Ex Parte Smetz

Board of Patent Appeals and Interferences

Aug 23, 2012

10498869 (B.P.A.I. Aug. 23, 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.
10/498,869 06/16/2004 Reinhard Smetz 407-374 6946
7590 08/24/2012
Mark P. Stone
Attorney at Law
400 Columbus Avenue
Valhalla, NY 10595
EXAMINER
MACARTHUR, VICTOR L
ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
08/24/2012 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 REINHARD SMETZ
____________________

Appeal 2010-008534
Application 10/498,869
Technology Center 3600
____________________

Before LINDA E. HORNER, LYNNE H. BROWNE, and MICHELLE R.
OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-008534
Application 10/498,869

2
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-10, 15, 20-23, and 25-27. Claims 11-14, 16-19, and 24 have been
withdrawn. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

The claimed subject matter relates to an object attachment means
which has a fastening member and an attachment member. See Sub. Spec. 1,
ll. 4-8 (filed Jun. 6, 2006). Claim 1 is the sole independent claim on appeal
and is reproduced below with the key disputed limitations emphasized:
1. An attachment device adapted for connecting an object to a
carrying or lashing element, said attachment device comprising:
a fastening member (13) fastenable to the object, said
fastening member adapted for being secured against relative
movements with respect to the object; and
an attachment member (1) rotatably mounted relative to
the fastening member (13), said attachment member having a
fork head with fork prongs, opposing inner surfaces of the fork
prongs (5,6) in a section where the opposing inner surfaces are
running essentially parallel defining therebetween an insertion
gap (7) which is closable by a cross-bolt (10);
wherein the insertion gap (7) of the attachment member
merges with an essentially O-shaped eye (8) through a
transition region disposed therebetween, said transition region
defining an essentially flat edge facing towards said essentially
O-shaped eye and extending along a plane oriented
substantially transverse to the direction of extension of said
essentially O-shaped eye and said insertion gap, the inside
width (W2) of said essentially O-shaped eye being larger than
the inside width (W1) of the insertion gap (7), said inside width

1 Appellant identifies the real party in interest as RUD-Kettenfabrik Rieger &
Dietz GmbH u. Co. App. Br. 2.
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Application 10/498,869

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of said insertion gap receiving flattened zones of components
(2) insertable into the fork head.

REJECTION
Appellant seeks review of the Examiner’s rejection of claims 1-10, 15,
20-23, and 25-27 under 35 U.S.C. § 102(b) as being anticipated by, or under
35 U.S.C. § 103(a) as unpatentable over, Fredriksson (US 4,134,256, iss.
Jan. 16, 1979). Ans. 3.2

ISSUES
Appellant argues the patentability of claims 1-10, 15, 20-23, and 25-
27 as a group. App. Br. 6. We select claim 1 as representative. See 37
C.F.R. § 41.37(c)(1)(vii). Only issues and findings of fact contested by
Appellant will be addressed. See Ex parte Frye, 94 USPQ2d 1072, 1075-76
(BPAI 2010). The issues are whether the Examiner erred in finding that
Fredriksson discloses: (1) a “fastening member adapted for being secured
against relative movements with respect to the object;” (2) “an attachment
member . . . rotatably mounted relative to the fastening member;” and (3) a
“transition region defining an essentially flat edge facing towards said
essentially O-shaped eye and extending along a plane oriented substantially
transverse to the direction of extension of said essentially O-shaped eye and
said insertion gap” as recited in claim 1.

2 The Examiner withdrew the rejection of claims 1-10, 15, 20-23, and 25-27
under 35 U.S.C. § 112, second paragraph that appeared in the Office Action
that is the subject of this appeal (Fin. Rej. 3 (mailed Apr. 17, 2009)). App.
Br. 5; Adv. Act. 2 (mailed Jun. 29, 2009).

Appeal 2010-008534
Application 10/498,869

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ANALYSIS
First, the Examiner correctly found that claim 1 does not include
structural limitations (e.g., size or shape) with regard to the object, and
therefore, Fredriksson’s fastening member (lower shackle 10 as shown in
fig. 4) is capable of being adapted for being secured against relative
movement with respect to an object when utilized with an appropriately
configured object. See Ans. 6-7. We adopt the Examiner’s findings and
reasoning as our own. The burden shifted to Appellant to show that
Fredriksson’s fastening member (lower shackle 10 as shown in fig. 4) is
incapable of being adapted for being secured against relative movements
with respect to the object. See In re Schreiber, 128 F.3d 1473, 1478 (Fed.
Cir. 1997) (once the Examiner finds that the prior art structure would be
capable of performing all of the functions claimed, the burden shifts to the
applicant to show that this is not the case). Appellant argues that the lower
shackle 10 of figure 4 “can be moved with respect to the object (which, in
Figure 4, is represented by a chain), in any direction.” Reply Br. 2. This
argument is unpersuasive because it does not address the rejection as
articulated by the Examiner. The rejection does not rely upon the object of
Fredriksson (i.e., a chain link 300), but rather finds that Fredriksson’s
fastening member (lower shackle 10 of fig. 4) is capable of being adapted to
be secured against relative movement with respect to an object when utilized
with an appropriately configured object. See Ans. 6-7.
Second, the Examiner correctly found that the configuration of the
upper and lower shackles 10 of figure 4 of Fredriksson “allows for play
between the two shackles (at least when not in tension) such that the upper
shackle (upper 10) and lower shackle (lower 10) as seen in figure 4 must be
Appeal 2010-008534
Application 10/498,869

