Ex Parte Wywialowski et al

Patent Trial and Appeal Board

Jul 31, 2014

12761602 (P.T.A.B. Jul. 31, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BRUCE F. WYWIALOWSKI and RICHARD URBAN
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Appeal 2012-006249
Application 12/761,602
Technology Center 3700
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Before EDWARD A. BROWN, MICHAEL L. HOELTER, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Bruce F. Wywialowski and Richard Urban (Appellants) appeal under
35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–20, which
are all the pending claims. Appeal Br. 2. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b). An oral hearing was held on July 17, 2014.
We REVERSE.

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Application 12/761,602

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CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to collations for delivering
fasteners to a fastener driving tool, and particularly to collations for holding
fasteners of various fastener lengths. See, e.g., Spec. ¶¶ 2–6. Claims 1, 10,
and 16 are independent. Claim 1, reproduced below, is illustrative of the
subject matter on appeal.
1. A collation for transporting fasteners along rails disposed
within a magazine of a fastener driving tool, comprising:
a plurality of sleeves for supporting and carrying a
plurality of fasteners through said magazine, each of said
plurality of sleeves having a front and a rear with a
predetermined length therebetween 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;
wherein said sleeves are substantially symmetrical about
a plane bisecting said predetermined length.

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Haytayan US 4,106,618 Aug. 15, 1978
Gupta (Gupta ’415) US 6,679,415 B1 Jan. 20, 2004
Gupta (Gupta ’231) US 6,814,231 B2 Nov. 9, 2004

REJECTIONS
The following rejections are before us for review:
I. Claims 1–9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haytayan, Gupta ’231, and Gupta ’415.
II. Claims 10–20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haytayan and Gupta ’415.

ANALYSIS
Rejection I – Claims 1–9 as unpatentable
over Haytayan, Gupta ’231, and Gupta ’415
Appellants argue the rejection of claims 1–9 together. See Appeal
Br. 5–9. The Examiner found that Haytayan discloses many of the structural
elements recited in independent claim 1. Ans. 4–5 (citing Haytayan, Figs. 1,
9). The Examiner also concluded that “routine skill in the art” and the
combined teachings of Haytayan and Gupta ’231 collectively render obvious
the specific dimensions recited in the claim. Id. at 5. However, the
Examiner acknowledged that Haytayan, presumably as modified with the
teachings from asserted routine skill in the art and Gupta ’231, “lacks
specific teaching of the sleeves being substantially symmetrical about a
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plane bisecting the predetermined length” between a front and a rear of each
sleeve, as also recited in independent claim 1. Id.
Next, the Examiner found that Gupta ’415 discloses a “collation [that]
is substantially symmetrical about both horizontally and vertically
[extending planes], which encompass the plane bisecting the length of the
sleeves.” Ans. 5 (citing Gupta ’415, col. 6, ll. 12–14). The Examiner then
concluded that “it would have been obvious to one skilled in the art . . . at
the time of the invention to modify Haytayan [again, presumably as
modified with the teachings from asserted routine skill in the art and
Gupta ’231, as discussed supra] by provid[ing] the sleeves substantially
symmetrical about a plane bisecting the predetermined length for the
purpose of minimizing ‘hung-up’ [sic] or from becoming jammed.” Id. at
5–6 (emphasis added).
Appellants argue, inter alia, that “the Examiner’s justification for the
alleged obviousness” of independent claim 1, namely that Gupta ’415
“teaches making sleeves substantially symmetrical about a plane bisecting
the length for ‘the purpose of minimizing “hung-up” [sic] or from becoming
jammed,’ . . . is inapposite.” Appeal Br. 9; see also Reply Br. 5. We agree.
Here, in determining the sufficiency of a prima facie case of
obviousness, a requisite inquiry is whether the Examiner has articulated
adequate reasoning based on a rational underpinning to explain why a person
of ordinary skill in the art would have been led to combine the teachings of
Haytayan (presumably as modified with the teachings from asserted routine
skill in the art and Gupta ’231) with Gupta ’415. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007) (stating that “rejections on
obviousness grounds cannot be sustained by mere conclusory statements;
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instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness” (citing In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).
In other words, although the Examiner may have correctly found that
the cited art collectively teaches each claimed element individually, a proper
prima facie case of obviousness also requires that the Examiner provide an
articulated reason based on a rational underpinning to show why a person of
ordinary skill in the art would have combined the elements in the manner
recited in the claim. See KSR Int’l Co., 550 U.S. at 418–19; see also Reply
Br. 5. Here, we agree with Appellants that the reasoning provided by the
Examiner for combining the symmetry of Gupta ’415 with the plurality of
sleeves taught by Haytayan as modified by asserted routine skill in the art
and Gupta ’231 (namely, for minimizing hang-up or becoming jammed) is
not adequately supported by the cited art or other evidence in the record.
Specifically, while Gupta ’415 may teach the asserted advantages of
minimizing hang-up or becoming jammed, a review of the disclosure in
Gupta ’415 does not demonstrate that such advantages are related to
symmetry, but rather indicates that these advantages are the result of
structural elements that are not described as being related in any way to
symmetry, such as minimizing surface area contact between sleeves and rail
members of a magazine. See, e.g., Gupta, Abstract; Appeal Br. 9; Reply
Br. 5. To the extent that Gupta ’415 may also teach other advantages that
may be more related to symmetry, such as the ability of a collation to be
effectively rotated about either axis (see, e.g., Gupta, col. 6, ll. 14–22), the
Examiner has not relied on any such teaching or reason for the basis of the
combination used in the rejection of record, to which Appellants responded.
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In sum, the reasoning provided by the Examiner for combining the
symmetry of Gupta ’415 with the plurality of sleeves taught by presumably
modified Haytayan is not based on a rational underpinning and is therefore
untenable.
Accordingly, based on the record before us, and because the Examiner
did not articulate adequate reasoning based on a rational underpinning to
explain why a person of ordinary skill in the art would have formed the
combination used in the rejection of record, we cannot sustain the rejection
of independent claim 1, or of associated dependent claims 2–9.

Rejection II – Claims 10–20 as unpatentable
over Haytayan and Gupta ’415
With respect to the rejection of claims 10–20, Appellants have not set
forth any other substantive arguments separate from or in addition to the
arguments discussed supra regarding the rejection of independent claim 1.
See Appeal Br. 9–10. Because the rejection of claims 10–20 is premised in
relevant part on the same combination of Haytayan and Gupta ’415,
including the same reasoning provided for combining the symmetry of
Gupta ’415 with the plurality of sleeves taught by Haytayan (see Ans. 8–12),
Rejection II is therefore subject to the same error as discussed in detail supra
with respect to Rejection I. Accordingly, for the same reasons, we likewise
cannot sustain the rejection of claims 10–20.

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DECISION
We REVERSE the Examiner’s decision rejecting claims 1–9 under
35 U.S.C. § 103(a) as being unpatentable over Haytayan, Gupta ’231, and
Gupta ’415.
We REVERSE the Examiner’s decision rejecting claims 10–20 under
35 U.S.C. § 103(a) as being unpatentable over Haytayan and Gupta ’415.

REVERSED

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