Ex Parte Doll

Board of Patent Appeals and Interferences

Feb 28, 2007

10430963 (B.P.A.I. Feb. 28, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RONALD J. DOLL
____________
Appeal No. 2006-1294
Application No. 10/430,963
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ON BRIEF
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Before PATE, HORNER and FETTING, Administrative Patent Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal from the final rejection of claims 1-3, 27, 28 and 31-35 and
the examiner’s refusal to allow claims 29 and 39 amended after final rejection.
Claims 6-8 and 30 are allowed. These are all the claims remaining in the
application.
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Application No. 10/430,963

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The claimed invention is a protective guard for a coupling between a pair of
rotating shaft components. The guard has first and second halves that are
connected with a hinge. Extending from both sides of the protective housing are
sleeves with cut lines so that they may be trimmed to provide the length necessary
to surround the rotating shaft. The claimed invention may be further understood
with reference to the appealed claims appended to appellant’s brief.
The references of record relied upon by the examiner as evidence of
anticipation and obviousness are:
Pelton 1,192,342 Jul. 25, 1916
Hogan 4,211,519 Jul. 8, 1980
Powell 6,190,261 Feb. 20, 2001
Claims 1 through 3, 29, 31, 35 and 39 stand rejected under 35 U.S.C. §
102 as anticipated by Pelton.
Claims 1 through 3, 27, 29, 31 through 35 and 39 stand rejected under
35 U.S.C. § 102 as anticipated by Hogan.
Claims 31 through 35 and 39 stand rejected under 35 U.S.C. § 102 as
anticipated by Powell.
Claim 28 stands rejected under 35 U.S.C. § 103 as unpatentable over
Pelton in view of Powell.
Claims 29, 33 and 39 stand rejected under 35 U.S.C. § 112 second
paragraph as indefinite.

