Ex Parte Whitlock et al

Patent Trial and Appeal Board

Apr 28, 2017

13434835 (P.T.A.B. Apr. 28, 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.
13/434,835 03/29/2012 Richard P. Whitlock 11-0245-US-NP 4089
122219 7590 05/02/2017
Miller, Matthias & Hull LLP/ The Boeing Company
One North Franklin, Suite 2350
Chicago, IL 60606
EXAMINER
SAETHER, FLEMMING
ART UNIT PAPER NUMBER
3677
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
bmatthias @ millermatthiashull. com
patentadmin @ boeing. com
mloye @ millermatthiashull. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD P. WHITLOCK,
RANDALL A. ROGERS, PETER A. CORONADO, and
SEAN D. MORDEN
Appeal 2015-006176
Application 13/434,835
Technology Center 3600
Before: STEVEN D.A. McCARTHY, CHARLES N. GREENHUT, and
PAUL J. KORNICZKY, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
10—28 and 30—34. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
Appeal 2015-006176
Application 13/434,835
CLAIMED SUBJECT MATTER
The claims are directed to fastener systems. Spec., Title. Claim 10,
reproduced below, is illustrative of the claimed subject matter:
10. A fastener comprising:
a fastener head having an upper surface with multiple
mechanical interlocking sites, each interlocking site including a
protrusion extending upwards from the upper surface and having
an undercut portion proximate to the upper surface; and
a dry dielectric layer covering the upper surface of the
head, the dielectric layer mechanically interlocked with the
interlocking sites.
REJECTIONS
Claims 10, 11, 17, and 34 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Costuma (US 1,296,165; iss. Mar. 4, 1919).
Claims 20-26 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Morooka (US 4,815,920; iss. Mar. 28, 1989).
Claims 20, 27, 28, and 30 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Fukushima (US 5,193,960; iss. Mar. 16, 1993).
Claims 10, 12, 18, and 19 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kamino (US 7,740,434 B2; iss. June 22, 2010) and
Berecz (US 4,681,497; iss. July 21, 1987).
Claims 13—17 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Costuma and Kay (US 3,618,444; iss. Nov. 9, 1971).
Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fukushima and Luthje (US 7,350,419 B2; iss. Apr. 1, 2008).1
1 We understand the Examiner’s reference to anticipation to be a
typographical error.
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Application 13/434,835
Claims 32 and 33 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Kamino, Berecz, and Bessho (US 2012/0074257 Al; pub.
Mar. 29, 2012).
OPINION
At the outset, Appellants raise two issues that Appellants argue
constitute common in the Examiner’s rejections. App. Br. 7—8. First,
Appellants contend that the Examiner has neglected the difference between a
coating and a seal. App. Br. 7. Appellants argue that the Specification
draws a clear distinction between a coating and a seal. App. Br. 7 (citing
Spec. para. 55). However, although the Specification employs the terms seal
and coating, and provides examples, we are not informed of anything in
Appellants’ disclosure limiting the meaning of these terms or differentiating
them from the definitions provided by the Examiner. There is no express
definition in the cited portion of the Specification, nor is there any language
clearly disavowing any particular subject matter or demonstrating that the
terms are used in a manner inconsistent with the ordinary meanings made of
record by the Examiner. See Ans. 5—6 (citing www.thefreedictiona[r]y.com).
Where, as here, there is no evidence that one skilled in the pertinent art
would understand the terms differently, there is nothing wrong with
consulting a general dictionary to assist in interpreting claim terms. See In
re Trans Texas Holdings Corp., 498 F. 3d 1290, 1299 (Fed. Cir.
2007)(citations omitted). Appellants have argued, but not submitted any
rebuttal evidence to demonstrate, that one skilled in the art would understand
the terms seal and coating differently in the field of fastener parts. See
Reply Br. 2. Based on the Examiner’s definition, the only definition of
record, we, like the Examiner, understand the terms to carry different
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Application 13/434,835
meanings. However, this does not preclude a particular structure from being
both a coating and a seal. A coating may or may not form a seal, and a seal
may or may not be formed by a coating. The terms are neither synonymous
nor mutually exclusive. Where both terms are used in a claim it may,
depending on the specific language used, connote the presence of two
distinct structures. We must, as we do below, address this language on a
claim-by-claim basis.
