Ex Parte Bollinger

Board of Patent Appeals and Interferences

Jan 15, 2004

09907974 (B.P.A.I. Jan. 15, 2004)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT A. BOLLINGER
__________
Appeal No. 2004-0106
Application 09/907,974
___________
ON BRIEF
___________
Before MCQUADE, NASE, and BAHR, Administrative Patent Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Robert A. Bollinger originally took this appeal from the
final rejection (Paper No. 12) of claims 24 through 27, 29
through 35 and 43 through 47, all of the claims pending in the
application. As the appellant has chosen not to proceed with
respect to claims 43 through 47 (see page 2 in the main brief,
Paper No. 14), the appeal as to these claims is hereby dismissed,
leaving for review the standing rejection of claims 24 through 27
and 29 through 35.
Appeal No. 2004-0106
Application 09/907,974
2
THE INVENTION
The invention relates to “an adapter having at least two
sized cavities and/or extensions for mounting on a variety of
different sized ratchets and other like tools” (specification,
page 1). Representative claims 24 and 30 read as follows:
24. A socket comprising:
a body comprising a hexagonal receiving end cavity adapted
to receive a workpiece and operate on said workpiece;
said body further comprising a drive tool end cavity
comprising an interior shoulder that divides said tool end cavity
into a first rectangular portion to receive a first sized
polygonally shaped drive tool and a second rectangular portion to
receive a second sized polygonally shaped drive tool, said first
portion being positioned on an outer end of said body and being
wider than said second portion;
wherein a first or second sized rectangular drive tool may
be inserted into said drive tool end cavity and turn said body;
wherein the body is solid between an inner end of the second
portion and the receiving end cavity.
30. A tool comprising:
a drive tool having a rectangular outwardly extending drive
shaft;
an adapter comprising:
(i) a first receiving end having an outer and inner cavity
each having a rectangular perimeter, said inner cavity having a
smaller diameter than said outer cavity; and
(ii) a second end having a single cavity, wherein one of
said inner and outer cavities being sized to receive said
outwardly extending drive shaft;
wherein the body is solid between an inner end of the inner
cavity and the single cavity.
Appeal No. 2004-0106
Application 09/907,974
3
THE PRIOR ART
The references relied on by the examiner as evidence of
obviousness are:
Rexford 5,148,724 Sep. 22, 1992
Hsiao 5,186,083 Feb. 16, 1993
Jarvis 5,943,924 Aug. 31, 1999
THE REJECTION
Claims 24 through 27 and 29 through 35 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Jarvis in view of
Rexford or Hsiao.
Attention is directed to the main and reply briefs (Paper
Nos. 14 and 16) and to the answer (Paper No. 15) for the
respective positions of the appellant and the examiner regarding
the merits of this rejection.
DISCUSSION
Jarvis, the examiner’s primary reference, discloses a socket
wrench set which is summarized as follows:
a multifunctional, interchangeable socket wrench is
provided having a drive handle and a plurality of
interchangeable sockets. The drive handle has an
integral ratcheting drive of a given dimension. An
interchangeable multi-tiered drive is provided that is
attachable to the integral drive. The multi-tiered
drive provides a plurality of tiers of different
dimensions thereby changing the dimension of the drive.
Open ended sockets are provided. One end of the socket
is configured to fit over the application object, such
[as] a bolt head or nut, etc. The other end is
Appeal No. 2004-0106
Application 09/907,974
4
configured to [be] attached to the drive. The
attachment end of the socket is configured to attach to
any one of the plurality of the drive tiers, thereby
allowing the user to change size of drives and/or size
of the sockets on the same wrench [column 1, line 58,
through column 2, line 5].
In applying Jarvis against the appellant’s claims, the
examiner focuses on the assembly shown in Figure 51. This
assembly includes “a conventional socket wrench extension 500 and
adapter 505” (column 8, lines 35 and 36). As depicted in Figure
51, the adapter 505 has a single cavity at one end for receiving
an end of the socket wrench extension 500 and inner and outer
cavities at the other end for receiving an end of a slidable
drive adapter 187. It is not disputed that each of the cavities
in the adapter 505 has a rectangular (square) cross-section.
According to the examiner (see pages 3 through 5 in the
answer), Jarvis’ adapter 505 constitutes a socket meeting all of
the limitations in independent claim 24 except for the one
requiring the receiving end cavity to be “hexagonal.” The
examiner considers the cavity in Jarvis’ adapter 505 for
