Ex Parte Terrell

Board of Patent Appeals and Interferences

Nov 8, 2010

11064764 - (D) (B.P.A.I. Nov. 8, 2010)

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.
11/064,764 02/24/2005 Timothy E. Terrell JK01460 9491
28268 7590 11/08/2010
THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON, MD 21286
EXAMINER
CHUKWURAH, NATHANIEL C
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
11/08/2010 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 TIMOTHY E. TERRELL
____________

Appeal 2009-008123
Application 11/064,764
Technology Center 3700
____________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and KEN B. BARRETT,
Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL1

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-008123
Application 11/064,764

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STATEMENT OF THE CASE
Timothy E. Terrell (Appellant) appeals under 35 U.S.C. § 134 (2002)
from the Examiner's decision rejecting under 35 U.S.C. § 102(e) claims 1-3,
11, 12, and 20 as anticipated by Laubach (US 6,808,101 B2, iss. Oct. 26,
2004), and claims 21-26, 28, and 29 as anticipated by Farrell (US
2004/0182908 A1, pub. Sep. 23, 2004); and under § 103(a) claims 4-10 and
13-19 as unpatentable over Laubach, and claim 27 as unpatentable over
Farrell. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
Claim 1 (emphasis added) is representative of the claimed invention:
1. A nose casting assembly for a pneumatic fastener, comprising:
a body having a driver channel formed therein for receiving a
driver blade, the body having a first end including an aperture therein
for allowing passage of a driver blade into the channel, the body
further including a second end configured for allowing a fastener to be
expelled from the nose casting assembly, the body further having an
exterior surface and an interior surface, the interior surface including a
loading aperture formed therein for allowing passage of a fastener into
the driver channel, the interior surface further having a nose casting
groove formed therein, the nose casting groove extending linearly
along the interior surface of the body towards the second end of the
body,
wherein the nose casting groove is configured for receiving
the shank of a fastener being utilized with the pneumatic fastener for
preventing the fastener from becoming wedged between the driver
blade and the interior surface of the nose casting assembly when a
shank of a fastener is oriented toward the driver blade.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

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OPINION
Issue 1 - Laubach
Contentions
The Examiner found that Laubach describes a tool having a nose
casting groove (rear-facing opening 30), as required by claims 1 and 11, and
a means (rear-facing opening 30) for receiving a shank of a fastener, as
required by claim 20. Ans. 3, 4-5. Appellant argues that rear-facing
opening 30 in Laubach does not perform the function required by the claims,
and in particular, does not perform the function of preventing the fastener
from becoming wedged "when a shank of a fastener is oriented toward the
driver blade." Appeal Br. 12-13. Appellant points out that rear-facing
opening 30 merely enables fasteners to pass from the magazine to the barrel.
Id. at 12. The Examiner answers that opening 30 prevents a small nail from
rotating through the opening and creating a jam. Ans. 12.
Issue
The first issue raised in this appeal is whether the Examiner has
demonstrated that the rear-facing opening 30 in Laubach describes a groove
configured (or sized) to receive the shank of a fastener or a means for
receiving a shank, that prevents a fastener from becoming wedged when the
shank of the fastener is oriented toward a driver blade, as recited in
independent claims 1, 11, and 20.
Analysis
The Examiner appears to consider the ability of the opening 30 to
prevent fasteners from rotating and jamming the tool as evidence that
opening 30 satisfies the limitation requiring a "groove" or "means for
receiving a shank" that "prevent[s] a fastener from becoming wedged …
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when a shank of a fastener is oriented toward the driver blade." However, in
reviewing the Examiner's challenged findings, we do not see any particular
finding relating to the "when a shank … is oriented toward the driver blade"
aspect of the limitation. Instead, the Examiner makes findings regarding
opening 30 preventing jamming. See Ans. 11-12. The Examiner cites to
col. 3, ll. 41-43, to describe the entire limitation (see Ans. 3-5), but this
portion of Laubach discusses only jamming elimination.
Claims 1, 11, and 20 require a groove or means for receiving a shank
that prevents jamming (wedging) in a particular scenario: when the shank is
oriented toward the driver blade (i.e., when the fastener is upside down).
While it is possible that the opening 30 in Laubach is useful (in conjunction
with blocking surface 46) for preventing certain jams (see, e.g., col. 5, ll. 51-
59, noting rebounding fasteners are kept in the barrel by blocking surface 46
covering opening 30), the Examiner has not provided any evidence or
analysis that Laubach describes a structure that is capable of preventing a
fastener from becoming wedged when the shank of the fastener is oriented
toward the driver blade. Laubach describes that the fasteners are prevented
from rotating through opening 30 (id.), thus apparently preventing a jam.
See col. 3, ll. 50-56, noting structure to prevent rotation; col. 2, ll. 27-36,
noting rotation or tumbling prevents accuracy; col. 2, ll. 46-47, noting that
tumbling can cause jams. However, the cited portion of Laubach does not
describe that the rotation preventing structure (30, 46) is useful in preventing
jams if the fastener was already upside down. Thus, even if Laubach
describes a structure capable of preventing jams by preventing the fastener
from rotating into a shank-upward position, this does not mean that Laubach
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necessarily describes a structure capable of preventing jams when the
fastener is already in a shank-upward position.
The Examiner has the initial duty of supplying the requisite factual
basis and may not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA
1967). As such, we are persuaded that the Examiner erred in finding that
Laubach describes the groove and means for receiving a shank limitations of
claims 1, 11, and 20, and of dependent claims 2, 3, and 12, because the
Examiner has not established that the structure in Laubach is capable of
performing the claimed function. The Examiner's rejection of claims 4-10
and 13-19 as obvious in view of Laubach does not cure the underlying
deficiency identified above. Therefore, we are persuaded that the Examiner
erred in concluding that Laubach renders obvious the subject matter of
claims 4-10 and 13-19.
Conclusion
We do not sustain the Examiner's rejections of claims 1-3, 11, 12, and
20 as anticipated by Laubach and claims 4-10 and 13-19 as obvious in view
of Laubach.