Appellants also argue a common error is the Examiner’s neglect of the
critical differences between a seal and a coating; and the alleged passing off
of these features as obvious design choices. App. Br. 8. However, in
considering each rejection individually, we are not apprised of how the
distinctions between seals and coatings were ignored by the Examiner. Nor
are we informed of any specific instances where the Examiner’s rejection
relied on “design choice” without a clear articulation of reasoning supported
by rational factual underpinnings in support of the rejection. We, like the
Examiner, discuss each separately argued claim and rejection below, in the
order presented by Appellants, which differs from the order set forth by the
Examiner. See Ans. 6. The rejections and claims not argued are presumed
to be argued based only on dependency.
Claims 12 and 18: Obviousness based on Kamino and Berecz
Appellants raise two issues regarding this rejection. The first is
whether Berecz’s bolt shaft 64 is reasonably regarded as “coated”2 with a
2 Both Appellants and the Examiner discuss the meaning of the term
“coating” without drawing any distinctions between the term “coating” and
the actual limitation recited “coated.” We understand “coated” to be the
adjective form of the noun form of “coating” defined in the source cited by
the Examiner.
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Application 13/434,835
dry resin, i.e., Berecz’s sheath 74. Berecz illustrates and describes an
“encapsulated” bolt 60 having a shank 64 provided with a composite
“sheath” 74. Appellants correctly point out there is no indication how the
material forming the encapsulating sheath 74 is deposited about the bolt
shank 64. App. Br. 9. Nevertheless, under the definition provided by the
Examiner discussed above, the only definition of record, we see no reason to
require, and Appellants do not apprise us of a requirement for, any particular
method of application to reasonably regard the fastener shaft of apparatus
claim 12 as being “coated.” The fact that the bolt 60 has a “covering layer”
encapsulating it suffices, under the definition of record, to render the bolt
shaft reasonably regarded as “coated.” See Ans. 6—7.
The second issue raised by Appellants concerns the Examiner’s
interpretation of Berecz’s chopped fibers as “particles.” Again, the
Examiner’s definition of the term “particles” is the only evidence of record.
Ans. 7. Appellants do not provide any rebuttal evidence. Rather, Appellants
argue with regard to this issue and the coating issue discussed above: “The
issue is whether the specification provides support for a claimed coating that
includes a sleeve, and claimed particles that include fibers.” Reply Br. 2.
This is incorrect. The claims define the subject matter for which patent
protection is sought. The Specification must describe the best mode of
invention but does not necessarily describe all modes of invention. Thus,
there is nothing wrong with construing a claim to cover embodiments of the
invention not expressly discussed in the Specification. See In re American
Academy of Science Tech Center, 367 F. 3d 1359, 1369 (Fed. Cir. 2004)
(“We have cautioned against reading limitations into a claim from the
preferred embodiment described in the specification, even if it is the only
embodiment described, absent clear disclaimer in the specification.”). The
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Application 13/434,835
PTO does not import limitations from the Specification into the claims in
order to confine the claims to that for which the Specification provides
“support” under 35 U.S.C. § 112, first paragraph. Thus, in considering the
Examiner’s rejection under § 103(a) the issue is not, as Appellants allege,
whether Appellants’ Specification provides support for particles that include
fibers. See Reply Br. 2. The issue is whether under the broadest reasonable
interpretation in light of the Specification, the recited term “particles”
includes Berecz’s chopped fibers. As the Examiner explains (Ans. 7),
Berecz’s chopped fibers meet the uncontroverted definition of particles
provided by the Examiner. Although neither the Examiner nor the
Appellants provide a definition of “fibers,” we understand particles to be a
more generic term than fibers, i.e., fibers are particles having an aspect ratio
in which the length is significantly greater than the other two dimensions.
Chopping the fibers, as done in Berecz, presumably may make their
dimensions more uniform. Appellants do not provide any explanation to
inform us of any specific characteristics associated with the term “particles”
that would preclude Berecz’s chopped fibers from being considered as such.
Thus, we agree with the Examiner that the claim term “particles” covers
Berecz’s chopped fibers.
Accordingly, we sustain the Examiner’s rejection of claims 12 and 18
as being unpatentable over Kamino and Berecz.
Claims 10: Obviousness based on Kamino and Berecz
In rejecting claim 10, the Examiner characterizes Kamino’s thread 7
as “a protrusion” included at “interlocking sites” and “having an undercut
portion.” Appellants take issue with each of these characterizations of
Kamino’s thread 7. With regard to the “interlocking sites” the Examiner
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Application 13/434,835
correctly points out that Appellants’ argument that “thread 7. . . does not
interlock with the dielectric layer 5” is not commensurate with the scope of
claim 10. Ans. 8; see also Reply Br. 3; App. Br. 10. It is the interlocking
sites with which the dielectric layer is required to interlock, not the
protrusions themselves, which are only required to be included at those sites.
