Ex Parte Carscadden

Board of Patent Appeals and Interferences

Oct 15, 2009

11636860 (B.P.A.I. Oct. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES R. CARSCADDEN
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Appeal 2009-002992
Application 11/636,860
Technology Center 3700
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Decided: October 15, 2009
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL
Appeal 2009-002992
Application 11/636,860

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James J. Carscadden (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-7. We have jurisdiction
under 35 U.S.C. § 6(b) (2002). We reverse.
Appellant’s claimed invention is a tool for removing and installing
brake shoes on heavy-duty, commercial vehicles. Spec. 1:7-9. Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A brake spring tool comprising:
an elongated shaft having an upper end and
a lower end;
an elongated, tapered neck axially extending
from the upper end of said shaft;
a narrow, flattened stem at a distal end of
said neck;
a C-shaped gripping member attached to
said stem and coplanar therewith.
Appellant seeks review of the Examiner’s rejections of claim 1 under
35 U.S.C. § 102(e) as being anticipated by So (US 2006/0196057 A2,
published September 7, 2006) and under 35 U.S.C. § 102(b) as being
anticipated by Brame (US 2,830,480, issued April 15, 1958); the Examiner’s
rejections of claim 2 under 35 U.S.C. § 103(a) as being unpatentable over So
in view of Klomp (US 6,332,379 B1, issued December 25, 2001) and over
Brame in view of Klomp; the Examiner’s rejections of claim 3-6 under
35 U.S.C. § 103(a) as being unpatentable over So in view of Klomp and
further in view of Yeh (US 6,386,727 B1, issued May 14, 2002) or Naghi
(US 2002/0105796 A1, published August 8, 2002); and the Examiner’s
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rejections of claim 3-7 under 35 U.S.C. § 103(a) as being unpatentable over
Brame in view of Klomp and further in view of Yeh or Naghi.
The Examiner found that So discloses a C-shaped gripping member,
as called for in claim 1. Ans. 3. Appellant contends that So’s fork 4 (the
Examiner’s alleged gripping member) is not C-shaped, but instead is
U-shaped or V-shaped. App. Br. 5.
The Examiner further found that Brame discloses an elongated,
tapered neck. Ans. 4. Appellant contends that Brame does not disclose a
tapered neck on the end of Brame’s handle. App. Br. 6.
The issues presented by this appeal are:
Has Appellant shown the Examiner erred in finding that So discloses
a C-shaped gripping member?
Has Appellant shown the Examiner erred in finding that Brame
discloses an elongated, tapered neck extending from Brame’s handle?
Independent claim 1 calls for a brake spring tool having a C-shaped
gripping member attached to a narrow, flattened stem and coplanar
therewith. A person having ordinary skill in the art would understand the
claimed “C-shaped gripping member” to mean that the gripping member is
shaped like the letter “C”, viz, having two free ends joined by an arc. So
discloses a cooking utensil 1 having a handle 2, a shank 3, and two fork
tines 4. So 1, para. 0026. So depicts the fork tines 4 having free ends and
the tines 4 converge at their opposite ends to form a V-shape. See So, figs. 1
and 3. As such, So does not disclose a C-shaped gripping member, as called
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for in claim 1. Accordingly, we cannot sustain the Examiner’s rejection of
claim 1 as anticipated by So.
Independent claim 1 also calls for a brake spring tool having an
elongated, tapered neck axially extending from an upper end of an elongated
shaft. Brame discloses a spanner member S operatively connected to a
handle 16 with a square aperture or socket 17 to permit a suitable handle
extension (not shown) to be operatively engaged with handle 16. Brame,
col. 3, ll. 56-67; fig. 1. Brame’s handle 16 is of constant width and thickness
along substantially its entire length and flares out slightly at the point where
the handle 16 joins the spanner S. Brame, figs. 2, 3. As such, Brame does
not disclose an elongated, tapered neck axially extending from an upper end
of an elongated shaft, as called for in claim 1. Accordingly, we cannot
sustain the Examiner’s rejection of claim 1 as anticipated by Brame.
Claims 2-6 depend from claim 1. The Examiner’s conclusions of
obviousness of claims 2-6 based on either So or Brame in combination with
Klomp, Yeh, and/or Naghi are all founded on the erroneous findings of facts
as to the scope and content of So and Naghi. Further, we find no reason, and
the Examiner has not provided a reason, why one having ordinary skill in the
art would have been led to modify the tool of So to form the forks into a C-
shaped member or to modify the tool of Brame to have an elongated, tapered
neck based on the teachings of Klomp, Yeh, or Naghi. As such, these
additional references do not appear to cure the deficiencies of So and Brame.
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Accordingly, we cannot sustain the rejections of claims 2-6 under § 103.
The decision of the Examiner to reject claims 1-7 is reversed.

REVERSED

Vsh

KENNETH L. TOLAR
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