Ex parte Collins

Board of Patent Appeals and Interferences

Aug 31, 1999

08541519 (B.P.A.I. Aug. 31, 1999)

Application for patent filed October 10, 1995.1
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not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MATTHEW J. COLLINS
__________
Appeal No. 1997-3087
Application 08/541,5191
___________
HEARD: August 4, 1999
___________
Before MEISTER, STAAB and McQUADE, Administrative Patent
Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1, 2, 4 and 5, all the claims currently
pending in the application.
Appeal No. 1997-3087
Application 08/541,519
Consistent with appellant’s specification, the term “said2
first guide member” appearing in claim 4, paragraph (e),
should apparently be --said second guide member--. When
queried on this point at oral hearing, counsel for appellant
agreed. Accordingly, for purposes of this appeal, claim 4 is
so interpreted.
2
Appellant’s invention pertains to an over-center toggle
latch of the type where a door can be held closed by a
predetermined, specific force, and in particular to an over-
center toggle latch that incorporates an electronic switch
that provides an electronic signal indicating whether the door
to which the latch is attached is in an opened or closed
position. Independent claim 1, a copy of which appears in an
appendix to appellant’s brief, is illustrative of the appealed
subject matter.2
The prior art references relied upon by the examiner in
support of the rejection are:
Guth 3,841,677 Oct. 15,
1974
Bisbing 4,687,237 Aug. 18, 1987
Claims 1, 2, 4 and 5 stand rejected under 35 U.S.C. § 103
as being unpatentable over Bisbing in view of Guth.
Considering first independent claim 1, the broadest claim
on appeal, there is no dispute that Bisbing discloses an over-
Appeal No. 1997-3087
Application 08/541,519
3
center toggle latch that meets the limitations of paragraphs
(a), (b), (c), (d), (g) and (h) of the claim. The examiner
acknowledges that Bisbing fails to disclose the paragraph (e)
limitation of a protruding tab disposed on the retaining
means, the paragraph (f) limitation of a switch having a two-
position actuator, and the paragraph (i) limitation of how the
switch is actuated by the protruding tab on the retaining
means. However, the examiner has taken the position that:
Guth teaches a protruding tab (switch actuator
44) disposed [on] the toggle mechanism for
engagement with a toggle switch (50) having a two-
position push button actuator.
It would have been obvious to one having
ordinary skill in the art at the time the invention
was made to modify Bisbing as taught by Guth to
provide a protruding tab on a reciprocating portion
of a latch mechanism for physically actuating a
microswitch corresponding to the relative position
of the latch mechanism moving between an open and a
closed position. [Answer, page 5.]
Concerning the specific placement of the protruding tab
on the retaining means, the examiner further maintains that
“it would have been an obvious matter of design choice to
orient the protruding tab . . . on any reciprocating portion
of the toggle latching mechanism to activate the micro-switch”
Appeal No. 1997-3087
Application 08/541,519
4
(answer, page 11) because appellant
fails to . . . state both why it is necessary and of
critical importance to have the micro-switch
toggling protrusion on the lower portion of the
retainer, and offers no explanation as to why the
micro-switch toggling protrusion would not perform
equally well if it were placed on any other
reciprocating portion of the latch while engaging
the micro-switch. [Answer, pages 10-11.]
While we are not unmindful of the points raised by the
examiner in the answer, including those set forth above, in
rejecting the appealed claims, we cannot support the positions
taken by the examiner in concluding that appellant’s claims
are unpatentable under 35 U.S.C. § 103. Assuming as a general
proposition that it would have been obvious in light of the
teachings of Guth to provide a microswitch and actuator in
Bisbing for the purpose of indicating the condition of the
latch, the examiner’s further position that the specifically
claimed location of the protruding tab can be dismissed as an
obvious matter of design choice is inappropriate. First,
criticality is not a requirement for patentability under 35
U.S.C. § 103. See, for example, W. L. Gore & Assocs. v.
Appeal No. 1997-3087
Application 08/541,519
These arguments mirror the benefits of simplicity of3
construction and use, reduced manufacturing costs, and
simplicity of assembly asserted on pages 2 and 3 of the
specification as flowing for the disclosed invention.
5
Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984). Second, the
examiner’s implied position that
the toggle latch will perform equally well irrespective of the
placement of the protruding tab and microswitch is
speculative. Third, the examiner has not adequately addressed
appellant’s argument in the paragraph spanning pages 9 and 10
of the brief concerning the alleged benefit of the claimed
placement of the protruding tab. In this matter, appellant’s3
argument regarding the benefits of the compactness and
simplicity of design of the claimed structure is reasonable
and cannot be ignored simply because the specification does
not expressly attribute these benefits to the specifically
claimed placement of the protruding tab on the retaining
means. Compare In re Chu, 66 F.3d 292, 298, 36 USPQ2d 1089,
Appeal No. 1997-3087
Application 08/541,519
6
1094 (Fed. Cir. 1995) (held, in case where examiner and Board
alleged that difference between prior art and appealed claim
was “design choice,” that there is no basis supporting
position that a patent applicant’s evidence and/or argument
traversing rejection must be contained within specification in
order to be considered) and In re Kuhle, 526
F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975) (use of electrical
connection which solves no stated problem in lieu of those
used in the reference held to be obvious matter of design
choice within the skill in the art). Fourth, the latch
structure of Guth is much more complex and not at all like the
toggle latch of Bisbing. For example, Guth’s latch mechanism
includes a lockout mechanism 46 for precluding manipulation of
the pivoting latch bolt 40, 42 that has no counterpart in
Bisbing. On the other hand, Bisbing’s spring biased retaining
means for supplying the over center biasing force for the
toggle mechanism of the latch has no apparent equivalent in
Appeal No. 1997-3087
Application 08/541,519
In Guth, the biasing force for the toggle mechanism is4
supplied by what appears to be a conventional helical spring
88. See Figures 1 and 2, and column 4, lines 1-8.
7
Guth. The dissimilarity in construction and purpose of the4
latches of Guth and Bisbing undercuts the examiner’s position
that a structure containing all of the limitations of
independent claim 1 would have been obvious to one of ordinary
skill in the art from a consideration of the combined
teachings of the applied references. Fifth, the switch
actuator 44 of Guth that the examiner equates to the claimed
protruding tab is located on the pivoting latch bolt 42.
Thus, at best, Guth would appear to suggest placing a switch
actuating tab on Bisbing’s latch-like toggle member 24 rather
than on the retaining means 34.
Where prior art references require a selective
combination to render obvious a claimed invention, there must
be some reason for the combination other than hindsight
gleaned from the invention disclosure, Interconnect Planning
Appeal No. 1997-3087
Application 08/541,519
8
Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.
Cir. 1985). For the reasons stated above, we are unable to
agree with the examiner that one of ordinary skill in the art
would have been motivated by the teachings of Guth to
incorporate a protruding tab into the retaining means 34 of
Bisbing for actuating a microswitch. It follows that we
cannot sustain the examiner’s rejection.
The decision of the examiner is reversed.
REVERSED
Appeal No. 1997-3087
Application 08/541,519
9
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
LJS/pgg
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