Ex parte Haynes

Board of Patent Appeals and Interferences

Mar 5, 1998

08500740 (B.P.A.I. Mar. 5, 1998)

Application for patent filed July 11, 1995. According to1
appellant, this application is a continuation of Application
08/351,203 filed November 30, 1994, now abandoned.
Following the final rejection of claims 1 to 7,2
appellant, by amendment filed on June 27, 1996 (Paper No. 9),
cancelled claims 1 to 7 and added claims 8 to 10, which are
stated to be claims 5, 6 and 7, respectively, rewritten in
independent form.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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 DAVID H. HAYNES
__________
Appeal No. 97-1775
Application No. 08/500,7401
__________
ON BRIEF
__________
Before CALVERT, COHEN and McQUADE, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
claims 8 to 10, all the claims remaining in the application .2
Appeal No. 97-1775
Application No. 08/500,740
2
Claim 8 is representative of the subject matter in issue:
8. A retaining mechanism for releasably securing a
cylindrically shaped object including:
a first means, adaptable for being fixedly mounted, for
receiving and partially securing the cylindrically shaped object;
a rotating arm, independent of, but rotatively coupled to
said first means, for receiving and partially securing the
cylindrical[ly] shaped object, the arm having both ends free and
rotatable about a fixed intermediate position between the free
ends thereof and a fixed point on said first means, whereby upon
receiving the cylindrical[ly] shaped object, said rotating arm
rotates, relative to said first means, such that the
cylindrical[ly] shaped object is placed within the confines of
said first means and the rotating arm holds the cylindrical[ly]
shaped object therein until selectively released; [and]
means coupling the first means and the rotating arm for
releasably holding any relative position there between, such that
upon placing the cylindrically shaped object within the rotating
arm, said means for releasably holding any relative position
there between allows the rotating arm rotates [sic: to rotate]
relative to the first means to confine the cylindrically shaped
object within the grasp of said first means and the rotating arm
until selectively released.
The references applied in rejecting the appealed claims are:
McGuire 5,024,405 Jun. 18, 1991
Marcusen 5,171,061 Dec. 15, 1992
Evels et al. (Evels) 5,419,479 May 30, 1995
(filed Apr. 19, 1994)
The appealed claims stand rejected as follows:
(1) Claim 8, anticipated by Marcusen, under 35 U.S.C. § 102(b);
(2) Claim 8, anticipated by Evels, under 35 U.S.C. § 102(e);
Appeal No. 97-1775
Application No. 08/500,740
3
(3) Claims 9 and 10, unpatentable over Evels in view of McGuire,
under 35 U.S.C. § 103.
After fully considering the record in light of the arguments
presented in appellant’s brief and the examiner’s answer, we
conclude that rejection (1) is not sustainable, but that
rejections (2) and (3) will be sustained. The reasons for these
conclusions are given under the relevant headings below.
Rejection (1)
Appellant contends (brief, page 6), that the apparatus
disclosed by Marcusen does not anticipate claim 8 because
Marcusen’s rotating arm (20) is not “rotatably coupled about a
fixed intermediate position between the free ends thereof and a
fixed point on said first means,” as called for by the claim. We
agree. The point about which the arm 20 of Marcusen rotates is
at the center of the circular arc formed by the arm; this point
would be a point in the space encircled by the arm, coinciding
with the center of cup 24, rather being on the first means (i.e.,
on Marcusen’s frame 12).
Rejection (2)
With regard to the Evels reference, appellant argues (brief,
page 6):
The rotating arm in Evels is not rotatably coupled
about an intermediate position between the free ends
Appeal No. 97-1775
Application No. 08/500,740
4
thereof and the first means, as recited in Claim 8.
The recitation also in Claim 8 to: “... rotatable
about a fixed intermediate position between the free
ends thereof and a fixed point on said first means” is
also certainty [sic] not disclosed in Evels.
This argument is not well taken. Evels meets the
recitations referred to by appellant, in that rotating arm 8 of
Evels rotates about pin 19, which is at a fixed intermediate
position between the free ends of arm 8, and is fixed to the
first means (jaw 7); see col. 3, lines 31 to 36. Thus, Evels
anticipates claim 8.
Rejection (3)
In his argument on page 7 of the brief concerning this
rejection, appellant acknowledges that McGuire discloses
protruding elements, but asserts that “there is no reason for
modifying the Evels holder to include protruding elements, other
than using Appellant’s own disclosure.” However, the examiner
notes column 2 of McGuire, which discloses at lines 43 to 48 that
(emphasis added):
Preferably, the inside of the pipe gripper includes
four ribs [protruding elements 32] which extend
parallel to and contact the length of pipe encircled by
the pipe gripper. The contact of the pipe with the
ribs of the pipe gripper allows the pipe clamp to
accommodate the expansion and contraction of the pipe
during temperature fluctuations.
Appeal No. 97-1775
Application No. 08/500,740
5
In view of this disclosure, we agree with the examiner that
McGuire provides ample motivation and suggestion to one of
ordinary skill in the art to include protruding elements on the
jaws 8, 10 of the Evels apparatus. A vehicle roof luggage
carrier as disclosed by Evels will naturally encounter a great
many “temperature fluctuations” during use, and it would be but
an obvious application of the teaching of McGuire to utilize
protruding elements in order to enhance the ability of the Evels
clamping device 2 to grip pipe 3 during such fluctuations. The
reason for modifying the Evels apparatus thus comes from the
teaching of the prior art (McGuire), rather than from appellant’s
own disclosure.
Conclusion
The examiner’s decision to reject claim 8 under 35 U.S.C.
§ 102(b) is reversed, and to reject claim 8 under 35 U.S.C.
§ 102(e) and claims 9 and 10 under 35 U.S.C. § 103 is affirmed.
Appeal No. 97-1775
Application No. 08/500,740
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
IRWIN CHARLES COHEN ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge)
Appeal No. 97-1775
Application No. 08/500,740
7
Milton W. Lee
Intellectual Property Division
DIR NVESD
10225 Burbeck Road
Fort Belvoir, VA 22060-5806