combination nut and stud
arrangement as claimed in the instant invention would increase the
dimensions of the fastener device” because it increases the diameter of the
head 302 in the instant invention (App. Br. 29) (underlining added). The
Appellant’s argument appears to misconstrue the Examiner’s rejection. The
Examiner specifically states that,
“…it would have been obvious to those having an ordinary skill in the
art, to modify the prior art rectangular nut (B) disclosed in the
Applicant’s admission of the prior art, by employing raised flanges
(R,S) on first (C) and second (D) ends of said rectangular nut (B) as
suggested by Selle US-6,640,968, in order to prevent shingling or
jamming of said rectangular nut (B) when disposed within a threshold
(H) o[f] a curvilinear delivery track” (Ans. 8) (underlining added).
Hence, it is not the Appellant’s claimed invention that is modified by the
teachings of Selle ‘968, as the Appellant appears to argue, but rather the
AAPA.
In conclusion, the Appellant’s arguments do not persuade us the
Examiner erred in rejecting claim 1 as unpatentable over AAPA in view of
Selle ‘968. Therefore, the rejection is sustained.

Claim 3
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The Appellant argues that neither AAPA nor Selle ‘968 discloses
“raised flanges which extend upwardly partially enveloping the threaded
stud” (App. Br. 26). Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986). AAPA discloses a fastener 100 including a threaded shaft
103 and a rectangular shaped nut 102 (FF 1). Selle ‘968 discloses that the
radially extending lips 301 and 302 (raised flanges) partially envelope the
central portion (crown 303) (FF 19). We find that a person of ordinary skill
in the art would readily recognize that the raised flanges in the fastener of
AAPA as modified by Selle ‘968 would necessarily partially envelop the
threaded stud 103, as required by claim 3. Hence, the rejection of claim 3 as
unpatentable over AAPA in view of Selle ‘968 is sustained.

Claim 4
The Appellant argues that neither AAPA nor Selle ‘968 suggest “two
receptacles…one from each end of the device” (App. Br. 26). As noted
above, claim 4 does not require that the adjustment receptacles be located at
opposite ends of the threaded stud. AAPA clearly discloses at least one
upper adjustment receptacle 105 and a lower adjustment receptacle 104 (FF
1). Therefore, we find that AAPA meets the claimed limitation of a threaded
stud having “first and second adjustment receptacles.” As such, the rejection
of claim 4 as unpatentable over AAPA in view of Selle ‘968 is sustained.

Claims 5-11
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The Appellant first argues that neither AAPA nor Selle ‘968 teach or
suggest “the studs being press-fit into the channel “(App. Br. 27). Secondly,
the Appellant argues that Selle ‘968 does not teach or suggest a threaded
stud that engages the channel of a threshold, that the stud is adjustable in a
plurality of positions, and that the nut is constrained against rotation by the
channel (App. Br. 27). In response, the Examiner points to Figures 1, 1B,
and 2A to show that the AAPA teaches the claimed structural and functional
limitations as recited in claims 5-10 (Ans. 5-7). Finally, the Appellant
indicates that the Examiner’s interpretation of the AAPA is incorrect
because the “track of the prior art is not equivalent to a threshold of the
instant invention,” that is, the “device depicted in Fig. 2A is a track[,] it is
not a threshold” (Reply Br. 38 and 40). According to the Appellant, the
Examiner has misidentified the delivery track of Figures 2 and 2A as a
threshold having a channel with a bore therein and a threaded stud press-
fitted into the bore of the channel (Reply Br. 38).
Although we agree with the Appellant that Figures 2 and 2A of the
Appellant’s disclosure describes a delivery track, we note that the language
of the AAPA (FF 3) would reasonably imply to a person of ordinary skill in
the art that the AAPA discloses a threshold having a wall, which is part of a
channel, into which a threaded stud having a flat head is press-fitted and is
rotatably adjustable with respect to the wall, and a threaded rectangular nut
that engages the threshold (FF 1 and 4) (as required by claims 5 and 7).
Moreover, since the threaded stud in the AAPA is press-fitted into the wall
(FF 3), a person ordinarily skilled would understand that the wall necessarily
includes a bore therein (as required by claim 5). Similarly, we note that
because one surface of the rectangular nut in the AAPA engages the
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threshold (FF 1 and 3), a person ordinarily skilled would understand that the
nut is restrained against rotation by the threshold (channel) (as required by
claims 6, 9 and 10). Finally, because the threaded stud is rotatably
adjustable with respect to the threshold wall (FF 3), a person ordinarily
skilled in the art would understand that the stud “threadingly engages” the
threshold wall (channel) (as required by claim 8).
Lastly, with respect to claim 11, the Appellant appears to argue the
modification of the track of Selle ‘968 (App. Br. 27 and Reply Br. 42).
However, in contrast to the Appellant’s position, the rejection of claim 11 is
not based on the modification of the track of Selle ‘968, but rather on the
modification of the track of the AAPA in view of the teachings of Selle ‘968
(Ans. 4). That is, according to the Examiner, it would have been obvious to
a person of ordinary skill in the art to provide the lips 301, 302 of Selle ‘968
to the rectangular nut of the AAPA because Selle ‘968 specifically teaches
that the lips 301, 302 prevents shingling in a delivery track (Ans. 8). We
agree with the Examiner, and further find that a person of ordinary skill in
the art would readily appreciate that the benefits gained by providing the
radially extending lips (raised flanges) to the retainer of Selle ‘968, could
also be achieved in fasteners for the curvilinear track of AAPA. Moreover,
because claim 11 does not positively recite the structural limitations of the
“fastener,” claim 11 merely requires that the curvilinear delivery track be
capable of delivering fasteners possessing the recited characteristics. We
note that the Appellant has not pointed to any specific feature of the track of
the AAPA that would lead a person of ordinary skill in the art to conclude
that the track of the AAPA would not be capable of delivering the modified
threaded stud and nut assembly of the AAPA in view of Selle ‘968. The
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track of the AAPA includes a nut guide 222 (FF 2) that a person of ordinary
skill in the art would readily understand to be capable of accommodating the
radially extending lips (raised flanges) of the threaded stud and nut assembly
of the AAPA in view of Selle ‘968.
For the foregoing reasons, the Appellant’s arguments do not persuade
us that the Examiner erred in rejecting claims 5-11 as unpatentable over the
AAPA in view of Selle ‘968. Accordingly, the rejection of claims 5-11 is
sustained.

DECISION
The decision of the Examiner to reject claims 1-3 and 5-10 under 35
U.S.C. § 102(b) as anticipated by Bursk is affirmed as to claims 1-3 and
reversed as to claims 5-10.
The decision of the Examiner to reject claim 11 under 35 U.S.C.
§ 102(b) as anticipated by Selle ‘320 is affirmed.
The decision of the Examiner to reject claim 4 under 35 U.S.C.
§ 103(a) as unpatentable over Bursk in view of Mettler is affirmed.
The decision of the Examiner to reject claims 1 and 3-11 under 35
U.S.C. § 103(a) as unpatentable over the AAPA in view of Selle ‘968 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) (2008).

AFFIRMED

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LV:

WOODLING, KROST AND RUST
9213 CHILLICOTHE ROAD
KIRTLAND, OH 44094
29