Ex Parte Adkins et al

Board of Patent Appeals and Interferences

Nov 3, 2010

11499408 (B.P.A.I. Nov. 3, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte BRIAN M. ADKINS,
STEVEN M. MACSAY, and GLEN R. CHARTIER
____________________

Appeal 2009-006822
Application 11/499,408
Technology Center 3700
____________________

Before WILLIAM F. PATE, III, STEFAN STAICOVICI, and
KEN B. BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Brian M. Adkins et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the rejection of claims 1-3, 5, 7-8, 11-17, 19, 21, 25, 27-28, and 30-
32. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ claimed invention pertains to a basin wrench having a
main body and an insert or a removable adaptor. Spec. 2, paras. [0005]-
[0008]. Claim 1, reproduced below, is representative of the subject matter
on appeal.
1. A basin wrench system comprising:
a plastic elongated main body defining a rotational axis,
the main body including an adaptable portion, a first
longitudinal slot extending from a first end to a second end and
a hand gripping portion spaced from the adaptable portion
along the rotational axis, the hand gripping portion being
configured such that a hand of a user can grip the hand gripping
portion and rotate the adaptable portion of the main body about
the rotational axis; and
a metal removable adapter member selectively connected
with the adaptable portion of the main body, the removable
adapter member including a second slot extending from a first
end to a second end of the member and the adapter member
being configured to operatively engage an associated
component selected from a group comprising at least one of a
basin nut, a water supply line nut, and a water supply line shut-
off valve.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Himbert US D275,932 Oct. 16, 1984
Farnan US D376,521 Dec. 17, 1996
Bayouth US 5,996,447 Dec. 7, 1999
Fernandez US 6,321,625 B1 Nov. 27, 2001
Lordahl US 6,378,401 B1 Apr. 30, 2002
Adkison US 2004/0035260 A1 Feb. 26, 2004
Machovsky US 6,698,317 B1 Mar. 2, 2004
Vines US 2006/0243102 A1 Nov. 2, 2006

The following Examiner’s rejections are before us for review:
1. Claims 1, 2, 5, and 7 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bayouth and Adkison;
2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bayouth, Adkison, and Farnan;
3. Claim 8 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vines and Bayouth;
4. Claims 11-13, 19, and 21 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Vines and Himbert;
5. Claim 14 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vines, Himbert, and Bayouth;
6. Claims 15-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vines, Himbert, Bayouth, and Farnan;
7. Claim 25 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bayouth, Adkison, and Machovsky;
8. Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bayouth, Adkison, Machovsky, and Farnan;
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9. Claim 30 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bayouth, Adkison, Machovsky, and Fernandez;
10. Claim 31 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bayouth and Farnan; and
11. Claim 32 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bayouth, Farnan, and Himbert.

OPINION
1. Claims 1, 2, 5, and 7 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bayouth and Adkison
Appellants argue claims 1, 2, 5, and 7 as a group. App. Br. 15-16.
We select claim 1 as the representative claim, and claims 2, 5, and 7 stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 1 recites a main body and a removable adapter member, both of
which have a slot extending from end-to-end. The body has an adaptable
portion with which the removable adapter is selectively connected. The
Examiner found, in relevant part, that Bayouth discloses a basin wrench
having a main body and an adapter, but that Bayouth’s device lacks end-to-
end slots. Ans. 4; see also Bayouth, fig. 1. The Examiner further found that
Adkison also discloses, in Figure 10, a basin wrench with a longitudinal slot
extending from end-to-end so that the wrench may accommodate a water
line to allow a user to engage a fastener where a closed wrench would not be
able to do so. Ans. 4. The Examiner reasons that it would have been
obvious to one of ordinary skill to provide Bayouth’s body and adapter with
end-to-end slots so that the wrench could be used on fittings attached to a
water line. Id.
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Appellants argue that the combination of Bayouth and Adkison does
not teach or suggest every limitation of the claimed invention. App. Br. 15.
The Examiner’s Answer adequately addresses each argument raised by
Appellants, so as to demonstrate that the Examiner made no error in
rejecting claim 1. See Ans. 18-19. We adopt the Examiner’s findings as our
own, and consider the Examiner’s analysis presented with respect claim 1 to
sufficiently demonstrate that Appellants have not shown error in the
rejection of claim 1 or of claims 2, 5, and 7 which fall therewith.