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ISSUES
Appellant argues that Pelton does not disclose appellant’s claimed sleeve
portions that can be trimmed. With respect to Hogan, appellant argues that
Hogan does not show a coupling connection because Hogan does not have a
pair of rotating shafts. With respect to Powell, appellant argues that Powell
does not show a pivotal or hinge connection joining the two first and second
guard portions. With respect to the obviousness rejection of claim 28 apellant
argues that the claimed features are not found in Pelton and Powell, and
additionally argues that there is no motivation to modify Pelton in the manner
suggested by the examiner. With respect to the rejections under § 112, second
paragraph, appellant argues that the term “trim line” does not render the claims
indefinite. The appellant further argues that claim 33 is not indefinite as to
whether the base member is part of the claimed combination or not.
Therefore, the issues for our decision on appeal are: whether Pelton
anticipates claims 1 through 3, 29, 31, 35 and 39; whether Hogan anticipates
claims 1 through 3, 27, 29, 31 though 35 and 39; whether Powell anticipates
claims 31 through 35 and 39: whether Pelton and Powell render unpatentable
claim 28; and whether claims 29, 33 and 39 are indefinite under the purview of
35 U.S.C. § 112 second paragraph.
FINDINGS OF FACT
Pelton discloses a safety device to be used on revolving shafts or
machinery to prevent contact by workers and to protect the coupling joint.
Pelton has a first guard half 1 and a second guard half 2 pivotally connected by
hinge connector 5 and 6. The first guard half and the second guard half have
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sleeve portions, bushings 18, that extend outwardly in opposite directions from
the first central body. The bushings 18 fit on the rotating shaft and the guard
assembly of Pelton is designed to rotate with the shafts and coupling. We
further note that the half bushings are interchangeable to fit any size of shafts.
See Pelton at line 74-76.
Hogan discloses a pair of peristaltic pumps for dispensing condiments.
The pump housing 20 is formed of two identical halves 20a and 20b integrally
connected to each other through a connecting hinge bolt 24. The first and
second parts 20a and 20b have outwardly extending sleeve portions 66a and
66b. It is further noted that shaft 50 on which roller 56 is mounted includes
transverse drive slot 204 which is adapted to receive a drive key of an
additional peristaltic pump. See Figure 8.
Powell discloses a pump assembly shaft guard for a coupling 18 between
a motor 12 and pump 14. The first and second guard halves of Powell are not
hinged but are fastened with conventional fasteners at horizontal flanges.
Powell discloses ventilation port 28 and support legs 50 that fasten the
assembled guard assembly to a base member 60. Powell further discloses that
stepped-down sleeves 26 may be trimmed down to fit the length of the drive
shaft 16 and match the spacing between the motor 12 and the pump mechanism
14. See col. 4, lines 5-8.
PRINCIPLES OF LAW
The prior art may anticipate a claimed invention, and thereby render it
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig., 301 F.3d
1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied, 538 U.S.
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907(2003). Express anticipation occurs when the prior art expressly discloses each
limitation (i.e., each element) of a claim. Id. In addition, A[i]t is well settled that a
prior art reference may anticipate when the claim limitations not expressly found in
that reference are nonetheless inherent in it.@ Id.
A claimed invention is unpatentable if the differences between it and the
prior art are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the pertinent art.
In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1334-35 (Fed. Cir. 2006)(citing
35 U.S.C. § 103(a) (2000)); Graham v. John Deere Co., 383 U.S. 1, 13-14 ,148
USPQ 459, 467 (1966). The ultimate determination of whether an invention would
have been obvious is a legal conclusion based on underlying findings of fact. Id.
(citing In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614, 1616 (Fed. Cir.
1999)).
In assessing whether subject matter would have been non-obvious under
§103, the Board follows the guidance of the Supreme Court in Graham v. John
Deere Co. Kahn 441 F.3d at 985, 78 USPQ2d at 1335. The Board determines “‘the
scope and content of the prior art,’” ascertains “‘the differences between the prior
art and the claims at issue,’” and resolves “‘the level of ordinary skill in the
pertinent art.’” Id. (citing Dann v. Johnston, 425 U.S. 219, 226, 189 USPQ 257,
261 (1976)) (quoting Graham, 383 U.S. at 17, 148 USPQ at 467). Against this
background, the Board determines whether the subject matter would have been
obvious to a person of ordinary skill in the art at the time of the asserted invention.
Id. (citing Graham, 383 U.S. at 17, 148 USPQ 467). In making this determination,
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the Board can assess evidence related to secondary indicia of non-obviousness like
“commercial success, long felt but unresolved needs, failure of others, etc.” Id.,
383 U.S. at 17-18, 148 USPQ at 1335; accord In re Rouffet, 149 F.3d 1350, 1355,
47 USPQ2d 1453, 1456 (Fed. Cir. 1998). “We have explained that ‘[t]o reject
claims in an application under section 103, an examiner must show an unrebutted
prima facie case of obviousness…. On appeal to the Board, an applicant can
overcome a rejection by showing insufficient evidence of prima facie obviousness
or by rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.’ ” Id. (quoting Rouffet, 149 F.3d at 1355, 47 USPQ2d at 1456).
Section 112, second paragraph, is satisfied if a person skilled in the field of
the invention would reasonably understand the claim when read in the context of
the specification. Marley Mouldings Ltd. v Mikron Industries, Inc., 417 F.3d
1356, 1359, 75 USPQ2d 1954, 1956 (Fed. Cir. 2005) (citing Union Pac. Res. Co.
v. Chesapeake Energy Corp., 236 F.3d 684, 692, 57 USPQ2d 1293, 1297 (Fed. Cir.
2001) (the definiteness requirement set forth in '112, & 2 "focuses on whether
those skilled in the art would understand the scope of the claim when the claim is
read in light of the rest of the specification")); Miles Labs., Inc. v. Shandon, 997
F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993) (if the claims "reasonably
apprise those skilled in the art of the scope of the invention, ' 112 demands no
more"); In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236, 238 (CCPA 1971) (the
indefiniteness inquiry asks whether the claims "circumscribe a particular area with
a reasonable degree of precision and particularity").
ANALYSIS
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With respect to the anticipation rejection based on Pelton these rejections are
not sustained. Although Pelton does state that the bushings 18 are interchangeable,
we agree with appellant that this does not necessarily mean that they are adjustable
in length. We deem it far more likely that the adjustability is to fit shafts of
different diameters. With respect to claim 31 we note that Pelton is designed to
rotate with the shafts and the coupling. Therefore there is no base mounting
member disclosed in Pelton.
Turning to the anticipation rejection with respect to Hogan we agree with the
appellant that the sleeves 66a and 66b of Hogan do not appear to be adjustable.
Claims 1 through 3, 27 and 29 do not lack novelty over Hogan. With respect to
claim 31 we note that the two halves of Hogan are connected to base member 14
via base mount portion 60 on the two upper quadrants of the housings of Hogan.
Appellant argues that Hogan is not a coupling. As noted above, however, as
clearly illustrated in Figure 8, one pump of Hogan can be used to couple the motor
of Hogan to a second pump installed outboard of first pump 12. Therefore it is our
finding that claim 31 lacks novelty over the Hogan reference. For claims 32-34
note base mount portion 60 is integrally molded to the housing structure.
Accordingly, it is our finding that claims 31-34 lack novelty over the Hogan
reference. With respect to claim 35 Hogan does not disclose an elongated opening,
and therefore claims 35 and 39 do not lack novelty over Hogan.
We also do not affirm the anticipation rejection of claims 31-35 and 39 as
anticipated by Powell. Claim 31 requires a pivotal connection between a first
guard portion and second portion. The examiner points to slots 38, 48 which
provide an opening for the tab on leg 50. However this is not a pivotal connection
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between the two halves of the guard assembly. Claims 31-35 and 39 do not lack
novelty over Powell.

