Ex parte ARABIA, JR. et al.

Board of Patent Appeals and Interferences

Jul 20, 1998

08390973 (B.P.A.I. Jul. 20, 1998)

Application for patent filed February 21, 1995.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FRANK J. ARABIA, JR.
and
DANIELLE E. ARABIA
_____________
Appeal No. 97-3297
Application 08/390,9731
______________
ON BRIEF
_______________
Before ABRAMS, FRANKFORT and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
Appeal No. 97-3297
Application 08/390,973
2
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-3, which constitute all of the claims
of record in the application.
The appellants’ invention is directed to an improvement
in vehicle latch assemblies. The subject matter before us on
appeal is illustrated by reference to claim 1, which reads as
follows:
1. In a vehicle latch assembly of the type in which
a molded plastic operating lever is shifted by an operating
rod having a circumferential groove thereon, the improvement
comprising:
said operating lever having a bushing portion
integrally molded in one piece continuous molded together
construction with the molded plastic lever and having a bore for
receiving the rod, retaining fingers molded integral with the
bushing portion and projecting into the bore to grip the
circumferential groove of the rod, a frangible web molded
integral in connection between the bushing portion and the lever
so that the lever pre- determinately fractures at the frangible
web in the event of excessive force application to the lever upon
attempted disassembly of the rod from the bushing.
THE REFERENCES
The references relied upon by the examiner to support
the final rejection are:
Appeal No. 97-3297
Application 08/390,973
3
McClure 4,299,417 Nov. 10, 1981
Nix et al. (Nix) 4,750,878 June 14, 1988
THE REJECTION
Claims 1-3 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nix in view of McClure.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellants are set forth
in the Brief and the Reply Brief.
OPINION
In rejecting claims under 35 U.S.C. §103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443, 1446,
24 USPQ2d 1443, 1445 (Fed. Cir. 1992)), which is established when
the teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill in
the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531
(Fed. Cir. 1993)).
Appeal No. 97-3297
Application 08/390,973
4
All three of the claims before us include a molded
plastic operating lever having a bushing portion “integrally
molded in one piece continuous molded together construction with
the molded plastic lever and having a bore for receiving the rod,
retaining fingers molded integral with the bushing portion” and
“a frangible web molded integral in connection between the
bushing portion and the lever.” In other words, the basic
construction set forth in the claims requires that the operating
lever, the bushing portion, the rod retaining fingers and the
frangible web be molded together into an integral one piece
continuous structure.
In Nix, a retainer bushing 10 is installed into a bore
in pushrod 35 by “pressing” (column 6, line 18). There is
nothing to suggest that these components are otherwise attached
together, much less that they are integrally molded in a
continuous structure, as is required by the appellants’ claims.
In fact, in the preferred embodiment, Nix indicates that they are
of different materials (note the cross-hatching in the drawings
and see column 3, lines 40-45). The examiner recognizes this,
Appeal No. 97-3297
Application 08/390,973
The mere fact that the prior art structure could be2
modified does not make such a modification obvious unless the
prior art suggests the desirability of doing so. See In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
5
and sets forth two alternative theories. The first is that the
term “integral” is “sufficiently broad to embrace constructions
united by such means as fastening and welding” (Answer, page 5).
This fails at the outset, however, for it is clear that in Nix
“such means as fastening and welding” have not been disclosed or
taught. The second theory is stated as follows:
Once the lever and bushing are connected they
perform the exact same function as
applicant’s [sic] claimed invention and
therefore, creating an integral, one piece
lever and bushing is an obvious modification.
Essentially, it is the examiner’s position here that one of
ordinary skill in the art would have found it prima facie obvious
to so modify the Nix device. In the absence of evidence or
compelling argument in support thereof, however, we are not
persuaded that this would have been the case. 2
Appeal No. 97-3297
Application 08/390,973
6
Thus, we agree with the appellants that Nix fails to
disclose or teach the required “continuous molded together
construction” required by the claims.
With regard to the claim requirement that there be “a
frangible web molded integral in connection between the bushing
portion and the lever,” the examiner again sets forth alternative
theories, which emerge from the following statement:
Assuming arguendo that it would be
unreasonable in Nix '878 to conclude broadly
that there is a frangible web portion at a
reduced section . . . . [i]t would have been
obvious . . . to Modify Nix '878 in view of
McClure '417 in order to sever a part of the
bushing in order to indicate unauthorized
tampering” (Answer, page 4).
This recitation, considered with the other comments of the
examiner on this subject, would seem to indicate first that the
examiner believes feet 22 of the Nix bushing, which engage the
groove in the installed control rod, are frangible portions, and
second, that in any event to do so would have been obvious in
view of McClure. The first theory is not supported by the Nix
disclosure in that Nix does not explicitly establish that the
feet are frangible, and that the reference discloses removing the
rod and the bushing together, if need be (column 7, lines 35-41),
with no thought given to fracturing any of the components. With
Appeal No. 97-3297
Application 08/390,973
7
regard to the second theory, McClure discloses a tamper-
indicating seal having a necked portion which fractures if an
attempt is made to remove the seal. We fail to perceive any
teaching, suggestion or incentive in either Nix or McClure which
would have led one of ordinary skill in the art to provide the
feet in the Nix device with a frangible portion. To do so would
be unnecessary in view of the fact that Nix already provides for
the rod and the bushing to be removed together in another manner.
It therefore is our conclusion that the combined teachings of Nix
and McClure fail to establish a prima facie case of obviousness
with regard to the subject matter of the three claims. This
being the case, the rejection cannot be sustained.
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 97-3297
Application 08/390,973
8
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-3297
Application 08/390,973
9
Charles E. Leahy
General Motors Corporation
Legal Staff
P.O. Box 33114
Detroit, MI 48232