Ex Parte Verbowski

Patent Trial and Appeal Board

Aug 9, 2016

12366280 (P.T.A.B. Aug. 9, 2016)

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.
12/366,280 02/05/2009 Larry John Verbowski MSH-732 7534
8131 7590 08/10/2016
MCKELLAR IP LAW, PLLC
784 SOUTH POSEYVILLE ROAD
MIDLAND, MI 48640
EXAMINER
YOON, SEAHEE
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
08/10/2016 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 LARRY JOHN VERBOWSKI
____________________

Appeal 2014-007241
Application 12/366,280
Technology Center 3700
____________________

Before CHARLES N. GREENHUT, LYNNE H. BROWNE, and
ERIC C. JESCHKE, Administrative Patent Judges.

BROWNE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Larry John Verbowski (Appellant) appeals under 35 U.S.C. § 134
from the rejection of claims 1–16. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.

Appeal 2014-007241
Application 12/366,280

2
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A tool assembly comprising:
a tool body having upper and lower sections, said body
including a threaded boss formed integrally with said lower
section;
a screw shaft threadably engaged in said boss and extending
between leading and trailing ends, said screw shaft including an
anvil at said leading end generally opposing said upper section
of said body and a wrench receiving portion at said trailing end;
and
a counter-torque tool perch extending from said lower
section of said body for applying a counter-rotational torque to
said body during use of said tool assembly.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Packer
Tsuyama
Yang
Pryor
Lii
US 2,699,190
US 3,947,011
US 4,691,907
US 5,385,324
US 5,626,263
Jan. 11, 1955
Mar. 30, 1976
Sept. 8, 1987
Jan. 31, 1995
May 6, 1997

REJECTIONS
I. Claims 1–5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Packer and Pryor.1

1 Although, the Examiner does not include claim 3 in the first statement of
this ground of rejection (Final Act. 2), claim 3 is rejected on the same
ground of rejection as claims 1, 2, 4, and 5. See Final Act. 5.
Appeal 2014-007241
Application 12/366,280

3
II. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Packer, Pryor, and Yang.
III. Claims 7–9, 11, 12, 15, and 16 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Packer and Tsuyama.
IV. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Packer, Tsuyama, and Lii.
V. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Packer, Tsuyama, and Pryor.2

DISCUSSION
Rejection I
The Examiner finds that Packer discloses all of the limitations of
independent claim 1, except for “a counter-torque tool perch and a counter-
rotational torque.” Final Act. 2. The Examiner further finds that Pryor
teaches “a tool assembly 10 (col.3 line 16) comprising a counter-torque tool
perch 26.” Id. at 3. Based on these findings, the Examiner determines that it
would have been obvious “to modify Packer to use a counter-torque tool
perch, as taught by Pryor et al, for the purpose of mounting or receiving
other desired elements on a tool assembly (Figs 5 and 7).” Id.
Appellant argues that “[a] careful reading of the Pryor reference,
column 3, lines 52 to 53 teaches component 26 as a ‘mounting portion’ and
does not state anything about counter-torque at all for that component.”
Appeal Br. 4.

2 Although the Examiner provides separate statements of the rejection of
claims 13 and 14 (see Final Act. 10, 11), these claims are rejected based on
the same ground of rejection.
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Application 12/366,280

4
Responding to this argument, the Examiner determines that “Pryor’s
component 26 (fig l) is clearly capable of performing the function of claimed
element.” Ans. 2. The Examiner reiterates this determination, stating
“[c]learly, the component 26 of Pryor (fig 1-2) is capable of applying a
counter-rotational torque (function/intended use of the claimed element, ‘a
counter-torque tool perch’).” Id. at 2–3. However, the Examiner does not
explain how Pryor’s mounting portion 26 applies “a counter-rotational
torque to said body” as required by claim 1. Appeal Br. 8. In other words,
the Examiner does not provide sufficient evidence or scientific reasoning to
establish the reasonableness of the Examiner’s belief that the functional
limitation is an inherent characteristic of the prior art. In re Rijckaert, 9 F.3d
1531, 1534 (Fed. Cir. 1993). Lacking such evidence or reasoning, the
Examiner’s determination is in error.
For this reason, we do not sustain the Examiner’s decision rejecting
independent claim 1, and claims 2–5, which depend therefrom.
Rejection II
The rejection of claim 6 relies upon the same erroneous determination
as the rejection of claim 1, discussed supra. Accordingly, we do not sustain
the Examiner’s decision rejecting claim 6.
Rejection III
Appellant argues claims 7–9, 11, 12, 15, and 16 together. See Appeal
Br. 6. We select independent claim 7 as the representative claim and claims
8, 9, 11, 12, 15, and 16 stand or fall with claim 7.
Appellant “takes the position that all of the arguments set forth above
for the defense of claim 1 are equally applicable in this rejection.” Id.
However, these arguments are directed to Pryor, a reference that is not relied
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Application 12/366,280

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upon to reject claim 7 or its dependent claims. See Appeal Br. 3–6. As
Appellant presents no arguments directed to the combined teachings of
Packer and Tsuyama (see, generally, Appeal Br.), we summarily sustain the
Examiner’s decision rejecting claim 7, and claims 8, 9, 11, 12, 15, and 16,
which fall therewith, as unpatentable over Packer and Tsuyama.
Rejection IV
Claim 10 depends from independent claim 7. Appellant does not
contest the rejection of claim 10. See, generally, Appeal Br. Accordingly,
we summarily sustain the Examiner’s decision rejecting claim 10 as
unpatentable over Packer, Tsuyama, and Lii.
Rejection V
Claims 13 and 14 depend from independent claim 7. Appellant argues
that “if an independent claim is non-obvious under 35 U.S. C. §103, then
any claims depending therefrom are non-obvious.” Appeal Br. 6, 7 (citing
In re Fine, 837 F.2d 1071 (Fed. Cir. 1988)). As we find no error in the
rejection of claim 7, Appellant’s argument is unconvincing. We sustain the
Examiner’s decision rejecting claims 13 and 14.

DECISION
The Examiner’s rejections of claims 1–6 are REVERSED.
The Examiner’s rejections of claims 7–16 are 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART