Ex parte Main

Board of Patent Appeals and Interferences

May 27, 1998

08682393 (B.P.A.I. May. 27, 1998)

Application for patent filed July 17, 1996. According to1
appellant, the application is a continuation of Application
08/274,895, filed July 14, 1994, 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(2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HARVEY M. MAIN

_____________
Appeal No. 97-4208
Application 08/682,3931
______________
ON BRIEF
_______________
Before CALVERT, COHEN and NASE, Administrative Patent Judges.
CALVERT, Administrative Patent Judge.
Appeal No. 97-4208
Application 08/682,393
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
to 5, 9 to 13, 15, 17 to 25 and 27 to 44, all the claims
remaining in the application.
The subject matter involved in this appeal is a ratchet
wrench. The appealed claims are reproduced in Appendix A of
appellant’s brief.
The references applied in the final rejection are:
Flynn 3,733,936 May 22, 1973
Main et al. (Main '025) 4,128,025 Dec. 5, 1978
Main '940 4,218,940 Aug. 26, 1980
Gummow 4,406,186 Sept. 27, 1983
The appealed claims stand finally rejected as follows:
(1) Claims 1 to 5, 9 to 13, 15, 17 to 25 and 27 to 44,
unpatentable for failure to comply with 35 U.S.C. § 112, first
paragraph;
(2) Claims 1 to 3, 5, 9 to 13, 20 to 25, 28 to 36 and
40 to 43, unpatentable over Main '025 or '940 in view of Flynn,
under 35 U.S.C. § 103;
(3) Claims 4 and 27, unpatentable over Main '025 or
'940 in view of Flynn and Gummow under 35 U.S.C. § 103.
Appeal No. 97-4208
Application 08/682,393
3
Rejection (1)
In the final rejection, the examiner indicated that the
specification did not meet the enablement requirement of § 112,
first paragraph, with regard to the subject matter recited in the
claims, in that (final rejection, page 2)
[t]he specification and drawings show that
the annular member (20) is adapted to engage
a standard socket (12) which will in turn be
applied to a “first workpiece”, e.g. a
nut(14). The claims state that the annular
member (20), however is “operative to mate-
ably [sic] engage the first workpiece”
(claim 1) or a standard socket or the first
workpiece (claim 24). Thus the scope of the
claims is broader than the specification in
that the drive stub 110 cannot directly
engage the workpiece as is broadly claimed.
Also, there is no disclosed “resilient
urging” of the shaft as claimed in claims 21
and 41.
In response to appellant’s argument on pages 18 to 20 of the
brief that it would require no undue effort for one of ordinary
skill to construct the driver member integrally with the socket,
so that the driver member would directly engage the first work-
Appeal No. 97-4208
Application 08/682,393
4
piece, the examiner seems to state on page 3 of the answer that
the rejection is for lack of written description, i.e.:
Claims 1-5, 9-13, 15, 17-25 and 27-44
stand finally rejected under 35 U.S.C. 112,
first paragraph, as containing subject matter
which was not described in the specification
in such a way as to reasonably convey to one
skilled in the art that the inventor(s), at
the time the application was filed, had
possession of the claimed invention.
However, he then repeats the above-quoted language from the final
rejection, and on pages 9 and 10 of the answer argues that the
disclosure is not enabling because appellant’s disclosed ejection
mechanism 118 would be rendered inoperative if the socket were
integral with driver member 20.
Since the examiner has referred to both written
description and enablement, we note initially that these are
separate and distinct requirements of the first paragraph of
§ 112. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d
1111, 1117 (Fed. Cir. 1991). In the present case, regardless of
the precise interpretation which may be placed on the recitation
in claim 1 that the annular driver member is “operative to
matably engage the first workpiece,” there is a written descrip-
tion of this recitation in the application as filed, not only
Appeal No. 97-4208
Application 08/682,393
5
because claim 1 is an original claim, In re Armbruster, 512 F.2d
676, 678, 185 USPQ 152, 154 (CCPA 1975), but also because appel-
lant employs the language of this recitation on page 7, lines 9
and 10 of the specification, and discloses on page 17, lines 13
to 18, that
the features and advantages of the ratchet
wrench of the present invention can be
applied to either a ratchet wrench adapted to
directly engage the first workpiece or a
ratchet wrench adapted for use with a con-
ventional socket that engages the first work-
piece.
With regard to the question of enablement, it is
unnecessary to determine whether the appellant’s and examiner’s
arguments concerning the construction of the driver member
integrally with the socket are correct, because the language of
claim 1 does not require such construction. The term “first
workpiece” in claim 1 is broad enough to include socket 12,
which, as disclosed, is engaged by driver member 20 and itself
“can be rotatably advanced about a second workpiece,” namely, can
be rotated about bolt 16. Alternatively, since claim 1 does not
require that the “annular driver member” be an integral member,
this expression can be read on the disclosed combination of
Appeal No. 97-4208
Application 08/682,393
6
driver member 20 and releasably attached socket 12, the latter of
which matably engages a “first workpiece” consisting of nut 14.
There is no question that both of these interpretations of the
claim language are enabled by appellant’s disclosure.
The other independent claims, 24 and 44, both recite
“an annular driver member operative to matably engage the con-
ventional socket sized and adapted to matably engage the first
workpiece.” The examiner seems to interpret the antecedent of
the expression “sized and adapted” as the “annular driver
member,” but it is evident, particularly when read in light of
the disclosure at page 18, lines 13 to 15, that it is the
“conventional socket” which is “sized and adapted to matably
engage the first workpiece.” Such engagement is clearly enabled
by appellant’s disclosure.
The appellant has not responded to the examiner’s
rejection of claims 21 and 41 concerning non-enablement of the
“resiliently urging” limitation. Rejection (1) will therefore be
sustained as to those claims.
Accordingly, rejection (1) will be sustained as to
claims 21 and 41, but not as to claims 1 to 5, 9 to 13, 15, 17 to
20, 22 to 25, 27 to 40 and 42 to 44.
Appeal No. 97-4208
Application 08/682,393
Since the relevant portions of the ratchet wrench2
disclosed in Main '940 are essentially the same as in Main '025,
we will confine our discussion to the latter reference.
7
Rejection (2)
Considering this rejection as to claim 1, the appellant
does not contend that the combination of Main '025 or '940 and
Flynn would not have been obvious, but rather contends that the
combination would not meet all the limitations of claim 1. The
issue comes down to whether Main '025 discloses the following2
claimed limitations (emphasis added):
(a) an annular driver member . . . having
. . . a plurality of end teeth disposed
circumferentially about and extending from an
annular flat surface of said annular driver
member parallel to an axis of rotation of
said annular driver member; [and]
(b) a pawl element having . . . a pair of
nibs, . . . said nibs projecting from a flat
surface of said pawl element and extending
parallel to a pivotal axis of said pawl
element.
Appellant first argues that the “flat surface” limita-
tions of parts (a) and (b) are not met because Main '025
discloses concave, not flat, surfaces on annular driver 18 and
Appeal No. 97-4208
Application 08/682,393
8
pawl element 30 from which teeth 26 and 36, respectively,
project. However, as the examiner points out, Main '025
discloses at column 5, lines 18 to 20, that the wrench may use
straight gears as opposed to bevel gears. If the straight gears
suggested by Main '025 were used, then the surfaces of driver
member 18 and pawl element 30 from which the gear teeth 26, 36,
extend would be
flat, and would correspond to the flat surfaces called for by
parts (a) and (b) of claim 1.
Appellant’s other argument with regard to claim 1 is
that Main '025 does not disclose the “nibs” recited in part (b).
The examiner takes the position that these are readable on the
teeth 36 of Main’s pawl 32.
It is fundamental that, during prosecution before the
PTO, the pending claims must be interpreted as broadly as their
terms reasonably allow, In re Zletz, 893 F.2d 319, 321, 13 USPQ2d
1320, 1322 (Fed. Cir. 1989), and that
as an initial matter, the PTO applies to the
verbiage of the proposed claims the broadest
reasonable meaning of the words in their
ordinary usage as they would be understood by
one of ordinary skill in the art, taking into
account whatever enlightenment by way of
definitions or otherwise that may be afforded
by the written description contained in the
applicant’s specification.
Appeal No. 97-4208
Application 08/682,393
“any small, sharp projecting part”3
9
In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.
Cir. 1977).
Appellant, citing a definition of “nib” from the
American Heritage Dictionary of the English Language, contends3
that Main’s gear teeth are not “nibs” because they are not sharp.
The examiner on the other hand notes that Webster’s Seventh New
Collegiate Dictionary defines “nib” as “a small pointed or pro-
jecting part” (emphasis added), and asserts that gear teeth 36 of
Main '025 are projecting parts, and therefore are nibs, as
claimed.
We agree with the examiner. Looking to appellant’s
disclosure for any enlightenment on this question, In re Morris,
supra, we note, as did the examiner, that the nibs 42, 44 shown
in appellant’s drawings (Figs. 12 and 13) have blunt, rather than
pointed, ends. Accordingly therefore, the term “nib” as used in
the claims cannot be accorded the definition cited by appellant,
but must be used in the broader sense of “a small projecting
part,” which definition also reads on a gear tooth such as those
disclosed on the pawl 30 of Main '025.
Appeal No. 97-4208
Application 08/682,393
10
Appellant further argues that his structure is simpli-
fied over that of Main, because he employs only a pair of nibs
rather than Main’s numerous gear teeth. However, the claims do
not exclude the presence of other gear teeth (“nibs”) in addition
to the pair of nibs recited.
Accordingly, we will sustain the rejection of claim 1
under 35 U.S.C. § 103, and likewise the rejection of claims 2, 5,
9, 10, 12, 13 and 20 to 23, which, appellant states on page 9 of
the brief, fall with claim 1.
Claims 3 and 24 each include the limitation that the
peripheral length of each peripheral tooth on the driver member
is equal to the length of the shoulders on the pawl element.
These lengths are identified in the specification as “h ” anda
“h ,” respectively, and it is disclosed that making these dimen-s
sions equal increases the mechanical strength of the wrench (page
