Ex Parte Collins

Board of Patent Appeals and Interferences

Sep 13, 2002

09245640 (B.P.A.I. Sep. 13, 2002)

1
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not written for publication and is not binding precedent of the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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TRUMAN COLLINS
__________
Appeal No. 2001-2595
Application 09/245,640
___________
ON BRIEF
___________
Before ABRAMS, FRANKFORT, and NASE, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3, 19, 20, 22 through 24, 26 through 30
and 33. Claim 2 stands allowed. Claims 4 through 12, 14 through
18, 21, 25, 31 and 32, the only other claims remaining in the
application, have been withdrawn from consideration by the
examiner as being directed to non-elected species. Claim 13 has
been canceled.
Appeal No. 2001-2595
Application 09/245,640
2
As noted on page 2 of the specification, the primary object
of appellant’s invention is to provide a versatile vise jaw
reconfigurable to secure a variety of shapes and sizes of work
pieces in an advantageous orientation. Independent claim 1 is
representative of the subject matter on appeal, and a copy of
that claim, reproduced from the Appendix to appellant’s brief, is
attached hereto.
The prior art references of record relied upon by the
examiner are:
Peterson 2,754,708 Jul. 17, 1956
Hennessey 3,463,478 Aug. 26, 1969
Meyer 4,157,819 Jun. 12, 1979
Swann et al. (Swann) 5,535,995 Jul. 16, 1996
Claims 1, 19, 22, 27 through 29 and 33 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Hennessey in view
of Meyer.
Claims 3, 20, 24, 26 and 30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hennessey in view of Meyer as
applied above, and further in view of Peterson.
Appeal No. 2001-2595
Application 09/245,640
3
Claim 23 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hennessey in view of Meyer as applied to claims
1, 19 and 22 above and further in view of Swann.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
we refer to the examiner’s answer (Paper No. 15, mailed June 11,
2001) and to appellant’s brief (Paper No. 12, filed January 25,
2001) for a full exposition thereof.
OPINION
Having carefully reviewed the obviousness issues raised in
this appeal in light of the record before us, we have made the
determinations which follow.
Looking first to the examiner’s rejection of claims 1, 19,
22, 27 through 29 and 33 under 35 U.S.C. § 103(a) as being
unpatentable over Hennessey in view of Meyer, we note that the
examiner has determined (answer, page 4) that Hennessey discloses
a pair of opposing vise jaw plates (e.g., Fig. 10) with a pattern
of holes (26, 27) on the plates for receiving work piece holders
Appeal No. 2001-2595
Application 09/245,640
4
(P). What the examiner finds lacking in this reference relative
to appellant’s claimed subject matter (e.g., claim 1) is that the
holes in the plates are not equally spaced. To account for this
difference, the examiner turns to the adjustable work piece
clamping apparatus of Meyer, noting that this patent discloses a
plate (2) with an array of regular spaced holes for receiving
work piece holders for clamping and holding a work piece. From
the collective teachings of the applied patents, the examiner
concludes that it would have been obvious to one of ordinary
skill in the art at the time of appellant’s invention to make the
hole pattern on the jaw plates of Hennessey in the manner taught
by Meyer, i.e., as an array of regularly spaced holes, in order
to enable the user to have more possibilities of work holder
positioning on the jaw plates.
The crux of appellant’s argument is that the examiner’s
reliance on Meyer for the teaching of a pattern of regularly
spaced holes is an improper inference on the examiner’s part,
without support from Meyer’s specification. In particular,
appellant contends that there is no basis for assuming that
Meyer’s nearest-neighbor holes are equidistant. We do not agree.
Appeal No. 2001-2595
Application 09/245,640
5
Like the examiner (answer, pages 5-7), we are of the opinion
that Meyer both shows and expressly discloses a uniform
orthogonal pattern of same-sized plate holes aligned in rows and
columns, with the holes regularly spaced apart an equal distance
one from the other. Note particularly, the grid pattern (6)
shown in Figures 1, 5, 8, 13 and 15 of Meyer, and the disclosure
in the paragraph bridging columns 4 and 5 of the patent, wherein
it is specifically indicated that a hole pattern useful for most
wood-working operations is achieved by providing a grid of
openings (4) “on two-inch centers.” Thus, appellant’s argument
on pages 5-6 of the brief regarding equal spacing of the holes of
the grid in Meyer does not persuade us of any error in the
examiner’s position.
Appellant next attacks the examiner’s rejection by urging
(brief, page 7) that substituting a single workbench table top
for Hennessey’s pair of plates is nonsensical. We would
certainly agree. However, it is abundantly clear from the record
that the examiner has made no such assertion in rejecting the
claims on appeal, but has merely relied upon Meyer’s teaching of
Appeal No. 2001-2595
Application 09/245,640
6
a regular spaced hole pattern for supporting work piece holders
as being equally useful in the environment of Hennessey’s vise-
type clamping apparatus, a position we wholeheartedly agree with.
