Ex Parte Zahnen et al

Board of Patent Appeals and Interferences

Mar 14, 2012

11380514 (B.P.A.I. Mar. 14, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES L. ZAHNEN, PAUL W. LUBINSKY (DECEASED),
and MARIE T. LUBINSKY (LEGAL REPRESENTATIVE)
__________

Appeal 2009-015110
Application 11/380,514
Technology Center 3600
___________

Before JOSEPH F. RUGGIERO, JOHN A. JEFFERY, and CARL W.
WHITEHEAD, JR., Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1-30. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.
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STATEMENT OF THE CASE
Claims 1, 4, 5, 8, 18, 20, 21, and 24 are rejected under 35 U.S.C.
§ 103(a) as obvious over Gournay (US 6,193,719 B1) and Hills (US
3,444,775). Ans. 4-5.
Claims 9, 12, 13, 16, and 17 are rejected under 35 U.S.C. § 103(a) as
obvious over Ashcraft (US 5,848,913), Gournay, and Hills. Ans. 5.
Claims 2, 3, 6, 10, 11, 14, 19, 22, 23, and 25-30 are rejected under
35 U.S.C. § 103(a) as obvious over Ashcraft, Gournay, Hills, and Moore
(US 2,408,267). Ans. 6.
Claims 7 and 15 are rejected under 35 U.S.C. § 103(a) as obvious over
Gournay or Ashcraft, Hills, and Jackson (US 6,224,596 B1).1 Ans. 6.

APPELLANTS’ INVENTION
Appellants’ Fig. 3, reproduced below, shows an embodiment of
Appellants’ torque limited fastener for an electrical connector. (Spec. ¶¶
0001 and 0013).

1 Although the Examiner’s statement of this rejection omits Hills, the
rejection nonetheless refers to “modified Gournay” (Ans. 6) which we
presume means modified by Hills in light of claim 7’s depending from claim
1 which was rejected over Gournay and Hills. Also, claim 15 depends from
claim 9, the rejection of which also cites Hills. We therefore presume that
the Examiner intended to include Hills in this rejection.
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Appellants’ Fig. 3 shows a perspective cross-section view of
Appellants’ torque limited fastener.
The fastener includes an unthreaded head 20 and externally threaded
body 12 (see threads 14) that are separated by a reduced diameter portion 21.
(Spec. ¶ 0023). Tool-receiving passageways 22, 16 (herein “ports”) pass
lengthwise through the interior of the head 20 and body 12, so as to form a
head tool port 22 in alignment with a body tool port 16. (Spec. ¶ 0025). The
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tool ports 22, 16 receive a tool 24 (not shown) for screwing the fastener in
and out of a connector 50 (not shown). (Id.).
During tightening of the fastener within the connector 50, the tool 24
is seated on tool stops 26 of the head tool port 22, such that the tool 24
cannot reach into the body 12. (Spec. ¶ 0026). As the threaded body 12
tightens, the tool 24 applies more torque to the fastener. (Id.). When a
predetermined amount of torque is applied, the head 20 shears from the body
12 at the reduced diameter portion 21. (Id.). As the head 20 shears away,
the tool stops 26 are removed with the head 20. (Id.). Thus, if the body 12
needs to be removed from the connector 50, the tool 24 can be seated within
the body tool port 16 to do so. (Id.).
Independent claim 1 is directed to a torque-limited fastener and
reproduced below with emphasis on the equally-sized head and body tool
ports (“tool-receiving passageways”) and on the tool stops.
1. A torque-limited fastener for an electrical
connector comprising an electrically conductive body having
at least one fastener-receiving passageway intersecting a cable-
receiving passageway, the torque-limited fastener comprising:
a body being externally threaded to be received within
the at least one fastener-receiving passageway;
said body having a tool-receiving passageway therein;
a break-away head initially coupled to said body for
breaking away therefrom at a torque limit upon tightening of
the fastener;
said break-away head having a tool-receiving
passageway therethrough aligned with the tool-receiving
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passageway of said body and having a same size to thereby
accommodate a commonly sized tool therein; and
at least one tool stop extending inwardly in the tool
receiving passageway of said break-away head to restrict
insertion of the commonly-sized tool for tightening to the
torque limit, and being removed upon breaking away of said
break-away head[,] thereby permitting insertion of the
commonly-sized tool into the tool-receiving passageway of
said body to facilitate removal thereof.

