Ex Parte Snow

Board of Patent Appeals and Interferences

Jul 27, 2007

10246506 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT SNOW
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Appeal 2006-1966
Application 10/246,506
Technology Center 3600
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Decided: July 27, 2007
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Before WILLIAM F. PATE III, HUBERT C. LORIN, and
JENNIFER D. BAHR, Administrative Patent Judges.

WILLIAM F. PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

This is an appeal from the final rejection of claims 1-3, 5, 6, 8-10, 12
and 13. Claims 4, 7, 11 and 14 have been cancelled. Claims 15-19 have
been withdrawn from consideration.
We have jurisdiction under 35 U.S.C. §§ 134 and 6.
Appeal 2006-1966
Application 10/246,506

The claimed invention is directed to a clamp assembly for attaching a
hub to a vehicle axle.
Claim 1 reproduced below, is further illustrative of the claimed
subject matter.
1. A clamp assembly for attaching a hub structure to a
vehicle axle along a longitudinal axis thereof, comprising:
an elongated tubular structure adapted to slide over an
end of the vehicle axle and hold a wheel concentric with
rotation of the axle;
wherein said tubular structure includes a first end
comprising a hub attachment structure adapted to hold a wheel
and a second end comprising an axle clamping structure;
wherein the tubular structure further includes an
expansion slot formed from said second end of said tubular
structure along a portion less than the full length of said tubular
structure and a clamping fastener positioned proximate to an
open end of said expansion slot having a neutral position, a
compression range, and an expansion range;
wherein moving said clamping fastener in a first lateral
direction compresses said expansion slot to a position in said
compression range, moving said clamping fastener in a second
lateral direction by a first amount allows said expansion slot to
expand back to said neutral position, and moving said clamping
fastener further in said second lateral direction expands said
expansion slot to a position in said expansion range.
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Appeal 2006-1966
Application 10/246,506

The references of record relied upon by the examiner as evidence of
obviousness are:
MacKenzie U.S. 3,851,983 Dec. 03, 1974
Schlueter U.S. 5,067,845 Nov. 26, 1991

Claims 1-3, 5, 6, 8-10, 12 and 13 stand rejected under 35 U.S.C. § 103
as being unpatentable over MacKenzie in view of Schlueter.
ISSUES
The sole issue for our consideration on appeal is whether the examiner
has made out a prima facie case of obviousness of the claimed subject
matter.
FINDINGS OF FACT

The following are findings of fact regarding the scope and content of
the prior art and the differences between the prior art and the claimed subject
matter.
1. MacKenzie discloses a coupling 10 using a sleeve-like member 11 to
attach a hub structure, shaft S, to a vehicle axle, shaft D. The tubular
structure is adapted to slide over the end of the vehicle axle D. The
tubular structure includes an expansion slot 13 which extends along a
portion less than the full length of the sleeve or tubular structure and
the clamping fastener including screws 16 and 17 in sockets 14 and 15
so that the sleeve-like member can be compressibly clamped about
shafts S and D. MacKenzie does not disclose that the tubular
structure of the clamp assembly has an expansion slot wherein moving
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Appeal 2006-1966
Application 10/246,506

the clamping fastener further in the second lateral direction, expands
the expansion slot to a position in the expansion range.
2. Schlueter shows an analogous clamp assembly (see Fig. 7) including
an expansion slot 21’ and a clamping fastener screw 31’. When
moving the fastener further in its second lateral direction, the clamp is
moved to an expanded position due to fastener contacting stopping
structure, dowel 43.
PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734, 82 USPQ2d 1385, 1391 (2007). The question of obviousness is
resolved on the basis of underlying factual determinations including (1) the
scope and content of the prior art, (2) any differences between the claimed
subject matter and the prior art, (3) the level of skill in the art, and (4) where
in evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). See also KSR, 127 S.Ct. at
1734, 82 USPQ2d at 1391 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) In KSR, the Supreme Court emphasized “the need
for caution in granting a patent based on the combination of elements found
in the prior art,” id. at 1739, 82 USPQ2d at 1395, and discussed
circumstances in which a patent might be determined to be obvious. In
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Appeal 2006-1966
Application 10/246,506

particular, the Supreme Court emphasized that “the principles laid down in
Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248.”
KSR, 127 S.Ct. at 1739, 82 USPQ2d at 1395 (citing Graham v. John Deere
Co., 383 U.S. 1, 12 (1966) (emphasis added)), and reaffirmed principles
based on its precedent that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” Id. The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars
its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740, 82 USPQ2d at 1396. The operative question in this “functional
approach” is thus “whether the improvement is more than the predictable use
of prior art elements according to their established functions.” Id.
ANALYSIS
We agree with the examiner that the combined teachings of
MacKenzie and Schlueter would have rendered the subject matter of the
claims prima facie obvious. In our view, the claimed subject matter is
merely a combination of familiar elements according to known methods and
would likely have been obvious to one of ordinary skill in the art as yielding
a mere predictable result.
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Application 10/246,506

Appellant argues that there must be some suggestion, motivation or
teaching in the references themselves to sustain an obviousness rejection.
However, in KSR cited above, the Supreme Court relied on a functional
analysis instead. In other words, if the use of the dowel 43 as a stop pin
would have yielded the predictable result in MacKenzie of moving the
clamping joint into an expansion range just as it functions in Schlueter, then
the combination of references would likely have been obvious to one of
ordinary skill. This is particularly true when appellant presents no evidence
that the inclusion of this feature in MacKenzie was uniquely challenging or
difficult for one of ordinary skill. See, Leapfrog Enterprises, Inc. v. Fisher-
Price, Inc., 485 F.3d 1157, 1162, 82 USPQ 1687, 1692 (Fed. Cir. 2007).
Appellant further argues that there is no reasonable expectation of
success in combining the two prior art teachings. We disagree. In this case,
there is a design need or market pressure to solve the problem of opening the
clamp to the expansion range without the use of hammers and wedges or
chisels. See Specification 4:24-29. We further note that there are a finite
number of identified, predictable solutions to such a problem such as the
solution disclosed by Schlueter. Accordingly, one of ordinary skill would
have good reason to pursue the known options when they are within his or
her technical grasp. Inasmuch as this would lead to an anticipated success, it
is likely that this combination of references is not a product of innovation,
but of ordinary skill and common sense. See, KSR, 127 S.Ct. at 1742, 82
USPQ2d at 1397.
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Appeal 2006-1966
Application 10/246,506

CONCLUSION
Appellant has failed to show that the examiner’s rejection of claims
1-3, 5, 6, 8-10, 12 and 13 under 35 U.S.C. § 103 as being unpatentable over
MacKenzie in view of Schlueter is in error. Accordingly, the decision of the
examiner, rejecting all of the claims on appeal is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a) (1) (iv).

AFFIRMED

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