Malma Dental AB

Patent Trials and Appeals Board

Jan 19, 2022

2021004291 (P.T.A.B. Jan. 19, 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. 16/079,157 08/23/2018 Thomas Mähl 086980-0346 2297 26371 7590 01/19/2022 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 NOTIFICATION DATE DELIVERY MODE 01/19/2022 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS MÄHL Appeal 2021-004291 Application 16/079,157 Technology Center 3600 ____________ Before DANIEL S. SONG, MICHAEL L. HOELTER, and MICHELLE R. OSINSKI, Administrative Patent Judges. HOELTER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3-5, and 9-12. See Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE the Examiner’s rejections of these claims. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Malma Dental AB.” Appeal Br. 1. Appeal 2021-004291 Application 16/079,157 2 CLAIMED SUBJECT MATTER The disclosed subject matter “relates to a horseshoe and particularly a horseshoe that is provided with detachable studs.” Spec. 1:4-5. Apparatus claim 1 is the sole independent claim, is illustrative of the claims on appeal, and is reproduced below. 1. A stud hole protection to be inserted into a threaded stud hole in a horseshoe, the stud hole protection comprising: a stud hole core, and a thread connection element of a softer material than a material of the stud hole core, wherein the thread connection element is formed as a jacket which surrounds the stud hole core, wherein the thread connection element is configured to contact threading of the threaded stud hole in the horseshoe and prevent the material of the stud hole core from contacting the threading of the threaded stud hole in the horseshoe when the stud hole protection is mounted in the threaded stud hole in the horseshoe, wherein the softer material of the thread connection element extends from a bottom of the stud hole core to a top of the stud hole core. EVIDENCE Name Reference Date Mücklich (“Mucklich”) US 2,049,544 Aug. 4, 1936 REJECTION Claims 1, 3-5, 9, 10, and 12 are rejected under 35 U.S.C. § 102 as anticipated by Mucklich. Claim 11 is rejected under 35 U.S.C. § 103 as unpatentable over Mucklich. Appeal 2021-004291 Application 16/079,157 3 ANALYSIS Sole independent claim 1 recites a “stud hole core” and “a thread connection element of a softer material than a material of the stud hole core.” Italics added. The Examiner correlates the (harder) “stud hole core” to Mucklich’s “steel core of T-shaped cross section with web 2 and two flanges 2ʹ.” Final Act. 3. The Examiner also correlates the (softer) “thread connection element” to Mucklich’s items 1, 3, and 5 noting “that elastic material 1 coats refs. 3, 5, thus, the [E]xaminer is considering refs. 3, 5 as part of the connection element of a softer material.” Final Act. 3; see also Ans. 5. Appellant disputes the Examiner’s findings stating that “reference numerals 3 and 5 refer to portions of the steel core” and thus are not part of the softer thread connection element 1. Appeal Br. 7 (referencing Mucklich Fig. 1). Appellant also addresses Mucklich’s express teaching of “screw thread 3 cut in the flanges 2ʹ” contending that Mucklich’s screw thread 3 “is of the same material as the steel core of Mucklich.” Appeal Br. 9 (referencing Mucklich 2:1-2). See also Reply Br. 3 (“reference numeral 3 in Mucklich points to a component of the hard metal core (see FIGS. 1 & 6), such that reference numeral 3 in Mucklich is not soft material as alleged by the Examiner”). In short, Appellant contends that “the Examiner’s arguments appear to continue to apply an incorrect interpretation of the Mucklich reference that goes against the plain, explicit description of Mucklich.” Reply Br. 3. There is merit to Appellant’s contentions since Mucklich describes (and illustrates) items 3 and 5 as part of the (harder) “steel core of T-shaped cross section.” See Mucklich 1:36-41; Fig 1. Mucklich teaches a “steel Appeal 2021-004291 Application 16/079,157 4 core” comprising flanges 2ʹ and states that the curved outer surfaces of these flanges “are provided with a screw thread 3.” Mucklich 1:36-40. Mucklich also states that “lateral projections 5 are provided on the outer side of the flanges 2ʹ.” Mucklich 2:9-10. Hence, it is clear that both items 3 and 5 are made of steel, the same as flanges 2ʹ. However, as stated above, the Examiner noted “that elastic material 1 coats refs. 3, 5, thus, the [E]xaminer is considering refs. 3, 5 as part of the connection element of a softer material.” Final Act. 3; see also Ans. 5. Regarding the Examiner’s use of an elastic coating to distinguish between the recited (harder) “core” component 2ʹ and the recited (softer) “thread connection element” components 3, 5 (see Final Act. 3), Mucklich makes clear that all such components (2ʹ, 3, and 5) are coated to some degree or another. See Mucklich 1:43-47 (rubber “fills the space between the flanges right up to the top of the core”); see also Mucklich Figures generally. Because it is the coating the Examiner relies upon to distinguish between the (harder) “core” and the (softer) “thread connection element” (see above), the Examiner provides no clear explanation as to why some coated steel items are treated one way, and other coated steel items another. In other words, such distinction appears to have been arbitrarily applied by the Examiner since the Examiner does not explain why some of the coated components are correlated to the (harder) “core” while other coated components of the same device are correlated to the softer “thread connection element.” See Final Act. 3. The Examiner further hypothesizes that “the connection element can be aluminum while the core can be steel.” Ans. 8. There is no basis in Mucklich for such a statement. We have been instructed by our reviewing court that Appeal 2021-004291 Application 16/079,157 5 The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis . . . Likewise, we may not resolve doubts in favor of the Patent Office determination when there are deficiencies in the record as to the necessary factual bases supporting its legal conclusion of obviousness. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (italics added). In view of the above, we are of the opinion that the Examiner has relied on “speculation, unfounded assumptions or hindsight reconstruction” when concluding that Mucklich teaches the limitations of claim 1. See Final Act. 2-3. Thus, based on the record presented, we are not persuaded the Examiner has established by a preponderance of the evidence that Mucklich anticipates claims 1, 3-5, 9, 10, and 12. We reverse the Examiner’s rejection of these claims. The rejection of claim 11 as unpatentable over Mucklich Claim 11 depends indirectly from claim 1 and additionally recites a specific number of “wings” (i.e., “three”) that comprise the stud hole protection of claim 1. The Examiner does not otherwise employ Mucklich in a manner that might resolve or cure the defect noted above. Accordingly, we likewise reverse the Examiner’s rejection of claim 11 as being obvious in view of Mucklich. CONCLUSION In summary: Appeal 2021-004291 Application 16/079,157 6 Claim(s) Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 3-5, 9, 10, 12 102 Mucklich 1, 3-5, 9, 10, 12 11 103 Mucklich 11 Overall Outcome 1, 3-5, 9-12 REVERSED