We are not apprised, and Appellants do not offer any explanation, as to why
the use of a thread does not constitute mechanical interlocking at the sites
where the passes through and stiches together the head section 3, the
dielectric layer 5, and the conductive layer 6. See Kamino col. 4,11. 42 49;
Ans. 8.
The Examiner provides the only evidence of record regarding the
definitions of the terms “protrusion” and “undercut.” Ans. 8. Appellants do
not appear to provide any arguments to rebut, and in any case we agree, that
each thread segment at a respective hole 3a reasonably constitutes a
“protrusion.” See App. Br 10; Reply Br. 3. Appellants repeat the argument
that the thread 7 does not have undercut portions (Reply Br. 3) but do not
provide any response to the Examiner’s position that the uppermost
horizontal portions of Kamino’s thread loops (see e.g., Kamino Fig. 3) form
an “undercut” according to the ordinary definition of that term. The
Examiner’s position in this regard stands uncontroverted. See 37 C.F.R. §
41.37(c)(l)(iv)(“The arguments shall explain why the examiner erred as to
each ground of rejection contested by appellant. Except as provided for in
§§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the
appeal brief will be refused consideration by the Board for purposes of the
present appeal.”)
Accordingly, we sustain the Examiner’s rejection of claim 10 as being
unpatentable over Kamino and Berecz.
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Claims 10: Anticipation based on Costuma
In arguing the rejection of claim 10 based on Costuma, Appellants
characterize the upper surface of the structure the Examiner regards as the
recited “protrusion ” as the recited “upper surface” of the fastener head as
opposed to the actual upper surface relied upon by the Examiner. Cf App.
Br. 11 with Ans. 9. Thus, the arguments in the Appeal Brief are not germane
to the analysis set forth by the Examiner. In the Reply Brief, Appellants
group claim 10 with claim 34 and argue only an entirely different issue:
“Costuma does not describe a plurality of mechanical interlocking sites that
extend from an upper surface of a fastener head.” Reply Br. 3. First, this
argument is not commensurate with the language of claim 10 which requires
“multiple mechanical interlocking sites” and “each interlocking site
including a protrusion.” There is no requirement for the sites to extend from
an upper surface. We are not apprised of any reason why the annular groove
cut under the head portion a' does not contain multiple “interlocking sites,”
nor any reason why the portions thereof labeled by the Examiner (Ans. 9) do
not constitute a “protrusion” at each site. We are also not apprised of any
reason why Appellants’ new arguments should not be considered untimely
under 37 C.F.R. § 41.41(b)(2)(“Any argument raised in the reply brief which
was not raised in the appeal brief, or is not responsive to an argument raised
in the examiner's answer, including any designated new ground of rejection,
will not be considered by the Board for purposes of the present appeal,
unless good cause is shown.”).
We sustain the Examiner’s anticipation rejection of claim 10 based on
Costuma.
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Claim 34: Anticipation based on Costuma
With regard to claim 34, Appellants challenge the Examiner’s finding
that Costuma’s wax layer is “configured for EME protection.” App. Br. 11—
12. Appellants contend that there is no evidence that wax is appropriate for
EME protection. App. Br. 12. However, the Examiner reasonably points
out that wax has the same dielectric content as the materials described in
Appellants’ Specification (para. 33), and, therefore, would be expected to
perform similarly with regard to its dielectric characteristics. Final Act. 3;
Ans. 9. It is well-settled that reciting a latent property or intended use in a
structural claim will not distinguish the claimed subject matter from a prior-
art device having the same structure, even if the prior art disclosure does not
mention the particular use or property in question. See In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990). Where, as here, the Examiner articulates a
sound basis for the belief that a prior art structure possesses the recited
characteristics, the Examiner may shift the burden to the applicant to
demonstrate otherwise. Id. Appellants have not provided any technical
reasoning or evidence to apprise us of error in the Examiner’s finding that,
due to its dielectric properties, the layer of wax on Costuma’s bolt is
inherently configured for EME protection. Appellants only point out that
Costuma does not expressly discuss EME or wax’s dielectric nature (App.
