Ex parte Will

Board of Patent Appeals and Interferences

Mar 9, 1998

08055584 (B.P.A.I. Mar. 9, 1998)

Application for patent filed May 3, 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(2) is not binding precedent of the Board.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 TERRY M. WILL

_____________
Appeal No. 96-0561
Application 08/055,5841
______________
ON BRIEF
_______________
Before FRANKFORT, McQUADE and CRAWFORD, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-0561
Application 08/055,584
A translation of this German language document prepared 2
for the U.S. Patent and Trademark Office is attached to this
decision.
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claims 1 through 7 and 9 through 21.
Claims 22 through 33, the only other claims remaining in the
application, stand withdrawn from further consideration under
37 CFR § 1.142(b). Claim 8 has been canceled.
Appellant's invention relates to a mandrel assembly
that, as disclosed, is used for enlarging the cross-sectional
area of a passage formed in an elastomeric work piece such as
a seal, sleeve, or grommet. Claim 1 is representative of the
subject matter on appeal and a copy thereof, as it appears in
the Appendix to appellant's brief, is attached to this decision.
The prior art references relied upon by the examiner
in rejecting the appealed claims are:
Rossmann 2,321,518 June 8, 1943
Hirmer 680,232 Aug. 3, 1939
(German Patent)2
Appeal No. 96-0561
Application 08/055,584
3

