Ex parte WISNIEWSKI

Board of Patent Appeals and Interferences

Jun 11, 1998

08510613 (B.P.A.I. Jun. 11, 1998)

Application for patent filed August 3, 1995.1
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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journal and (2) is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte DAVID M. WISNIEWSKI
________________
Appeal No. 97-2224
Application 08/510,6131
________________
ON BRIEF
________________
Before COHEN, McQUADE and NASE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1
through 3 and 5 through 13, all of the claims pending in the
application.
The invention relates to a “fuel filter bracket for
Appeal No. 97-2224
Application 08/510,613
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quickly and effortlessly mounting a fuel filter to the fuel
system of a vehicle” (specification, page 1). Copies of the
appealed claims appear in the appendix to the appellant’s
brief (Paper No. 6).
The references relied upon by the examiner as evidence of
obviousness are:
Tinnerman 2,423,627 Jul. 8,
1947
Mowatt 3,047,648 Jul. 31, 1962
Shelton et al. (Shelton) 3,227,406 Jan. 4,
1966
Conrad 4,650,144 Mar. 17, 1987
Ward 5,016,843 May 21,
1991
Twork, Sr. et al. (Twork) 5,121,894 Jun. 16, 1992
The appealed claims stand rejected under 35 U.S.C. § 103
as follows:
a) claims 1 and 6 through 11 as being unpatentable over
Twork in view of Conrad and Mowatt;
b) claim 2 as being unpatentable over Twork in view of
Conrad, Mowatt and Shelton;
c) claim 3 as being unpatentable over Twork in view of
Conrad, Mowatt, Shelton and Tinnerman;
d) claim 5 as being unpatentable over Twork in view of
Conrad, Mowatt and Ward;
Appeal No. 97-2224
Application 08/510,613
The appellant submitted a 37 CFR 1.132 declaration with2
the brief to demonstrate the usefulness of and long felt need
for the claimed invention. The examiner, however, acting
pursuant to 37 CFR § 1.195, has refused to enter and consider
the declaration (see page 8 in the answer). Accordingly, we
have not taken the declaration into account in reviewing the
merits of this appeal.
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e) claim 12 as being unpatentable over Twork in view of
Conrad and Ward; and
f) claim 13 as being unpatentable over Twork in view of
Conrad.
Reference is made to the appellant’s brief (Paper No. 6)
and to the examiner’s answer (Paper No. 7) for the respective
positions of the appellant and the examiner with regard to the
merits of these rejections.2
Twork, the examiner’s primary reference, discloses “a
bracket for mounting a fuel filter on a vehicle . . . without
the need for any tools or special equipment” (column 1, lines
6 through 9). The bracket is a one piece, spring steel
element having a U-shaped base portion 12 and arcuate side
walls 16, 18. The base portion includes screws 36, 38 for
mounting the bracket to the vehicle and a locating tab 39 for
ensuring the proper mounting orientation. The side walls 16,
Appeal No. 97-2224
Application 08/510,613
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18 define a semi-cylindrical housing 14 having an opening 15
for the lateral insertion and removal of a fuel filter 8. The
inner diameter of the semi-cylindrical housing is slightly
smaller than the outer diameter of the filter such that the
side walls 16, 18 exert a resilient holding force on the
filter. The side walls include outwardly flared flange
portions 20, 22 at their free ends to facilitate the lateral
insertion of the filter, slots 24, 28 to control the resilient
holding force, and a locking slot 30 for cooperation with an
annular bead 32 on the filter to prevent axial movement
therebetween.
The examiner concedes that Twork does not teach, and
would not have suggested, a fuel filter bracket meeting the
limitations in independent claims 1, 12 and 13 requiring first
and second fastener receiving portions extending from the free
edges of the arcuate shaped members and having apertures
through which is inserted a fastener of a fastener means
whereby upon tightening of the fastener means the first and
second arcuate shaped members are drawn towards each other to
compress the fuel filter therebetween (see pages 3, 4, 6 and 7
in the answer). In this regard, the Twork fuel filter bracket
Appeal No. 97-2224
Application 08/510,613
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has no such first and second fastener receiving portions
extending from its arcuate shaped members 16, 18. The
examiner’s reliance on Conrad to cure this deficiency is not
well taken.
Conrad discloses “a heavy duty, stowable utility hook
which may be mounted on a wall, for example in the studs of a
garage, for holding articles such as boards, tires, and
bicycles, and which may be turned and stowed against the wall
when not so used” (column 1, lines 12 through 16). The hook
is mounted to the wall by brackets 16 which support the hook
for both axial and rotational movement. Each bracket is a U-
shaped, sheet metal member 18, 20 having its base attached to
the wall by a screw and the apertured free ends of its side
portions bolted to one another to loosely capture the hook
therebetween.
According to the examiner, it would have been obvious at
the time the invention was made to a person having ordinary
skill in the art to modify the filter receiving portion of
Twork’s bracket by providing it with apertures and a threaded
bolt to more securely retain the filter as taught by Conrad
(see pages 4, 6 and 7 in the answer). The problem with the
Appeal No. 97-2224
Application 08/510,613
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examiner’s position, however, is that Conrad’s hook supporting
brackets have little, if any, practical pertinence to Twork’s
filter holding bracket. Indeed and contrary to the examiner’s
reasoning, the Twork bracket would appear to more securely
retain its filter than the Conrad bracket retains its hook.
Moreover, the proposed modification of the Twork bracket in
view of Conrad runs directly counter to Twork’s objective of
providing a fuel filter bracket which can be utilized without
the need for any tools or special equipment. In this light,
we are constrained to conclude that the only suggestion for
combining Twork and Conrad in the manner advanced by the
examiner stems from hindsight knowledge derived from the
appellant’s own disclosure. The use of such hindsight
knowledge to support a conclusion of obviousness is, of
course, impermissible. Since the other applied references do
not overcome this flaw in the basic Twork-Conrad combination,
we shall not sustain any of the examiner’s 35 U.S.C. § 103
rejections.
The decision of the examiner is reversed.
REVERSED
Appeal No. 97-2224
Application 08/510,613
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IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
JOHN P. McQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-2224
Application 08/510,613
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Douglas W. McEvoy
280 N. Woodward Avenue Suite 400
Birmingham, MI 48009