Ex parte Morghen

Board of Patent Appeals and Interferences

Sep 15, 1998

08613808 (B.P.A.I. Sep. 15, 1998)

Application for patent filed March 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not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MANFRED A. MORGHEN
__________
Appeal No. 98-0005
Application No. 08/613,8081
__________
ON BRIEF
__________
Before MEISTER, ABRAMS and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-6, 10 and 11. Claims 7 and 8 have
been canceled, claim 9 has been indicated as being allowable
if rewritten in independent form, and claims 12-20 have been
Appeal No. 98-0005
Application No. 08/613,808
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withdrawn from consideration as being directed to a nonelected
invention.
The appellant's invention is directed to a work piece
clamping system. The subject matter before us on appeal is
illustrated by reference to claim 1, which has been reproduced
in an appendix to the Appellant’s Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Maley 724,116 Mar. 31,
1903
Woodman 1,016,594 Feb. 6,
1912
Andrew 1,685,899 Oct. 2,
1928
Cardner 1,842,147 Jan. 19,
1932
Boggs 3,473,420 Oct. 21,
1969
Allen 5,046,707 Sep. 10,
1991
THE REJECTIONS
Appeal No. 98-0005
Application No. 08/613,808
Canceled claim 7 erroneously has been listed as being on2
appeal.
3
Claims 1-5 stand rejected under 35 U.S.C. § 103 as being2
unpatentable over Maley in view of Allen, Woodman and Andrew.
Claim 6 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Maley in view of Allen, Woodman, Andrew and
Cardner.
Claims 10 and 11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Maley in view of Allen, Woodman,
Andrew and Boggs.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness under 35 U.S.C. § 103, it is incumbent upon the
examiner to provide a reason why one of ordinary skill in the
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Application No. 08/613,808
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art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed
invention. See Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat.
App. & Int. 1985). To this end, the requisite motivation must
stem from some teaching, suggestion or inference in the prior
art as a whole or from the knowledge generally available to
one of ordinary skill in the art and not from the appellant's
disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988). The appellant’s
invention is directed to clamping a work piece in place
tightly pressed against the surface of a base plate. Among
the structural limitations set forth in claim 1, the sole
independent claim, is an arm having a cam surface with a
varying diameter around the pivot pin upon which the arm is
mounted,
said cam surface having a plurality of angled
grooves for engaging said work piece and forcing
said work piece toward said base plate, pins and
other clamps as said cam surface is pivoted into
pressure engagement with said work piece.
Appeal No. 98-0005
Application No. 08/613,808
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The examiner points out that the basic structure of the
claimed clamping system is disclosed by Maley, except for
several features, including the angled grooves limitation
quoted above. It is the examiner’s position, however, that
such angled grooves are taught by Andrew, and it would have
been obvious to one of ordinary skill in the art to so modify
the Maley structure in this manner. We do not agree.
While Maley teaches securing a work piece to a base plate
in a manner that presses it against the surface of the base
plate, it does so in a manner quite different from the claimed
system. Whereas the claim calls for a pivot pin mounted on a
support block and an arm having a cam surface mounted on the
support block for pivoting movement about the pivot, in Maley
the pivot pin (e) protrudes through the support block (f), but
is mounted on the base plate (a). It then follows that the
arm in the Maley device also is not mounted on the support
block, as is recited in the appellant’s claims. Claim 1 also
requires that the cam surface that presses the work piece into
contact with the base plate be mounted on the arm, but in
Maley it is mounted on the support plate. Therefore, the cam
surface does not act directly upon the work piece, and there
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Application No. 08/613,808
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would be no reason to add a plurality of angled grooves to its
surface. Nor, for that matter, would there be a reason to add
such grooves to Maley’s cam surface (f ), since it does not2
rotate in contact with the work piece, but simply acts upon an
inclined surface provided on the edge of the work piece. In
our opinion, the rejection fails at this point.
Adding Andrew to the primary reference does not alleviate
this problem. Andrew discloses a work piece clamping device
which in one embodiment presses the work piece against the
base plate, and in the other does not. In the embodiment
shown in Figure 2, circular teeth (19), which are not angled
as are screw threads, engage the edge of the work piece.
Rotating the screw (14) causes it to displace downwardly by
action of the screw threads (15), thus pressing the work piece
against the base plate; however, there are no angled grooves
on the portion that engages the edge of the work piece in this
embodiment. Angled threads (28) are in contact with the edge
of the work piece in the version shown in Figure 3. However,
they are matching but oppositely oriented to screw threads
(25) of the rotating member (26), so that when the latter is
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Application No. 08/613,808
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rotated, the work piece will not be pressed against the base
plate (page 2, lines 102-112).
We fail to perceive any teaching, suggestion or incentive
in either Maley or Andrew which would have led one of ordinary
skill in the art to modify the Maley apparatus in the manner
proposed by the examiner. To follow the teachings of Andrew’s
first embodiment would lead the artisan to place parallel
teeth on a cam surface and press the work piece into contact
with the base plate by use of the threads on the pivot bolt.
To follow the teachings of the second embodiment would result
in a system in which the work piece is not pressed against the
base plate.
Consideration of the other two references cited against
claim 1 does not alleviate the shortcomings in Maley and
Andrew. Allen discloses a system in which index pins are
provided for aligning the work piece on the base plate prior
to actuating a set of clamps, and Woodman discloses cams
operated by handles. Incorporation of these features into the
Maley device still would not meet all the terms of claim 1.
The same can be said for the Boggs and Cardner references
cited against dependent claims.
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It therefore is our opinion that the teachings of the
prior art relied upon fail to establish a prima facie case of
obviousness with respect to the subject matter recited in
independent claim 1. This being the case, we will not sustain
the rejection of claim 1 or, it follows, of any of the
dependent claims.
The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge)
Appeal No. 98-0005
Application No. 08/613,808
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John R. Duncan
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