2. Claim 3 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bayouth, Adkison, and Farnan
Claim 3 depends from claim 1 and recites that the removable adapter
is configured to operatively engage two different sized nuts when oriented
one way and “configured to operatively engage a water shut-off valve” when
in an inverted orientation. The Examiner found that Farnan, in Figures 5 and
6, teaches such an adapter. Ans. 6, 19-21. Appellants argue that the
combination of references lacks the recited adapter because Farnan’s socket
is not intended to be inverted and used to turn a shut-off valve, and that
Bayouth’s tool in the proposed combination of references would not
function as designed. App. Br. 16-17; Reply Br. 7. In the Reply Brief,
Appellants argue that “[t]o ‘operatively engage’ the valve means to engage it
in a manner of being able to operate the valve.” Reply Br. 7. The Examiner
reasonably found that Farnan’s socket would be capable of engaging a valve
(under a broad interpretation of “engage”) and of turning a water shut-off
valve handle. Ans. 20-21. Appellants’ arguments regarding the intended
use of Farnan’s socket and Bayouth’s tool do not show error in the
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Examiner’s findings or the conclusion that the teachings of the combined
references render obvious Appellants’ claimed structure.

3. Claim 8 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Vines and Bayouth
Appellants initially argued that the Examiner misinterpreted the Vines
reference, and further argued that, in order to fit Bayouth’s socket into
Vines’s wrench, those tools would require extensive and unobvious
modifications. App. Br. 18. In the Answer, the Examiner explained that
Appellants’ arguments were not directed to the Examiner’s proposed
modification. Ans. 7, 21-22. In the Reply Brief, Appellants acknowledge
the clarification, but maintain that there is insufficient motivation to perform
the modifications because those modifications would reduce the structural
integrity of the tools. Reply Br. 7-8.
Appellants’ argument seemingly concedes that the results of the
proposed modification (namely, reduced structural integrity) are predictable
to those of ordinary skill in the art. Further, we agree with the Examiner’s
sentiment, expressed in the context of the first rejection (Ans. 18-19), that
persons of ordinary skill in the tool design art would have been able to make
any necessary modifications while ensuring the requisite structural integrity.
Thus, while Appellants’ argument suggests that the proposed combination
might not yield the maximum structural integrity, we are not persuaded that
the modifications would have rendered the claimed subject matter
unobvious. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007)
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”)
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Appellants have not demonstrated error in the Examiner’s conclusion
that the subject matter of claim 8 would have been obvious in light of Vines
and Bayouth.

4. Claims 11-13, 19, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Vines and Himbert
Appellants argue claims 11-13, 19, and 21 as a group. App. Br. 19.
We select claim 11 as the representative claim for which to decide the appeal
as to this rejection.
We are not persuaded by Appellants’ argument that “[t]he end
openings of Vines are not designed to accept inserts, but only toilet tank
inlet nuts of different types.” App. Br. 19. As the Examiner correctly notes,
claim 11 does not positively recite structure or function for the insert. Ans.
22. Claim 11 merely requires that the body have an “opening being
configured to receive an insert.” Appellants disagree with the Examiner’s
construction of “insert” but do not offer a construction for the term or direct
us to any limiting definition in the Specification. Reply Br. 8. Even if, as
Appellants argue (Reply Br. 8), the Examiner’s construction of “insert” is
overly broad, we nonetheless see no error in the Examiner’s finding (Ans. 8)
that the end 6 of Vines’s plumbing tool is configured to receive an insert.
See Vines, fig. 3 (depicting end 6 as having a hexagonally configured
opening). We sustain the rejection of claims 11-13, 19, and 21.

5. Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Vines, Himbert, and Bayouth
Claim 14 depends from claim 11 (addressed in the immediately
preceding discussion) and adds the requirement of an insert functionally
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defined as “configured to be received in the opening [of the body], the insert
being configured to engage an associated nut.” Appellants repeat the
unpersuasive argument, previously made in the context of the third rejection,
regarding the purported unobviousness of fitting Bayouth’s socket into
Vines’s wrench, and the unpersuasive argument, made in the context of the
fourth rejection, that Vines’s ends are not designed to accept inserts. App.
Br. 20; Reply Br. 6. For the same reasons given above, these arguments do
not show error in the rejection of claim 14 over Vines, Himbert, and
Bayouth.

6. Claims 15-17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Vines, Himbert, Bayouth, and Farnan
Claims 15-17 are argued as a group (App. Br. 21), and we select claim
15 as the representative claim. Claim 15 recites that the insert is configured
to engage nuts of two configurations. The Examiner points to Farnan’s
universal socket as teaching an adapter configured to engage several
different sized nuts. Ans. 11. We have addressed above Appellants’
argument (Reply Br. 8-9) regarding the combination resulting in reduced
structural integrity, and found it unpersuasive. As to the conclusory
argument (Reply Br. 9) “that there is not sufficient suggestion in the art to
perform both steps [involved in combining the references’ embodiments],”
we determine that the Examiner has set forth adequate rational reasoning to
support the conclusion that the claimed subject matter would have been
obvious to a person having ordinary skill in the tool design art. See Ans. 10-
11, 21-22. The rejection of claims 15-17 over Vines, Himbert, Bayouth, and
Farnan is sustained.

