Ex parte Carson et al.

Board of Patent Appeals and Interferences

Feb 28, 2001

08502560 (B.P.A.I. Feb. 28, 2001)

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written for publication and is not binding
Precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DOUGLAS T. CARSON, PAUL G. WRIGHT, and JOHN D. HULL
____________
Appeal No. 1998-2988
Application No. 08/502,560
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HEARD: February 20, 2001
____________
Before FLEMING, DIXON, and GROSS, Administrative Patent Judges.
GROSS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 5, 7, and 8. Claims 6 and 9
through 17 are indicated as allowable.
Appellants' invention relates to a remote location
installation apparatus for installing measuring instruments
such as flowmeters in sewer pipes. Claim 1 is illustrative of
the claimed invention, and it reads as follows:
1. Remote location installation apparatus, comprising:
a mounting fixture; and
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a transfer tool having a longitudinal axis;
said mounting fixture including means for fastening an
object to the mounting fixture and means for fastening the
mounting fixture at a remote location;
said transfer tool including means for mounting and for
releasing the mounting fixture to the transfer tool in a
plurality of orientations and moving the mounting fixture to
said remote location;
said means for mounting and for releasing including a
post extending at an angle to said longitudinal axis and a
flexible means; said post and flexible means connecting said
mounting fixture at a location spaced from said longitudinal
axis, wherein the object may be moved and released at a
distance spaced from said longitudinal axis.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Montedoro-Whitney, Advertisement for QWIK-STIK (undated)
Claims 1 through 5, 7, and 8 stand rejected under 35
U.S.C. § 102(b) as anticipated by, or in the alternative,
under
35 U.S.C. § 103 as being unpatentable over QWIK-STIK.
Reference is made to the Examiner's Answer (Paper No. 16,
mailed January 7, 1998) for the examiner's complete reasoning
in support of the rejection, and to appellants' Brief (Paper
No. 15, filed December 12, 1997) for appellants' arguments
thereagainst.
Appeal No. 1998-2988
Application No. 08/502,560
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OPINION
We have carefully considered the claims, the applied
prior art reference, and the respective positions articulated
by appellants and the examiner. As a consequence of our
review, we will reverse both the anticipation rejection and
the obviousness rejection of claims 1 through 5, 7, and 8.
Claim 1 recites, in pertinent part, "means for mounting
and for releasing the mounting fixture to the transfer tool in
a plurality of orientations." In other words, the mounting
fixture must be attached to the transfer tool such that the
relative orientations between the two elements can vary. The
examiner asserts (Answer, page 3) that the two prongs onto
which the mounting band of QWIK-STIK fits "allow for mounting
and releasing the fixture to the transfer tool in any
orientation only limited by the degree to which the transfer
tool may be angled within a manhole." However, in the
drawings of the advertisement the two prongs appear to be
maintained at an angle of ninety degrees with respect to the
pole sections (the transfer tool), and the text adds no
further description of the relative orientations of the pole
and the prongs or the mounting band. It is mere speculation
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to assume that QWIK-STIK allows for multiple orientations
between the transfer tool and the mounting fixture.
The examiner (Answer, page 3) points to the statement in
the advertisement that "installation can even be accomplished
in offset manholes" as a suggestion that QWIK-STIK's fixture
is mountable to the transfer tool in a plurality of
orientations. Appellants respond (Brief, page 18) that
adjustment for offset manholes refers to variations in length,
not orientation. We agree with appellants, as the statement
referenced by the examiner appears in the description of how
to obtain the appropriate length for the pole, or transfer
tool.
Claim 1 further requires that the object may be moved and
released "at a distance spaced from said longitudinal axis" of
the transfer tool. The examiner asserts (Answer, page 3) that
"the posts and line [are] (operatively) connecting (to) the
fixture (mounting band) at a location spaced from the
longitudinal axis of the transfer tool (pole sections) as
viewed [sic, in] the figures" (underlining ours). We find no
figures showing any space between the posts and the
longitudinal axis of the transfer tool. QWIK-STIK shows the
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5
prongs attached to the pole along its longitudinal axis with
no space therebetween. It is mere speculation to assume
otherwise. Accordingly, we cannot sustain the anticipation
rejection of claim 1 and its dependents, claims 2 through 5.
Claim 7, like claim 1, recites a "means for mounting the
mounting fixture to the transfer tool in a plurality of
orientations," which above we found lacking from QWIK-STIK.
Claim 7 further requires that the flexible elongated member
includes a "means for fastening one end to an installer while
permitting the installer to keep both hands free and to fasten
the same one end to an inanimate object near a manhole."
QWIK-STIK includes a ratchet mechanism to compress and release
the mounting fixture, and does not indicate that the flexible
member is removable from such mechanism. The examiner
contends (Answer, page 4) that "an installer may pull on the
line if the ratchet is not operating." This line of reasoning
again is based on speculation, in which we will not engage.
Thus, we cannot sustain the anticipation rejection of claim 7
and its dependent, claim 8.
The examiner also rejects all of the claims under 35
U.S.C. § 103 as being obvious over QWIK-STIK, but adds no line
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of reasoning for obviousness. Instead the examiner relies
solely upon the alleged anticipation for obviousness. Since
QWIK-STIK does not anticipate the claims, and we find nothing
in the record that would suggest modifying the reference to
overcome the noted deficiencies, we cannot sustain the
obviousness rejection of claims 1 through 5, 7, and 8.
CONCLUSION
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The decision of the examiner rejecting claims 1 through
5, 7, and 8 under both 35 U.S.C. § 102(b) and 35 U.S.C. § 103
is reversed.
REVERSED
MICHAEL R. FLEMING )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
Appeal No. 1998-2988
Application No. 08/502,560
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AG/RWK
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