Ex Parte Sokol et al

Patent Trial and Appeal Board

Nov 28, 2018

13779998 (P.T.A.B. Nov. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/779,998 02/28/2013
25943 7590 11/30/2018
Schwabe Williamson & Wyatt
PACWEST CENTER, SUITE 1900
1211 SW FIFTH A VENUE
PORTLAND, OR 97204
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Jonathan Sokol
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
131994-235028 3276
EXAMINER
FRY,PATRICKB
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
11/30/2018 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):
IPDocketing@SCHWABE.com
patent@schwabe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN SOKOL, STEPHEN CRAIG PENNINGTON,
WAI HO CHOY, and MICHAEL REEDY 1
Appeal2018-003037
Application 13/779,998
Technology Center 3700
Before STEVEN D.A. McCARTHY, DANIEL S. SONG, and
BRANDON J. WARNER, Administrative Patent Judges.
SONG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Office Action ("Final Act.") rejecting claims 1, 4, 6-10, 12-14, 17-20,
22, and 23 in the present application (Br. 1). We have jurisdiction under 35
U.S.C. §§ 6(b) and 134(a).
We AFFIRM-IN-PART.
1 The Appellant is the Applicant, Arrow Fastener Co., LLC, which is
identified as the real party in interest (Appeal Brief ("Br.") 1).
Appeal2018-003037
Application 13/779,998
The claimed invention is directed to a fastening tool (Spec., Title,
Abstract). Representative independent claims 1 and 9 read as follows (Br.,
Claims App'x 1-3, emphasis added):
1. A fastening tool assembly comprising:
a housing having a first end and a second end, with a
contact surface extending from the first end to the second end to
contact a workpiece, and a fastener outlet provided at the first
end of the housing, through the contact surface through which to
dispense fasteners;
a magazine mounted in the housing to store fasteners and
to convey the fasteners to the fastener outlet;
a knife mounted in the housing for translation relative to
the outlet between a loaded position and an unloaded position to
drive a fastener from the magazine through the outlet during
translation to the unloaded position;
a biasing member mounted in the housing and operably
connected to the knife to bias the knife to the unloaded position;
a lever pivotally connected proximate to the first end of
the housing spaced apart from the contact surface, the lever
having a proximal end operably engaged with the knife in the
unloaded position, and a distal end extending from the housing,
so that application of an external force to the distal end towards
the housing pivots the lever relative to the housing, thereby
translating the knife from the unloaded position to the loaded
position, whereby the proximal end disengages from the knife
permitting the biasing member to return the knife to the unloaded
position to consequently drive a fastener through the outlet,
wherein rotation of the distal end away from the housing
reengages the proximal end with the knife;
a handle pivotally connected to the first end of the housing
and operably engaged with the lever distal end, such that rotation
of the handle towards the housing rotates the lever towards the
housing; and
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Application 13/779,998
a roller directly connected to the lever and the handle for
permitting translation of the lever relative to the handle as the
lever and the handle are pivoted relative to the housing;
wherein the roller is pivotally connected to the lever;
wherein the handle includes a follower path formed
underneath the handle at a distal end of the handle in
engagement with the roller; and
wherein the lever and roller in engagement with the handle
eliminates an additional link.
9. A fastening tool assembly comprising:
a housing having a contact surface to contact a workpiece,
and a fastener outlet provided through the contact surface to
dispense fasteners from the outlet;
a magazine sleeve fixed longitudinally within the housing;
a magazine body having a proximal end and a distal end
spaced apart from the proximal end, the magazine body being
received within the magazine sleeve to translate longitudinally to
a retracted position whereby the proximal end is adjacent the
fastener outlet to store fasteners within the sleeve and to convey
the fasteners to the fastener outlet, and to translate to an extended
position whereby the body extends at least partially out of the
sleeve and external of the housing for receipt of fasteners to the
body;
a bracket operably connected to the magazine body distal
end for longitudinal translation and partial rotation relative to the
body;
a biasing member connected to the bracket and the
magazine body for biasing the bracket longitudinally away from
the magazine body distal end; and
a latch mounted to the housing to engage the bracket in
the retracted position of the magazine body to lock the bracket to
the housing, and consequently to maintain the magazine body in
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Application 13/779,998
the retracted pos1t10n, wherein the latch is movable to a
disengaged position such that the bracket is biased away from the
magazine body;
wherein the biasing member is further defined as a first
biasing member; and
wherein the fastening tool assembly further comprises a
second biasing member cooperating with the latch and the
housing to bias the latch into engagement with the bracket.
