Ex Parte Wywialowski et al

Board of Patent Appeals and Interferences

Oct 27, 2009

10838614 (B.P.A.I. Oct. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRUCE F. WYWIALOWSKI and RICHARD URBAN
____________________

Appeal 2009-005848
Application 10/838,614
Technology Center 3700
____________________

Decided: October 27, 2009
____________________

Before: WILLIAM F. PATE, III, JOHN C. KERINS and
MICHAEL W. O'NEILL, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-4, 8-13 and 15-19. App. Br. 1,3.1 We have jurisdiction under 35 U.S.C.
§ 6(b).
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The claims are directed to a collation for transporting fasteners along
rails disposed within a magazine of a fastener driving tool and a system of
collations for supplying fasteners of at least two different lengths to a
fastener driving tool. Claim 1, reproduced below, is illustrative of the
claimed subject matter:

1. A collation for transporting fasteners along rails disposed
within a magazine of a fastener driving tool, comprising:

a plurality of substantially symmetrical sleeves for
supporting and carrying a plurality of fasteners through said
magazine, each of said plurality of sleeves having a front and a
predetermined length of between about ¼ and about 0.4 inch
and rail engaging means, each of said plurality of fasteners
having a predetermined fastener length of between about ¾ inch
and about 2 inches and a tip located at a predetermined position
from behind said front to about ¼ inch beyond said front in
order to reduce dive-back into said magazine and improve
guidance of said plurality of fasteners; each fastener having an
exposed neck having a length that is between about ¼ inch and
about 1½ inch;

said plurality of sleeves being connected together in a
serial array permitting the separation of a leading one of said
plurality of sleeves from remaining ones of said plurality of
serially arranged sleeves when a drive member of said fastener
driving tool drives a leading one of the plurality of fasteners
disposed within said leading one of said plurality of sleeves.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:

1 It is noted that claim 14 was cancelled by the amendment entered February
14, 2006.
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Haytayan US 4,106,618 Aug. 15, 1978
Gupta US 6,679,415 B1 Jan. 20, 2004

Claims 1, 3, 4, 8-13, and 15-19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Haytayan2. Ans. 3.
Claim 2 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Haytayan and Gupta. Ans. 4.

ISSUE
Initially, Appellants contend that it was improper for the Examiner to
rely upon Haytayan to reject the claims after mailing a notice of allowability
since Haytayan, having been previously considered by the Examiner is not a
“new” reference-–a requirement that Appellants contend is mandated by
MPEP §§ 706.04 and 1308.01. App. Br. 4. Sections 706.04 and 1308.01 of
the MPEP state that great care should be exercised in authorizing a rejection
after mailing a notice of allowability. The decision to do so is a matter of
discretion on the part of the primary examiner and is reviewable by petition
under 37 CFR § 1.181 and not by appeal to the Board of Patent Appeals and
Interferences. See In re Mindick, 371 F.2d 892, 894 (CCPA 1967).
Furthermore, the policy and purpose of the patent laws preclude the
applicability of any doctrine akin to the judicially-developed doctrine of “res
judicata” to bar the granting of patents on inventions that comply with the
statute. The same policy and purpose precludes reliance on any such
doctrine to force the granting of patents on inventions that do not comply

2 It is noted that claims 5-7 were cancelled by the amendment entered June
20, 2006.
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with the statute. The Patent Office must have the flexibility to reconsider and
correct prior decisions that it may find to have been in error. In re Craig, 411
F.2d 1333, (CCPA 1969); In re Borkowski, 505 F.2d 713 (CCPA 1974).
Regarding claim 15, Appellants contend that Haytayan is silent as to
whether the nails of different kinds may be usable with a single driving tool
or whether different types of tools are required to drive different types of
nails. App. Br. 5-6. In light of this contention we must determine whether
Appellants have established that the Examiner erred in concluding that the
subject matter of claim 15 would have been obvious to one having ordinary
skill in the art.
Regarding claim 2, Appellants contend that the Examiner erred by
finding that Haytayan discloses a plurality of substantially symmetrical
sleeves. App. Br. 9. Appellants also contend that the Examiner erred by
concluding that it would have been obvious to one of ordinary skill in the art
to provide fasteners having the claimed length and location relative to the
sleeve. App. Br. 10. Appellants additionally contend that the Examiner
failed to resolve the level of ordinary skill in the art. App. Br. 10. These
arguments are repeated regarding claim 1. App. Br. 10-12. Appellants also
contend that the Examiner has not provided a sufficient rationale for the
proposed combination of Haytayan and Gupta. App. Br. 9. Regarding claims
3, 4 and 8-13 Appellants repeat the argument that the claimed dimensions
for the length and location relative to the sleeve change the principle of
operation of Haytayan and amount to a difference in kind rather than degree.
App. Br. 3-15. In light of these contentions the issues presented are:
Have Appellants established that the Examiner erred by finding that
Haytayan discloses a plurality of substantially symmetrical sleeves?
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Have Appellants established that the Examiner erred by concluding
that it would have been obvious to one of ordinary skill in the art to provide
fasteners and sleeves having the specific dimensions and locations recited in
claims 1-4 and 8-13?
Have Appellants established that the Examiner erred by failing to
resolve the level of skill in the art?
Have Appellants established that the Examiner erred by failing to
articulate a sufficient rationale for incorporating the features of Gupta into
Haytayan?

