Ex parte BARFIELD et al.

Board of Patent Appeals and Interferences

Oct 7, 1998

08595910 (B.P.A.I. Oct. 7, 1998)

Application for patent filed February 6, 1996.1
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(2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte NORMA Y. BARFIELD and
LAURIE A. BERG
__________
Appeal No. 97-3707
Application 08/595,9101
__________
ON BRIEF
__________
Before CALVERT, ABRAMS, and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 97-3707
Application 08/595,910
Claims 9 through 12 have been amended subsequent to2
final rejection.
2
Norma Y. Barfield et al. appeal from the final rejection
of claims 9 through 12, all of the claims pending in the
application.2
The invention relates to "an accessory device for opening
easy-open twist-off caps on bottles" (specification, page 2).
A copy of the claims on appeal appears in the appendix to the
appellants’ brief (Paper No. 12).
The references relied upon by the examiner as evidence of
obviousness are:
Delsack 5,038,644 Aug. 13, 1991
Schultz 5,257,566 Nov. 2, 1993
Tegethoff 5,329,832 Jul. 19,
1994
Fox 2,255,082 A Oct. 28, 1992
(British Pat. Document)
The claims stand rejected under 35 U.S.C. § 103 as
follows:
a) claim 9 as being unpatentable over Fox in view of
Delsack;
Appeal No. 97-3707
Application 08/595,910
3
b) claims 10 and 11 as being unpatentable over Fox in
view of Delsack, and further in view of Tegethoff; and
c) claim 12 as being unpatentable over Fox in view of
Delsack and Tegethoff, and further in view of Schultz.
Reference is made to the appellants’ brief (Paper No. 12)
and to the examiner’s answer (Paper No. 13) for the respective
positions of the appellants and the examiner with regard to
the merits of these rejections.
Fox, the examiner’s primary reference, discloses a hand-
held device for gripping and rotating objects such as bottle
caps, jar lids, door knobs, and the like. The Abstract of the
reference is illustrative:
[a] device 2 for gripping differently sized objects
4 that require rotating by hand, which device 2
comprises a length of flexible material which in use
is formed into a part circle 8 of a diameter
appropriate to a chosen object to be gripped, and a
handle portion 10. The flexible material may be of
rubber or plastic and sufficiently inelastic that it
will not noticeably stretch during rotation. The
device may have a member 16 for receiving a person’s
thumb during use of the device, the member 16 having
a body part (18, fig 4) and a pair of straps (20,
fig 4) which permit the body part to slide. The
device may be joined at the handle end by means of
bonding material (fig 3), retractable press studs
Appeal No. 97-3707
Application 08/595,910
4
(fig 9), by riveting the adjacent ends together (fig
6), or by a link (fig 7). The device may have a
scalloped or roughened outer surface for gripping
purposes (36, fig 3). The inner surface of the
device may be ribbed, roughened or toothed in order
to grip the object. The teeth may be made from
metal.
The examiner concedes that Fox does not meet the
limitation in independent claim 9 requiring a plurality of
finger loops (answer, page 3). In this regard, the Fox device
includes but a single finger loop in the form of member 16.
Delsack discloses a metal or hard plastic finger wrench
for threading and unthreading articles such as nuts and bolts.
The wrench comprises
a pair of slidingly interconnected substantially
flat and coplanar jaw members, finger-engageable
formations on the respective jaw members, such as
finger openings in the respective jaw members, or
depressions at the outer ends of the respective jaw
members, and substantially coplanar substantially
parallel gripping edges on the jaw members between
the finger formations, the jaw members having a
closed position in which the gripping edges are in
substantial abutment, or closely spaced apart, and
the jaw members being movable from the closed
position progressively to increase the distance
between the gripping edges and provide an opening
into which the article can be fitted with the
gripping edges embracing the article whereby torque
Appeal No. 97-3707
Application 08/595,910
5
may be applied to the article through the gripping
edges [column 1, lines 52 through 67].
In rejecting independent claim 9 under 35 U.S.C. § 103,
the examiner contends that "[i]t would have been obvious to
one of ordinary skill in the art at the time the invention was
made to have modified the opener of [Fox] by including a
second finger loop as taught by Delsack in order to provide a
more secure hold on the device" (answer, page 3).
The appellants’ argument that this proposed combination
of Fox and Delsack is predicated on impermissible hindsight
(see pages 9 through 11 in the brief) is persuasive.
Considering the fundamental differences between the devices
disclosed by Fox and Delsack, it is apparent that the examiner
has improperly employed claim 9 as an instruction manual to
selectively piece together isolated disclosures in the prior
art in order to support a conclusion of obviousness (see In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992)).
Moreover, even if Fox and Delsack were combined in the
manner proposed, the resulting device still would fall short
Appeal No. 97-3707
Application 08/595,910
6
of meeting the limitations in claim 9 requiring the web to be
"sized relative to the user’s hand when secured thereon to
overlie the thumb and index finger between respective second
knuckles thereof and the hand web portion between the thumb
and index finger, with its said opposite ends then being near
the second knuckles." As correctly pointed out by the
appellants (see page 6 in the brief), the portion of the Fox
device corresponding to the recited web, the length of
flexible material, is far longer than the web size required by
claim 9 in order to provide the Fox device with a handle
portion 10 (see Fox’s Figures 1 and 5(a)). There is nothing
in the combined teachings of Fox and Delsack which would have
suggested shortening the length of Fox’s web to the size
recited in claim 9, thereby eliminating the handle portion and
changing the very nature of the Fox device.
Tegethoff and/or Schultz, applied to support the standing
rejections of dependent claims 10 through 12, do not cure the
foregoing deficiencies in the basic Fox-Delsack combination.
Appeal No. 97-3707
Application 08/595,910
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Thus, the examiner’s conclusion that the differences
between the subject matter recited in claims 9 through 12 and
the applied 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 is not well
founded. Accordingly, we shall not sustain the standing 35
U.S.C. § 103 rejections of these claims.
The decision of the examiner is reversed.
REVERSED
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-3707
Application 08/595,910
8
dem
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