Ex Parte Morris

Board of Patent Appeals and Interferences

Jan 16, 2004

09894738 (B.P.A.I. Jan. 16, 2004)

1
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was not written for publication and is not binding precedent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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN L. MORRIS
__________
Appeal No. 2003-0458
Application No. 09/894,738
__________
ON BRIEF
__________
Before KIMLIN, GARRIS, and DELMENDO, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 1, 3, 6, 8 and 9 as amended subsequent
to the final rejection. These are all of the claims remaining in
the application.
The subject matter on appeal relates to a device for driving
eyebolts and hooks. With reference to the appellant’s drawing,
Appeal No. 2003-0458
Application No. 09/894,738
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the device 10 includes a body 12 having an elongated driver head
14 with a longitudinal slot 22 centrally located therein for
slidably receiving a nonthreaded portion of an eyebolt or hook,
wherein the slot extends completely across the driver head so as
to be open on opposite sides. This appealed subject matter is
adequately represented by independent claim 1 which reads as
follows:
1. A device for driving eyebolts and hooks comprising:
a body including an elongated driver head having opposite
forward and rear ends and a central axis of rotation extending
through the ends;
the body having a shank connected to the rear end of the
driver head for detachably connecting the driver head to a source
of rotary power;
the driver head having a centrally located longitudinal slot
of a given width therein adapted to slidably receive a
nonthreaded portion of an eyebolt or hook, the slot extending
across the forward end and along the central axis of rotation
toward the rear end to a given depth so as to terminate in a
bottom wall and define a pair of opposing side walls, the slot
extending completely across the driver head so as to be open on
opposite sides;
the driver head having a threaded hole extending through one
of the side walls and entering into the slot, the threaded hole
having a centerline spaced forwardly a distance dss from the
bottom wall;
a set screw of a given diameter for mating installation into
the threaded hole so as to selectively protrude into the slot;
and
Appeal No. 2003-0458
Application No. 09/894,738
1 On page 7 of the brief, the appellant states that
“[c]laims 1, 3, 6, 8, and 9 are to be considered a single group
of claims.” Consistent with this statement, all of the arguments
presented in the brief are directed to claim 1 only which is the
sole independent claim on appeal. It follows that, in assessing
the merits of the above noted rejections, we will focus on
independent claim 1. See In re Kaslow, 707 F.2d 1366, 1375, 217
USPQ 1089, 1096 (Fed. Cir. 1983); compare In re McDaniel, 293
F.3d 1379, 1382-85, 63 USPQ2d 1462, 1464-66 (Fed. Cir. 2002).
3
the distance dss and the diameter of the set screw being
such that the set screw engages a rod of an eyebolt or hook
placed in the slot with a positive, non-yielding clamping force.
The references set forth below are relied upon by the
examiner as evidence of obviousness:
Onofrio 4,724,731 Feb. 16, 1988
Womack 5,058,465 Oct. 22, 1991
Grubbs 5,791,208 Aug. 11, 1998
Claims 1, 3, 6 and 8 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Grubbs in view of Womack, and
claim 9 is correspondingly rejected over these references and
further in view of Onofrio.1
Rather than reiterate the respective positions advocated by
the appellant and by the examiner concerning these rejections, we
refer to the brief and to the answer for a complete exposition
thereof.
OPINION
For the reasons which follow, we cannot sustain either of
the rejections before us on this appeal.
Appeal No. 2003-0458
Application No. 09/894,738
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As recognized by the examiner, appealed independent claim 1
distinguishes over Grubbs by virtue of, inter alia, the claim
limitation “the slot extending completely across the driver head
so as to be open on opposite sides.” In patentee’s screw eye
driving and removing device, the slot is U-shaped as shown in
Figure 6 and as disclosed in the paragraph bridging columns 3 and
4. Concerning this distinction, the examiner concludes that:
It would have been obvious to one of ordinary skill in
the art at the time the invention was made to have
modified Grubbs by forming the slot completely through
the driver head as taught by Womack in order to easily
engage a workpiece and to readily accept a variety of
different sized workpieces [answer, page 3].
We cannot agree with this conclusion.
Like the appellant, we consider the applied prior art to
contain no teaching or suggestion for combining the Grubbs and
Womack references in the above quoted manner proposed by the
examiner. In the examiner’s view, an artisan with ordinary skill
would have been motivated to so combine these references “in
order to easily engage a workpiece and to readily accept a
variety of different sized workpieces” (Id.). However, Womack
contains utterly no teaching of such desiderata as “to easily
engage a workpiece” or “to readily accept a variety of different
sized workpieces.” Similarly, Grubbs contains no disclosure
which would support a determination that his device possesses any
Appeal No. 2003-0458
Application No. 09/894,738
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problems relating to the easy engagement of a workpiece or to the
ready acceptance of different sized workpieces.
With further regard to this issue, the examiner seems to
believe (see the paragraph bridging pages 5 and 6 of the answer)
that an artisan with ordinary skill would have associated the
above discussed desiderata with an open slot of the type under
consideration based upon the figures such as Figure 1 of Womack’s
drawing. The infirmity of this belief is that it is sheer
speculation on the examiner’s part with utterly no evidence to
support it in the record of this appeal. We here remind the
examiner that a section 103 rejection must rest on a factual
basis without resort to speculation, assumption or hindsight
reconstruction. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
Under the circumstances recounted above, it is our
determination that the Grubbs and Womack references are
evidentiarily inadequate to establish a prima facie case of
obviousness with respect to the modification proposed by the
examiner and discussed above. We cannot sustain, therefore, the
examiner’s section 103 rejection of claims 1, 3, 6 and 8 as being
unpatentable over Grubbs in view of Womack. Furthermore, because
the deficiencies of these references are not supplied by Onofrio,
Appeal No. 2003-0458
Application No. 09/894,738
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we also cannot sustain the section 103 rejection of claim 9 as
being unpatentable over Grubbs, Womack and Onofrio.
The decision of the examiner is reversed.
REVERSED
Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
Bradley R. Garris ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Romulo H. Delmendo )
Administrative Patent Judge )
BRG:tdl
Appeal No. 2003-0458
Application No. 09/894,738
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