Ex Parte HaleDownload PDFPatent Trial and Appeal BoardJul 29, 201312432128 (P.T.A.B. Jul. 29, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte C. DAVID HALE ____________________ Appeal 2011-002247 Application 12/432,128 Technology Center 3600 ____________________ Before EDWARD A. BROWN, MICHAEL L. HOELTER, and LYNNE H. BROWNE, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002247 Application 12/432,128 2 STATEMENT OF THE CASE C. David Hale (Appellant) appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1-8 under 35 U.S.C. § 103(a) as unpatentable over Deutsch (US 2,880,435; issued Apr. 7, 1959) and Suchanek (US 6,220,778 B1; issued Apr. 24, 2001). App. Br. 9. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Claims 1 and 2 are independent claims. Claim 1 is representative of the appealed subject matter and reads: 1. A pair of couplers for attachment one to the other comprising: a) a first coupler having an open ended socket, said socket formed by an axially extending cylindrical wall having an open end and a closed end, said cylindrical wall having at least two diametrically opposed L shaped slots therein, one leg of each of said L shaped slots being open at the open end of said cylindrical wall, said open end of said cylindrical wall having an internal chamfered entry portion, the extended slope of said chamfered portion forming an angle of between twenty five and thirty five degrees with the central axis of said cylindrical wall, b) a second coupler including a solid portion removably disposed within the socket of said first coupler, c) a plurality of rigid projections protruding radially from said solid portion of said second coupler, said projections spaced so as to be Appeal 2011-002247 Application 12/432,128 3 movable within said L shaped slots in said first coupler's cylindrical wall, d) a locking pin extending radially from said second coupler, said locking pin depressible within the solid portion thereof, e) resilient means urging movement of said locking pin in a radial direction from said solid portion of said second coupler as said locking pin moves into and out of said socket, f) said locking pin being axially and circumferentially spaced from said projections such that as said projections enter said cylindrical wall's L shaped slots said locking pin engages said chamfered portion of said cylindrical wall, said locking pin being depressed by action of the chamfered entry portion of said cylindrical wall as said second coupler is inserted into said first coupler, g) said locking pin being released into one of said L shaped slots upon full insertion of said second coupling into said first coupling and said second coupling is rotated circumferentially. ANALYSIS Prima Facie Obviousness Appellant argues claims 1-8 together as a group. App. Br. 10-16. We select claim 1 as being representative of the group, and claims 2-8 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(vii). The Examiner found that Deutsch discloses a pair of couplers comprising every limitation of claim 1 except for “the extended slope of said chamfered portion forming an angle of between twenty five and thirty five degrees with the central axis of said cylindrical wall.” Ans. 4 (emphasis added). The Examiner found that Deutsch discloses a chamfered entry Appeal 2011-002247 Application 12/432,128 4 portion (beveled portion 62) forming an apparent angle of about forty-five degrees with the central axis of a cylindrical socket. Id. (see also Deutsch, col. 3, ll. 44-49; fig. 2). Suchanek discloses switch housing means 18 including locking means 86 having a first ramp surface 146, and a housing 130 including an inclined surface 158 having an edge 160 to engage the first ramp surface 146 when switch housing means 18 is fully seated. See Suchanek, col. 6, ll. 15-18, col. 7, ll. 22-35; figs. 2, 5. The Examiner found that the chamfered entry portion (inclined surface 158) is set at an angle between 30° and 45° with respect to the central axis. Ans. 5 (citing Suchanek, col. 7, ll. 34-35). The Examiner concluded that it would have been obvious to one of ordinary skill in the art to modify Deutsch’s coupler such that its chamfered entry portion forms an angle of twenty-five to thirty-five degrees with the central axis in view of Suchanek’s teaching that a range of between 30° and 45° for this angle permits easy insertion of one coupler member into the other. Id. Appellant does not apprise us of any error in the Examiner’s findings or conclusion. Secondary Considerations Appellant contends, however, that the claimed couplers solve a long- felt need. App. Br. 10. Appellant characterizes this long-felt need as a need “for an improved cable connector that may be easily and efficiently operated by hand.” App. Br. 14; Reply Br. 2. Appellant has presented evidence of secondary considerations regarding long-felt need. We recognize that this evidence must be considered in the determination of obviousness/non- obviousness. See In re Eli Lilly & Co., 902 F.2d 943 (Fed. Cir. 1990). Appeal 2011-002247 Application 12/432,128 5 Establishing a long-felt need requires objective evidence that a recognized problem existed in the art for a long period of time without solution. See Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984). The evidence must show that the need was persistent and recognized by those of ordinary skill in the art. See In re Gershon, 372 F.2d 535, 539 (CCPA 1967). In addition, the long-felt need must not have been satisfied by another before the invention by an applicant. See Newell Co. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988). Hence, Appellants must present affidavits or other factual evidence showing "a failure of others to provide a feasible solution to [a] long-standing problem." See In re Piasecki, 745 F.2d 1468, 1475 (Fed. Cir. 1984). Further, once a long-felt need has been established, it must further be shown that the invention satisfied the need. See In re Cavanagh, 436 F.2d 491, 496 (CCPA 1971). Accordingly, we consider anew the issue of obviousness of the claimed couplers under 35 U.S.C. § 103, evaluating and weighing both the evidence relied upon by the Examiner and the objective evidence presented by Appellant. Affidavits Appellant has presented Affidavits of C. David Hale, James-Michael Fay, Creighton W. Newman, and Jerry Kliest (hereinafter, collectively “the Affidavits”). Appellant contends that the Affidavits show: (1) that each affiant is a person of ordinary skill in the art, and (2) that each affiant recognized that the previous style of cable connectors was not easily and efficiently operated by hand, but required a large amount of force and use of a leveraging tool for assembly. App. Br. 11. Appeal 2011-002247 Application 12/432,128 6 The Affidavits were previously considered by the Board in the Decision of March 2, 2009, in related Appeal No. 2008-2713 (hereinafter, “Prior Decision”).1 In the Prior Decision, the Board determined that the Hale Affidavit is “entitled to but little weight” (Prior Decision at 11-12), and that the Fay, Newman, and Kliest Affidavits provide “some, albeit small, evidence of long-felt need” (Prior Decision at 12-13). We agree with the Board’s previous determination and give the Affidavits the same weight as they were given before for the reasons set forth in the Prior Decision. Additional Evidence of Long-felt Need Appellant also presents a Declaration of George C. Smiley Under 37 C.F.R. § 1.132 (hereinafter, “Smiley Declaration”) and patents to Hunt, Vincent, Irwin, and Kresge (hereinafter, collectively “additional patents”),2 as additional evidence of long-felt need. Appellant contends that the additional evidence “constitutes enough evidence of a long-felt need to outweigh the evidence of obviousness.” App. Br. 10. In particular, Appellant further contends that the Smiley Declaration demonstrates point (2) noted supra in regard to the Affidavits. App. Br. 11. At paragraph 4, the Smiley Declaration states “[p]rior to mid-year 2002, the cable connectors typically available in the drain and sewer cleaning industry were as described and illustrated in the [Deutsch] patent.” Emphasis added. However, the Smiley Declaration statement does not indicate how long prior 1 The present application is a continuation of U.S. Patent Application Serial No. 10/170,744, in which the Prior Decision was rendered. 2 These patents are: Hunt (US 3,449,003; iss. Jun. 10, 1969), Vincent (US 4,042,303; iss. Aug. 16, 1977), Irwin (US 4,508,468; iss. Apr. 2, 1985), and Kresge (US 6,688,800 B2; iss. Feb. 10, 2004). Appeal 2011-002247 Application 12/432,128 7 to mid-year 2002 such cable connectors were “typically available,” and thus, does not provide evidence of a persistent need recognized in the art. At paragraphs 7-8, the Smiley Declaration states that the Electric Eel “snap- lock” connectors, as described in the present application, may be easily assembled using hand applied force without using a leveraging tool. At paragraph 10, the Smiley Declaration states that prior to introduction of Electric Eels’s “snap-lock” connector, “I was not aware of any connectors available on the market that, in my opinion, could be easily and efficiently operated by hand.” Regarding the additional patents, Appellant indicates that Hunt states “[h]eretofore considerable difficulty has been experienced in attaching and detaching the sections of plumbers' snakes and sewer rods because of the nature of the joints, many of which are cumbersome, require a tool for the operation, and are time consuming to operate.” Hunt, col. 1, ll. 38-42; see App. Br. 11. Appellant indicates that Irwin provides this same statement as Hunt. App. Br. 11; see Irwin, col. 1, ll. 28-32. Appellant indicates that Vincent states “there is a need for a quick change connector to more efficiently connect extra lengths of cable between the tool cable and the rotating power source.” Vincent, col. 1, ll. 15-22; see App. Br. 11. Appellant indicates that Kresge states “[w]hat is