FINDINGS OF FACT
1. Haytayan discloses a plurality of sleeves 4, 4B which are symmetrical
about a plane defined by the length of the strips and the length of the
fasteners. Col. 2, l. 65 – col. 3, l. 6; Figs. 1, 9.
2. In the embodiment depicted in figures 1-5, Haytayan suggests locating
the heads 30 of the nails 22 so that they engage the upper surfaces 12 of
sleeves 4. However, Haytayan also recognizes that the nail heads may be
spaced from the upper ends 12 of the sleeves 4. Col. 4, ll. 12-23.
3. In the embodiment depicted in figures 1-5, Haytayan claims that good
results are achieved for nails having a length on the order of two inches
and sleeves having a height of approximately one half inch. Col. 2, ll. 16-
21.
4. In the embodiment depicted in figures 9-11, Haytayan discloses
providing sleeves 4B having a tapered frusto-conical section 66 used to
locate the point 23 of the nails 22 wherein a portion of the shank 24 of
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the nails fits within the bore 64 of the sleeve and a portion of the shank
24 extends therefrom. Col. 6, ll. 18-26; figs. 9, 11.
5. In the embodiment depicted in figures 12 and 13, Haytayan discloses that
the sleeves 4B and the magazine having sides 40, 42 may be used to align
and deliver a different type of fasteners 22A to the tool. Col. 6, ll. 38-48;
figs. 12, 13.
6. Haytayan is silent regarding the details of the tool and the dimensions of
the fasteners, sleeves and magazine depicted in figures 9-13. Thus,
Haytayan does not disclose that a single tool can accommodate different
fasteners, e.g., fasteners having different neck lengths.
7. One of ordinary skill in the art of designing nail assemblies to provide
fasteners to pneumatically or hydraulically powered impact tools must
have a thorough understanding of the mechanical design and usage of the
magazines used to supply these fasteners and the tools used for driving
them. See Haytayan col. 1, l. 4 – col. 2, l. 21. One of ordinary skill in the
art must also have an understanding of metal or polymer fabrication
techniques for complex structures. See Haytayan col. 2, l. 68 – col. 3, l. 6.
Thus, based on this evidence present in Haytayan, the level of skill in the
art is high.
8. Gupta teaches that using a sleeve 12, in a collation strip 10, that has a
plurality of rail-engaging projections 42, 44 reduces frictional forces
generated between the collation strips and the rail of the magazine to
thereby facilitate smooth conveyance of the collation strips of fasteners
and discourage jamming. Col. 7, ll. 54-67; col. 8, l. 66 – col. 9, l. 12.

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PRINCIPLES OF LAW
“[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they
would be understood by one of ordinary skill in the art, taking into account
whatever enlightenment by way of definitions or otherwise that may be
afforded by the written description contained in applicant’s specification.”
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). During examination of a
patent application, pending claims are given their broadest reasonable
construction consistent with the specification. In re Prater, 415 F.2d 1393,
1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). The ordinary and customary meaning of a claim term
is the meaning that the term would have to a person of ordinary skill in the
art in question at the time of the invention. Phillips v. AWH Corp., 415 F.3d
1303, 1319 (Fed. Cir. 2005) (en banc).
If the claim preamble, when read in the context of the entire claim,
recites limitations of the claim, or, if the claim preamble is “necessary to
give life, meaning, and vitality” to the claim, then the claim preamble should
be construed as if in the balance of the claim. Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
“35 U.S.C. § 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
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factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407.