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7. Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bayouth, Adkison, and Machovsky
Appellants argue (App. Br. 22-23) that the Examiner erred in finding
(Ans. 12) that Adkison discloses a wrench with both ends configured to
engage a fastener. Appellants incorrectly focus on the embodiment of
Adkison’s Figure 3 rather than that of Figure 10 depicting a hex nut
engaging configuration at one end and a wingnut engaging configuration at
the other. See Adkison, figs. 9, 10. Thus, Appellants’ argument does not
show error in the rejection as articulated by the Examiner.
We also are not persuaded by Appellants’ contention (App. Br. 23)
that “[t]he Examiner has not provided sufficient reasoning to support the
combination of Bayouth and Machovsky.” Appellants’ argument does not
address the Examiner’s articulated rejection based on the combination of the
references teachings (Ans. 13, 24) but appears to be premised on the
erroneous belief that the Examiner must explain how Machovsky’s socket
could fit into the Bayouth tool. See In re Sneed, 710 F.2d 1544, 1550 (Fed.
Cir. 1983) (“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.”) We
determine that the Examiner has set forth adequate reasoning to support the
conclusion of obviousness, and has adequately addressed Appellants’
arguments so as to demonstrate that the Examiner made no error in rejecting
claim 25. See Ans. 12-13, 23-24; contra App. Br. 23.

8. Claims 27 and 28 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bayouth, Adkison, Machovsky, and Farnan
Appellants’ arguments concerning claims 27 and 28 (which depend
from claim 25, the subject of the seventh rejection discussed above) do not
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appear to present any issues not already addressed and found to be
unpersuasive. See App. Br. 24-25 (reiterating the rejections made for the
seventh rejection). We sustain the rejection of claims 27 and 28 as obvious
in light of Bayouth, Adkison, Machovsky, and Farnan.

9. Claim 30 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bayouth, Adkison, Machovsky, and Fernandez
Appellants’ arguments concerning claim 30 (which depends from
claim 25, the subject of the seventh rejection discussed above) do not appear
to present any issues not already addressed and found to be unpersuasive.
See App. Br. 25-26 (reiterating the rejections made for the seventh
rejection); Reply Br. 9-10 (merely correcting a typographical error in the
Appeal Brief argument). We sustain the rejection of claim 30 as obvious in
light of Bayouth, Adkison, Machovsky, and Fernandez.

10. Claim 31 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bayouth and Farnan
Independent claim 31 recites an insert configured to engage two
different types of nuts when received in the body opening in a first
orientation and configured to “engage a water shut-off valve” when received
in the body in an inverted orientation. Appellants “disagree[] that the Farnan
universal socket, when inverted, is useful for turning a known water shutoff
valve” and argue that Bayouth’s tool in the proposed combination of
references would not function as designed. App. Br. 27-28. These
arguments were addressed above in the context of the rejection of claim 3 as
obvious in light of Bayouth, Adkison, and Farnan (the second rejection), and
found to be unpersuasive. We find them equally unpersuasive in the context
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of claim 31. Appellants have not pointed out an error in the rejection of
claim 31 as unpatentable over Bayouth and Farnan, and, accordingly, that
rejection is affirmed.

11. Claim 32 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bayouth, Farnan, and Himbert
Claim 32 depends directly from claim 1 and recites exterior ribs on
the main body. The Examiner relies on Himbert for the teaching of the ribs.
Ans. 17. Appellants’ argument, however, does not pertain to the rib
limitation. App. Br. 29. Rather, Appellants argue that the combined
references lack the slotted adapter of claim 1. See id. Specifically,
Appellants contend “that use of a slotted insert is not known in the art and
the results of placing a slot in a conventional insert, unpredictable.” Id. We
note that claim 1 recites a “removable adapter member,” not an “insert.”
Appellants acknowledge that the Examiner’s rejection of claim 32 is
based on the combination of Bayouth, Farnan, and Himbert. App. Br. 14,
28. However, Appellants argue that the combination of Bayouth and
Adkison fails to teach or suggest a slotted adapter, and that Himbert does not
cure this deficiency. App. Br. 29. Thus, Appellants’ argument fails to
address the ground of rejection set forth by the Examiner.
Even if we were to assume that Appellants’ argument applies to the
proper references, we still would not be persuaded that their combination
fails to teach a slotted adapter. Farnan discloses a slotted basin socket, see
figs. 5 & 6, thereby indicating that the level of skill in the art is such that
combining the references’ teachings to provide a slotted adapter would yield
predictable results. As such, we cannot accept Appellants’ assertion that
those of ordinary skill in the art of tool design would be unable to reasonably
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predict the effects on structural stability due to placing a slot in the side of a
socket. See App. Br. 29.
Appellants have not demonstrated error in the Examiner’s rejection of
claim 32 as unpatentable over Bayouth, Farnan, and Himbert.

DECISION
The decision of the Examiner to reject claims 1-3, 5, 7-8, 11-17, 19,
21, 25, 27-28, and 30-32 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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