Ex parte Benda

Board of Patent Appeals and Interferences

May 6, 1998

08191113 (B.P.A.I. May. 6, 1998)

Application for patent filed February 3, 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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte STEVEN J. BENDA
__________
Appeal No. 96-0831
Application 08/191,1131
__________
ON BRIEF
__________
Before ABRAMS, FRANKFORT 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 through 15, which constitute all of the claims
of record in the application.
The appellant's invention is directed to a grommet for
closing a hole through a panel. The subject matter before us on
Appeal No. 96-0831
Application 08/191,113
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appeal is illustrated by reference to claim 1, which can be found
in an appendix to the Brief on Appeal.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Olmstead et al. (Olmstead) 4,041,241 Aug. 9, 1977
Patel 4,784,285 Nov. 15, 1988
THE REJECTIONS
Claims 1 through 15 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the
appellant regards as the invention.
Claims 1 through 7 and 9 through 14 stand rejected under 35
U.S.C. § 103 as being unpatentable over Olmstead.
Claims 8 and 15 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Olmstead in view of Patel.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief on Appeal.
Appeal No. 96-0831
Application 08/191,113
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OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
examiner and the appellant as set forth in the Answer and the
Brief.
At the outset, we wish to confirm the examiner’s opinion
that the first three issues set forth on page 7 of the Brief are
petitionable subject matter under 37 C.F.R. 1.181 and are not
appealable.
The Rejection Under 35 U.S.C. § 112, Second Paragraph
The examiner has set forth a number of instances of alleged
indefiniteness in claims 1, 4 and 5. In evaluating these issues,
we recognize that the second paragraph of Section 112 requires
claims to set out and circumscribe a particular area with a
reasonable degree of precision and particularity. In re Johnson,
558 F.2d 1008, 1015, 194 USPQ 187, 193 (CCPA 1977). In
determining whether this standard is met, the definiteness of the
language employed in the claims must be analyzed, not in a
vacuum, but always in the light of the teachings of the prior art
and of the particular application disclosure as it would be
interpreted by one possessing the ordinary level of skill in the
Appeal No. 96-0831
Application 08/191,113
The recitation of “hold” instead of “hole” in line 13 of2
claim 1 clearly is an inadvertent typographical error which,
although it should be corrected does not, in our view, rise to
the level of a rejection under Section 112. We also note that
the examiner has withdrawn the Section 112 rejection directed at
language on line 23 of claim 1 (Answer, page 6).
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pertinent art. Id. Having done so, we find ourselves agreeing
with the examiner on only one of the several issues raised. 2
Claim 4 recites that the “dimension and proportions of the
elements” meet specific requirements (emphasis added). It is the
examiner’s position that what constitutes “the elements” is not
clear. There is no antecedent basis for this phrase. The only
appearances of “element” are the “peripheral sealing element” of
the soft member and the “base element” of the rigid member
recited in claim 1, from which claim 4 depends, to which one
could assume the phrase in question is meant to refer. However,
the appellant has clouded the issue by not suggesting this to be
the case, but arguing on page 11 of the Brief that “[a]ny article
includes elements . . . [and] the expression is a simple
reference to the elements of the grommet.” This buttresses the
examiner’s conclusion that this phrase is indefinite, in that its
breadth appears to be open to interpretation, and therefore the
metes and bounds of the claim cannot be determined.
Appeal No. 96-0831
Application 08/191,113
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For this reason we will sustain the rejection of claim 4
under 35 U.S.C. § 112, second paragraph, as well as the like
rejection of claims 5 and 6, which are dependent therefrom.
The Rejections Under 35 U.S.C. § 103
Claims 1 through 7 and 9 through 14 stand rejected as being
unpatentable over Olmstead. The question under 35 U.S.C. § 103
is not merely what the references expressly teach but what they
would have suggested to one of ordinary skill in the art at the
time the invention was made. See Merck & Co., Inc. v. Biocraft
Laboratories, Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed.