Issue 2 - Farrell
Contentions
The Examiner found that Farrell describes a tool having a groove
(relief channel 96) "configured and capable of inhibiting a fastener from
becoming wedged between the driver and the interior surface." Ans. 6.
Appellant argues that the relief channel 96 in Farrell is intended to provide
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clearance for tine 9 of the fastener, when the body 2 of the fastener is
normally oriented, i.e., the body 2 is away from the driver. Appeal Br. 12.
The Examiner answers that "inherently the channel will allow a nail of small
dimension to slide through the channel without wedging between the driver
blade and the interior, if the nail is orient[ed] in [a] slanting position." Ans.
13.
Issue
The second issue raised in this appeal is whether the Examiner has
properly found that the relief channel 96 in Farrell describes a groove
configured to inhibit a fastener from becoming wedged when the shank of
the fastener is oriented toward a driver blade, as recited in independent claim
21.
Analysis
Claim 21 broadly claims a groove "configured to inhibit a fastener
from becoming wedged ... when a shank of the fastener is oriented toward
the driver blade." The Examiner's position is that channel 96 in Farrell
inherently performs this function, by "allow[ing] a nail … to slide through
the channel … if the nail is orient[ed] in [a] slanting position." Ans. 13. A
groove of any size would tend to facilitate an object passing down a channel,
given that the groove adds additional clearance for passage.
Appellant's arguments focus on whether Farrell explicitly describes
the claimed function. Appeal Br. 12; Reply Br. 4-5. However, the relevant
inquiry is whether the structure of Farrell is capable of performing the
claimed functions, not whether Farrell acknowledges that its structure is
capable of performing the claimed functions. See, e.g., Toro Co. v. Deere &
Co., 355 F.3d 1313, 1321 (Fed. Cir. 2004)("[T]he fact that a characteristic is
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a necessary feature or result of a prior-art embodiment (that is itself
sufficiently described and enabled) is enough for inherent anticipation, even
if that fact was unknown at the time of the prior invention."). Thus,
Appellant's arguments do not tend to refute the Examiner's finding that the
channel 96 in Farrell performs the claimed function. Where the Patent
Office has reason to believe that a functional limitation asserted to be critical
for establishing novelty in the claimed subject matter may, in fact, be an
inherent characteristic of the prior art, it possesses the authority to require
the applicant to prove that the subject matter shown to be in the prior art
does not possess the characteristic relied on. See In re Swinehart, 439 F.2d
210, 213 (CCPA 1971); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
("when the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not"); In re King, 801 F.2d 1324, 1327 (Fed. Cir.
1986); In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977).
Appellant argues claims 21-26, 28, and 29 as a group. Appeal Br. 11-
12. Thus, claims 22-26, 28, and 29 fall with claim 21. 37 C.F.R.
§ 41.37(c)(1)(vii) (2010). With respect to the obviousness rejection of claim
27, Appellant repeats the argument above, which is likewise unpersuasive.
See Appeal Br. 12-13. Further, claim 27 merely requires the groove to be
rectilinear or concave, and channel 96 is clearly rectilinear. See, e.g.,
Farrell, fig. 8; Ans. 9. See Brown v. 3M, 265 F.3d 1349, 1351 (Fed. Cir.
2001) (citing Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782
(Fed. Cir. 1985) (when a claim contains alternatives, the claim is anticipated
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if any of the alternatives is known in the prior art). Therefore, we are not
persuaded that the Examiner erred in finding that the subject matter of claim
27 is obvious in view of Farrell.
Conclusion
We sustain the Examiner's rejection of claims 21-26, 28 and 29 as
anticipated by Farrell and of claim 27 as obvious in view of Farrell.

DECISION
We reverse the Examiner's rejection of claims 1-20 and affirm the
Examiner's rejections of claims 21-29. 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) (2007).

AFFIRMED-IN-PART

hh

THE BLACK & DECKER CORPORATION
701 EAST JOPPA ROAD, TW199
TOWSON, MD 21286