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rotatable with respect to one another (at least when not loaded in tension).”
Ans. 7. We adopt the Examiner’s findings and reasoning as our own. The
burden shifted to Appellant to show that Fredriksson’s attachment member
(upper shackle 10 of fig. 4) is incapable of being rotated relative to the
fastening member (lower shackle 10 of fig. 4).3 Schreiber, 128 F.3d at 1478.
Appellant argues that “rotation of the lower shackle relative to the upper
shackle would be prevented (or at least significantly impeded) when a
tension force acts on the connected shackles.” Reply Br. 3. Claim 1 does not
specify any particular degree of rotation between the attachment member
and fastening member. Appellant’s Specification does not assign or suggest
a particular definition of the term “rotatably mounted” or otherwise indicate
that this term is used in a manner other than its ordinary and customary
meaning. In determining the ordinary and customary meaning of the claim
term “rotatably mounted” as viewed by a person of ordinary skill in the art,
it is appropriate to consult a general dictionary definition for guidance.
Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010). The
ordinary meaning of “rotatably” is “[i]n a manner that allows rotation.” See
OXFORD ENGLISH DICTIONARY, http://www.oed.com/view/Entry/167702 (last
visited Aug. 20, 2012). The ordinary meaning of “rotation” is “[t]he action
or an act of moving round a centre or turning round and round on an axis.”
See OXFORD ENGLISH DICTIONARY, http://www.oed.com/view/Entry/167708

3 Appellant contends that “[t]he rejection fails to distinguish between an
attachment member and a fastening member, as disclosed and claimed by
Applicant.” App. Br. 12. The Examiner properly distinguishes between
upper shackle 10 and lower shackle 10 (each as shown in fig. 4, for
example) as the attachment member and fastening member, respectively.
Ans. 7.
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Application 10/498,869

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(last visited Aug. 20, 2012). Under the broadest reasonable definition, a
complete revolution is not necessary for “rotation.” Fredriksson’s
attachment member (upper shackle 10) can reasonably be considered to be
rotatably mounted to the fastening member (lower shackle 10) when given
the broadest reasonable interpretation consistent with Appellant’s
Specification based on at least some rotational movement between the upper
and lower shackles 10.
Third, the Examiner correctly found that Fredriksson discloses a
transition region defining an essentially flat edge (Examiner-identified
portion 200) facing towards said essentially O-shaped eye (vacant space 19)
and extending along a plane (Examiner-identified plane 500) oriented
substantially transverse to the direction of extension of said essentially O-
shaped eye (vacant space 19) and said insertion gap (entrance opening 18).
Ans. 17-18. We adopt the Examiner’s findings and reasoning as our own.
Appellant asserts that Fredriksson cannot anticipate the claimed subject
matter because the transition region of Fredriksson is rounded (App. Br. 11);
“the remaining section of the eye of the shackle [when not considering the
transition region] is not O-shaped . . ., but is U-shaped” (Reply Br. 6); and
“the edge (200) does not face towards the eye beneath the transition region
‘T.’” (Reply Br. 6). These arguments are unpersuasive. At least a portion of
the Examiner-identified edge 200 (e.g., between two points on the edge 200)
is an essentially flat edge. Also, Fredriksson’s eye is O-shaped inasmuch as
Appellant’s annular eye 8 is O-shaped when not considering Appellant’s
transition region 37. See Spec., fig. 1; Exhibits A to B to Reply Br. Finally,
Appellant’s argument that the flat edge must face toward the O-shaped eye
beneath the transition region (Reply Br. 6) is not based on limitations that
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Application 10/498,869

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appear in the claim. Unclaimed features cannot impart patentability to
claims. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998); In re Self,
671 F.2d 1344, 1348 (CCPA 1982).
Appellant also contends that Fredriksson “does not teach or suggest
supporting lashing means at the fork prongs, in addition to the cross-bolt.”
App. Br. 11. Such an argument is based on limitations that do not appear in
claim 1, and is, thus, unpersuasive. See Hiniker, 150 F.3d at 1369; Self, 671
F.2d at 1348. Based on the record before us, we find no error in the
Examiner’s rejection of claim 1 as anticipated by Fredriksson and we sustain
the rejection of claims 1-10, 15, 20-23, and 25-27 under § 102(b), or in the
alternative, under § 103(a).

DECISION
The Examiner’s rejection of claims 1-10, 15, 20-23, and 25-27 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)(1)(iv).

AFFIRMED

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