FINDINGS OF FACT
Gournay
1. Gournay’s Fig. 7, reproduced below, shows an embodiment of
Gournay’s torque limited plug (herein “fastener”) for assembling spinal
implants. (Gournay, title; col. 1, ll. 13-20; col. 2, ll. 8-10).

Gournay’s Fig. 7 is a schematic view of one embodiment of
Gournay’s torque limited fastener.
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2. The fastener includes an unthreaded clamping part 19 (herein
“head”) and externally threaded unclamping part 21 (herein “body”; threads
not shown) that are separated by a fracture line 4. (Gournay col. 1, ll. 29-36
and 47-51; Fig. 7).
3. Tool-receiving prints 20, 23 (herein “ports”) pass lengthwise
and in alignment through the head 19 and body 21. (Gournay col. 1, ll. 29-
36 and 47-51; col. 3, ll. 39-43; Fig. 7). The tool ports 20, 23 receive
respective tools (not shown) for screwing the fastener in and out of an
implant (not shown). (Gournay col. 1, ll. 29-36 and 47-51; Fig. 7). The
head tool port 20 is wider than the body tool port 23 so as to receive a wider
tool. (Gournay Fig. 7). The body tool port 23 is narrower than the head tool
port 20 so as to receive a narrower tool. (Gournay Fig. 7).
4. The different widths of the tool ports 20, 23 create a shoulder
(shown but not labeled). (Gournay Fig. 7). During tightening of the fastener
within the implant, the wider tool is seated on the shoulder, such that the tool
cannot reach into the body 21. (Gournay col. 1, ll. 29-36; Fig. 7). As the
threaded body 21 tightens, the tool applies more torque to the fastener.
(Gournay col. 1, ll. 29-36 and 47-51). When a predetermined amount of
torque is applied, the head 19 shears from the body 21 at the fracture line 4.
(Gournay col. 1, ll. 29-36 and 47-51). If the body 21 needs to be removed
from the implant, the narrower tool is seated in the body tool port 23 to do
so. (Gournay col. 1, ll. 47-51; Fig. 7).
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Hills
5. Hills’ Fig. 1, reproduced below, shows an embodiment of Hills’
torque limited fastener for assembling airplanes. (Hills col. 1, ll. 23-28 and
36-39).

Hills’ Fig. 1 shows a schematic view of one embodiment of
Hill’s torque limited fastener and, particularly, of a fastener
with equally sized breakaway heads at respective stages of
removal.
6. The fastener includes an internally threaded nut 20 (herein
“body”) and two equally sized, breakaway collars 22, 21 (herein “heads”)
that receive the same wrench. (Hills col. 3, ll. 50-53 and 69-72; col. 4, ll.
29-35; Fig. 1).
7. The heads 22, 21 shear away from the fastener at respective
necks 24, 23 and torque loads. (Hills col. 4, ll. 2-13).
8. During a first tightening of the fastener (e.g., before a fastener
sealant cures), the wrench is seated on a flange 26 of the first head 22, such
that only the first head 22 is engaged and breaks away at the desired torque.
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(Hills col. 2, ll. 32-46; col. 4, ll. 14-21; Fig. 1). As the first head 22 shears
away, the flange 26 is also removed. (Hills col. 4, ll. 18-21; Fig. 1). Thus,
during a second tightening of the fastener (e.g., after the fastener sealant
cures), the second head 21 can be engaged and sheared away at the desired
torque. (Hills col. 4, ll. 2-13; Fig. 1).
9. Hills’ Fig. 3, reproduced below, shows an alternative
embodiment of Hills’ torque limited fastener. (Hills col. 3, ll. 33-35).

Hills’ Fig. 3 shows a perspective view of an alternative
embodiment of Hills’ torque limited fastener and, particularly,
of a fastener with differently sized first and second breakaway
heads.
10. The Fig. 3 embodiment is identical to that of the Fig. 1
embodiment, except that the Fig. 3 embodiment employs differently sized
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heads 22, 21 that receive respectively sized wrenches (not shown). (Hills
col. 3, ll. 33-35; Fig. 3). The first head 22 is narrower than the second head
21 so as to receive a narrower wrench. (Hills col. 4, ll. 29-31; Fig. 3). The
second head 21 is wider than the first head 22 so as to receive a wider
wrench. (Hills col. 4, ll. 29-31; Fig. 3).
11. During the first tightening, the narrower wrench sits on the
upward face of the second head 21 so as to engage only the first head 22,
thereby shearing off only the first head 22 at the desired torque. (Hills col.
4, ll. 22-35; Fig. 3). During the second tightening, the wider wrench is used
to tighten and shear away the second head 21 at the desired torque. (Hills
col. 4, ll. 22-35; Fig. 3).

