Ex Parte Whitmer et al

Patent Trial and Appeal Board

Dec 21, 2018

14174432 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/174,432 02/06/2014 Herbert W. Whitmer
21888 7590 12/26/2018
THOMPSON COBURN LLP
ONE US BANK PLAZA
SUITE 3500
ST LOUIS, MO 63101
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.
56717-127849 7984
EXAMINER
SEIF, DARIUSH
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
IPDOCKET@THOMPSONCOBURN.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HERBERT W. WHITMER, ROBERT J. CONNER,
and JAMES V. MARTIN
Appeal2018-004819 1
Application 14/174,432
Technology Center 3700
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Herbert W. Whitmer et al. ("Appellants") appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 12-15.2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 Appellants' Appeal Brief indicates that Rhino Tool Company is the real
party in interest. Appeal Br. 2.
2 Claims 1-11 are canceled. Appeal Br. 9 (Claims App.); see also Non-Final
Act. 2 (dated June 15, 2017).
Appeal 2018-004819
Application 14/174,432
CLAIMED SUBJECT MATTER
The claims are directed to a method of using a post driver guide collet.
Sole independent claim 12 is reproduced below:
12. A method of driving a post comprising:
inserting a post partially into a post driver, the post driver
comprising a main body having a cavity and guide collet attached
to an end of the main body, the guide collet comprising a
plurality of parts that collectively form a post opening, the
insertion including passing an end of the post through the post
opening of the guide collet with the plurality of parts of the guide
collet assembled to form the guide collet with the post opening
and into the cavity in a manner such that post extends through
the post opening;
removing the post from the post driver by detaching the
guide collet from the main body and separating the parts of the
guide collet such that the removal of the post occurs without
passing the end of the post through the opening of the guide
collet.
Appeal Br. 9 (Claims App.).
REFERENCES RELIED ON BY THE EXAMINER
Allen
Marchant
us 2,108,032
AU 2010100106 A4
REJECTION
Feb. 15, 1938
Mar. 4, 2010
Claims 12-15 are rejected under 35 U.S.C. § 103 as unpatentable over
Marchant and Allen.
OPINION
The Examiner finds that Marchant discloses a post driver with a one-
piece guide collet and proposes to make the guide collet multi-part based on
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Application 14/174,432
the teachings of Allen. Non-Final Act. 3. The Examiner reasons that a
multi-part (separable) collet would eliminate the need for a locking device
and "would allow removal of a mushroomed post ('working implement')
without passing the end of the post through the opening of the guide collet."
Id. at 4.
Appellants argue that because Allen's separable collet is specifically
designed for a tool that already has collar 23 that is bigger than the opening
in the collet, one of ordinary skill in the art would not look to Allen to
improve a method of inserting a post into a guide collet that is connected to a
post driver. Appeal Br. 4--5.
The Examiner responds that "Marchant is relied upon for the post
inserting step," and Allen is relied upon only for teaching a multi-part guide
collet, which "would be suitable to hold and guide slender, cylindrical
shaped posts." Ans. 3.
Appellants reply that the Examiner fails to consider the claims and the
cited references in their entirety. Reply Br. 3. Appellants argue that the
Examiner's response does not "address why the references would be
combined." Id.
Appellants recognized a problem with mushrooming occurring after
the post has been inserted through the collet opening, and address this
problem by using a multi-part guide collet that can be separated to release
the mushroomed head, but still enables a post to be slid into the collet
opening in the assembled state. Marchant does not identify a problem with
mushrooming occurring during post driving that prevents the post from
being removed. Indeed, given the configuration of Marchant's guide sleeve
3 0 ( coll et) as a single piece, it is not apparent that if mushrooming were to
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Application 14/174,432
occur it would prevent the post from being removed. Although Allen
discloses a multi-part separable collet to improve removal of a tool, Allen's
tool 22 has an oversized collar 23 that is part of the tool design so that collar
23 abuts the collet 24 at the rear of the collet, and together with cooperating
front surfaces of tool 22 and collet 24 limits axial movement of tool 22.
Allen, p.1, col. 2, 11. 6-17; Fig. 1; see also Appeal Br. 4--5. In other words,
Allen's collar 23 is mushroomed before it is ever used. Given that the
Examiner has not established that a mushroomed post occurs in Marchant
and given that Allen's oversized collar 23 ("mushroomed post") already
exists prior to insertion of the post, allowing "removal of a mushroomed
post" is an insufficient reason to modify Marchant. That is, Allen only has a
separable collet 24 because it is needed to remove and insert a tool having
collar 23 (mushroomed post), and without a mushroomed post there is no
need for a removable collar. Accordingly, we agree with Appellants that the
Examiner has not adequately explained why it would have been obvious to a
skilled artisan to modify Marchant to include a multi-part collet. Although
the Examiner found that Allen teaches a multi-part collet, this teaching,
alone, is not a sufficient reason to modify Marchant. The mere fact that
independently, known elements can be combined is not, in itself, a reason to
combine them. Rather, an obviousness rejection further must explain the
reasoning by which those findings support the Examiner's conclusion of
obviousness. In this case, the Examiner does not provide an adequate reason
as to why it would have been obvious to a person of ordinary skill in the art
to modify Marchant to have a multi-part collet. Rather, the Examiner's
rationale for the modification, i.e., "it would allow removal of a
mushroomed post ('working implement') without passing the end of the post
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Appeal 2018-004819
Application 14/174,432
through the opening of the guide collet," appears to be a restatement of
Appellants' stated advantage. Non-Final Act. 4, cf Spec. ,r 25.
The Examiner also states that the proposed modification also "would
preclude an independent manipulation of a locking device, such as lever 48"
of Marchant. Non-Final Act. 4. This additional reason is insufficient,
however, because Marchant uses lever arm 48 to "advantageously allow for
the guide sleeve 30 to be reoriented at various angles relative to the body 12
without requiring the driver 10 to be removed from the post prior to
reorientation." Marchant, 6:26-28. The Examiner's rationale does not
provide any apparent benefit to Marchant and may instead eliminate one.
Given that mushrooming has not been shown to occur in Marchant
and given that preventing independent manipulation of Marchant's lever 48
would appear to reduce capabilities of Marchant's device without an
apparent benefit, in view of the prior art as a whole, the Examiner has not
provided sufficient technical reasoning showing that the proposed
modification would have been obvious to a person of ordinary skill in the
art. We therefore conclude that the Examiner's reasoning for having a
separable multi-part collet is not supported by a rational underpinning, and,
therefore, we reverse the Examiner's rejection of independent claim 12 and
claims 13-15 depending therefrom as being unpatentable over Marchant and
Allen.
DECISION
The Examiner's decision to reject claims 12-15 is reversed.
REVERSED
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