Ex parte Noble

Board of Patent Appeals and Interferences

Feb 25, 1998

08335939 (B.P.A.I. Feb. 25, 1998)

Application for patent filed November 8, 1994.1
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(2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MYRON C. NOBLE
__________
Appeal No. 97-1153
Application 08/335,9391
__________
ON BRIEF
__________
Before McCANDLISH, Senior Administrative Patent Judge, and
COHEN and MEISTER, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Myron C. Noble (the appellant) appeals from the final
rejection of claims 1-3 and 6-8. Claims 10-12, the only other
claims remaining in the application, stand allowed.
We REVERSE.
Appeal No. 97-1153
Application 08/335,939
Translation attached.2
In support of this rejection the examiner has attached a3
copy of Fig. 11 of Poitier, superimposing labeling thereon to
identify the structure which the examiner believes corresponds to
the first through fourth slots and the first through fourth
fastener means.
2
The appellant’s invention pertains to a clamping apparatus
for connecting first and second members together. Independent
claim 1 is further illustrative of the appealed subject matter
and a copy thereof may be found in EXHIBIT A to the appellant’s
brief.
The references relied on by the examiner are:
Daniell 3,005,614 Oct. 24, 1961
Poitier 495,157 Aug. 01, 19502
(Belgium)
Claims 1-3 and 6-8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Poitier in view of Daniell. According to
the examiner:
Potier [sic, Poitier] shows the claimed invention
in Figs. 10 and 11, including a disc-like clamping
member a1, flour slots (see enclosed copy of Fig. 11) ,3
first and second fastener means, and third and fourth
fastener means. Potier [sic, Poitier], however, lacks
slots which have a length greater than their width,
separate first and second fastener means, separate
third and fourth fastener means and separate clamping
links. Potier [sic, Poitier] teaches in Fig. 42,
arcuate slots in the disc-like clamping member.
Appeal No. 97-1153
Application 08/335,939
3
Daniell teaches the use of separate fastener means 28,
24 with a clamping link 22. It would have been obvious
to a person of ordinary skill in the art at the time
the invention was made to modify Potier [sic, Poitier]
to have slots which have a length greater than their
width, separate first and second fastener means,
separate third and fourth fastener means and separate
clamping links in view of Daniell in order to provide
adjustability of the fastener means on the disc-like
clamping member, thus resulting in adjustability
between the clamped members and to provide a means of
supporting a variety of shaped members to be clamped by
the clamping link/separate fasteners assembly and
avoiding the need to manufacture many U-bars (b2) with
different accommodating shapes for the various shaped
members. [See answer, page 3; footnote added.]
We will not support the examiner’s position. Initially, we
cannot agree with the examiner’s finding that Poitier in Fig. 11
teaches a disc-like clamping member having four slots. Instead,
as plainly depicted in Figs. 10 and 11, the members a are two1
separate, generally rectangular plate-like members (note also,
e.g., translation, page 3, line 2) which, instead of having
“slots” as labeled by the examiner in the copy of Fig. 11
attached to the answer, simply have round holes therein (note
also translation, page 5, lines 11 and 12). We further fail to
find any suggestion for modifying Poitier’s embodiment of Fig. 11
to include slots having a length greater than their width in view
of Poitier’s embodiment of Fig. 42. More specifically, in the
Appeal No. 97-1153
Application 08/335,939
4
embodiment of Figs. 10 and 11 of Poitier fasteners in the form of
U-shaped stirrups extend from the opposite sides and in the
opposite directions from two spaced-apart generally rectangular
plates a (having round holes therein in order to accommodate the1
legs of the stirrups). By such an arrangement rod-like members
are clamped to opposite sides of the spaced-apart plates a . On1
the other hand, in the embodiment of Figs. 41 and 42 of Poitier
fasteners in the form of U-shaped stirrups extend from the same
side and in the same direction from a disc-like member (having
arcuate slots therein in order to accommodate the legs of the
stirrups). By such an arrangement rod-like members are clamped
to each other on the same side of the disc-like member. Thus,
Poitier in the embodiment of Figs. 10 and 11 and in the embodi-
ment of Figs. 41 and 42 discloses two entirely disparate and
distinct structures for clamping rod-like members together and,
in our view, the examiner has impermissibly relied on the
appellant’s own teachings for a suggestion to modify Poitier’s
embodiment of Figs. 10 and 11 in light of the embodiment of Figs.
41 and 42 in the manner proposed. Even if we were to agree with
the examiner that it would have been obvious to utilize separate
Appeal No. 97-1153
Application 08/335,939
5
bolts and connecting links in lieu of the stirrup-type fasteners
of Poitier in view of the teachings of Daniell, there is nothing
in Daniell which would overcome the other deficiencies of Poitier
which we have noted above.
There is simply nothing in the relied on prior art which
would fairly suggest the extensive modifications of the
embodiment of Figs. 10 and 11 that would be necessary in order to
arrive at the clamping apparatus as set forth in independent
claim 1. This being the case, the decision of the examiner to
reject claims 1-3 and 6-8 under 35 U.S.C. § 103 based on the
combined disclosures of Poitier and Daniell is reversed.
REVERSED
HARRISON E. McCANDLISH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Appeal No. 97-1153
Application 08/335,939
6
JAMES M. MEISTER )
Administrative Patent Judge )
Appeal No. 97-1153
Application 08/335,939
7
James D. Hall
Baker & Daniels
Suite 250
205 Jefferson Blvd.
South Bend, IN 46601