Ex parte Simmons et al.

Board of Patent Appeals and Interferences

Aug 6, 1998

08178508 (B.P.A.I. Aug. 6, 1998)

Application for patent filed January 7, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN M. SIMMONS
and
TOM M. SIMMONS
_____________
Appeal No. 96-4084
Application 08/178,5081
______________
ON BRIEF
_______________
Before MEISTER, FRANKFORT and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-4084
Application 08/178,508
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 3 and 18, which are the only claims
remaining in this application. Claims 4 through 17 have been
canceled.
Appellants’ invention relates to a method and apparatus
for producing synchronized dual internal and external threads
in/on a cylindrical portion of an object, wherein the
synchronized dual internal and external threads so formed are
adapted to engage corresponding synchronized external and
internal mating threads on a mating object for effecting a
threaded union therebetween. As stated on page 2 of the
specification, it is an object of the invention to
provide a method and apparatus for forming
sets of dual synchronized threads in/on
the cylindrical portion of an object, the
interior and exterior threads being
synchronized with identical leads, and with
rotational starting points relative to each
other, such that the dual synchronized
threads engage mating dual synchronized
threads on a mating connector for effecting a
positive fluid seal between the two
connectors that eliminates the problem of
thread separation caused by different rates
Appeal No. 96-4084
Application 08/178,508
3
of expansion of dissimilar connector
material.
Independent claims 1 and 18 are representative of the subject
matter on appeal and a copy of those claims may be found in
Appendix A of appellants’ brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Cressey 1,494,464 May 20, 1924
Bosse 4,170,050 Oct. 9, 1979
Claims 1 through 3 stand rejected under 35 U.S.C. § 103
as being unpatentable over Bosse.
Claim 18 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Cressey.
Rather than reiterate the conflicting viewpoints
advanced by the examiner and appellants regarding the above
rejections, we make reference to the examiner's answer (Paper
No. 8, mailed June 26, 1996) for the examiner's reasoning in
support of the rejections, and to appellants’ brief (Paper No. 7,
filed March 22, 1996) for appellants’ arguments thereagainst.
Appeal No. 96-4084
Application 08/178,508
4
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellants and the examiner. As a consequence of
our review, we have determined that the examiner’s respective
rejections of claims 1 through 3 and 18 cannot be sustained. Our
reasons follow.
Looking first to the examiner’s rejection of claims 1
through 3, we note that claim 1 on appeal is directed to a method
or process for producing dual synchronized threads on an object.
As is clear from the above quoted portion of appellants’
specification, the terminology “dual synchronized threads” has a
specific meaning within the context of appellants’ invention and
in the art, and requires that each set of dual synchronized
threads be in the relationship described in appellants’
specification and be capable of engaging corresponding
synchronized external and internal mating threads on a mating
Appeal No. 96-4084
Application 08/178,508
5
object for effecting a threaded union therebetween, as expressly
set forth in appellants’ specification. Thus, given the
recitation in the preamble
of claim 1 on appeal, it is clear that the process of appellants’
claim 1 must result in the production of “dual synchronized
threads” on the object which is subjected to that process. With
this understanding of the process of appellants’ claim 1 on
appeal, a review of Bosse makes it clear that this patent has no
relevance to a process “for producing dual synchronized threads
on an object,” as claimed by appellants.
Bosse addresses an entirely different type of process
for producing lobular, i.e., non-cylindrical configuration,
headless insert members like those seen in Figure 7 of the
reference. In contrast with the examiner’s position (answer,
page 5), we do not consider that one of ordinary skill in the art
would understand the successive external threads (13) of Bosse’s
threaded intermediate product, seen in Figure 5 thereof, to be
“dual synchronized threads” like those required to be formed in
Appeal No. 96-4084
Application 08/178,508
6
appellants’ claimed process. Moreover, we share appellants’ view
that the examiner has engaged in speculation in reaching the
conclusion that each successive external thread formed in Bosse
begins at the same rotational zero point, since there is no such
disclosure in the Bosse patent. Thus, since it is clear that the
process involved in Bosse does not result in the formation of
“dual synchronized threads” and that Bosse does not teach or
suggest anything regarding the formation of “dual synchronized
threads,” we will not sustain the examiner’s rejection of
claim 1, or of claims 2 and 3 which depend therefrom, under
35 U.S.C. § 103 based on Bosse.
As for the examiner’s rejection of claim 18 under 35
U.S.C. § 102(b) relying on Cressey, we first note that claim 18
on appeal appears to be directed to the forming tool (10) seen in
Figure 1 of the application drawings. Claim 18 sets forth that
the forming tool therein is “for producing dual synchronized
threads on internal and external cylindrical surfaces of an
object.” We understand such “dual synchronized threads” to be as
discussed supra in the rejection of claims 1 through 3. By
Appeal No. 96-4084
Application 08/178,508
7
contrast, Cressey discloses that the method and tool therein are
for producing threading on or in “tapered pins or recesses”
(emphasis added), particularly those adapted for use in the
threading of tapered pins and socket members of well drilling,
and pumping equipment, such as drills, underreamers, and casing
and tubing couplings. The examiner has dismissed the limitations
of the preamble of claim 18 as being of negligible weight and
also concluded that the forming tool of Cressey is “capable of
being employed in such a manner” (answer, page 7). We do not
share the examiner’s view that the tool of Cressey is capable of
forming “dual synchronized threads on internal and external
cylindrical surfaces of an object,” as set forth in appellants’
claim 18. In our opinion, the taper of the teeth (3) on the
cutter (2) of Cressey (e.g., as seen in Figures 1, 4 and 7) is
such as to preclude the use of this tool in forming “dual
synchronized threads” on internal and external cylindrical sur-
faces of an object. Moreover, we agree with appellants (brief,
page 9) that the tool of Cressey does not meet the requirement of
claim 18 that the thread forming surfaces (e.g., the cutting edge
tips 16 and 18 seen in appellants’ Figure 1) be located “in a
plane coincident with the mounting base longitudinal axis.” As
clearly seen in Figures 2, 3, 5 and 6 of Cressey, the thread
Appeal No. 96-4084
Application 08/178,508
8
forming surfaces or cutting edge tips of the teeth (3) are
displaced from the plane containing the mounting base
longitudinal axis. For these reasons, we will not sustain the
examiner’s rejection of claim 18 under 35 U.S.C. § 102(b).
To summarize our decision, the examiner's rejection
of claims 1 through 3 under 35 U.S.C. § 103 has been reversed,
as has the examiner's rejection of claim 18 under 35 U.S.C.
§ 102(b).
REVERSED

JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-4084
Application 08/178,508
9
Appeal No. 96-4084
Application 08/178,508
10
Michael D. McCully
Prince, Yeates & Geldzahler
City Center I, Suite 900
175 East Fourth Street
Salt Lake City, UT 84111