Ex parte KELLETT

Board of Patent Appeals and Interferences

Jul 8, 1998

08154721 (B.P.A.I. Jul. 8, 1998)

Application for patent filed November 19, 1993. According1
to appellant, the application is a continuation of Application
07/865,947, filed April 9, 1992, abandoned.
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(2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GLENN E. KELLETT
_____________
Appeal No. 95-3237
Application 08/154,7211
______________
ON BRIEF
_______________
Before BARRETT, FLEMING and LEE, Administrative Patent Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection
of claims 1 through 3 and 6 through 11. Claims 4 and 5 have been
canceled.
Appeal No. 95-3237
Application 08/154,721
2
The invention relates to a one piece electrical power
line insulator having a universal end clamp which is suitable for
substantially horizontal or vertical applications.
The independent claim 1 is reproduced as follows:
1. A one piece electrical power line insulator and
universal end clamp device, comprising:
an electrical insulator having first and second ends;
and
a fixed position conductor clamp permanently attached
to the second end of the insulator, said clamp being in a fixed
position relative to the insulator and having a body defining a
saddle for receiving a conductor when the insulator is extending
either substantially horizontally or substantially vertically
from a line post, the saddle of the clamp extending transversely
of a central axis extending longitudinally of the device, the
saddle of the clamp extending transversely of a central axis
extending longitudinally of the device, the saddle being offset
at a downward tilting angle from the perpendicular to the central
axis so that the saddle may receive and hold a conductor when the
device is oriented either substantially vertically or
substantially horizontally, and having a bolt extending through
and being held by the body upon which a keeper is movable along a
track defined in the body away from and toward the saddle, said
keeper being securable about a conductor seated in the saddle by
locking means coacting with the bolt; and said bolt defines the
angle of tilt for the saddle relative to the longitudinal central
axis.
The Examiner relies on the following references:
McCarthy 530,706 Dec. 11, 1894
Luscomb et al. (Luscomb) 578,825 Mar. 16, 1897
Locke 887,107 May 12, 1908
Hall 3,836,102 Sept. 17, 1974
Kellett et al. (Kellett) 4,727,224 Feb. 23, 1988
Bogdanow 5,064,971 Nov. 12, 1991
Appeal No. 95-3237
Application 08/154,721
3
Claims 1, 2, 6 and 7 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Hall in view of Bogdanow.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hall in view of Bogdanow and further in view of
Luscomb, Locke or McCarthy. Claims 8 and 9 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hall in view of
Bogdanow and further in view of Kellett. Claims 10 and 11 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Hall
in view of Bogdanow and further in view of Appellant's admitted
prior art.
Rather than reiterate the arguments of Appellant and
the Examiner, reference is made to the brief and answer for the
respective details thereof.
OPINION
We will not sustain the rejection of claims 1 through 3
and 6 through 11 under 35 U.S.C. § 103.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
Appeal No. 95-3237
Application 08/154,721
4
having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions found
in the prior art, or by implications contained in such teachings
or suggestions. In re Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). "Additionally, when determining obviousness,
the claimed invention should be considered as a whole; there is
no legally recognizable 'heart' of the invention." Para-Ordnance
Mfg. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d
1237, 1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996)
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
Appellant argues on pages 4 and 5 of the brief that
Hall fails to teach a saddle of the clamp to be offset at a
downward tilting angle from the perpendicular to the central
axis. Appellant further argues that Hall fails to teach that
the bolt of the clamp defines the angle of tilt for the saddle
relative to the longitudinal central axis.
We note that Appellant's claim 1 recites a "saddle
being offset at a downward tilting angle from the perpendicular
Appeal No. 95-3237
Application 08/154,721
5
to the central axis so that the saddle may receive and hold a
conductor when the device is oriented either substantially
vertically or substantially horizontally." In addition,
Appellant's claim 1 recites a fixed position conductor clamp
"having a bolt extending through and being held by the body upon
which a keeper is movable along a track . . . said bolt defines
the angle of tilt for the saddle relative to the longitudinal
central axis." (Emphasis added.)
Hall does teach in column 2, lines 30-33, that
Figures 2 and 3 show a clamp body 10 being provided with an
upwardly opening conductor receiving groove 22 which extends
generally perpendicular to the longitudinal axis of the insulator
11. However, we do not agree with the Examiner that this is a
teaching of a saddle that is to be offset at a downward tilting
angle. The passage merely indicates that the saddle of the clamp
is to extend generally perpendicular to the axis of the
insulator. Upon a closer inspection of Hall's specification and
Figures 2 and 3, we note that the bolt 36 as well as the saddle
is not downwardly titled but is parallel to the central axis.
The Federal Circuit states that "[t]he mere fact that
the prior art may be modified in the manner suggested by the
Appeal No. 95-3237
Application 08/154,721
6
Examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification." In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984).
We find that neither Hall nor Bogdanow suggests or
teaches a saddle being offset at a downward tilting angle from
the perpendicular to the central axis or a bolt extending through
and being held by the body upon which a keeper is movable along a
track in which the bolt defines the angle of tilt for the saddle
relative to the longitudinal central axis. Our reviewing court
requires this evidence in order to establish a prima facie case.
In re Knapp-Monarch Co., 296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA
1961); In re Cofer, 354 F.2d 664, 668, 148 USPQ 268, 271-72 (CCPA
1966). Therefore, we find that the Examiner has failed to
establish why one having ordinary skill in the art would have
been led to the claimed invention by teachings or suggestions
found in the prior art.
Appeal No. 95-3237
Application 08/154,721
7
We have not sustained the rejection of claims 1 through
3 and 6 through 11 under 35 U.S.C. § 103. Accordingly, the
Examiner's decision is reversed.
REVERSED
LEE E. BARRETT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JAMESON LEE )
Administrative Patent Judge )
Appeal No. 95-3237
Application 08/154,721
8
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