Ex parte AUSTIN et al.

Board of Patent Appeals and Interferences

Apr 15, 1998

08417981 (B.P.A.I. Apr. 15, 1998)

Application for patent filed April 6, 1995. 1
Claim 15 has been amended subsequent to the final2
rejection.
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journal and (2) is not binding precedent of the Board.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 GEORGE K. AUSTIN and STEPHEN N. WEILER
____________
Appeal No. 97-1439
Application No. 08/417,9811
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 4, 6 through 13 and 15. Claim 142
has been allowed. Claim 5 has been canceled.
Appeal No. 97-1439
Application No. 08/417,981
We REVERSE.
Appeal No. 97-1439 Page 3
Application No. 08/417,981
BACKGROUND
The appellants' invention relates to a mechanism for
adjusting the height of a post that may be used to support, for
example, dental equipment (specification, p. 1). An
understanding of the invention can be derived from a reading of
exemplary claims 1, 8 and 15, which appear in the appendix to the
appellants' brief.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Gilbert et al. (Gilbert) 4,182,364 Jan. 8, 1980
Namur 4,640,211 Feb. 3, 1987
Garringer 4,706,367 Nov. 17, 1987
Yokomatsu et al. (Yokomatsu) 4,906,028 Mar. 6, 1990
Claim 12 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which the appellants
regard as the invention.
Claims 1 through 4, 8 through 11, 13 and 15 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Namur in view of
Garringer.
Appeal No. 97-1439 Page 4
Application No. 08/417,981
Claim 6 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Namur in view of Garringer and Gilbert.
Claim 7 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Namur in view of Garringer and Yokomatsu.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellants regarding the § 103 and § 112
rejections, we make reference to the examiner's answer (Paper No.
12, mailed December 3, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
brief (Paper No. 11, filed October 28, 1996) and reply brief
(Paper No. 13, filed February 7, 1997) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 97-1439 Page 5
Application No. 08/417,981
Appeal No. 97-1439 Page 6
Application No. 08/417,981
The indefiniteness issue
We do not sustain the rejection of claim 12 under 35 U.S.C.
§ 112, second paragraph.
Claims are considered to be definite, as required by the
second paragraph of 35 U.S.C. § 112, when they define the metes
and bounds of a claimed invention with a reasonable degree of
precision and particularity. See In re Venezia, 530 F.2d 956,
958, 189 USPQ 149, 151 (CCPA 1976).
The examiner determined (answer, pp. 3 and 8) that the use
of the phrase "the keeper defines a clearance slot between the
keeper and the bottom post" in claim 12 was vague and indefinite.
We do not agree. As correctly pointed out by the appellants
(brief, p. 4), claim 12 is reciting the rotational clearance
space (i.e., slot) provided between the lower part 44 of the
interior of the keeper sleeve 40 and the outer surface of the
bottom post 20 as shown in Figure 3. The mere fact that Figure 3
also shows a rotational clearance space (i.e., slot) provided
between the flange 54 of the bushing 50 and the lower part 44 of
the interior of the keeper sleeve 40 does not render claim 12
Appeal No. 97-1439 Page 7
Application No. 08/417,981
indefinite. Thus, it is our determination that claim 12 does
define the metes and bounds of the claimed invention with a
reasonable degree of precision and particularity. Accordingly,
we have determined that claim 12 is definite.

