Ex Parte Hu

Board of Patent Appeals and Interferences

Jun 28, 2004

09942061 (B.P.A.I. Jun. 28, 2004)

1 Appellants have canceled claims 42 to 56 in the after final communications filed March 13,
2003. The Examiner has entered this amendment. (Answer, p. 2).
2 We have considered Appellant’s position as presented in the Appeal Brief, filed March 13,
2003.
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for publication and is not binding precedent of the Board.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 BOBBY HU
_______________
Appeal No. 2004-0912
Application No. 09/942,061
_______________
ON BRIEF
_______________
Before, WARREN, KRATZ and JEFFREY T. SMITH, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.
DECISION ON APPEAL
Applicant appeals the decision of the Primary Examiner finally rejecting claims
21 to 25, 40, 41 and 57 to 59 all of the claims pending in the application.1 We have
jurisdiction under 35 U.S.C. § 134.2
Appeal No. 2004-0912
Application No. 09/942,061
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BACKGROUND
Appellant’s invention is directed to a reversible ratchet type wrench. The scope
of Appellant’s invention can be ascertained from claim 21 which is reproduced below:
21. A reversible ratchet-type wrench comprising:
a handle;
a head extended from the handle;
a drive member rotatably mounted in the head, with the drive member
including a plurality of teeth formed on an outer periphery thereof;
a pawl including a first side with a plurality of ratchet teeth for releasably
engaging with the teeth of the drive member, with the pawl further
including a second side with a recess;
a rotatable switch member including a turn-piece for manual operation
and an actuating plate extended from the turn-piece, the switch member
being switchable between two positions for changing ratcheting
direction of the drive member, with the actuating plate of the switch
member including a first receptacle that faces the recess of the pawl and
that has a first end wall;
an elastic element; and
a peg, with the peg having a first end movably received in the recess of
the pawl and a second end, with the second end of the peg being received
in the first receptacle and including a second receptacle with a second
end wall, with the elastic element located in the first and second
receptacles between the first end wall and the second end wall, with the
peg and the elastic member being rotatable with the actuating plate and
biasing the ratchet teeth of the pawl to engage with the teeth of the drive
member.
Appeal No. 2004-0912
Application No. 09/942,061
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The Examiner cited the following references to reject the claims:
Tuttle 1,426,127 Aug. 15, 1922
Kress 1,957,462 May 08, 1934
Kilness 3,265,171 Aug. 09, 1966
Fosella 5,076,121 Dec. 31, 1991
Arnold et al. (Arnold) 5,178,047 Jan. 12, 1993
Chow 5,533,427 Jul. 09, 1996
McCann 5,957,009 Sep. 28, 1999
Chen 6,164,167 Dec. 26, 2000
Hu 6,282,991 Sep. 04, 2001
(filed Apr. 03, 2000)
Hu 6,282,992 Sep. 04, 2001
(filed Apr. 03, 2000)
Hu 6,453,779 Sep. 24, 2002
(filed Mar. 21, 2001)
Hu 6,457,389 Oct. 01, 2002
(filed Aug. 06, 2001)
Hu US 2002/0112573 (09/854,795) Aug. 22, 2002
(filed May 14, 2001)
Hu US 2002/0166416 (09/888,810) Nov. 14, 2002
( filed Jun. 25, 2001)
Appeal No. 2004-0912
Application No. 09/942,061
3 The Examiner has identified the rejection of claims 21-25 and 40-59 in several of the rejections in the
Answer. However, claims 42-56 have been canceled in an after final amendment that the Examiner has entered.
(Answer, p. 2). In these cases, the rejection will apply to all of the pending claims that remain, i.e., claims 21 to
25, 40, 41 and 57 to 59.
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THE REJECTIONS3
The Examiner rejected entered the following ground of rejections:
Claims 21, 23, 41 and 57 to 59 are rejected under 35 U.S.C. § 103(a) over the
combination of Kilness and Tuttle. (Answer, pp. 3-4).
Claims 22, 25 and 40, are rejected under 35 U.S.C. § 103(a) over the
combination of Kilness, Tuttle and Chow. (Answer, pp. 4-5).
Claim 24 is rejected under 35 U.S.C. § 103(a) over the combination of Kilness,
Tuttle and Arnold. (Answer, p. 5).
Claims 21 to 25, 40, 41 and 57 to 59 are rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over claims 3, 4,
27, 34-37 of U.S. Patent No. 6,282,992. (Answer, pp. 5-6).
Claims 21 to 25, 40, 41 and 57 to 59 are rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over claims 1 to
38 of U.S. Patent No. 6,282,991 in view of Kress. (Answer, p. 6).
Appeal No. 2004-0912
Application No. 09/942,061
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Claims 21 to 25, 40, 41 and 57 to 59 are provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as being unpatentable
over claims 1 to 18 of copending application no. 09/814,430, now U.S. patent
6,453,779, in view of McCann. (Answer, pp. 6-7).
Claims 21 to 25, 40, 41 and 57 to 59 are provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as being unpatentable
over claims 1 to 20 of copending application no. 09/923,120, now U.S. patent
6,457,389, in view of McCann and Chen. (Answer, p. 7).
Claims 21 to 25, 40, 41 and 57 to 59 are provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as being unpatentable
over claims 1 to 60 of copending application no. 09/854,795 in view of Fosella, Kress,
McCann and Chen. (Answer, p. 8).
Claims 21 to 25, 40, 41 and 57 to 59 are provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as being unpatentable
over claims 1 to 20 of copending application no. 09/888,810 in view of McCann and
Chen. (Answer, p. 8).
Appeal No. 2004-0912
Application No. 09/942,061
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OPINION
We have carefully reviewed the claims, specification and applied prior art,
including all of the arguments advanced by both the Examiner and Appellant in
support of their respective positions. We will affirm the rejection of claims 21 to 25,
40, 41 and 57 to 59 under the judicially created doctrine of obviousness-type double
patenting as being unpatentable over claims 3, 4, 27, 34-37 of U.S. Patent No.
6,282,992. However, we reverse the remaining rejections. Our reasons for this
determination follow.
Rather than reiterate the respective positions advanced by the Examiner and
Appellants, we refer to the Examiner's Answer and to Appellant’s Brief for a complete
exposition thereof.
Rejections under § 103
All of the Examiner’s § 103 rejections rely on, either totally or in-part, Kilness
and Tuttle. Therefore, we will limit our discussion to Kilness and Tuttle and claim 21
which is the sole independent claim.
According to the Examiner, Kilness describes all of the limitations of claim 21
except for the location of the elastic member in the first receptacle. (Answer, pp. 3-4).
The Examiner further asserts “[d]ifferent embodiments of actuating member, in which
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Application No. 09/942,061
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the elastic member is located in a peg’s receptacle and a second receptacle having an
end wall against which the elastic member is biasing against, is old and known in the
art as illustrated by Tuttle.” (Answer, p. 4). However, this is not the structure recited
in claim 21.
The subject matter of claim 21 specifies that the peg has a first end movably
received in the recess of the pawl and a second end. The second end of the peg is
received in the first receptacle, of the actuating plate of the switch member. The first
receptacle contains a first end wall and faces the recess of the pawl. The first
receptacle also includes a second receptacle with a second wall. The elastic element
is located in the first and second receptacles between the first end wall and the second
end wall. The peg and the elastic member is rotatable with the actuating plate and
biases the ratchet teeth of the pawl to engage with the teeth of the drive member.
Tuttle does not disclose a first receptacle that contains a second receptacle with
a second wall as required by claim 21. The Examiner has failed to identify what
portion of the receptacle (23) of Tuttle would function as a second wall to form the
second receptacle required by claim 21. Thus, if the teachings of Tuttle were
combined with the teachings of Kilness as suggested by the Examiner the result would
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Application No. 09/942,061
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not have been the claimed structure. Unless the Kilness and Tuttle disclosures would
have suggested to one of ordinary skill in the art at the time the invention was made
that the first receptacle contained a second receptacle, the subject matter of claim 21 is
not unpatentable under 35 U.S.C. §103 on this record. In re Bond, 910 F.2d 831, 835,
15 USPQ2d 1566, 1569 (Fed. Cir. 1990).
For the above reasons, the rejection of claims 21, 23, 41 and 57 to 59 under
35 U.S.C. § 103(a) over the combination of Kilness and Tuttle; claims 22, 25 and 40
under 35 U.S.C. § 103(a) over the combination of Kilness, Tuttle and Chow; and
claim 24 under 35 U.S.C. § 103(a) over the combination of Kilness, Tuttle and Arnold
are reversed.
Obviousness-type Double Patenting
Claims 21 to 25, 40, 41 and 57 to 59 are rejected under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over claims 3, 4,
27, 34-37 of U.S. Patent No. 6,282,992. We affirm.
The Appellant does not dispute that the appealed claims are patentably indistinct
from the claims 3, 4, 27, 34-37 of U.S. Patent No. 6,282,992. Rather, the Appellant’s
Appeal No. 2004-0912
Application No. 09/942,061
4 Our discussion also applies to the provisional obviousness-type double patenting rejections that have
been applied in the present record.