need[ed] therefore, is a coupling device that does not utilize independent loose parts, one that will not unintentionally decouple, one that is easily hand operated, and one that provides a favorable torsional loading capability.” Kresge, col. 2, ll. 6-8; see App. Br. 11. Appellant contends that the additional patents provide evidence that those of ordinary skill in the art recognized the above-noted Appeal 2011-002247 Application 12/432,128 8 need, and that the patents span more than 30 years, demonstrating the need was persistent. App. Br. 11-12. The Smiley Declaration states that based on a review of the additional patents, it does not appear as though any of the couplings and connectors disclosed therein comprise a female portion with a sloped wall. Based on my experience, I believe the couplings and connectors disclosed therein would require an excessive amount of force to assemble and could not be easily and efficiently operated by hand. See Smiley Decl., para. 12 (emphasis added). The Smiley Declaration does not explain what amount of force constitutes “an excessive amount of force” in regard to assembling the couplings and connectors. Nor has Appellant presented any objective evidence, such as actual test results, supporting Mr. Smiley’s “belief” that the couplings and connectors disclosed in any one of the additional patents “would require an excessive amount of force to assemble and could not be easily and efficiently operated by hand.” See App. Br. 12. The Smiley Declaration also states “[b]ased on my review of the '003 [Hunt] patent, the '305 [Vincent] patent, the '468 [Irwin] patent, and the '800 [Kresge] patent, it does not appear as though any of the couplings and connectors disclosed therein comprise a female portion with a sloped wall.” See Smiley Decl., para. 12. Even assuming that the additional patents do not disclose such connector structure, Appellant has characterized the long-felt need broadly as “the need for an improved cable connector that may be easily and efficiently operated by hand.” App. Br. 14. Furthermore, in Appeal 2011-002247 Application 12/432,128 9 contrast to the Smiley Declaration’s stated “belief,” each of the additional patents provides explicit disclosure that appears to show both a recognition and satisfaction of this same need. In particular, Vincent states “[w]hen it is desirable to connect the end segments 12 and 14 of these flexible cables together he simply depresses the latch pin 48 within the bore 46 and inserts the cylindrical segment portion 36 fully within the sleeve member 24 so that the torque bar 32 fully engages the slot 44.” See Vincent, col. 4, ll. 16-22. Kresge states “[i]t is therefore, an object of the present invention to provide a unitary coupling device that . . . can be hand operated.” See Kresge, col. 2, ll. 12-15 (emphasis added). Hunt states “[a]nother object is to provide such a coupling which is easily operable by the fingers without any tools to quickly connect or disconnect two elements.” See Hunt, col. 1, ll. 51-53; see also col. 2, ll. 13-14 (emphasis added). Further, Irwin states “[a] particular object is to provide a coupling of the aforementioned character which is easily operable by the fingers of one hand without any tools or outside assistance to quickly connect or disconnect two elements.” See Irwin, col. 1, ll. 64-68; see also Abstract (emphasis added). Accordingly, the additional patents appear to not support Appellant’s contention that the stated need was persistent and continued to exist at the time the present invention was made, and that there was a failure of others to satisfy the need prior to the present invention. Instead, the additional patents appear to show that cable connectors that can be easily and efficiently operated by hand were known prior to Appellant’s connector. See Newell Co., 864 F.2d at 768. Appellant further contends: the fact that those skilled in the art continued to develop alternate couplings and connectors from Appeal 2011-002247 Application 12/432,128 10 1969 until 2001, as illustrated by the '003 [Hunt] patent, the '305 [Vincent] patent, the '468 [Irwin] patent, and the '800 [Kresge] patent, further demonstrates that the long-felt need for an improved cable connector that may be easily and efficiently operated by hand was not satisfied by another before the invention by Applicant. App. Br. 12. However, each additional patent provides disclosure regarding a coupling or connector that appears to satisfy the need characterized by Appellant as a long-felt need. Appellant has not provided any persuasive argument or objective evidence that shows that any one of the additional patents does not satisfy this need. The fact that each of the additional patents mentions the need does not establish that any one of them did not satisfy the need before Appellant. Rather, in our view, the additional patents provide evidence of different (alternative) solutions to the need.3 In addition to the additional patents, Deutsch states: Therefore, it may