CONTENTIONS AND ISSUES
Claim 1 is rejected as obvious over Gournay and Hills. Appellants
argue that Gournay and Hills do not suggest the above-emphasized
limitations of claim 1. (Br. 6-9).
The Examiner determined that these features are met by replacing
Gournay’s differently sized head and body tool ports 20, 23, as well as their
resulting shoulder, with equally-sized head and body tool ports having an
intervening tool stop in view of Hills. The Examiner explained (Ans. 8):
Similar to Gournay, Hills discloses a tool stop that can be in the
form of a shoulder between different sized first (22) and second
(21) tool receiving structures on the break away head and body
respectively as can be seen in Hills’ Fig 3 but, Hills also
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discloses as an alternative of the shoulder tool stop, a tool stop
in the form of a flange (26) as can be seen in Fig 1. Therefore,
Hills teaches that it is obvious to replace a tool stop in the from
[sic] of a shoulder with a tool stop in the form of a flange and
applying that same teaching to Gournay it is clear that the tool
stop would not be destroyed but instead it would have been
replaced by a flange thus maintaining, without change, the
functionality of Gournay.
Appellants did not file a Reply Brief addressing the Examiner’s
explanation.

ANALYSIS
Claims 1, 4, 5, 8, 18, 20, 21, and 24
We sustain the Examiner’s obviousness rejection of representative
claim 1 and adopt, as our own, all findings and reasoning of the Examiner as
set forth in the Answer’s “Grounds of Rejection” and “Response to
Arguments” sections with respect to claim 1.
As discussed above, Appellants’ and Gournay’s fasteners use different
structures to register a tool with a breakaway head during tightening (i.e., to
ensure the tool engages the head and not the body). (FF 1-2). Appellants’
fastener uses tool stops 26 that partition the equally sized head and body tool
ports 22, 16 and must be removed by shearing of the head 20 to unblock the
body tool port 16. Gournay uses a shoulder formed by the different-sized
head and body tool ports 23, 20. (FF 3-4).
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Hills teaches Appellants’ and Gournay’s tool registration techniques
as alternative embodiments. Particularly, Hills’ Fig. 1 embodiment teaches
Applicants’ technique inasmuch as using a tool stop 26 that separates
equally-sized first and second heads 22, 21 (forming equally-sized tool
ports) and must be removed by shearing the first head 22 to unblock the
second head 21 (acting as a second tool port). (FF 5-8). Hills’ Fig. 3
embodiment teaches Gournay’s technique inasmuch as using a shoulder
formed by different sized heads 22, 21 (forming different sized tool ports).
(FF 9-11).
Thus, as explained by the Examiner, Hills shows that Appellants’ and
Gournay’s techniques were known alternatives for registering a tool with a
breakaway head of a torque-limited fastener. As further explained by the
Examiner, the proposed modification of Gournay’s fastener predictably
yields the recited limitations by substituting one technique for the other;
namely by substituting equally-sized tool ports and a removable intervening
tool stop (Hills’ Fig. 1 embodiment) for Gournay’s different sized tool ports
and resulting shoulder (Hills’ alternative Fig. 3 embodiment). Such a
substitution of a known technique for another would have been obvious.2
Note that the proposed substitution yields nothing unexpected, but rather

2 See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The Court
recognized that when a patent claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result.”
(citations omitted)).
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predictably achieves similar results as the structure of Hills’ Fig. 1
embodiment.3
Appellants argue that Gournay’s fastener cannot be modified as
proposed in view of Hills because “[o]ne of skill in the art would not look to
Hills and its external tool-receiving structures to modify the internal tool-
receiving passageways of Gournay et al.” (Br. 9). We disagree because,
like the claimed invention, the applied references both address the art of
torque-limited fasteners and the problem of registering a tool with a
breakaway head of such fasteners.4
Appellants also argue that “it is unclear how a working structure
would be obtained by combining the internal tool-receiving passageways of
Gournay et al. with the external tool-receiving structures of Hills.” (Br. 9).
We disagree because, Gournay’s differently-sized head and body tool ports
20, 23 and resulting shoulder are replaced with equally-sized head and body
tool ports and an intervening tool stop. Moreover, the Examiner need not

3 See id. at 417 (“[W]hen a patent simply arranges old elements with each
performing the same function it had been known to perform and yields no
more than one would expect from such an arrangement, the combination is
obvious.” (citations and internal quotations omitted)).
4 See In re Clay, 966 F.2d 656, 658-59 (Fed Cir. 1992) (“Two criteria have
evolved for determining whether prior art is analogous: (1) whether the art is
from the same field of endeavor, regardless of the problem addressed, and
(2) if the reference is not within the field of the inventor’s endeavor, whether
the reference still is reasonably pertinent to the particular problem with
which the inventor is involved.” (citation omitted)).
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propose a bodily substitution of Hills’ structure for Gournay’s structure.5
Rather, Gournay and Hills are considered for all that they teach, particularly
in light of the skill in the art.6 The skill required to apply Hills’ teachings to
Gournay’s fastener – namely an understanding of the differences between
external and internal tool ports of fasteners – entails only common sense and
is undoubtedly within the ordinary skill in the art evidenced by Gournay and
Hills.7
Appellants also argue that Gournay and Hills do not suggest a
“torque-limited fastener for an electrical connector …,” but are rather
respectively used for surgical implants and airplanes. (Br. 8). Appellants

5 See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.” (citations
omitted)).
6 See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (CAFC
1985) (“A reference must be considered for everything it teaches by way of
technology and is not limited to the particular invention it is describing and
attempting to protect. On the issue of obviousness, the combined teachings
of the prior art as a whole must be considered.”).
7 See KSR, 550 U.S. at 417 (“If a person of ordinary skill can implement a
predictable variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.”).
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have not shown that the claimed fastener’s intended use for electrical
connectors requires any particular structure,8 much less structure patentably
distinguishing over Gournay’s fastener as modified.9 We will not speculate
as to structural distinctions in this regard for the Appellants.10
For the above reasons, we are not persuaded that the Examiner has
erred. We accordingly affirm the obviousness rejection of representative

8 Independent claim 9 is directed to an “electrical connector” and recites
structure of an included “electrically conductive body” (and torque limited
fastener). Appellants do not present separate arguments for claim 9, but
rather state that the reference cited as teaching the electrically conductive
body (i.e., Ashcraft) “adds nothing to the critical deficiencies of Gournay et
al. and Hills.” (App. Br. 9).
9 See In re Zierden, 411 F.2d 1325, 1328 (CCPA 1969) (“[M]ere statement
of a new use for an otherwise old or obvious composition cannot render a
claim to the composition patentable.”); In re Benner, 174 F.2d 938, 941-42
(CCPA 1949) (“[T]he introductory phrase, ‘A ball mill lining element,’ does
not constitute a part of the subject matter of the appealed claims to be
considered as a limitation in determining the question of patentability. The
phrase comprises the name of a product and is introductory. It does not
contribute to the definition of any composition or any part of any
composition. … [N]o provision has been made in the patent statutes for
granting a patent upon an old product based solely upon discovery of a new
use for such product. So, the matter of nonanalogous use alleged is not
important in this case.”).
10 See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“Before the
examiner, Jung merely argued that the claims differed from Kalnitsky, and
chose not to proffer a serious explanation of this difference.”); In re Baxter
Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of
this court to examine the claims in greater detail than argued by an appellant,
looking for nonobvious distinctions over the prior art.”).
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claim 1 and claims 4, 5, 8, 18, 20, 21, and 24 not separately argued with
particularity.

The Other Rejections
We also sustain the Examiner’s other obviousness rejections of claims
2, 3, 6, 7, 10-17, 19, 22, 23, and 25-30. Ans. 5-6. Appellants do not
particularly show error in the Examiner’s reasoning for these claims, but
rather reiterate previous arguments and contend that the additional cited
references do not cure those deficiencies. (Br. 9-10). We are not persuaded
by those arguments, however, for the reasons previously discussed.

CONCLUSION
The Examiner did not err in rejecting claims 1-30 under § 103.

DECISION
The Examiner’s rejection of claims 1-30 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)(1)(iv).

AFFIRMED
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