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position is that “Applicant agrees to file a terminal disclaimer in this application
relating to U.S. Patent No. 6,282,992.” (Brief, p. 11). However, Appellant does not
cite any legal authority for the proposition that the mere offer to file a terminal
disclaimer overcomes a rejection based on the judicially created doctrine of
obviousness-type double patenting. We therefore uphold with the Examiner’s
rejection.
We now turn to the remaining double patenting rejections. As identified above,
the Examiner also rejected claims 21 to 25, 40, 41 and 57 to 59 under the judicially-
created doctrine of obviousness-type double patenting over other patents and
copending applications.4 An obviousness-type double patenting analysis entails two
steps: (1) determine the differences between the subject matter of the pending and
patented claims and (2) determine whether the differences render the claims patentably
distinct. Eli Lilly and Co. v. Barr Labs. Inc., 251 F.3d 955, 968, 58 USPQ2d 1869,
1878 (Fed. Cir. 2001). Claims are not patentably distinct, and thus properly rejected
for obviousness-type double patenting, when the subject matter of those claims is
obvious over, or anticipated by, the subject matter of the patented claim. Id.
Appeal No. 2004-0912
Application No. 09/942,061
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In the present case, the Examiner has failed to address differences between the
claimed subject matter of the pending and patented claims with the claimed subject
matter of the present application. For example, in the rejection over the U.S. Patent
6,453,779 the Examiner does not provide a discussion of the specific claims with the
conflicting subject matter. The Examiner refers to the disclosure of the patent and the
figures as the basis to support the rejection. (Answer, pp. 5-6). The Examiner’s
discussion of these double patenting rejections lacks the necessary findings of fact to
establish that the claims are not patentably distinct. Therefore, the Examiner failed to
establish a prima facie case of obviousness-type double patenting. It must be
remembered that the initial burden of establishing a prima facie case of unpatentability
rests upon the Examiner. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984).
For these reasons, the rejection of claims 21 to 25, 40, 41 and 57 to 59 under the
judicially created doctrine of obviousness-type double patenting over claims 1 to 38 of
U.S. Patent No. 6,282,991 in view of Kress; claims 21 to 25, 40, 41 and 57 to 59 under
the judicially created doctrine of obviousness-type double patenting over claims 1 to
Appeal No. 2004-0912
Application No. 09/942,061
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18 of copending application no. 09/814,430, now U.S. patent 6,453,779, in view of
McCann; claims 21 to 25, 40, 41 and 57 to 59 under the judicially created doctrine of
obviousness-type double patenting over claims 1 to 20 of copending application no.
09/923,120, now U.S. patent 6,457,389, in view of McCann and Chen; the provisional
rejection of claims 21 to 25, 40, 41 and 57 to 59 under the judicially created doctrine
of obviousness-type double patenting over claims 1 to 60 of copending application no.
09/854,795 in view of Fosella, Kress, McCann and Chen; the provisional rejection of
claims 21 to 25, 40, 41 and 57 to 59 under the judicially created doctrine of
obviousness-type double patenting over claims 1 to 20 of copending application no.
09/888,810 in view of McCann and Chen are reversed.
OTHER ISSUES
We leave these issues to be further explored by the Examiner prior to
disposition of the application. The Examiner should evaluate the claimed subject
matter in view of the teachings of Kress, U.S. Patent 1,957,462, that teaches a known
biasing structure. Kress appears to describe a peg (41) has a first end movably
received a recess. The second end of the peg is received in a first receptacle (43) that
Appeal No. 2004-0912
Application No. 09/942,061
5 Note the “v” shaped wall of receptacle (43) appears to function as one wall for the peg and a separate
wall for the spring.
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contains a first and a second end wall.5 The elastic element (42) is located in the first
and second receptacles between the first end wall and the second end wall.
CONCLUSION
For the foregoing reasons, based on the totality of the record, we affirm the
rejection of claims 21 to 25, 40, 41 and 57 to 59 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over claims 3,
4, 27, 34-37 of U.S. Patent No. 6,282,992. We reverse the remaining rejections.
Appeal No. 2004-0912
Application No. 09/942,061
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Time for taking action
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
)
CHARLES F. WARREN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
)
JTS/vsh
Appeal No. 2004-0912
Application No. 09/942,061
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ALAN D. KAMRATH
RIDER, BENNETT, EGAN & ARUNDEL, LLP
SUITE 2000
333 SOUTH SEVENTH STREET
MINNEAPOLIS MN 55402