Br. 11—12), make the incorrect assertion that the Examiner ignored the
evidence in the Specification (Reply Br. 3 (citing Spec. para. 33)), and
further argue that Costuma would not be appropriate for lightening (Reply
Br. 3)—a feature not recited in the language of claim 34.
We sustain the Examiner’s rejection of claim 34 as anticipated based
on Costuma.
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Claim 14: Obviousness based on Costuma and Kay
In arguing claim 14 Appellants mischaracterize the Examiner’s
rejection as lacking a supporting explanation regarding the obviousness of
including interlocking sites that are arranged as spokes in a radial pattern.
See App. Br. 12; Final Act. 5; Ans. 10. The Examiner reiterates, and it is
uncontested that, Kay discloses interlocking sites and a plurality of radial
arms 44 arranged as spokes. Ans. 10. The Examiner correctly points out
that both Costuma and Kay address the problem of interlocking a layer on
the head of a fastener. Ans. 10. The Examiner correctly concludes that
selecting from one of these known alternatives achieves predictable results
and would have been obvious to one skilled in the art. Final Act. 5; Ans. 10.
Appellants assert that Paragraph 37 of the Specification establishes the
criticality of the interlocking sites. App. Br. 13; Reply Br. 4. This may be
accurate, but it is the criticality of the spokes that are in question here.
Appellants’ arguments do not rebut the Examiner’s determination that using
a spoke pattern involves no more than choosing from known alternatives.
Arguments which merely point out that Kay lacks features for which
Costuma was cited (see Reply Br. 4) are of little probative value. “Non­
obviousness cannot be shown by attacking references individually when the
rejection is predicated upon the teachings of a combination of
references.” See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986)(citation omitted).
We sustain the Examiner’s rejection of claim 13 based on Costuma
and Kay.
Claim 20: Anticipation based on Morooka
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In arguing the rejection based on Morooka Appellants reiterate the
arguments discussed above regarding the distinction between a seal and a
coating. App. Br. 14. Again, Appellants allege that “[t]he specification
makes it quite clear that a seal is structurally different than a coating”
without pointing to any express definition in the Specification or elsewhere.
As discussed above we do not disagree that these terms carry different
meanings. However, as also discussed above, the fact that a structure may
be reasonably regarded as a coating does not necessarily preclude that
structure from being a seal and vice versa: a coating may form a seal and a
seal may be formed by a coating. Where, as here with regard to claim 20, the
claim calls for both a seal and a coating, and the language of the claim
indicates that these refer to two separate structures it would, in many cases,
be unreasonable for the Examiner to rely on the same structure to meet both
limitations. However, that is not what the Examiner has done here in
rejecting claim 20. Ans. 11. As the Examiner explains, the Examiner
regards the forward portion 8 (having dimension C) of the nylon resin 5 as
the seal and the tapered portion (at 3 having dimension D) of the nylon resin
as the coating. Ans. 11. The entirety of Appellants’ arguments pertaining to
the Examiner’s analysis in this regard is: “Morooka clearly shows the same
nylon resin cap 6 covering [sic] both locations C and D.” Reply Br. 5. This
argument does not offer any reasoning or explanation as to why it is
unreasonable to regard the cited portions as the respective seal and coating
according to the definitions provided by the Examiner and discussed above.
See Ans. 5—6. The forward portion 8 is sufficiently tight so that it prevents
separation (Morooka col. 4,11. 49-50) and seals the metallic nut so as to
prevent rust. The fact that the forward portion 8 closes off the nut suffices to
render it reasonably regarded as a “seal.” The fact that the immediately
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rearward portion (at 3 having dimension D) of the nylon resin 5 overlies the
tapered portion 3 suffices to render it reasonably regarded as a “coating.”
Appellants do not apprise us, and we are unaware, of any definitions or
reasons why one portion of a unitary structure, such as Morooka’s nylon
resin 5, cannot reasonably be regarded as a “seal” while regarding a different
portion of that structure as a “coating.” See Ans. 11—12.
Appellants also argue with regard to this rejection that the Examiner
ignores the characteristic of the seal and coating indicating that they have “a
thickness and composition for inhibiting lightening current.” App. Br. 14.