We will affirm the rejection of claim 28 as unpatenable over Pelton in view
of Powell. As noted above Pelton discloses two pivoting guard portions
surrounding a coupling. Powell discloses sleeve 26 which can be trimmed to fit
the length of the shaft and also discloses ventilation port 28. It would have been
obvious at the time the invention was made to provide Powell with a pivoting
coupling in the nature of a hinge as taught by Pelton. The motivation for
combining the disclosures is found in the convenience the hinge connection
provides with respect to access and servicing the protected coupling.
Turning to the rejections under 35 U.S.C. § 112 second paragraph we will
not affirm the rejection of claim 29 and 39. In our view, appellant’s claim
language referring to “trim lines” would be clear and understandable to one of
ordinary skill. We will, however, affirm the § 112 second paragraph rejection of
claim 33, for the reasons given by the examiner. It is not clear to us whether the
base member claimed in claim 33 is part of the claimed guard assembly of the
independent claim 31.
CONCLUSIONS
The examiner has not sustained his burden of showing that claims 1-3, 29,
31 through 35 and 39 are anticipated by Pelton.
The examiner has not sustained his burden of showing that claims 1-3, 27,
29, 35 and 39 are anticipated by Hogan. The examiner has sustained his burden of
showing that claims 31 through 34 are anticipated by Hogan.
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The examiner has not sustained his burden of showing that claims 31-35 and
39 are anticipated by Powell.
The examiner has sustained his burden of showing that claim 28 is
unpatentable over Pelton and Powell.
The examiner has not sustained his burden of showing that claims 29 and 39
are indefinite. Examiner has sustained his burden of showing that claim 33 is
indefinite.
ORDER
The rejections of claims 1-3, 27, 29, 35 and 39 on the ground of lack of
novelty are not sustained.
The rejections
of claim 31 through 34 under § 102 and claim 28 under § 103 are sustained.
The rejections of claims 29 and 39 under 35 U.S.C. § 112 second paragraph
are not sustained.
The rejection of claim 33 under 35 U.S.C. § 112 second paragraph is
sustained.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(vii).
AFFIRMED-IN-PART

WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LINDA E. HORNER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
ANTON W. FETTING )
Administrative Patent Judge )
Appeal No. 2006-1294
Application No. 10/430,963

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