Claim 14 is also directed to a fastening tool having a handle with a
follower path and a latch, reciting limitations similar to those of claims 1 and
9 (Br., Claims App'x 3-5).
REJECTIONS
1. The Examiner rejects claim 22 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description requirement
(Final Act. 2).
2. The Examiner rejects claim 22 under 35 U.S.C. § 112, second
paragraph, for being indefinite (Final Act. 3).
The Examiner rejects various claims under 35 U.S.C. § 103(a) as
follows:
3. Claims 1, 4, and 6-8 as unpatentable over Chou (US 7,464,845
B2, iss. Dec. 16, 2008) in view of Shor (US 7,815,089 B2, iss. Oct. 19,
2010) (Final Act. 4).
4. Claims 9, 12, and 13 as unpatentable over Marks (US
6,145,728, iss. Nov. 14, 2000) in view of Sheng (US 4,552,296, iss. Nov. 12,
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Application 13/779,998
1985), Chen (US 5,899,374, iss. May 4, 1999), and Opland (US 6,367,676
Bl, iss. Apr. 9, 2002) (Final Act. 9).
5. Claim 10 as unpatentable over Marks in view of Sheng, Chen,
and Fealey (US 4,452,388, iss. June 5, 1984) (Final Act. 14).
6. Claims 14 and 17 as unpatentable over Chou in view of Sheng
and Chen (Final Act. 16).
7. Claim 18 as unpatentable over Chou in view of Sheng, Chen,
and Fealey (Final Act. 21 ).
8. Claims 19, 20, and 23 as unpatentable over Chou in view of
Sheng, Chen, and Opland (Final Act. 22).
ANALYSIS
Only those arguments actually made by the Appellant have been
considered in this decision. Arguments that the Appellant could have made
but chose not to make have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv); In re Jung, 637 F.3d 1356, 1365-
66 (Fed. Cir. 2011 ); Ex parte Frye, 94 USPQ2d 1072, 107 5-7 6 (BP AI 2010
(precedential)).
Rejection 1
The Examiner rejects claim 22 for failing to comply with the written
description requirement, finding that the Specification lacks adequate
disclosure of the recitation "the lever is pivotally connected to the first end
of the housing at a fixed orientation" (Final Act. 2). The Examiner explains
that the Specification discloses that the trigger lever is "pivotally connected
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Application 13/779,998
to the housing 22 at a pin 66 in Figures 2 and 3," which means that "the
trigger lever rotates about the pin relative to the housing." (Ans. 3, citing
Spec. ,r 24). According to the Examiner, the claim language "fixed
orientation," however, "implies that trigger lever does not rotate relative to
the housing. The feature of having a fixed orientation contradicts the
Specification that discloses a pivotal connection." (Ans. 3).
The Appellant disagrees and argues that the written description
requirement is satisfied because the Specification "describes the lever 68 as
'connected to the housing 22 at a pin 66' and 'mounted to the pin 66.'
(Specification at [0024 ]). Therefore, the specification describes that the
pivotal connection has a 'fixed orientation relative to the housing' as
claimed." (Br. 12, emphasis added). The Appellant also argues that
"Figures 2 and 3 ... corroborate the description by illustrating that the
pivotal connection of the lever 68 at pin 66 maintains a fixed orientation
relative to the housing." (Br. 13, emphasis added).