Prior art issues
The test for obviousness is what the combined teachings of
the references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). 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). A prima facie
case of obviousness is established by presenting evidence that
the reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references before
him to make the proposed combination or other modification. See
In re Lintner, 9 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported by evidence, as shown by
some objective teaching in the prior art or by knowledge
Appeal No. 97-1439 Page 8
Application No. 08/417,981
generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings
of the references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Rejections based on § 103 must rest on a factual basis with these
facts being interpreted without hindsight reconstruction of the
invention from the prior art. The examiner may not, because of
doubt that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968). Our reviewing court has repeatedly
cautioned against employing hindsight by using the appellant's
disclosure as a blueprint to reconstruct the claimed invention
from the isolated teachings of the prior art. See, e.g., Grain
Processing Corp. v. American Maize-Products Co., 840 F.2d 902,
907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
With this as background, we turn to the examiner's § 103
rejections of the claims on appeal.
Claims 1 through 4, 6, 7, and 11 through 13
Appeal No. 97-1439 Page 9
Application No. 08/417,981
Claim 1 recites a system for adjusting the height of a post.
The system comprises, inter alia, a tubular bottom post, a top
post having a plurality of outer grooves, an expandable stop ring
which is split to facilitate expansion thereof, and a keeper.
Namur discloses an adjustment fixture for wishbone booms of
board-sailing devices. As shown in the top view of Figure 1, the
wishbone boom consists essentially of two main tubes 1 joined
under an acute angle on the mast side by way of a connecting
member 2, and of two end tubes 3 accommodated in a telescope
fashion by the main tubes 1 and joined together by way of an
elastic connecting member 4. As shown in Figure 2, each end tube
3 includes several spaced-apart, indented peripheral grooves 5
which can be engaged by an O-ring shaped locking member 6 of
a locking ring generally denoted by 7, when the wishbone boom is
assembled and is to be adjusted to the length corresponding to
the respective sail. The locking ring 7 is made of rubber or the
like and provides a tight seal between the main tube 1 and the
end tube 3. In the embodiment of the locking ring 7 according to
Figure 2, a cylindrical intermediate annular sleeve 8 adjoins the
O-ring-shaped locking member 6 of the integrally constructed
locking ring 7, and a conical end section 9 constitutes the
Appeal No. 97-1439 Page 10
Application No. 08/417,981
termination, there being a radially outwardly extending annular
surface 10 between the outer surface of the cylindrical
intermediate member 8 and the conical end section 9. The radial
width of this annular surface corresponds to the wall thickness
of the main tube 1 and forms a flush abutment for a widened end
11 of this main tube. The outer diameter of the cylindrical
intermediate member 8 corresponds to the inner diameter of the
widened end 11 of the main tube 1. Namur teaches that a readily
handleable transition is formed between the main tube 1 and the
end tube 3, from the radial annular surface 10 via the conical
end section 9 and that this transition is watertight. Namur
further discloses that the O-ring shaped locking member 6
also contributes substantially toward this aim since this locking
member is in firm contact with the inclined transition of the
widened end 11 of the main tube 1 when the sail is rigged. In
the embodiment of the locking ring 7 according to Figure 4, the
same locking ring 7 is again employed as in the embodiment of
Figure 2, but in this case a separate profiled ring 13 of a metal
or a synthetic resin is placed on the end of the main tube 1
which has not been widened. Thus, in the embodiment of Figure 4
there is the possibility of still further reducing the length of
the main tube 1, if desired. Namur teaches that the embodiment
Appeal No. 97-1439 Page 11
Application No. 08/417,981
of Figure 4 is not preferred due to the somewhat problematic
sealing between the profiled ring 13 and the main tube 1, even
though an O-ring (not shown) could be inserted in an inner
circumferential groove (likewise not shown) of the profiled ring
13. Namur states that the adjustment fixture of his invention
exhibits the advantage of having the transition between the main
tube and the end tube well sealed against water and dirt particle
penetration (sand and the like).
Garringer discloses a system for mechanically joining
handrailing members. As shown in Figure 2, the system includes a
first railing member 20 having a male end defined by a male
protrusion 26 of reduced diameter with respect to the first
railing member 20 and an adjacent second railing member 30 having
a female end defined by a longitudinal hole 36 in the second
railing member 30 with the hole 36 shaped and dimensional to
receive the male protrusion 26 of the first railing member 26.
The second railing member 30 has a circumferential groove 32,
extending outwardly from the periphery of the hole 36, which is
positioned over an inwardly extending circumferential groove 22,
along the male protrusion 26 when the protrusion 26 is extended
fully into the hole 36 of the second railing member 30. A
Appeal No. 97-1439 Page 12
Application No. 08/417,981
C-shaped annular collar 40, having an inside diameter less than
the diameter of the male protrusion 26 and an outside diameter
greater than the inside diameter of the hole 36 in the second
rail member 30, is positioned within the two grooves 22 and 32 to
prevent the longitudinal movement of the first railing member 20
relative to the second railing member 30.
The examiner determined (answer, pp. 3-4) that Namur only
lacks the claimed stop ring being split and that
[t]o one of ordinary skill in the art at the time the
invention was made, it would have been obvious to modify the
stop ring of Namur by incorporating a slit to create a split
stop ring as taught by Garringer in order to make the ring
more flexible and easier to relocate to other top post
grooves.
We do not agree. For the reasons set forth by the
appellants (brief, pp. 5-6), it is our opinion that one of
ordinary skill in the art would not have modified the stop ring
