Ex parte PARROTT

Board of Patent Appeals and Interferences

Apr 21, 1998

08004024 (B.P.A.I. Apr. 21, 1998)

Application for patent filed January 15, 1993.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ROBERT A. PARROTT
__________
Appeal No. 96-3355
Application 08/004,0241
__________
ON BRIEF
__________
Before HAIRSTON, JERRY SMITH, and BARRETT, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
Appeal No. 96-3355
Application 08/004,024
2
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner's rejection of claims 1-4 and 10-18. Claims
6-9 have been cancelled. Claims 5 and 19 have been indicated as
containing allowable subject matter.
The disclosed invention pertains to a method for securing
the outer case of a shaped charge to the loading tube of a
perforating gun. Specifically, the case of the charge and the
loading tube are designed so that the charge can be secured to
the tube by simply inserting the case into a hole of the tube and
twisting the case a predetermined distance.
Representative claim 1 is reproduced as follows:
1. A method of securing a case of a shaped charge to a
loading tube of a perforating gun, comprising:
inserting said case of said shaped charge into a hole
disposed through a wall of said loading tube; and
twisting said case a predetermined distance.
The examiner relies on the following reference:
Regalbuto 4,681,037 July 21, 1987
Claims 1-4 and 10-18 were finally rejected under
35 U.S.C. § 102(b) as anticipated by Regalbuto, or in the
alternative, under 35 U.S.C. § 103 as obvious over Regalbuto.
Appeal No. 96-3355
Application 08/004,024
3
The examiner’s answer only repeats the rejection under § 103 so
it is presumed that the rejection under § 102 has been withdrawn.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the brief and the answer for the
respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the evidence
of obviousness relied upon by the examiner as support for the
rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the brief along with the examiner's
rationale in support of the rejection and arguments in rebuttal
set forth in the examiner's answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-4 and 10-18. Accordingly, we reverse.
Appeal No. 96-3355
Application 08/004,024
4
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S. 1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a whole
or knowledge generally available to one having ordinary skill in
the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Sys., Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
Appeal No. 96-3355
Application 08/004,024
5
With respect to independent claims 1, 10 and 15, the
answer incorporates the rejection from the final rejection [Paper
# 8]. The examiner asserts that flanges 52 and 54 shown in
figure 3 of Regalbuto are part of the charge casing. It is
apparently the examiner’s view that these flanges are inserted
into the openings of Regalbuto’s strip and twisted to be secured
therein. Appellant argues that the flanges 52 and 54 are not
part of the charge case 60, but rather, are part of the loading
strip and, therefore, are not inserted into the openings of the
strip [brief, pages 7-8].
Appellant is clearly correct on this point. Figure 3 of
Regalbuto is a cross-sectional view of figure 1 taken along
line 3-3 of figure 1. Figure 1 shows both the charge cases and
the loading strip and the manner in which the charge cases are
attached to the strip. Regalbuto clearly discloses that
flanges 52 and 54 extend from opposite sides of strip portion 50
[column 3, lines 32-34]. Thus, the flanges 52 and 54 clearly are
not part of the charge case 60. This being the case, the
examiner’s view that these flanges are inserted into the loading
strip and twisted is clearly erroneous. In fact, there is no
disclosure anywhere in Regalbuto that the charge cases are
Appeal No. 96-3355
Application 08/004,024
6
twisted after being inserted into the openings of the loading
strip.
In the answer, the examiner may have recognized the
futility of his previous position because he presents a new
fallback position for unpatentability. Specifically, the
examiner relies on the fact that Regalbuto’s use of four tabs in
each strip opening permits the elimination of the threaded type
outer surface on the charge case used in the prior art [column 5,
lines 35-39]. The examiner concludes that this reference to
threads on the prior art charge case suggests that the charge
case was inserted and then twisted in the claimed manner. There
is no evidence on this record that the examiner ever actually
considered the application cited in Regalbuto as prior art.
The Regalbuto patent relied on by the examiner makes
reference to an earlier application identified as Serial Number
651,201 filed on September 17, 1984. This application issued as
U. S. Patent Number 4,655,138 ('138) (a copy of which is
attached). This patent shows the threaded charge case which is
referred to in the applied Regalbuto patent. A careful review of
the ’138 patent reveals no twisting of the charge case due to the
presence of the threads. The two tabs of the charge opening are
simply bent back when the charge case is inserted and the tabs
Appeal No. 96-3355
Application 08/004,024
7
anchor themselves into one of the threaded grooves. There is not
the slightest hint in the ’138 patent that a charge case should
be twisted after it is inserted into the opening.
Since the examiner relies on the Regalbuto suggestion of
a threaded charge case to conclude that the step of twisting
would have been obvious, and since the prior art cited by
Regalbuto does not use the threaded charge case for twisting, we
find that the record in this case does not support the position
staked out by the examiner. The examiner has clearly misread the
references in an attempt to find the claimed invention
unpatentable. Although we cannot say if there is prior art which
would have suggested the obviousness of the claimed invention on
appeal, we can say that such obviousness is not demonstrated by
the prior art cited by the examiner.
Therefore, we do not sustain the examiner’s rejection of
independent claims 1, 10 and 15. It follows that the rejection
of dependent claims 2-4, 11-14 and 16-18 is also improper. Thus,
the decision of the examiner rejecting claims 1-4 and 10-18 is
reversed.
REVERSED

Appeal No. 96-3355
Application 08/004,024
8
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LEE E. BARRETT )
Administrative Patent Judge )
Appeal No. 96-3355
Application 08/004,024
9
Schlumberger Technology Corporation
Patent Counsel
P.O. Box 2175
Houston, TX 77252-2175