The Appellant's arguments are unpersuasive. Claim 22 actually
recites that "the lever is pivotally connected to the first end of the housing at
a fixed orientation relative to the housing." (Br., Claims App'x 3). The
claim does not recite a "pivotal connection" but instead, recites that "the
lever is pivotally connected." Thus, the recitation "fixed orientation relative
to the housing" modifies the recited "lever," and the Examiner is correct that
there is inadequate support provided for claim 22. Accordingly, we affirm
Rejection 1.
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Rejection 2
The Examiner rejects claim 22 under 35 U.S.C. § 112, second
paragraph, for being indefinite (Final Act. 3), determining that the limitation
"the lever is pivotally connected to the first end of the housing at a fixed
orientation" is indefinite "because the limitation appears to contradict itself'
and that "[i]t is unclear how the lever can be pivotally connected and have a
fixed orientation." (Final Act. 3--4). Like Rejection 1, the Appellant argues
that "'fixed orientation relative to the housing' is referring to the location of
the pivotal connection, not the orientation of the lever." (Br. 13). However,
as noted above, claim 22 does not recite a "pivotal connection" but instead,
recites that "the lever is pivotally connected." Accordingly, we agree with
the Examiner that the claim recites
features of the lever: the lever is pivotally connected to the first
end of the housing and the lever is pivotally connected at a fixed
orientation relative to the housing. Both of these features are
referring to the lever, not the pivotal connection. Therefore the
phrase implies the lever is pivotally connected and has a fixed
orientation relative to the housing which renders claim 22
unclear.
(Ans. 3--4).
Therefore, we also affirm Rejection 2.
Rejection 3
The Examiner rejects claims 1, 4, and 6-8 as unpatentable over Chou
in view of Shor (Final Act. 4 ). As to independent claim 1, the Examiner
finds that Chou discloses most of the recited limitations except that it "does
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Application 13/779,998
not explicitly disclose the follower path is at the distal end of the handle in
engagement with the roller." (Final Act. 4--7). The Examiner finds that
Shor discloses a fastener gun (10) comprising a trigger arm
(30) that includes a roller (604) that rollers along a[n] upper
surface (644) in the distal end of the handle (not labeled, Column
4 lines 8-10). This would be beneficial to incorporate into the
tool assembly because it would extend the pivot arm of the lever.
(Figure 7 and Column 4 lines 8-10)[.]"
(Final Act. 7).
The Examiner concludes that it would have been obvious to a person
of ordinary skill in the art
to have modified Chou incorporating the roller to engage the
distal end of the handle as taught by Shor because the person of
ordinary skill in the art would know that[,] by extending the
pivoting arm of the lever[,] ... less effort [ would be required]
from the user to rotate the lever[,] ... therefore mak[ing] the tool
more desirable.
(Final Act. 7).
The Appellant argues that in Chou, "the follower path does not extend
to the distal end of the handle as claimed; and ... the follower path is not in
engagement with the roller at the distal end of the handle, as claimed." (Br.
14). The Appellant concludes that "[t]herefore, the combination of
references fails to satisfy all of the claimed elements" and a prima facie case
of obviousness has not been established (Br. 15). These arguments are
unpersuasive because, as explained by the Examiner, "Chou is not relied
upon for the teaching of the roller engaging the distal end of the handle.
Shor is relied upon for the teaching of the roller engaging the distal end of
the handle." (Ans. 5). The Appellant does not address the actual rejection
which is based on the combination of Chou and Shor.
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Therefore, we affirm the Examiner's rejection of independent claim 1.
The Appellant relies on dependency on claim 1 for patentability of claims 4
and 6-8 (Br. 15). Accordingly, these claims fall with claim 1.
Rejection 4
The Examiner rejects claims 9, 12, and 13 as unpatentable over Marks
in view of Sheng, Chen, and Opland (Final Act. 9). As to independent claim
9, the Examiner finds that the combination of Marks and Sheng discloses a
fastening tool assembly as claimed, but does not disclose "a latch mounted
to the housing to engage the bracket" or "a second biasing member." (Final
Act. 9--11 ). The Examiner relies on Chen for disclosing a latch attached to
body 1 (i.e., the housing) that engages the bracket (Final Act. 12). The
Examiner concludes that it would have been "beneficial to incorporate [ a
latch mounted to the housing to engage the bracket] into the fastening tool
assembly because [the latch] would allow easier removal of the magazine
body and better ensure the bracket is secured to the housing during use."