As for appellant’s assertions that one skilled in the art of
vise plates would not look to a workbench to improve his plates,
and that the examiner has employed hindsight in the proposed
combination of Hennessey and Meyer, we find such arguments to be
unpersuasive. In the first place, appellant has not provided a
cogent explanation of exactly why one skilled in the art of vise
plates would not look to a clamping workbench like that of Meyer
to improve his vise plates. Moreover, like appellant, both
Hennessey and Meyer disclose a work piece clamping and
positioning device which depends upon the exact positioning of
work holders mounted in holes of a work surface for holding a
work piece in a precisely selected position with reference to an
operating tool. Like appellant, both of the applied patents also
seek to provide such a system that is quick and simple to use and
thus minimizes the skill required and errors in work set up,
while allowing the work holders to be quickly and easily
reoriented for another operation, removed quickly to provide an
Appeal No. 2001-2595
Application 09/245,640
7
unobstructed work surface, or reset in exactly the same location
for repetitive operations. Thus, we conclude that, at the very
least, the adjustable work piece clamping system of Meyer is
reasonably related to both appellant’s and Hennessey’s problem of
securing a variety of shapes and sizes of work pieces in an
advantageous orientation, and for that reason is clearly
analogous prior art.
As for appellant’s hindsight argument, we agree with the
examiner that the increased flexibility and capability of holding
any size or shape work piece firmly in a fixed position as
disclosed in Meyer would have provided ample motivation for one
of ordinary skill in the art to utilize the expanded grid of
uniformly spaced holes disclosed in Meyer in the vise plates of
Hennessey for the self-evident advantages to be derived
therefrom. In that regard, Hennessey notes (col. 2, lines 50-57)
that the holes in the vise plates therein may be “spaced apart
variously according to the class of work which may be expected”
and because of the simplicity of the device, that it would be “a
practical matter to provide a substantial number of these blocks
having holes differently arranged.” As for Meyer, this patent
indicates (col. 9, lines 33-39) that the clamping system
Appeal No. 2001-2595
Application 09/245,640
8
disclosed therein “may be adapted to almost any home or
industrial work surface simply by providing it with a grid of
openings,” which openings receive pins attaching clamping members
to the work surface or may receive pins attaching other
structures to the work surface.
In further response to appellant’s arguments concerning the
examiner’s combination of the applied references, we observe that
where the issue is one of obviousness under 35 U.S.C. § 103, the
proper inquiry should not be limited to the specific structure
shown by a reference, but should be into the concepts fairly
contained therein, with the overriding question to be determined
being whether those concepts would have suggested to one skilled
in the art the modification called for by the claims. See In re
Bascom, 230 F.2d 612, 614, 109 USPQ 98, 100 (CCPA 1956).
Furthermore, under 35 U.S.C. § 103, a reference must be
considered not only for what it expressly teaches, but also for
what it fairly suggests (In re Burckel, 592 F.2d 1175, 1179, 201
USPQ 67, 70 (CCPA 1979); In re Lamberti, 545 F.2d 747, 750, 192
USPQ 278, 280 (CCPA 1976)), as well as the reasonable inferences
which the artisan would logically draw from the reference. See
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Application 09/245,640
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In re Shepard, 219 F.2d 194, 197, 138 USPQ 148, 150 (CCPA 1963).
As stated by the Court in In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981)
The test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the
structure of the primary reference, nor is it that the
claimed invention must be expressly suggested in any one or
all of the references. Rather, the test is what the
combined teachings of the references would have suggested to
those of ordinary skill in the art.
In addition, while there clearly must be some teaching or
suggestion to combine existing elements in the prior art to
arrive at the claimed invention, we note that it is not necessary
that such teaching or suggestion be found only within the four
corners of the applied 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 Boezk, 816
F.2d 1567, 1572, 163 USPQ 545, 549 (CCPA 1969). This is because
we presume skill on the part of the artisan, rather than the
converse. See In re Sovish, 769 F.2d 7638, 743, 226 USPQ 771,
774 (Fed. Cir 1985).
