Ex Parte Silvestro et al - Page 3



             Appeal 2006-2289                                                                                      
             Application 10/812,266                                                                                
                    Claims 1, 2, and 9 stand rejected under 35 U.S.C § 103 as unpatentable over                    
             Appellants’ admitted prior art in view of Drake.                                                      
                                                   OPINION                                                         
                    We reverse the rejection of claims 1, 2, and 9 on appeal.  Assuming                            
             arguendo that the teaching of the locating surface 110 on the nut disclosed in                        
             Drake would have suggested the use of a locating surface on a fastener head as                        
             claimed, that still leaves the matter that the locating surface 110 is disclosed as                   
             square-shaped in the Drake reference.  While we note that the stepped portion is                      
             claimed as circular in claim 2, we note that the stepped portion is claimed with a                    
             given diameter in claim 1.  Thus, in all claims on appeal the stepped portion is at                   
             least inferentially of a rounded shape.  It is for this reason, that even if we assume                
             the obviousness of transferring a locating surface from a nut to a fastener head, we                  
             can not agree that the square locating surface suggests the round one claimed by                      
             the Appellants.                                                                                       

                                                   REMAND                                                          
                    This application is hereby remanded to the Examiner for findings of fact and                   
             conclusions of law with respect to the following Mayer reference and the claimed                      
             subject matter on appeal.  The following reference is to be analyzed with respect to                  
             the claimed subject matter:                                                                           
             Mayer    US 6,578,939 B1   Jun. 17, 2003                                                              




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