ANALYSIS
Regarding claim 15, the preamble calls for a system of collations for
supplying fasteners of at least two different lengths to a fastener driving tool.
Appellants contend that this limitation, although recited in the preamble,
gives meaning to the claim. Appellants contend that the claimed system
must be useable with a single driving tool. See App. Br. 5. Absent such a
construction, there would be no claimed relationship between the first and
second collations. Thus the limitation is necessary to give life, meaning, and
vitality to the claim. We therefore agree with Appellants’ proposed
construction.
We also agree with Appellants’ contention that Haytayan does not
disclose using two different fasteners in the same tool. Fact 6. More
specifically, Haytayan does not disclose that a particular tool or magazine
could accommodate fasteners having different, “first” and “second” neck
lengths. Thus, it amounts to speculation and conjecture to conclude that,
based on Haytayan, it would have been obvious to one of ordinary skill in
the art to use a single driving tool with both of the claimed first and second
collations. Since it is improper to rely upon speculation and conjecture to
support a conclusion of obviousness we are constrained to reverse the
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rejection of claim 15, along with dependent claims 16-19, as being
unpatentable over Haytayan.
Claims 1 and 2 do not require symmetry about any particular axis.
Although the Specification describes the benefits of symmetry about both a
horizontal and vertical axis (para. [0019]) the term “symmetry” is not
explicitly defined in the Specification to mandate symmetry about both a
horizontal and vertical axis. Appellants have chosen to employ language in
the claims broader that the language used to describe the preferred
embodiment and it would be improper to import limitations from the
Specification into the claims. See Superguide Corp. v. DirecTV Enterprises,
Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment.”). Thus, the symmetry of Haytayan’s sleeve
about a vertical plane is sufficient to meet the claim limitation. See Fact 1.
Haytayan’s description of nails “on the order of” two inches and
sleeves “approximately” one-half inch would have suggested to one of
ordinary skill in the art that the particular dimensions of the nails and sleeve
are not critical to practicing Haytayan’s invention. See Fact 3. Haytayan also
recognizes that the nails need not be confined to any specific location
relative to the sleeves. See Facts 2 and 4. From this, one of ordinary skill in
the art would have understood that the use of Haytayan’s design is not
confined to nails and sleeves having any particular dimensions or relative
positioning. It is not necessary that Haytayan list the dimension of every
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specific fastener or sleeve with which the invention may be practiced in
order to render those particular combinations obvious. What a reference
teaches or suggests must be examined in the context of the knowledge, skill,
and reasoning ability of a skilled artisan. What a reference teaches a person
of ordinary skill is not limited to what a reference specifically “talks about”
or what is specifically “mentioned” or “written” in the reference. Syntex
(U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). Selecting
a particular dimension of fastener for use with Haytayan’s sleeves, a
particular sleeve length and a particular location of the fastener with respect
to the sleeve are details of construction that could be determined by one of
ordinary skill in the art. These details amount to only a minor difference
between the prior art and the claimed inventions and do not patentably
distinguish the claimed invention from the prior art. See In re Rice, 341 F.2d
309, 314 (CCPA 1965) (Minor differences between the prior art and a
claimed device may be a matter of design choice absent evidence to the
contrary). Appellants have not provided any support for the contention that
changes in these dimensions of the Haytayan device would render
Haytayan’s device inoperable. App. Br. 11.
While it is always preferable for the factfinder to specify the level of
skill it has found to apply to the invention at issue, the absence of specific
findings on the level of skill in the art does not give rise to reversible error
where the prior art itself reflects an appropriate level and a need for
testimony is not shown. Okajima v. Bourdeau 261 F.3d 1350, 1355 (Fed.
Cir. 2001) (Citing Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
F.2d 158, 163 (Fed.Cir.1985)). Haytayan adequately demonstrates the level
of skill in the art. Fact 7.
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The cited references themselves form part of the factual record upon
which the Examiner relies to reach a conclusion of obviousness. That the
Examiner did not reiterate the advantages of Gupta’s design does not,
without more, suffice to establish that the Examiner erred in concluding that
the claimed subject matter would have been obvious to one having ordinary
skill in the art. Gupta explicitly articulates the advantages of using
protrusions on the sleeves to facilitate conveyance. See Fact 8. This teaching
provides sufficient rationale to support a conclusion that it would have been
obvious to incorporate Gupta’s protrusions into Haytayan’s sleeves.

CONCLUSIONS OF LAW
On the record before us, Appellants have established that the
Examiner erred by concluding that the subject matter of claim 15, and
therefore claims 16-19, would have been obvious to one having ordinary
skill in the art. Appellants have failed to establish that the Examiner erred by
finding that Haytayan discloses a plurality of substantially symmetrical
sleeves, or by concluding that it would have been obvious to one of ordinary
skill in the art to provide fasteners and sleeves having the specific
dimensions and locations recited in claims 1-4 and 8-13. Appellants have
also failed to establish that the Examiner erred in reaching a conclusion of
obviousness because the Examiner failed to resolve the level of skill in the
art, or because the Examiner failed to articulate a sufficient rationale for
incorporating the features of Gupta into Haytayan.

DECISION
For the above reasons, the Examiner’s rejection of claims 15-19 under
35 U.S.C. § 103(a) as being unpatentable over Haytayan is reversed. The
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Examiner’s rejection of claims 1, 3, 4, 8-13 under 35 U.S.C. § 103(a) as
being unpatentable over Haytayan is affirmed. The Examiner’s rejection of
claim 2 under 35 U.S.C. § 103(a) as being unpatentable over Haytayan and
Gupta is also 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) (2007).

AFFIRMED-IN-PART

Vsh

LISA M. SOLTIS
ILLINOIS TOOL WORKS INC.
3600 WEST LAKE AVENUE
GLENVIEW IL 60025