Ex Parte Dobson et al

Board of Patent Appeals and Interferences

Jun 22, 2004

09981975 (B.P.A.I. Jun. 22, 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for publication and is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEWART B. DOBSON
and MALEK ABDUL MASSIH
____________
Appeal No. 2004-0526
Application No. 09/981,975
____________
HEARD: May 4, 2004
____________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
Steward B. Dobson and Malek Abdul Massih (appellants) appeal
from the examiner’s final rejection of claims 1-4 and 7-9, all the
claims currently pending in the application.
Appellants’ invention pertains to a tool for driving a headed
fastener, and more particularly to a socket type tool or a
nutsetter. A further understanding of the invention can be derived
from a reading of claim 1, the sole independent claim on appeal,
which reads as follows (with emphasis added):
Appeal No. 2004-0526
Application No. 09/981,975
1The term “said convex surfaces” (plural) in the next to the
last line of the claim lacks a proper antecedent. At oral
hearing, counsel for appellants, when queried as to whether claim
1 required each connecting surface to have more than one convex
surface, stated that the intent was to define each connection
surface as having two convex surfaces and a concave surface.
Accordingly, we interpret claim 1 as calling for the connection
surfaces to each have a first convex surface continuous with one
planar surface, a second convex surface continuous with another
planar surface, and a concave surface continuous with the first
and second convex surfaces. Upon return of this application to
the Technology Center, claim 1 should be amended to reflect this
claim interpretation.
2
1. A tool for driving headed fasteners comprising:
an opening in said tool;
said opening defined by a wall of said tool, said wall
having a plurality of planar surfaces, a connection surface
connecting said planar surfaces at their ends to define said
opening, each said connection surface having a convex surface
continuous with said planar surface and a concave surface
continuous with said convex surfaces, said concave and convex
surfaces define arcs with said arcs having the same radius.[1]
The references applied in the final rejection are:
Dossier 4,581,957 Apr. 15, 1986
Colvin 4,930,378 June 05, 1990
Claims 1-4 and 7-9 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Dossier or Colvin.
Reference is made to appellants’ main and reply briefs (Paper
Nos. 16 and 22) and to the final rejection and answer (Paper Nos.
11 and 18) for the respective positions of appellants and the
examiner regarding the merits of this rejection.
Appeal No. 2004-0526
Application No. 09/981,975
2The examiner’s characterization of the difference between
the applied references and the claims as a difference in the
specific “size ranges” for the convex and concave surfaces is
misplaced, in our view.
3
Discussion
Dossier and Colvin each disclose a tool for driving a headed
fastener comprising a socket having a plurality of planar surfaces
(Dossier, surfaces 11; Colvin, surfaces 32), and curved connection
surfaces connecting the planar surfaces at their ends to define
said socket. Each connection surface has convex surfaces (Dossier,
surfaces 4; Colvin, surfaces 36) continuous with respective
adjacent planar surfaces, and a concave surface (Dossier, surfaces
3; Colvin, surfaces 42) continuous with the convex surfaces.
In rejecting the appealed claims as being unpatentable over
Dossier or Colvin, the examiner appears to concede that the tools
of the applied references do not meet the limitation of claim 1
calling for the concave and convex surfaces to have the same
radius. In this regard, the examiner takes the following position:
Both patents show the claimed invention except for
the specific size ranges for the convex and concave
surfaces[2], however to size any part of the tool to fit
the desired function, and as there is no clear indication
from the original specification that these ranges are
critical, it would be obvious to one skilled in the art
at the time the invention was made to modify any of the
patents to use any well known size range. [Final
Appeal No. 2004-0526
Application No. 09/981,975
4
rejection, page 2; incorporated by reference into the
examiner’s answer.]
The examiner further expands upon this position in the “Response to
Argument” section of the answer as follows:
Appellants also assert that neither reference
“suggests” the use of equal radii, however this again is
not the basis for the rejection.
The rejection is based upon the well established
fact that one skilled in the art would clearly know what
size to make the drive head of the tool to fit the
particular situation . . . . Therefore merely changing
the size of the radii would result in the well known and
obvious situation that the point of engagement of the
flat surface would change making for a different point of
engagement with the workpiece as desired. This is
clearly as [sic, a] well known result of change in size
and thus does not in and of itself lead to patentability.
[Answer, pages 3-4.]
In considering the merits of the rejection, we note that a
rejection based on § 103 must rest on a factual basis, with the
facts being interpreted without hindsight reconstruction of the
invention from the prior art. In making this evaluation, the
examiner has the initial duty of supplying the factual basis for
the rejection he advances. He may not, because he doubts that the
invention is patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in
the factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967). In the present case, the examiner has failed
Appeal No. 2004-0526
Application No. 09/981,975
5
to advance any factual basis to support his conclusion to the
effect that it would have been obvious to one of ordinary skill in
the art to modify the tools of Dossier or Colvin such that the
connection surfaces comprise concave and convex surfaces defining
arcs having the same radius, as now claimed. Rather, the
examiner’s stated position appears to be based on impermissible
hindsight gleaned from appellants’ own disclosure. This of course
is improper. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992).
Concerning the examiner’s argument on page 2 of the final
rejection that the claimed subject matter would have been obvious
because there is no clear indication from the original
specification that the claimed “ranges” are critical, we note that
criticality is not a requirement of patentability. See W. L. Gore
& Assocs. v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For the reasons stated above, we cannot support the examiner’s
rationale for rejecting the appealed claims. Accordingly, we shall
not sustain the examiner’s rejection of claims 1-4 and 7-9 under 35
U.S.C. § 103(a).
Appeal No. 2004-0526
Application No. 09/981,975
6
Remand to the Examiner
This case is remanded to the examiner for consideration of the
following matter. Claim 1, as interpreted, calls for a tool
comprising an opening having planar surfaces, connection surfaces
connecting the planar surfaces at their ends, each connection
surface having convex surfaces and a concave surface, with the
convex and concave surfaces having the same radius.
The Figures 5-7 embodiment of Colvin comprises a tool
comprising an opening having planar surfaces 32’ and connection
surfaces connecting the planar surfaces at their ends. Each
connection surface comprises a pair of convexly curved engagement
surfaces 36’ of radius R2 connected to an associated planar surface
32’, a concave connecting surface 42’ of radius R3, and a pair of
flat surfaces 34’ connecting the convexly curved engagement
surfaces to the concave connecting surface 42’.
Colvin’s description of the Figures 5-7 embodiment at column
7, lines 5-33, includes the disclosure at lines 8-18 that the
radius R2 decreases in length from the open axial end 46’ toward
the closed axial end 44’. This is illustrated in Figures 6 and 7,
where a comparison of R2 in each drawing figure reveals that R2 as
shown in Figure 6 is substantially greater than R2 as shown in
Figure 7. It is also noted that connecting surface 42’ has
Appeal No. 2004-0526
Application No. 09/981,975
7
substantially the same curvature throughout the axial direction of
the wrench opening (see column 7, lines 29-33, and the showing of
R3 in Figures 6 and 7), that R2 as seen in Figure 6 is greater than
the R3, and that R2 as seen in Figure 7 is less than R3. Based on
the above disclosure, the reasonable inference can be drawn that at
some point along the axial direction of the wrench opening, R2 and
R3 are of equal length.
The examiner should (1) evaluate the patentability of the
appealed claims in light of the above discussion regarding the
Figures 5-7 embodiment of Colvin, (2) determine whether the
appealed claims patentably distinguish over the Figures 5-7
embodiment of Colvin, either alone or in combination with other
prior art the examiner may be aware of, and (3) take whatever
action is deemed appropriate in light of (1) and (2).
Summary
The rejection of claims 1-4 and 7-9 under 35 U.S.C. § 103(a)
is reversed.
This case is remanded to the examiner for consideration of the
matter discussed above.
Appeal No. 2004-0526
Application No. 09/981,975
8
REVERSED AND REMANDED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS/lp
Appeal No. 2004-0526
Application No. 09/981,975
9
W. R. DUKE TAYLOR
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 828
BLOOMFIELD HILLS, MI 48303