Ex parte BODDY

Board of Patent Appeals and Interferences

Jan 29, 1998

08278012 (B.P.A.I. Jan. 29, 1998)

Application for patent filed July 20, 1994.1
Claims 1, 4 and 10 have been amended subsequent to final2
rejection (see Paper No. 23).
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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journal and (2) is not binding precedent of the Board.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. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte LAWRENCE O. BODDY
________________
Appeal No. 96-3022
Application 08/278,0121
________________
ON BRIEF
________________
Before MEISTER, STAAB and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1 and 4
through 10. Claims 12 and 13, the only other claims pending in2
the application, stand withdrawn from consideration pursuant to
37 CFR § 1.142(b).
Appeal No. 96-3022
Application 08/278,012
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The subject matter on appeal relates to “interchangeable
spinning machine tools which mount on a drill press”
(specification, page 1). Claim 1 is illustrative and reads as
follows:
1. An interchangeable spinning tool assembly comprising:
a spinning drive shaft having an axis of rotation and a
distal end;
a spinning receiver having a horizontal surface and affixed
to the spinning drive shaft at the distal end;
a machining tool holder;
means for removably connecting the machining tool holder to
the spinning receiver perpendicular to the axis of rotation,
functioning to enable the removal of the machining tool holder
without moving it distally from the distal end;
said means for removably connecting the machining tool
holder to the spinning receiver further comprising a dovetail
assembly;
said dove tail assembly further comprising a movably
dovetail member and a stationary dovetail member mounted on the
spinning receiver, and a matching slot on the machining tool
holder functioning to secure both dovetail members; and
said movable dovetail member being movable in a direction
perpendicular to the horizontal surface of the spinning receiver,
thereby self-centering the machining tool holder.
Appeal No. 96-3022
Application 08/278,012
In the final rejection, claims 1 and 4 through 10 were3
also rejected under 35 U.S.C. § 112, second paragraph. The
examiner has since withdrawn this rejection in view of the
amendments made subsequent to final rejection (see the advisory
action dated August 16, 1996, Paper No. 24).
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The claims on appeal stand rejected as follows:
a) claims 1, 9 and 10 under 35 U.S.C. § 102(b) as reciting
subject matter which was in public use or on sale in this country
more than one year prior to the filing date of the instant
application; and
b) claims 4 through 8 under 35 U.S.C. § 102(b), or in the
alternative under 35 U.S.C. § 103, as reciting subject matter, or
an obvious variation thereof, which was in public use or on sale
in this country more than one year prior to the filing date of
the instant application. 3
In support of these rejections, the examiner relies on
Disclosure Document No. 355,188, filed in the Patent and
Trademark Office by the appellant, Lawrence O. Boddy, in May
1994, and on the 37 CFR § 1.132 declarations of the appellant and
his son, Ronald L. Boddy, filed in the instant application on
December 27, 1994 (Paper No. 7). According to the examiner,
these items demonstrate “that Applicant and his son were
Appeal No. 96-3022
Application 08/278,012
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profiting financially from using the invention at least as early
as October, 1989, which is over four years before the filing date
of this application” (final rejection, Paper No. 9, pages 4 and
5). The examiner contends that “Applicant is not permitted to
commercially exploit his invention for more than the one-year
time period of 35 U.S.C. 102(b) and thus should not be permitted
to receive a patent for the invention” (answer, Paper No. 31,
page 6).
The appellant, on the other hand, submits that the activity
described in the disclosure document and in the 37 CFR § 1.132
declarations does not constitute a public use or on sale bar
within the meaning of 35 U.S.C. § 102(b) because it was conducted
primarily for experimental purposes (see pages 4 through 7 in the
brief, Paper No. 30). The appellant does not dispute that the
device described in the disclosure document and in the 37 CFR
§ 1.132 declarations fully anticipates the claimed spinning tool
assembly or would have rendered such assembly obvious by its
addition to the prior art.
Issues arising under the “public use” and “on sale” bar
provisions of 35 U.S.C. § 102(b) must be analyzed in light of the
Appeal No. 96-3022
Application 08/278,012
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totality of the circumstances. In re Brigance, 792 F.2d 1103,
1107, 229 USPQ 988, 991 (Fed. Cir. 1986). If the use or sales
activity in question was associated with primarily experimental
procedures conducted during the course of completing the
invention, a 35 U.S.C. § 102(b) bar does not vest. Baker Oil
Tools, Inc. v. Geo Vann, Inc., 828 F.2d 1558, 1563, 4 USPQ2d
1210, 1213 (Fed. Cir. 1987). Determining whether the activity
was primarily for purposes of experimentation or testing requires
consideration of a variety of factors such as the necessity for
the testing, the amount of control retained over the testing, the
extent and length of the testing, whether any payment was made,
whether there was a secrecy obligation, whether progress records
were kept, who conducted the testing, and the degree of
commercial exploitation during the testing. Baker Oil Tools, 828
F.2d at 1564, 4 USPQ2d at 1214.
It is apparent from the statements contained in the § 1.132
declarations that the appellant and his son used the subject
device, at least to some degree, in connection with commercial
activity. Thus, although the record does not indicate that the
device itself was in public use or on sale, this distinction,
Appeal No. 96-3022
Application 08/278,012
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which has not been raised by the appellant, would not appear to
be of any consequence given the forfeiture principle set forth in
D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 219 USPQ
13 (Fed. Cir. 1983) citing Metallizing Eng'g Co. v. Kenyon
Bearing & Auto Parts Co., 153 F.2d 516, 68 USPQ 54 (2d Cir.
1946). Nonetheless, the statements in the declarations
pertaining to (1) the activity engaged in by the appellant and
his son and (2) the relationship between the two indicate that
the activity was primarily for the purpose of experimenting with
and testing the subject device. Indeed, the examiner does not
specifically dispute that the activity was primarily experimental
in nature. Instead, the examiner appears to have focussed on the
commercial aspect of the activity as if it were the sole
dispositive consideration. As indicated above, however, the
commercial aspect is but one factor which must be weighed and
does not per se establish a 35 U.S.C. § 102(b) bar. Baker Oil
Tools, 828 F.2d at 1564, 4 USPQ2d at 1214. Moreover, although
the declarations do indicate that the activity in question did
involve a commercial aspect, they do not support the examiner’s
speculative contention that the appellant and his son profited
financially from the activity.
In light of the foregoing, we shall not sustain the standing
Appeal No. 96-3022
Application 08/278,012
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35 U.S.C. § 102(b) rejection of claims 1 and 4 through 10 or the
standing alternative 35 U.S.C. § 103 rejection of claims 4
through 8.
The decision of the examiner is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-3022
Application 08/278,012
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Rick Martin
Patent Law Offices of Rick Martin
609 Terry Street
Longmont, CO 80501