Cir. 1989) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). While there must be some suggestion or motivation
for one of ordinary skill in the art to combine the teachings of
the references, it is not necessary that such be found within the
four corners of the references themselves; a conclusion of
obviousness may be made from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint
or suggestion in a particular reference. See In re Bozek, 416
F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
Olmstead discloses a grommet for closing a penetration hole
through a panel. It comprises a main soft member of elastomeric
material and a rigid member of non-elastomeric material which is
Appeal No. 96-0831
Application 08/191,113
According to its definition, Shore hardness is not limited3
to plastic material, i.e. “hardness of metal or other material as
measured by a Shore scleroscope.” Webster’s Third New
International Dictionary, 1971, p. 2102.
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of greater hardness and essentially is encapsulated in the soft
member. When inserted into the hole, a sealing element 34 of the
soft member engages the periphery of the hole, owing in part to
the action of a plurality of spaced load resilient tangs 42 which
extend from the base element of the rigid member (Figure 2). It
is the examiner’s position that Olmstead teaches everything
recited in claim 1 except for not specifying the Shore hardness
of the two components, but that the selection of relative
hardness levels for the two components would have been obvious to
one of ordinary skill in the art.
We are not persuaded by the appellant’s arguments that the
claim requires both members to be of plastic material, for while
that feature is disclosed in the specification, it is not recited
in the claims. As for the assertion that the mention of “Shore”
values implies that the materials both are of plastic because
this measure is “never” used for non-plastic materials (Brief,
page 13), we first note that no evidence has been presented in
support of this conclusion . In addition, it is our view that3
since no criticality has been established for this limitation,
Appeal No. 96-0831
Application 08/191,113
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the key factor is not that particular softness/hardness values
are present, but is the relative hardness of the materials used
for the two members. It is our opinion that the teachings of
Olmstead would have suggested to one of ordinary skill in the art
that many suitable materials can be used, so long as the outer
member is soft enough to perform the task of sealing and the
rigid member strong enough to stiffen the grommet to hold it in
position. With regard to this, skill on the part of the artisan,
rather than the lack thereof, is presumed (see In re Sovish, 769
F.2d 738, 742, 226 USPQ 771, 774 (Fed. Cir. 1985)), and the
disclosure of each reference should be considered for what it
fairly teaches one of ordinary skill in the art, including not
only the specific teachings, but also the inferences which one of
ordinary skill in the art would reasonably have been expected to
draw therefrom (see In re Boe, 355 F.2d 961, 965, 148 USPQ 507,
510 (CCPA 1966) and In re Preda, 401 F.2d 825, 826, 159 USPQ 342,
344 (CCPA 1968)).
Finally, some of the appellant’s arguments, such as those
regarding the fact that the components are molded, and are molded
in a particular fashion, fail from the outset because they are
predicated upon limitations that are not present in the claims.
See In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982).
Appeal No. 96-0831
Application 08/191,113
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The rejection of claim 1 under 35 U.S.C. § 103 is sustained.
With regard to claim 2, the appellant argues that Olmstead
does not show the required load pads, but utilizes “load prongs”
(Brief, page 16). We agree with the examiner that the ends of
Olmstead’s members 42 constitute load pads inasmuch as their ends
are exposed to the extent necessary to engage the panel into
which the grommet is inserted (see column 4, lines 7 through 9
and column 2, lines 35 through 41). We add that Olmstead also
discloses a variation on this theme, for as seen in Figure 5 the
locking function also can be performed by an offset portion 74 of
the locking ring 72. This rejection of claim 2 is sustained.
Above, we have sustained the rejection of claim 4 under
Section 112, second paragraph, on the basis that the term “the
elements” in line 5 is indefinite. However, it is our view that
this problem is not of such magnitude as to cause us not to be
able to evaluate the claim from the standpoint of patentability
over the prior art relied upon. On the basis that the
indefiniteness problem will be overcome by way of acceptable
amendment, it is our conclusion that Olmstead does not disclose
the required peripheral sealing element “having a normal curved
position” and curving in the direction of the inner surface of
the grommet. We therefore will not sustain the Section 103
Appeal No. 96-0831
Application 08/191,113
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rejection with regard to this claim or claims 5 and 6, which
depend therefrom.
