Ex Parte Swift et al

Patent Trial and Appeal Board

Apr 27, 2017

12621283 (P.T.A.B. Apr. 27, 2017)

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.
12/621,283 11/18/2009 Jonathan Clark Swift C08-045CIP 2167
26683 7590 04/27/2017
OATFS torpor atton
EXAMINER
IP LAW DEPT. 10-A3 DUNWOODY, AARON M
1551 WEWATTA STREET
DENVER, CO 80202 ART UNIT PAPER NUMBER
3679
MAIL DATE DELIVERY MODE
04/27/2017 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 PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN CLARK SWIFT
and MARVIN MILLER
Appeal 2015-003493
Application 12/621,283
Technology Center 3600
Before JILL D. HILL, LISA M. GUIJT, and LEE L. STEPINA,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jonathan Clark Swift et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s final decision rejecting claims 1—9, 25, and 26.1 We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 10—24 were withdrawn from consideration. Final Act. 1.
Appeal 2015-003493
Application 12/621,283
BACKGROUND
Sole independent claim 1, reproduced below, represents the claimed
invention, with emphasis added.
1. A unitary one-piece radially crushable ferrule
comprising:
a crushable socket portion;
an attachment portion; and
a work hardened, strengthened, polygonal, hollow, torque
communication portion, generally contiguous with said socket
portion and said attachment portion, and providing torque
communication to an attached fluid power component.
REJECTION
Claims 1—9, 25, and 26 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Courtot (US 3,442,537, iss. May 6, 1969) and
Weatherhead (US 3,433,505, iss. Mar. 18, 1969). Final Act. 2.
OPINION
The Examiner finds that Courtot discloses, inter alia, “a polygonal,
hollow, torque communication portion (13, 13’).” Final Act. 2. The
Examiner also finds that Weatherhead discloses work hardening, and
concludes that it would have been obvious “to provide a work hardened
torque communication portion to prevent cracking.” Id. The Examiner also
finds that Courtot’s torque communication portion (13, 13’) is generally
contiguous with its socket portion 24 and attachment portion. Id.
Hollow
Appellants argue that Courtot’s outer portion 13, alleged by the
Examiner to be a torque communication portion, is not “hollow” as claimed,
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Application 12/621,283
because it is simultaneously formed with an inner portion 14 such that
“intimate contact” is formed therebetween to provide “a permanent assembly
during formation of the article,” such that “[tjhere is no empty space inside.”
Appeal Br. 10 (citing Courtot 4:20-24 and 27—29). Courtot’s outer portion
13 and inner portion 14 are formed such that “there is no time prior to
brazing or forming when the hexagonal portion exists in a hollow state.”
Appeal Br. 11 (citing Courtot 4:12—13).
Appellants further contend that, if Courtot’s outer portion 13 is
considered hollow because it has “a piece that is hollow before formation or
assembly, then it is not ‘a unitary one-piece ferrule’” as recited in claim 1,
but rather is an assembly 12 of outer portion 13 and inner portion 14.
Appeal Br. 10-11.
The Examiner responds that, even if outer portion 13 and inner
portion 14 are formed simultaneously such that there is intimate contact
between them, the “ferrule is hollow along the central bore 28” and is one
piece as required by claim l.2 Ans. 7. The Examiner has the better
argument, because Appellants have failed to explain why the empty space of
Courtot’s bore 28 does not meet the broadest reasonable interpretation of the
term “hollow.”
Indeed, either (1) the Examiner is correct that the ferrule includes only
the outer portion 13 and is a one-piece device that is hollow because it does
not include the inner portion 14 as originally proposed by the Examiner, or
(2) the outer portion 13 and inner portion 14 of the ferrule are unitary/one-
piece upon formation of the ferrule because they are simultaneously formed
2 Appellants describe this arrangement as “[bjeing permanently, irreversibly
filled with solid brass.” Appeal Br. 10.
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Application 12/621,283
with a permanent and intimate contact therebetween, and are hollow due to
the presence of the bore 28.
Generally Contiguous
Appellants argue that the female threads 22 of Courtot’s attachment
portion “are not generally contiguous with the wrenching portion at 33, as
there is at least a flange 32 there between.” Appeal Br. 11 (citing Courtot,
Fig. 1, 3:55). Appellants, however, have failed to explain why the existence
of a flange 32 in Courtot prevents its torque communication portion 13 from
being contiguous with its attachment portion 24, particularly when the
Examiner contends that the flange 32 is part of the attachment portion (Ans.
5). Further, Appellants do not allege that, or explain why, Courtot’s flange
32 should be considered a separate portion lying between the attachment
portion and the torque communication portion.
For the reasons set forth above, we sustain the rejection of claim 1 as
unpatentable over Courtot and Weatherhead.
Dependent claims 2—9, 25, and 26
Regarding the dependent claims generally, Appellants argue that the
Examiner failed to establish prima facie obviousness of the dependent
claims because the rejection “omit[s] any specific designation to the parts
being relied upon, and fail[s] to make clear whether the parts are found in
Weatherhead or Kacines,” and Kacines is not “identified in the rejection
heading.” Appeal Br. 11. Appellants also argue that the rejection lacks
supporting rationale. Id.
In rejecting claims 2—9, 25, and 26, the Examiner states that Kacines
discloses the subject matter recited in each dependent claim, namely: an
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Application 12/621,283
annealed socket portion (claim 2); an annealed attachment portion (claim 3);
a torque communication portion retaining a functional, hollow shape
following crushing of the socket and deformation of the attachment portion
(claim 4); the torque communication portion being between the socket and
attachment portions (claim 5); a socket portion adapted to retain a hose end
gripping insert (claim 6); the torque communication portion being thicker
than the socket portion (claim 7); the torque communication portion being
thicker than the attachment portion (claim 8); the attachment portion being
thicker than the socket portion (claim 9); securing the ferrule to a fluid
power component only by crushing (claim 25); and an area underneath the
torque communication portion being hollow and free of any solid material
(claim 26). Final Act. 2—A.
In a Final Action dated January 22, 2013, the Examiner rejected
claims 1—9 over Kacines (US 2002/0096877, pub. July 25, 2002) combined
with various secondary references, which rejections include, verbatim, the
findings regarding dependent claims 1—9 that are set forth in the appealed
Final Action. We thus assume that the Examiner’s findings in the appealed
Final Action refer to Kacines ’877. However, because Kacines ’877 is not
relied upon in the statement of the rejection, we cannot be certain that the
Examiner is indeed relying upon this reference. Further, the Examiner has
not provided any reason why one skilled in the art would combine Kacines
with Courtot and/or Weatherhead. We therefore do not sustain the rejection
of dependent claims 2—9, 25, and 26.
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DECISION
We AFFIRM the rejection of claim 1 under 35 U.S.C. § 103(a) as
unpatentable over Courtot and Weatherhead.
We REVERSE the rejection of claims 2—9, 25, and 26 under 35
U.S.C. § 103(a) as unpatentable over Courtot and Weatherhead.
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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