Claims 1, 4, 7 and 9 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Hirmer.
Claims 2, 3, 5, 6 and 10 through 21 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Hirmer in view
of Rossmann.
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the examiner's
answer (Paper No. 14, mailed August 14, 1995) for the examiner's
reasoning in support of the rejections, and to appellant's brief
(Paper No. 13, filed June 9, 1995) for appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
Appeal No. 96-0561
Application 08/055,584
4
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
our review, we have made the determination that the examiner's
rejection of claims 1, 4, 7 and 9 under § 102 is well founded
and will be sustained. However, the examiner's rejection under
35 U.S.C. § 103 of claims 2, 3, 5, 6 and 10 through 21 is not
well founded and will therefore not be sustained. Our reasoning
in support of these determinations follows.
Looking first at the examiner's rejection of claims 1,
4, 7 and 9 under § 102(b), we are in agreement with the examiner
that the mandrel assembly of Hirmer is fully responsive to that
set forth in the claims so rejected, and that the mandrel
assembly of Hirmer is fully capable of being used for enlarging
the cross-sectional area of a passage formed in an elastomeric
work piece such as a seal, sleeve, or grommet, notwithstanding
that the mandrel assembly therein is not specifically disclosed
for such use. In this regard, we note that the mandrel assembly
of Hirmer includes first and second generally axially elongated
resiliently deflectable members (3), described on page 3 of
the translation as "[t]wo projections 3," that are positioned
Appeal No. 96-0561
Application 08/055,584
5
relative to one another in the manner set forth in appellant's
claim 1 on appeal and also are capable of operation in the manner
set forth in claim 1. In addition, Hirmer discloses an axially
extending expander member (9) slidable between and against the
inner surfaces of the deflectable members (3) and effective to
move the second ends of the deflectable members away from one
another so that the outer surfaces of the deflectable members are
forced against the surface defining a passage in a work piece
through which the members (3) extend. As to claim 7, the
deflectable members (3) of Hirmer are connected to a threaded
body portion (1) of the expansion body, and that body portion
includes a guide passage means therethrough for guiding the
expander member (9) in relation to the first and second members
(3) when the expander member slidably moves in said guide passage
means. Contrary to appellant's arguments, we consider that the
conically tapered tip portion (10) of the expander member in
Hirmer would have been viewed by one of ordinary skill in the art
as having a "wedge-like configuration."
With respect to the above determinations, we observe
that the law of anticipation does not require that the reference
Appeal No. 96-0561
Application 08/055,584
6
specifically teach what the appellant has disclosed and is
claiming but only that the claims on appeal "read on" something
disclosed in the reference, i.e., all limitations of the claim
are found in the reference. See Kalman v. Kimberly-Clark Corp.,
713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984). In the present case, all the
limitations of claims 1, 4, 7 and 9 are found in Hirmer, either
expressly or under principles of inherency, and those claims
are clearly anticipated thereby.
Turning to the examiner's rejection of claims 2, 3, 5,
6 and 10 through 21 under 35 U.S.C. § 103 as being unpatentable
over Hirmer in view of Rossmann, the examiner has taken the
position that because the semi-circular elements (11, 12) of
Rossmann have a flat face (e.g., as seen in Fig. 3), it is a
reasonable interpretation to say that these elements are made
from "thin flat-stock spring steel," as set forth in appellant's
above-noted claims on appeal. We do not agree. The elements
(11, 12) in Rossmann are shown in the drawings and expressly
described therein as being "semi-circular" in cross section with
flat faces facing each other as seen in Figure 3. Thus, in
Appeal No. 96-0561
Application 08/055,584
7
contrast to the examiner's position, it does not appear to us
that this reference would have fairly taught or motivated one of
ordinary skill in the art to use flat-stock spring steel to make
the elements (3) in Hirmer. As for the examiner's assertion
(answer, page 4) that one skilled in the art would have been
motivated to use flat stock "in order to advantageously provide
smooth guiding surfaces," we find such reasoning to be at best
hollow and self-deceptive. Since we have determined that the
examiner's conclusion of obviousness is based on a hindsight
reconstruction using appellant's own disclosure as a blueprint
to arrive at the claimed subject matter, it follows that we
will not sustain the examiner's rejection of claims 2, 3, 5, 6
and 10 through 21 under 35 U.S.C. § 103 based on Hirmer and
Rossmann.
To summarize:
We have affirmed the examiner's rejection of claims 1,
4, 7 and 9 under 35 U.S.C. § 102(b) as being anticipated by
Hirmer.
Appeal No. 96-0561
Application 08/055,584
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We have reversed the examiner's rejection of claims 2,
3, 5, 6 and 10 through 21 under 35 U.S.C. § 103 as being
unpatentable over Hirmer in view of Rossmann.
The decision of the examiner is accordingly affirmed-
in-part.
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
Appeal No. 96-0561
Application 08/055,584
9
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-0561
Application 08/055,584
10
Lon H. Romanski
Suite-B
101 E. Harris Street
Cadillac, MI 49601
Appeal No. 96-0561
Application 08/055,584
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APPENDIX
1. A mandrel assembly for enlarging the cross-
sectional area of a passage formed in a work-piece comprised of
elastomeric material; said mandrel assembly comprising a first
generally axially elongated resiliently deflectable mounting
member; a second generally axially elongated resiliently deflect-
able mounting member; wherein said first mounting member
comprises first and second ends; wherein said second mounting
member comprises first and second ends; wherein said first and
second mounting members are juxtaposed to each other as to have
said first ends juxtaposed to each other and as to have said
second ends juxtaposed to each other; wherein said first ends of
said first and second mounting members are spaced a preselected
distance from each other and wherein said second ends are
resiliently deflectable toward and away from each other; wherein
said first mounting member comprises an inner disposed surface;
wherein said second mounting member comprises an inner disposed
surface; wherein said inner disposed surfaces of said first and
second mounting members generally face each other; wherein said
first mounting member comprises an outer disposed surface carried
by said first mounting member as to be disposed thereon generally
oppositely to said inner disposed surface of said first mounting
member; wherein said second mounting member comprises an outer
disposed surface carried by said second mounting member as to be
disposed thereon generally oppositely to said inner disposed
surface of said second mounting member; wherein when said second
ends are resiliently deflected toward each other said work-piece
may be placed onto said first and second mounting members by
having said resiliently deflected second ends inserted into said
passage of said work-piece in a manner whereby at least portions
of said outer disposed surfaces of said first and second mounting
members are juxtaposed to the elastomeric material of said work-
piece defining the surface of said passage; and further
comprising an axially extending expander member; said expander
member being slidable against said inner disposed surfaces of
said first and second mounting members when said first and second
mounting members are held axially stationary; said expander
member when slid axially along said inner disposed surfaces,
while said mounting members are held against axial movement, a
distance sufficient to become between said second ends of said
first and second mounting members being effective to move said
second ends away from each other whereby said at least portions
Appeal No. 96-0561
Application 08/055,584
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of said outer disposed surfaces are forced against said surface
defining said passage and thereby expand said cross-sectional
area of said passage.