However, this is not the case. Although the Examiner does, correctly,
consider this limitation to relate to the intended use of the claimed part, the
Examiner does not ignore this limitations’ influence on the scope of the
claimed subject matter. Rather, the Examiner correctly points out that no
specific limits are placed either in the claim, or by implication in the
Specification, as to either how much current or how much inhibiting of
current would suffice to satisfy the claim. Thus, a thickness and
composition sufficient to inhibit any lightening current would suffice to
satisfy the requirements of claim 20. By pointing out the dielectric nature of
nylon, the Examiner articulated a sound basis for the belief that the relied on
portions of Morooka’s nylon resin would inherently inhibit at least some,
albeit probably limited, amount of lightning current. Ans. 12 (citing MPEP
§ 2114). As discussed above, this shifted the burden to Appellants to
demonstrate why that is not necessarily the case. See In re Spada, supra.;
see also In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In
response, however, Appellants again merely point out that there is no
express discussion in Morooka regarding inhibiting lightening current and
incorrectly allege the Examiner ignores the limitation. Reply Br. 15. These
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arguments do little, if anything, to apprise us of error in the Examiner’s
findings.
Accordingly, we sustain the anticipation rejection of claim 20 based
on Morooka.
Claim 20: Anticipation based on Fukushima
Regarding the anticipation rejection of claim 20 based on Fukushima,
Appellants correctly argue, “FIG. 2 clearly shows the packing member
covering the entire aperture of the washer 11. Coverage is not partial.” App.
Br. 15. The Examiner states, “this argument is not fully understood because
it is clear from the drawings of Fukushima that there remains an opening
within the packing member for receiving the bolt as seen in each of Figs. 1
and 3.” Ans. 12. However, in rejecting claim 20 based on Fukushima, the
Examiner relied on washer 11 as the recited “body having a central
opening.” Final Act. 4. Therefore, it must be the opening of the washer 11,
as opposed to the packing member 12, that the dielectric seal is “partially
covering” in order to satisfy the language of claim 20 under the Examiner’s
interpretation. Reply Br. 5—6. As the Examiner makes no assertion that this
is the case, the Examiner’s anticipation rejection of claim 20 based on
Fukushima cannot be sustained on the grounds set forth by the Examiner.
Claims 32 and 33: Obviousness based on Kamino, Berecz, and Bessho
Although neither Appellants nor the Examiner appear to mention it,
we are compelled to point out that claim 32 is drafted in Markush format.
See MPEP 2173.05(h). Only one element of a Markush group need be
shown in the prior art for that group as a whole to be considered to be
known, used or described in the prior art for purposes of an obviousness
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analysis. See In re Skoll, 523 F.2d 1392, 1397 (CCPA 1975). Nevertheless,
for the sake of completeness, we address each issue raised by Appellants in
arguing claims 32 and 33.
We have addressed above the arguments regarding the first two
limitations, pertaining to the “electrically conductive particles” and “an
interlocked dielectric cover.” Appellants further argue Kamino lacks an
“inner dielectric seal on a proximal location of a fastener head” and the
terms “proximal” and “distal” make no sense in the context of Bessho.
Paragraph 50 of Appellants’ Specification expressly defines the terms
proximal and distal: “The terms ‘proximal’ and ‘distal’ refer to the distance
from the stack 800. For instance, the proximal location of the nut 820 is
closer to the stack 800 than the distal location.” The respective locations of
Bessho’s cap 30 and washer 28, and Kamino’s layer 5a, as identified by the
Examiner (Final Act. 6), are consistent with this express definition. Ans.
13-14, 15.
Lastly, the Examiner correctly points out that Appellants’ argument
that the sealant (34) of Bessho is the very thing the instant invention looks to
avoid (App. Br. 17), does not necessarily mean that the claims as currently
presented by Appellants are so narrowly drawn so as to avoid that subject
matter. The claims define the invention for which protection is sought and
under § 103(a), while it is not inappropriate to consider the objectives,
ultimately, “patentability is judged on the claims of the invention.” Ans. 15.
DECISION
The rejection of claims 10, 11, 17, and 34 under 35 U.S.C. § 102(b) as
being anticipated by Costuma is affirmed.
The rejection of claims 20-26 under 35 U.S.C. § 102(b) as being
anticipated by Morooka is affirmed.
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The rejection of claims 20, 27, 28, and 30 under 35 U.S.C. § 102(b) as
being anticipated by Fukushima is reversed.
The rejection of claims 10, 12, 18, and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Kamino and Berecz is affirmed.
The rejection of claims 13—17 and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Costuma and Kay is affirmed.
The rejection of claims 31 under 35 U.S.C. § 103(a) as being
unpatentable over Fukushima and Luthje is affirmed.
The rejection of claims 32 and 33 under 35 U.S.C. § 103(a) as being
unpatentable over Kamino, Berecz, and Bessho 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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