Claim 7 adds to claim 1 the limitation that the base element
has slits located between the load pads, which slits extend
partially through the base element. We agree with the appellant
that this is not taught or suggested by Olmstead, and therefore
we will not sustain the Section 103 rejection of claim 7 or, it
follows, of claims 9 through 11, which are dependent therefrom.
Claim 12 adds to claim 2 the limitation that the axially
outer surfaces of the load pads have exposed camming surfaces 61
for engaging the marginal edge surface of the hole into which the
grommet is installed. While Olmstead teaches that a portion of
the locking members be exposed, in our view these portions do not
“extend inwardly ... beyond said skin of the rib,” as required by
claim 12. The rejection of this claim under 35 U.S.C. § 103 is
not sustained.
Claims 13 and 14 are directed to the manner in which the
soft member and the rigid member are connected together. Claim
13 requires that they be “only mechanically” connected and claim
14 adds that there be no chemical or thermal bonding. Olmstead
is silent as to the use of any adhesive or the like in the
connection of the rigid member to the soft member, stating only
Appeal No. 96-0831
Application 08/191,113
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that the former is embedded in the latter (column 3, line 67 et
seq.). From our perspective, therefore, one of ordinary skill in
the art would have understood that the two elements of the
Olmstead grommet are mechanically attached together, only, and
thus the limitations added by claims 13 and 14 inherently are
present in Olmstead. The Section 103 rejection of these two
claims is sustained.
Claims 8 and 15 stand rejected as being unpatentable over
Olmstead in view of Patel, the latter being cited by the examiner
for its showing of a grommet having an oblong shape. Be that as
it may, claim 8 requires the presence of slits extending
partially through the base element, as did claim 7, and this is
not taught by Patel or, as we stated above, by Olmstead.
Therefore, this rejection of claim 8 is not sustained.
Claim 15 has no such requirement; its purpose is to add to
claim 1 the limitation that both the soft member and the rigid
member are made of “plastic materials.” Patel discloses a self
locking plug for insertion in a hole in a panel, with both the
soft member (22) and the rigid member (20) being formed of
plastic material (column 5, lines 30 through 37). As admitted by
the appellant on page 19 of the Brief, the two elements of the
Patel device are mechanically interlocked. It is the examiner’s
Appeal No. 96-0831
Application 08/191,113
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position, with which we agree, that one of ordinary skill in the
art would have found it obvious to make the rigid member of
Olmstead from plastic, in view of the teachings of Patel.
Suggestion for such a modification is found in the self-evident
advantages of the use of plastic materials, which would have been
known to the artisan, such as lighter weight and ease of
manufacture. In this regard, we observe that Patel has listed
several advantages in column 1. Furthermore, and quite
interestingly, Patel has described the method of manufacturing
the device as comprising the steps of “injecting material having
metal-like properties to form the hole filling and locking
portions,” that is, the rigid member, and then injecting the
“resilient, softer material into the same mold” to thus “form the
unitary dual durometer plug” (column 2, lines 1 through 7,
emphasis added). This, in our view, explicitly establishes the
prima facie obviousness of utilizing a suitable plastic material
instead of metal.
This rejection of claim 15 is sustained.
SUMMARY
The rejection of claims 1 through 3 and 7 through 15 under
35 U.S.C. § 112, second paragraph, is not sustained.
Appeal No. 96-0831
Application 08/191,113
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The rejection of claims 4, 5 and 6 under 35 U.S.C. § 112,
second paragraph, is sustained.
The rejection of claims 1 through 3 and 13 through 15 under
35 U.S.C. § 103 is sustained.
The rejection of claims 4 through 12 under 35 U.S.C. § 103
is not sustained.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge)
Appeal No. 96-0831
Application 08/191,113
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Paul H. Gallagher
2530 Crawford Avenue
Evanston, IL 60201