22, lines 4 to 12).
The examiner asserts that this feature is suggested by
Flynn, but does not identify, and we do not find, any written
disclosure thereof in the reference. Presumably the examiner is
referring to Flynn’s drawings, which show in Figs. 1 and 5 a
driver member 25 or 125 whose peripheral teeth 26 or 126 are of
the same thickness (length) as those of pawl 27 or 127. However,
Appeal No. 97-4208
Application 08/682,393
Appellant states on page 9 of the brief that claim 334
“stand[s] alone,” but since it is dependent on claim 24, it
necessarily is patentable over the applied prior art if claim 24
is.
11
we do not consider that this showing, without more, would have
suggested to one of ordinary skill in the art that the driver
member and/or pawl element of Main '025 or '940 be modified to
make their teeth of equal peripheral length. This is not merely
a matter of design choice, but solves appellant’s stated problem
of increasing the strength of the wrench. Cf. In re Kuhle, 526
F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975).
We will therefore not sustain the rejection of claims 3
and 24, nor the rejection of claims 25 and 28 to 43, dependent on
claim 24.4
Claims 11 (and 33) recite that
said second end portion of said drive shaft
includes a disk element disposed between said
first and second gears and wherein said pawl
element includes a pair of locating pins
spaced apart from one another and extending
parallel to said pair of nibs, said locating
pins operative to contact said disk element
to restrict linear movement of said drive
shaft when said first end portion of said
drive shaft is moved from the first linear
position to the second linear position.
Main '025 does not disclose any pins operative to contact the
disk element 58 on drive shaft 52, but the examiner contends
Appeal No. 97-4208
Application 08/682,393
12
(answer, page 8) that the pins are the “full structural and
functional equivalent” of the wall 44 on pawl 30 of Main '025.
We will not sustain this rejection. It is questionable
to us whether a wall is the structural equivalent of pins, but
even if it is, the mere existence of structural and functional
equivalence does not establish obviousness. In re Flint, 330
F.2d 363, 367, 141 USPQ 299, 302 (CCPA 1964). The examiner has
presented no evidence and/or reasons as to why it would have been
obvious to one of ordinary skill in the art to employ locating
pins, as claimed, in the wrench of Main '025.
The rejection of claim 11 will accordingly not be
sustained.
Rejection (3)
The examiner takes the position that the apparatus
recited in claims 4 and 27 would have been obvious over Main '025
or '940 in view of Flynn, further in view of Gummow. Since
(i) we have held above that claim 24 is not unpatentable over
Main '025 or '940 in view of Flynn, (ii) claim 27 is dependent on
claim 24, and (iii) Gummow does not supply the deficiency noted
Appeal No. 97-4208
Application 08/682,393
13
with regard to the other references, the rejection of claim 27
will not be sustained. Our discussion of rejection (3) will
therefore be limited to claim 4.
The examiner’s position is summarized in the following
quotation from page 7 of the answer (original emphasis):
Both Main devices show the use of a spring
biased pin [46 of Main '025] instead of a
ball, however it is well known in the ratchet
wrench art, as clearly evidenced by Gummow,
that a spring biased ball can also be used in
exactly the same manner for exactly the same
purpose. Thus one skilled in the art would
find it obvious to use either a pin or ball,
as desired, to function as a detent mechanism
for a ratchet pawl. The second point is that
the placement of the spring and ball is on
the pawl and not on the body of the tool,
however this is merely an obvious reversal of
position of the elements without any change
in the structure or function of these
elements and one skilled in the art would
find it obvious to make such a reversal of
position without effecting [sic: affecting]
the overall function of the wrench.
We do not consider this position to be well taken.
Gummow discloses a simple ball-type detent 152 which merely
serves to retain the pawl 146 in whatever position it is turned
to by selector 118 (col. 5, lines 42 to 65). The spring member
46 of Main '025, on the other hand, acts as an over-center switch
Appeal No. 97-4208
Application 08/682,393
14
to urge the pawl in one direction or the other (col. 3, lines 54
to 59). Thus, contrary to the examiner’s statement, the ball
detent of Gummow, whether located on the pawl or on the wall of
the housing, could not be used in exactly the same manner for
exactly the same purpose as Main’s spring loaded pin 46, and we
perceive no basis for concluding that one of ordinary skill would
have been motivated to substitute the former for the latter.
The rejection of claim 4 will not be sustained.
Conclusion
The examiner’s decision to reject the appealed claims
under 35 U.S.C. § 112, first paragraph, is affirmed as to claims
21 and 41, and reversed as to claims 1 to 5, 9 to 13, 15, 17 to
20, 22 to 25, 27 to 40 and 42 to 44. His decision to reject the
appealed claims under 35 U.S.C. § 103 is affirmed as to claims 1,
2, 5, 9, 10, 12, 13 and 20 to 23, and is reversed as to claims 3,
4, 11, 24, 25 and 27 to 43.
Appeal No. 97-4208
Application 08/682,393
15
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-4208
Application 08/682,393
16
Timothy J. Martin
9250 W. 5th Avenue
Suite 200
Lakewood, CO 80226