be understood that the coupler 28 may be easily and readily attached manually to a coupler 30 by grasping the coupler 30 in one hand and the coupler 28 in the other hand, moving one coupler toward the other so that the cylindrical portion 51 of the coupler 28 is inserted into the socket 58 of the coupler 30 with the pin 52 moving through the slots 60. The coupler 28 is then rotated slightly within the socket 58 of the coupler 30 so that the fixed pin 52 3 Appellant’s contention that the finality of the Office Action of December 31, 2009, should be withdrawn because the Examiner did not address all material provided by Appellant in the response of December 14, 2009 (App. Br. 15-16) is not an appealable issue. See 37 C.F.R. § 1.181. In addition, the Examiner stated that “all evidence submitted by appellant to include prior art patents and affidavits” was considered. Ans. 9. Appeal 2011-002247 Application 12/432,128 11 follows the L shaped slots 60 allowing the locking pin 54 to lock within one of the slots 60. See Deutsch, col. 4, ll. 11-21 (emphasis added). Accordingly, Deutsch itself provides explicit disclosure that couplers 28, 30 also satisfy the same need. We are mindful that the Affidavits and Declaration provided by Appellant state that Deutsch’s couplers do not satisfy the need, contrary to Deutsch’s explicit disclosure. However, Deutsch also constitutes evidence, especially with respect to the Appellant’s assertion of unsatisfied long-felt need. The Examiner also found that “the long felt need of easing insertion forces with the use of a thirty degree incline . . . was met by another (Suchanek) before appellant’s invention.” Ans. 6-7. Appellant contests this finding. App. Br. 13-15. Regardless of the Examiner’s findings with respect to Suchanek, Appellant has not persuaded us that the alleged long- felt was not satisfied by others prior to the present invention. The Examiner also determined that claim 1 does not recite certain terms, including “cable,” and stated “[t]he question of whether or not there was a long felt need for an unclaimed invention is completely irrelevant to the question of whether or not the claimed invention is patentable.” Ans. 7. In response, Appellant argues that the claims are not required to recite a particular field of use for the claimed invention to satisfy a particular long- felt need. See Reply Br. 2-3. Consistent with the Examiner’s position regarding unclaimed terms, “[i]t is well settled ‘that objective evidence [of] non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (citation omitted). Such objective evidence includes “whether the invention addresses ‘long felt but unsolved needs.’” See In re Appeal 2011-002247 Application 12/432,128 12 GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir. 1995). Claim 1 is directed to “[a] pair of couplers for attachment one to the other,” while Appellant’s evidence of long-felt need is directed specifically to cable connectors. However, as we find Appellant’s evidence of long-felt need insufficient for the reasons discussed supra, we do not reach the issue of whether this evidence is commensurate in scope with claim 1. The Examiner also stated “the examiner notes that there is no evidence on record of any criticality (unexpected result) in modifying a coupler to ease insertion regardless of whether or not the intended use for such a coupler is by hand with cables in the pipe and sewer cleaning industry.” Ans. 7. We agree with Appellant that the Examiner failed to provide any authority supporting the position that Appellant is required to show evidence of criticality or unexpected results to demonstrate that a claimed device satisfies a long-felt need. Reply Br. 3-4. However, we also agree with the Board’s previous determination that the joint being easier to connect using the claimed subject matter is “entirely predictable.” See Prior Decision at 12-13. “Expected beneficial results are evidence of obviousness of a claimed invention, just as unexpected beneficial results are evidence of unobviousness thereof.” See In re Gershon, 372 F.2d at 1069. Appellant has not presented any evidence that the claimed subject matter provides any unexpected results to rebut the Examiner’s prima facie case of obviousness. We have considered all of the evidence presented by Appellant against obviousness and weighed all the evidence anew. We conclude that the evidence for obviousness outweighs the evidence against it. See In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the court balanced the Patent Appeal 2011-002247 Application 12/432,128 13 Office's case against the strength of Appellant's objective evidence of non- obviousness). Thus, we conclude that the subject matter of claim 1 would have been obvious to one skilled in the art. Therefore, we sustain the rejection of claim 1, and claims 2-8 fall with claim 1. DECISION The rejection of claims 1-8 AFFIRMED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls Copy with citationCopy as parenthetical citation