Ex Parte Bock

Board of Patent Appeals and Interferences

Oct 22, 2002

08874805 (B.P.A.I. Oct. 22, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 37
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MALCOLM G. BOCK
____________
Appeal No. 2001-1514
Application No. 08/874,805
____________
ON BRIEF
____________
Before FRANKFORT, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 to 6,
8, 10, 11 and 13. Claim 12 has been objected to as depending from a non-allowed
claim. Claims 9, 14 to 16 and 18 to 21 have been withdrawn from consideration.
Claims 7 and 17 have been canceled.
We REVERSE.
BACKGROUND
Appeal No. 2001-1514
Application No. 08/874,805
Page 2
The appellant's invention relates to intermittent pneumatic compression devices
and more particularly to the interconnection between compression sleeves and
controllers for a source of compressed air (specification, p. 1). A copy of the claims
under appeal is set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Arkans et al. (Arkans) 4,253,449 March 3, 1981
Mogaki et al. (Mogaki) 4,583,255 April 22, 1986
Wright et al. (Wright) 4,922,893 May 8, 1990
Sikora 5,121,746 June 16, 1992
Claims 1 to 6, 10 and 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Arkans in view of Mogaki.
Claim 8 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Arkans, Mogaki and Wright.
Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Arkans, Mogaki and Sikora.
Appeal No. 2001-1514
Application No. 08/874,805
Page 3
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the non-final
Office action mailed October 14, 1999 (Paper No. 24) and the answer (Paper No. 29,
mailed January 6, 2001) for the examiner's complete reasoning in support of the
rejections, and to the brief (Paper No. 28, filed October 16, 2000) and reply brief (Paper
No. 30, filed May 7, 2001) for the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of
all the evidence before us, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 1 to 6, 8, 10, 11 and 13 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
Appeal No. 2001-1514
Application No. 08/874,805
Page 4
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention.
See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
In the rejection of claim 1 (see Paper No. 24, pp. 2-3), the sole independent
claim on appeal, the examiner (1) set forth the teachings of Arkans and Mogaki;
(2) ascertained that Arkans' separate manifold 96 and connector member 124 is not a
unitary piece; and (3) determined that it would have been obvious to have incorporated
a unitary design in Arkans for many reasons including the teachings of Mogaki.
The appellant argues that the applied prior art of Arkans and Mogaki does not
suggest the subject matter of claim 1. We agree for the reasons that follow.
First, the limitation of claim 1 that the controller connection device comprises "a
manifold and a connector member integrally formed with said manifold as a unitary
piece" is not suggested by the applied prior art. As clearly recognized by the examiner,
Arkans does not meet or suggest this limitation. Moreover, Mogaki does not meet or
suggest this limitation. In that regard, as clearly shown in Figures 7, 9A and 9B of
Appeal No. 2001-1514
Application No. 08/874,805
Page 5
1 Distributor 26 includes a d.c. motor 38, a rotary valve member 41 and a stationary valve
member 42 brought into plane contact with the upper surface of the rotary valve member 41. The
stationary valve member 42 is provided in the vicinity of the outer periphery with eight vertical
through-holes 46 at regular intervals, which communicate alternately with an air-guiding groove 45
provided in rotary valve member 41.
Mogaki, the socket 47 and the distributor 261 are not integrally formed as a unitary
piece (i.e., one-piece). While Mogaki teaches (column 4, lines 51-56) that the socket
47 is united with the stationary valve member 42, and the through-holes 46 separately
communicate with openings 48 in socket 47, Mogaki does not teach or suggest that the
socket 47 and the stationary valve member 42 be integrally formed as a unitary piece.
Thus, Mogaki would not have made it obvious at the time the invention was made to a
person of ordinary skill in the art to have integrally formed Arkans' manifold 96 and
connector member 124 as a unitary piece. Accordingly, in the rejection of claim 1
before us in this appeal, the examiner has not set forth evidence of a suggestion,
teaching, or motivation for a person of ordinary skill in the art at the time the invention
was made to have modified Arkans to arrive at the claimed invention. In that regard, we
note that a broad conclusory statement (such as set forth on page 6 of the answer)
regarding the obviousness of modifying a reference, standing alone, is not "evidence."
Thus, when an examiner relies on general knowledge to negate patentability, that
knowledge must be articulated and placed on the record. See In re Lee, 277 F.3d
1338, 1342-45, 61 USPQ2d 1430, 1433-35 (Fed. Cir. 2002). See also In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
Appeal No. 2001-1514
Application No. 08/874,805
Page 6
Second, the limitations of claim 1 that a first set of uninterrupted conduits
comprising continuous lengths of tubing unbroken from a first end to a second end and
being integrally connected at the first end to the first compression sleeve and being
fixedly joined at the second end to the manifold of the controller connection device and
a second set of uninterrupted conduits comprising continuous lengths of tubing
unbroken from a first end to a second end and being integrally connected at the first
end to the second compression sleeve and being fixedly joined at the second end to the
manifold of the controller connection device (i.e., the uninterrupted conduit limitations)
are not met by conduit sets 90 and 92 of Arkans as alleged by the examiner (Paper No,
24, p. 2). As pointed out by the appellant (brief, pp. 5-7) Arkans teaches (column 7, line
57+) that the first and second conduit sets 90 and 92, respectively, also have
connection devices of identical design intermediate their lengths. The connection
device 150 for the first conduit set 90 is shown in Figures 13, 19 and 20. Thus, the first
and second conduit sets 90 and 92 of Arkans are not continuous lengths of tubing
unbroken from a first end integrally connected to a compression sleeve to a second end
fixedly joined to the manifold of the controller connection device. Moreover, in the
rejection of claim 1 before us in this appeal, the examiner has not set forth evidence of
a suggestion, teaching, or motivation for a person of ordinary skill in the art at the time
the invention was made to have modified the first and second conduit sets 90 and 92
Arkans to be continuous lengths of tubing unbroken from a first end integrally
Appeal No. 2001-1514
Application No. 08/874,805
Page 7
2 We have also reviewed the references to Wright and Sikora additionally applied in the rejections
of claims 8 and 11 but find nothing therein which makes up for the deficiencies of Arkans and Mogaki
discussed above.
connected to a compression sleeve to a second end fixedly joined to the manifold of the
controller connection device.
For the reasons set forth above, the examiner has not presented a prima facie
case of obviousness with respect to claim 1. Accordingly, the decision of the examiner
to reject claims 1 to 6, 8, 10, 11 and 13 under 35 U.S.C. § 103 is reversed.2
Appeal No. 2001-1514
Application No. 08/874,805
Page 8
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 6, 8, 10, 11 and
13 under 35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2001-1514
Application No. 08/874,805
Page 9
DAVID J. KORIS
THE KENDALL COMPANY
15 HAMPSHIRE STREET
MANSFIELD, MA 02048
JVN/jg