receiving the extension 500 to be a receiving end cavity, but
concedes that it is rectangular rather than hexagonal.
To overcome this deficiency in Jarvis, the examiner turns to
either Rexford or Hsiao. Each discloses socket members (32 in
Rexford and 40 in Hsiao) having hexagonal cavities at either end
Appeal No. 2004-0106
Application 09/907,974
5
for alternatively engaging hexagonal fasteners (e.g., nuts,
bolts, etc.) of different size. In the examiner’s view,
if one skilled in the art needed to engage a workpiece
that is hexagonal in shape, the shape of that end of
the socket must also be hexagonal. Thus the suggestion
or motivation . . . is that one skilled in the art
would clearly be lead [sic] to make the single cavity
of Jarvis of a hexagonal shape if the workpiece were
also similarly shaped. It would not be desirable or
even feasible for a person using the Jarvis socket to
engage anything but a rectangularly shaped workpiece,
however with the suggestion provided by the Rexford and
Hsiao patents, this person skilled in the art would be
lead [sic] to make the proposed modification so that a
hexagonally shaped workpiece can be operated upon
[answer, page 5].
This proposed modification of Jarvis in view of either
Rexford or Hsiao is unsound. As disclosed, the Jarvis adapter
505 is an intermediate drive element designed to be connected at
either end to mating drive elements. Because the connections
between such drive elements are conventionally rectangular as
evidenced by Jarvis’ disclosure, so too are the cavities in the
ends of adapter 505. In contrast, the hexagonal cavities in the
socket members disclosed by Rexford and Hsiao are configured to
engage hexagonal fasteners rather than drive elements. They
correspond to the open-ended sockets described by Jarvis for
application to bolts and nuts. The only suggestion for modifying
the rectangular drive cavity in Jarvis’ adapter 505 in view of
Appeal No. 2004-0106
Application 09/907,974
6
the hexagonal fastener cavities disclosed by either Rexford or
Hsiao stems from hindsight knowledge impermissibly derived from
the appellant’s disclosure.
Thus, neither Rexford nor Hsiao cures the admitted
shortcoming of Jarvis relative to the subject matter recited in
independent claim 24. Accordingly, we shall not sustain the
standing 35 U.S.C. § 103(a) rejection of claim 24, and dependent
claims 25 through 27 and 29, as being unpatentable over Jarvis in
view of Rexford or Hsiao.
We shall sustain, however, the standing 35 U.S.C. § 103(a)
rejection of independent claim 30 as being unpatentable over
Jarvis in view of Rexford or Hsiao.
The adapters 187 and 505 disclosed by Jarvis together embody
a tool comprising a drive tool and an adapter, respectively,
meeting all of the limitations in claim 30. Unlike claim 24,
claim 30 does not require any of the cavities recited therein to
be hexagonal and is broad enough in its other respects to be
fully readable on these prior art components. Thus, the subject
matter recited in claim 30 is anticipated by Jarvis.
Anticipation, of course, is the ultimate or epitome of
obviousness. See In re Fracalossi, 681 F.2d 792, 794, 215 USPQ
569, 571 (CCPA 1982). Because Jarvis is anticipatory, the
Appeal No. 2004-0106
Application 09/907,974
7
examiner’s additional application of Rexford or Hsiao against
claim 30 is superfluous.
We also shall sustain the standing 35 U.S.C. § 103(a)
rejection of dependent claims 31 through 35 as being unpatentable
over Jarvis in view of Rexford or Hsiao since the appellant has
not challenged such with any reasonable specificity, thereby
allowing these claims to stand or fall with parent claim 30 (see
In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed.
Cir. 1987)).
Because our rationale for sustaining the rejections of claim
30, and claims 31 through 35 which stand or fall therewith,
differs from that advanced by the examiner, we hereby designate
our action in this regard as a new ground of rejection under 37
CFR § 1.196(b) in order to afford the appellant a fair
opportunity to react thereto. See In re Kronig, 539 F.2d 1300,
1302-03, 190 USPQ 425, 426-27 (CCPA 1976).
SUMMARY
The decision of the examiner to reject 24 through 27 and 29
through 35 is affirmed with respect to claims 30 through 35 and
reversed with respect to claims 24 through 27 and 29, with the
affirmance designated as a new ground of rejection under 37 CFR
§ 1.196(b).
Appeal No. 2004-0106
Application 09/907,974
8
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 2004-0106
Application 09/907,974
9
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART; 37 CFR § 1.196(b).
JOHN P. MCQUADE )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
JEFFREY V. NASE )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
JPM/kis
Appeal No. 2004-0106
Application 09/907,974
10
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