(Final Act. 12 (citing Chen, Fig. 1, col. 1, 11. 44--58, col. 2, 11. 30-33)). The
Examiner further concludes that the combination would have made "the
process of loading staples easier for the user," and would have made "the
overall assembly better." (Final Act. 13).
As for the second biasing member, the Examiner finds that Opland
discloses a "stapler [having] a press plate (35) and a spring (37) which allow
the staple pushing device to stay positioned in the frame (2)." (Final Act.
13). The Examiner concludes that it would be desirable to incorporate the
spring of Opland "because the person of ordinary skill in the art would know
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Application 13/779,998
that by ensuring that the latch engages with the bracket with positioning the
magazine body into the magazine sleeve would make the overall assembly
more reliable." (Final Act. 13).
The Appellant argues that a prima facie case of obviousness has not
been established because "the contro 1 switch 3 of Chen 'engages the pin 13 '
to permit or prevent rotation of the magazine 2. (Chen at column, 2, lines
50-54). The control switch 3 does not engage the 'bracket' (unlabeled and
unnamed) component of Chen." (Br. 16). However, this argument is
unpersuasive and we agree with the Examiner that "[i]n Figure 2, the
protrusion [of the bracket] is shown to engage the control switch (3) as the
control switch (3) is engaged with the pin (13)," so that "[ w ]hen the control
switch moves away from the pin, the control switch ... disengage[ s] from
the bracket." (Ans. 6; see also Chen, Figs. 2-3B).
The Appellant also argues that spring 37 of Opland relied upon by the
Examiner is disclosed as being connected between a press plate 3 5 and the
base 31, such that spring 37 "does not cooperate with any latch for
engagement with the press plate 35." (Br. 16, citing Opland, col. 2, 11. 50-
51 ). However, this argument is also unpersuasive because Opland "is relied
upon for the teaching of having a spring to bias a latch into a locked
position," and "is not relied upon for the teaching of having a spring situated
between a press plate and a base." (Ans. 8).
The Appellant further argues that the rejection, and the rationale for
providing the spring of Opland to "make the overall assembly more
reliable," "employs improper hindsight to reconstruct the claim limitations
from the prior art." (Br. 17). The Examiner responds that the rejection
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"does not include knowledge gleaned only from the applicant's disclosure,"
and thus, is proper (Ans. 8). On this point, we generally agree with the
Appellant.
The Examiner does not provide any evidentiary or technical basis
supporting the assertion that providing a spring for the latch of Chen would
improve reliability over the mechanism disclosed in Chen by ensuring
engagement. In that regard, we observe that in Chen, control switch 3 is
provided with insert groove 31 that positively engages with pin 13 when the
control switch is engaged with its bracket (Chen, Figs. 2-3B, col. 2, 11. 55-
60). The Examiner has not adequately explained how provision of a second
biasing member would have ensured engagement beyond that provided by
insert groove 31. Accordingly, the Examiner's assertions are insufficient
and inadequate to support the conclusion of obviousness. KSR Int 'l v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (citing In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness")).
Therefore, we reverse this rejection of independent claim 9. The
Appellant relies on dependency on claim 9 for patentability of claims 12 and
13 (Br. 17). Accordingly, the rejection of claims 12 and 13 is also reversed.
Rejection 5
The Examiner rejects claim 10 as unpatentable over Marks in view of
Sheng, Chen, and Fealey (Final Act. 14). The Appellant relies on
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dependency on claim 9 for patentability of claim 10 (Br. 17). The
Examiner's application of Fealey does not remedy the above noted
deficiency in the rejection of claim 9. Moreover, we observe that by its
dependency, claim 10 requires a second biasing member, which was not
accounted for in the Examiner's rejection considering Opland was not relied
upon. Accordingly, we reverse this rejection.