Of Namur to include a slit to create a split stop ring since the
inclusion of a slit in the stop ring would be contrary to Namur's
specific goal of providing a watertight seal.
In summary, we see no motivation in the applied prior art of
why one skilled in the art would have modified the device of
Appeal No. 97-1439 Page 13
Application No. 08/417,981
Note In re Rijckaert, supra; In re Lintner, supra; and In3
re Fine, supra.
We have also reviewed the additional references applied in4
the rejection of claims 6 and 7 but find nothing therein which
makes up for the deficiency of Namur and Garringer discussed
above.
Namur to make the modifications necessary to arrive at the
claimed invention. Thus, the examiner has failed to meet the
initial burden of presenting a prima facie case of obviousness. 3
Thus, we cannot sustain the examiner's rejection of appealed
independent claim 1, or claims 2 through 4, 6, 7, and 11 through
13 which depend therefrom, under 35 U.S.C. § 103.4
Claims 8 through 10
Claim 8 recites a method of adjusting the height of a top
post that is inserted in a downward direction into a bottom post.
The method comprises, inter alia, the steps of (1) attaching a
keeper to the bottom post for defining an annular space having
gradually diminishing diameter in the downward direction,
(2) attaching a stop ring to the top post, (3) fitting the
attached stop ring into the annular space so that the keeper
prevents further downward movement of the top post relative to
Appeal No. 97-1439 Page 14
Application No. 08/417,981
the bottom post while permitting without resisting upward lifting
of the top post, (4) orienting the posts such that gravity keeps
the stop ring against the keeper, and (5) lifting the top post to
move the stop ring out of the annular space to permit relocation
of the stop ring on the top post.
The examiner determined (answer, pp. 5-6) that Namur
discloses the invention except for the method of adjusting and
that
[i]t would have been obvious to one of ordinary skill in the
art at the time the invention was made . . . to use this
method [the claimed method] to adjust the configuration of
Namur in view of Garringer. As concerns the limitation
pertaining to upward lifting of the top post without
resistance, it is the position of the examiner that the
configuration of Namur also permits upward lifting of the
top post without resistance due to the unobstructive
geometry between the ring upon which the top post and the
keeper 13 as shown in figure 4.
We do not agree. For the reasons set forth by the
appellants (brief, p. 7), it is our opinion that the geometry
between Namur's locking ring 7 and his keeper ring 13 as shown in
Figure 4 is such that upward lifting of the tube (i.e., top post)
3 would be resisted by the firm watertight contact therebetween.
Furthermore, we do not agree with the examiner's comments
(answer, p. 10) that the geometry between the appellants' keeper
Appeal No. 97-1439 Page 15
Application No. 08/417,981
Note In re Rijckaert, supra; In re Lintner, supra; and In5
re Fine, supra.
and stop ring is similar to the geometry between Namur's locking
ring 7 and keeper ring 13. In that regard, the appellants'
keeper 40 and stop ring 30 (see Figure 3) have interengaging
tapered surfaces which permit the upward lifting of the stop ring
30 without resistance while Namur's locking ring 7 and keeper
ring 13 (see Figure 4) have interengaging cylindrical surfaces
which permit the upward lifting of the locking ring 30 with
resistance due to the firm watertight contact therebetween.
Accordingly, the claimed limitation that the attached stop ring
is fitted into the annular space so that the keeper prevents
further downward movement of the top post relative to the bottom
post while permitting without resisting upward lifting of the top
post is not taught or suggested by the applied prior art. Thus,
the examiner has failed to meet the initial burden of presenting
a prima facie case of obviousness. Thus, we cannot sustain the5
examiner's rejection of appealed independent claim 8, or claims 9
and 10 which depend therefrom, under 35 U.S.C. § 103.
Claim 15
Appeal No. 97-1439 Page 16
Application No. 08/417,981
Claim 15 recites a system for adjusting the height of a
rotatable post. The system comprises, inter alia, an upright
tubular bottom post, an upright top post having a plurality of
outer grooves, an expandable stop ring, and a keeper. The
expandable stop ring and the keeper are arranged and constructed
of materials having sufficiently low coefficients of friction so
as to facilitate relative rotation of the top post and stop ring
with the bottom post.
The examiner determined (answer, pp. 4-5) that the tubes 1
and 3 of Namur can be rotated using the proper amount of torque
and that the material of Namur's locking ring 7 and keeper ring
13 do have a low enough coefficient of friction to allow rotation
at a proper torque level.
We agree with the appellants' argument (brief, p. 8) that
the materials used in Namur's locking ring 7 and keeper ring 13
do not have a coefficient of friction so as to facilitate
relative rotation of the tubes 1 and 3. In our opinion, the
coefficient of friction between Namur's locking ring 7 and the
keeper ring 13 would restrain, not facilitate relative rotation
of the tubes 1 and 3 due to the firm watertight contact between
Appeal No. 97-1439 Page 17
Application No. 08/417,981
Id.6
the locking ring 7 and the keeper ring 13. Accordingly, the
claimed limitation that the stop ring and the keeper are arranged
and constructed of materials having sufficiently low coefficients
of friction so as to facilitate relative rotation of the posts is
not taught or suggested by the applied prior art. Thus, the
examiner has failed to meet the initial burden of presenting a
prima facie case of obviousness. Thus, we cannot sustain the6
examiner's rejection of appealed independent claim 15 under
35 U.S.C. § 103.
Appeal No. 97-1439 Page 18
Application No. 08/417,981
CONCLUSION
To summarize, the decision of the examiner to reject claim 1
12 under 35 U.S.C. § 112, second paragraph, is reversed; and the
decision of the examiner to reject claims 1 through 4, 6 through
11, 13 and 15 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-1439 Page 19
Application No. 08/417,981
KLARQUIST SPARKMAN CAMPBELL
LEIGH & WHINSTON
ONE WORLD TRADE CENTER SUITE 1600
121 S W SALMON STREET
PORTLAND, OR 97204
APPEAL NO. 97-1439 - JUDGE NASE
APPLICATION NO. 08/417,981
APJ NASE
APJ CALVERT
APJ ABRAMS
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 13 Apr 98
FINAL TYPED: