Larry Verbowski

Patent Trials and Appeals Board

Mar 28, 2022

2021005151 (P.T.A.B. Mar. 28, 2022)

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. 15/787,761 10/19/2017 Larry Verbowski MSH-1166 9589 8131 7590 03/28/2022 MCKELLAR IP LAW, PLLC 784 SOUTH POSEYVILLE ROAD MIDLAND, MI 48640 EXAMINER TRAVERS, MATTHEW P ART UNIT PAPER NUMBER 3726 MAIL DATE DELIVERY MODE 03/28/2022 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte LARRY VERBOWSKI ____________________ Appeal 2021-005151 Application 15/787,761 Technology Center 3700 ____________________ Before PHILLIP J. KAUFFMAN, JEREMY M. PLENZLER, and GEORGE R. HOSKINS, Administrative Patent Judges. KAUFFMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1, 3, and 4.2 We have jurisdiction under 35 U.S.C. § 6(b). Appellant does not present arguments against either the rejection of claim 3 for failing to comply with the written description requirement, or the 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies the real party in interest as the applicant. Appeal Brief filed September 30, 2020 (“Appeal Br.”), at 2. 2 A detailed explanation of the claims before us is found in the next section. Appeal 2021-005151 Application 15/787,761 2 rejection of claim 4 as indefinite. Consequently, we sustain these rejections. Further, we are unpersuaded by Appellant’s arguments against the anticipation and obviousness rejections. Accordingly, we AFFIRM. CLAIMS ON APPEAL The first page of the Office Action that is the subject of this appeal identifies claims 1 and 3-7 as rejected; however, the body of that Action includes four rejections that cover claims 1, 3, and 4.3 See Final Act. 1-6. We consider claims 1, 3, and 4 to be rejected (as listed in the Rejections section below). In the Appeal Brief, Appellant states the appeal is of claims 1 and 4, but goes on to address each of the four rejections (claims 1, 3, and 4). Appeal Br. 2, 4-6. Appellant states that claims 3 and 4 are cancelled, but the file does not include evidence that an amendment cancelling either claim was entered. See Appeal Br. 3; Appeal Brief filed December 1, 2020. Accordingly, claims 3 and 4 are before us on appeal. 37 C.F.R. § 41.33(c) (“An appeal, when taken, is presumed to be taken from the rejection of all claims under rejection unless cancelled by an amendment filed by the applicant and entered by the Office.”). CLAIMED SUBJECT MATTER The claimed invention deals with mechanical adapters. Below, we reproduce independent claim 1. 3 Appellant cancelled claim 2 and withdrew claims 5-7. Appeal Br. 2. Appeal 2021-005151 Application 15/787,761 3 1. A mechanical adaptor for compressing springs with a strut spring compressor using a portable electric pipe threader motor assembly, said mechanical adaptor having an upper hub, said mechanical adaptor comprising: a. a metal unitary hub with a top portion and a bottom portion, each having a vertical centered axis; b. said top portion having an outside surface configured to fit a die holder of a motorized unit of a portable electric pipe threader, said top portion having an opening through said centered vertical axis; c. said bottom portion having an opening aligned with said top portion opening; d. mounts that are horizontal openings along a perimeter of said bottom portion. REJECTIONS I. Claim 3 is rejected under 35 U.S.C. § 112(a) for failing to comply with the written description requirement. II. Claim 4 is rejected under 35 U.S.C. § 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention. III. Claims 1 and 3 are rejected under 35 U.S.C. § 102(a)(1) as anticipated by Hamm.4 IV. Claim 4 is rejected under 35 U.S.C. § 103 as unpatentable over Hamm, Jin, and Stephenson.5 4 Hamm, US 2015/0165534 A1, June 18, 2015. 5 Jin, US 6,978,982 B1, Dec. 27, 2005; Stephenson, US 6,019,551, Feb. 1, 2000. Appeal 2021-005151 Application 15/787,761 4 OPINION Rejection I - Claim 3, Written Description Rejection II - Claim 4, Indefiniteness The Examiner rejected claim 3 for failure to comply with the written description requirement, and rejected claim 4 as indefinite. Final Act. 2-3. Appellant indicated a willingness to amend both claim 3 and claim 4, but presented no arguments on the merits. Appeal Br. 3-4. Consequently, we uphold the rejection of claims 3 and 4. Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground of rejection to the Board . . . the PTO may affirm the rejection of the group of claims that the examiner rejected on that ground without considering the merits of those rejections.”). Rejection III - Claims 1 and 3, Anticipation by Hamm The Examiner rejected claims 1 and 3 as anticipated by Hamm. Final Act. 3-4. That determination included a finding that Hamm’s mechanical adapter (adapter 10) includes a top portion (drive receptacle 40) configured to fit a die holder of a motorized unit of a portable electric pipe threader. Id. at 4. As detailed below, Appellant makes two contentions against this rejection, neither of which demonstrates error by the Examiner.6 First, Appellant contends that Hamm does not teach a mechanical adapter for compressing springs with a strut spring compressor. Appeal Br. 5. In other words, Appellant argues that Hamm device is not described as a mechanical adaptor. This contention is unpersuasive because it is not 6 We limit our discussion to independent claim 1 because Appellant argues claims 1 and 3 as a group. See Appeal Br. 4-5; 37 C.F.R. § 41.37(c)(1)(iv) (2013). Appeal 2021-005151 Application 15/787,761 5 responsive to the rejection. The Examiner did not find that Hamm devices is described as an adapter for compressing springs with a strut spring compressor; rather, the Examiner found that Hamm’s device discloses the structure as claimed including structure configured to fit a die holder as claimed. The proper inquiry is whether Hamm discloses each and every element as set forth in the claim. Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987) (“A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.”). Second, Appellant contends the top portion of Hamm’s adapter is rounded on the outside and could not be driven by an electric pipe threader. Appeal Br. 4-5. As mentioned above, the Examiner found that the top portion (drive receptacle 40) of Hamm’s mechanical adapter (adapter 10) is capable of fitting a die holder of a motorized unit of a portable electric pipe threader as claimed. Final Act. 3-4. This finding shifted the burden to Appellant to show that Hamm’s device is not capable of such use. See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); see also MPEP § 2114(I). Appellant’s contention is unpersuasive because it is attorney argument unsupported by evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984) (“Arguments and conclusions unsupported by factual evidence carry no evidentiary weight”). Further, to some degree, Appellant’s argument is not commensurate with the scope of claim 1. As the Examiner correctly points out, claim 1 does not require the die holder to have a certain shape. Ans. 5. What claim 1 requires is that the outside surface of the top portion of the metal unitary hub is “configured to fit a die holder of a motorized unit Appeal 2021-005151 Application 15/787,761 6 of a portable electric pipe threader.” In parity with the claim language, Appellant’s Specification provides top portion 6 of adapter 1 with an outside surface 97 configured to fit die holder 10 of a motorized unit of an electric pipe threader 2. See Spec. 6:25-28; Figs. 3, 6. We reproduce Figure 6 below. Figure 6 is a partial exploded view of adaptor 1 for motorized operation of a spring compressor in combination with portable electric pipe threader 2. Id. at 6:3-8, 8:22-25. In light of these disclosures, a person of ordinary skill would recognize that claim 1 requires that the top portion of the metal unitary hub is configured to fit a die holder of a motorized unit of a portable electric pipe threader, and no specific shape is required. 7 The Specification also refers to outside surface 9 as “perimeter 9.” See, e.g., Spec. 7:6. Appeal 2021-005151 Application 15/787,761 7 In light of our determination that claim 1 does not limit the top portion of the unitary hub to a certain shape, the Examiner explains, and we agree, that the top portion (drive receptacle 40) of Hamm’s mechanical adapter (adapter 10), could fit within a properly sized polygonal die holder such as Appellant’s die holder 10 or could fit within a die holder having a properly sized round opening. Ans. 6 (referring to Spec., Fig. 6). Consequently, we agree with the Examiner that Hamm’s adapter is capable of fitting a die holder as claimed, and we uphold the rejection of claim 1. Rejection IV - Claim 4, Obviousness over Hamm, Jin, and Stephenson Claim 4 follows:8 4. A motorized strut spring compressor, said compressor comprising in combination: a. a strut spring compressor; b. a mechanical adaptor as claimed in Claim 1 rigidly mounted to said upper hub of said strut spring compressor; c. a motorized unit of a portable electric pipe threader rigidly mounted to said strut spring compressor by an anti- rotation stern and rigidly secured to said mechanical adaptor by a die holder of said pipe threader. The Examiner rejects claim 4 as obvious in view of Hamm, Jin, and Stephenson. Final Act. 5-6. More specifically, the Examiner concludes that it would have been obvious to use Hamm’s adapter with Jin’s strut compressor as powered by Stephenson’s motorized unit. Id. Appellant makes four arguments against the rejection of claim 4. First, Appellant repeats the arguments used for claim 1. Appeal Br. 6. These arguments are unpersuasive for the reasons given above. Second, 8 This is from the original filing because the corrected claims appendix does not list claim 4. Appeal 2021-005151 Application 15/787,761 8 Appellant argues that Jin does not disclose a motorized unit. Id. This argument is not responsive to the rejection, which relies on the motorized unit of Stephenson. See Final Act. 5-6. Third, Appellant argues that Jin and Stephenson do not disclose an adaptor. Appeal Br. 6. This argument is also not responsive to the rejection, which relies on the adapter of Hamm. See Final Act. 5-6 (“an adapter . . . as disclosed by Hamm as discussed for claim 1 above”). Fourth, Appellant argues that Jin disparages the use of adaptors. Appeal Br. 6 (citing Jin 1:54). In the cited portion, Jin discloses that prior strut compression tools had the disadvantage of requiring “adapters” (as opposed to adaptors) to accommodate the wide variety of different strut assemblies. Jin 1:52-64. In other words, Jin discloses that prior art strut compressors needed some device (an adapter) to connect pieces of equipment that could not otherwise be connected so that the compressor may be used with a variety of strut assemblies. In this context, an adapter is not synonymous with Appellant’s adaptor. As illustrated in claim 4, an adaptor is but one part of a motorized strut spring compressor. So far as we can tell from claim 4 and Appellant’s Specification, only one “adaptor” is needed for every use of the motorized strut spring compressor; the claim does not require a first adaptor for one environment, and a second differently configured adaptor to adapt the compressor for use in a different environment. Appellant has not cogently explained how Jin’s disclosure regarding the need for an adapter for use with a strut compression tool is applicable to the mechanical adaptor portion of a strut compressor tool as claimed. Appeal 2021-005151 Application 15/787,761 9 We sustain the rejection of claim 4 because Appellant has not demonstrated error by the Examiner. CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 3 112(a) Written Description 3 4 112(b) Indefiniteness 4 1, 3 102(a)(1) Hamm 1, 3 4 103 Hamm, Jin, Stephenson 4 Overall Outcome 1, 3, 4 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) (2013). AFFIRMED