Appeal No. 2001-2595
Application 09/245,640
10
Since appellant’s arguments have not convinced us of any
error in the examiner’s position regarding the rejection of
independent claims 1 and 28 under 35 U.S.C. § 103(a) as being
unpatentable over Hennessey in view of Meyer, we will sustain the
rejection of those claims. In addition, since appellant has not
specifically argued for the separate patentability of claims 19,
22, 27, 29 and 33, we conclude that those claims will fall with
their respective independent claim. See, 37 CFR § 1.192 (c)(7)
and (c)(8)(iv) and In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d
1525, 1528 (Fed. Cir. 1987); In re Wood, 582 F.2d 638, 642, 199
USPQ 137, 140 (CCPA 1978); In re Hellsund, 474 F.2d 1307, 1312,
177 USPQ 170, 174 (CCPA 1973).
Regarding the examiner’s rejection of dependent claims 3,
20, 24, 26 and 30 under 35 U.S.C. § 103(a) as being unpatentable
over Hennessey in view of Meyer as applied above, and further in
view of Peterson, we look first to claim 3. This claim sets
forth that the work piece holder or holders of claim 1 are
“selected from a collection of work piece holders comprising an
arc block, a dowel, and a V-block.” Since Hennessey clearly
discloses a work holder in the form of dowels (P) and Meyer
discloses a bench stop (Fig. 11) that we broadly consider to be a
Appeal No. 2001-2595
Application 09/245,640
11
V-block (at 114), we share the examiner’s view that the subject
matter of claim 3 on appeal would have been obvious to one of
ordinary skill in the art at the time of appellant’s invention.
Thus, we will sustain the examiner’s rejection of claim 3 under
35 U.S.C. § 103(a).
As for the examiner’s rejection of claims 20, 24, 26 and 30
under 35 U.S.C. § 103(a), we agree with appellant’s arguments on
pages 8 and 9 of the brief that there would be no logical reason
for one of ordinary skill in the art to attempt to modify the
pins or dowels (P) of Hennessey to have a rounded surface on the
outer end thereof as in the pins of the vise in Peterson, since
the pins of these two patents operate in entirely different ways
to hold a work piece in position between the vise jaws. Note
particularly Figures 5, 6, 7, 8, 9 and 10 of Hennessey and
Figures 1, 2, 4 and 5 of Peterson. Moreover, we note that each of
claims 20, 24, 26 and 30 includes reference to an “arc block”
like that seen in Figures 7 and 8 of appellant’s drawings. No
such “arc block” is shown or disclosed in Hennessey, Meyer or
Peterson. Accordingly, the examiner’s rejection of claims 20,
24, 26 and 30 under 35 U.S.C. § 103(a) will not be sustained.
Appeal No. 2001-2595
Application 09/245,640
12
The last of the examiner’s rejections for our review is that
of claim 23 under 35 U.S.C. § 103(a) as being unpatentable over
Hennessey in view of Meyer and Swann. According to the examiner,
it would have been obvious to one of ordinary skill in the art at
the time of appellant’s invention to make the apertures or holes
in the vise plates of Hennessey as modified by Meyer to have both
an unthreaded portion and a threaded portion as shown in Swann
(Figs. 2 and 7) in order to permit Hennessey’s holes to be
selectively engaged by work holders having either threaded or
unthreaded posts. We agree.
Appellant’s argument relative to claim 23 (brief, page 9) is
that the holes seen in Swann are not “stepped” holes as described
by appellant. On page 8 of the answer, the examiner points to
Figure 7 of Swann and notes that this figure clearly shows a
stepped hole having an unthreaded portion (36) and a threaded
portion (34), wherein the hole is specifically designed to
receive two different types of pins. Since we agree with the
examiner’s evaluation of the teachings of Swann and with his
conclusion of obviousness, we will sustain the rejection of claim
23 under 35 U.S.C. § 103(a).
Appeal No. 2001-2595
Application 09/245,640
13
In light of the foregoing, the decision of the examiner
rejecting claims 1, 19, 22, 27 through 29 and 33 under 35 U.S.C.
§ 103(a) as being unpatentable over Hennessey in view of Meyer is
sustained. The examiner’s decision rejecting claims 3, 20, 24,
26 and 30 under 35 U.S.C. § 103(a) as being unpatentable over
Hennessey in view of Meyer and Peterson, is sustained as to claim
3, but not with regard to claims 20, 24, 26 and 30. The
examiner’s decision rejecting claim 23 under 35 U.S.C. § 103(a)
as being unpatentable over Hennessey in view of Meyer and Swann
is also sustained.
Appeal No. 2001-2595
Application 09/245,640
14
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 )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-2595
Application 09/245,640
15
CEF:pgg
David L. Tingey
321 Burnett Avenue S
Suite 303
Renton, WA 98055
Appeal No. 2001-2595
Application 09/245,640
16
APPENDIX
1. A versatile vise jaw mountable to a vise, the
improvement comprising
a pair of opposing jaw plates, at least one of said jaw
plates having a uniform orthogonal pattern of same-sized plate
holes, the plate holes being aligned in rows and columns with
each hole center respectively spaced apart a same distance, d,
from its nearest holes both in its respective row and in its
respective column adapted to receive two posts of a work piece
holder in two of said nearest holes, each post matching a plate
hole with post centers spaced apart said same distance, d,, and,
means for mounting said jaw plates to a vise.