Rejection 6
The Examiner rejects claims 14 and 17 as unpatentable over Chou in
view of Sheng and Chen (Final Act. 16). Independent claim 14 essentially
combines the recitations set forth in independent claims 1 and 9, but does
not require actual engagement of the roller at the distal end of the handle, or
a second biasing member. The Examiner finds that Chou discloses most of
the recited limitations, including "a handle ( 40) having a follower path ( 401)
formed underneath the handle ( 40) for engagement with the roller (721 ); and
wherein the follower path (401) is formed underneath the handle (40) [at]
distal end of the handle (40). (Figure 12 and Column 2 lines 61-54, Column
3 lines 22-27)." (Final Act. 16).
The Appellant argues that the control switch 3 of Chen engages the
pin 13 instead of the latch (Br. 20). However, this argument is unpersuasive
for the reasons discussed above. The Appellant also argues that "Figure 6 of
Chou ... illustrates the furthest position of the roller 721, which
consequently indicates that the follower path does not extend to the distal
end of the handle as claimed." (Br. 18; see also Br. 19). However, we agree
with the Examiner's finding that because "there is no indication of change to
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the underside of the handle" in the follower path shown in Figure 3 of Chou,
its follower path extends to the distal end of the handle (Ans. 10). We also
agree with the Examiner that the recited follower path need not be restricted
to be "only the portion of the underside of the handle which touches the
roller," as "[t]he claim does not disclose that all portions of the following
path must engage the roller in order to be interpreted as the following path."
(Ans. 10). In that regard, unlike claim 1, claim 14 does not recite
engagement of the roller at a distal end of the handle, or otherwise actually
require the roller to roll to the distal end of the handle.
Thus, we affirm the rejection of claim 14. The Appellant relies on
dependency on claim 14 for patentability of claim 17 (Br. 20). Accordingly,
we also affirm the rejection of claim 17.
Rejection 7
The Examiner rejects claim 18 as unpatentable over Chou in view of
Sheng, Chen, and Fealey (Final Act. 21 ). The Appellant relies on
dependency on claim 14 for patentability of claim 18 (Br. 20). Thus, having
found claim 14 to be unpatentable, we affirm this rejection of claim 18.
Rejection 8
The Examiner rejects claims 19, 20, and 23, which depend directly or
indirectly from claim 14, as unpatentable over Chou in view of Sheng, Chen,
and Opland (Final Act. 22). The Appellant's reliance on dependency on
claim 14 for patentability of these claims (Br. 21) is unpersuasive because
claim 14 would have been obvious.
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Claims 19 and 20
The Appellant submits arguments substantially the same as those
submitted with respect to claim 9 in support of patentability of claims 19 and
20 (Br. 21 ). Claims 19 and 20 require "a second biasing member," and the
rejection relies on Opland as disclosing this biasing member, and concludes
that incorporation thereof into the combination of Chou, Sheng, and Chen
would have been obvious in order to ensure that the latch engages with the
bracket and to "make the overall assembly more reliable." (Final Act. 22-
23). Accordingly, we reverse this rejection as to claims 19 and 20 for the
same reasons as Rejection 4.
Claim 23
Claim 23 recites "wherein the roller engages the follower path at the
distal end of the handle when the handle and the lever are pivoted toward the
housing until the knife reaches the unloaded position." (Br., Claims App'x
5). The Appellant argues that "[i]nterpreting 'distal end' to include an
intermediate region is unreasonably broad because it contradicts the purpose
from the specification." (Br. 23; see also Br. 22). While this argument is
not entirely persuasive, the claim explicitly requires that "roller engages the
follower path at the distal end of the handle," which is not attained by Chou,
and in contrast to Rejection 3, this rejection does not rely on Shor.
Accordingly, we reverse this rejection as to claim 23.
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CONCLUSIONS
1. Rejections 1-3, 6, and 7 of claims 1, 4, 6-8, 14, 17, 18, and22
are AFFIRMED.
2. Rejections 4, 5, 8 of claims 9, 10, 12, 13, 19, 20, and 23 are
REVERSED.
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)(l )(iv).
AFFIRMED-IN-PART
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