Ex Parte Dougherty

Board of Patent Appeals and Interferences

Nov 24, 2008

10126009 (B.P.A.I. Nov. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN DOUGHERTY
____________

Appeal 2008-5021
Application 10/126,009
Technology Center 3700
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Decided: November 24, 2008
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Before JAMESON LEE, SALLY C. MEDLEY and JAMES T. MOORE,
Administrative Patent Judges.

MEDLEY, Administrative Patent Judge.
DECISION ON APPEAL
A. Statement of the Case
John Dougherty (“Dougherty”), the real party in interest, seeks review
under 35 U.S.C. § 134(a) of a Final Rejection of claims 1-9, the only claims
remaining in the application on appeal. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
Dougherty’s invention is a ratchet extension. Referring to figure 1
below, [numbers from figure 1 inserted] the ratchet extension [10] includes
a telescopic elongated cylindrical extension member [20] fabricated from
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chrome plated steel and a locking apparatus [40] including a locking tool.
(Spec. 6-9).
Dougherty’s figure 1 is reproduced below.

Figure 1 depicts a ratchet wrench with a telescopic extension member.
Representative claim 1, reproduced from the Claim Appendix of the
Appeal Brief, reads as follows:
A ratchet extension comprising:
an elongated, cylindrical extension member, said elongated,
cylindrical extension member is telescopic and fabricated of
tool steel metal material being chrome plated so as to retard
rust; and
a locking apparatus, said locking apparatus includes a
locking tool.

The Examiner relies on the following prior art:
Long 1,932,113 Feb. 15, 1933
Lojczyc 2,814,226 Nov. 26, 1957
Tarquinio 2,842,020 Jul. 8, 1958
Schroeder 3,343,434 Sep. 26, 1967
Henrit 4,208,942 Jun. 24, 1980
Valadez 4,459,716 Jul. 17, 1984
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The Examiner rejected claims 1-8 under 35 U.S.C. § 103(a) as follows:
1. Claims 1-6 as unpatentable over Schroeder and Henrit or Valadez;
2. Claims 7-8 as unpatentable over Schroeder, Henrit or Valadez, and
Tarquinio;
3. Claim 9 as unpatentable over Schroeder, Henrit or Valadez, and Long
or Lojczyc.
B. Issues
Has Dougherty shown that the Examiner erred in rejecting all of the
claims as obvious because the references or combination of references do
not teach or suggest every element of the claims and because the references
are non-analogous art?
Has Dougherty shown that the Examiner erred in rejecting claims 1-6 as
obvious because the prior art does not describe each and every limitation of
the claims and because the Examiner does not provide a teaching or
suggestion found in the prior art to modify or combine the references?
Has Dougherty shown that the Examiner erred in rejecting claims 7-8 as
obvious because the prior art does not describe each and every limitation of
the claims?
Has Dougherty shown that the Examiner erred in rejecting claim 9 as
obvious because the Examiner does not provide a teaching or suggestion
found in the prior art to modify or combine the references?
C. Findings of Fact (“FF”)
Schroeder
1. Referring to Figure 2 below [numbers from figure 2 inserted],
Schroeder describes a ratchet extension including a tubular extension
element [26] and a locking apparatus comprising threads [27], [36], V-
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shaped openings [28], chuck jaws [31], and chuck collar [35]; the
locking apparatus including a locking tool comprising the chuck jaws
[31] and chuck collar [35]. (Col. 2, l. 63-col. 3, l. 24).
2. The chuck collar [35] may be screwed onto threads [27], where the
sloping surfaces [37] of the chuck collar [45] will engage the sloping
surfaces [33] of chuck jaws [31] against the sides of shaft [29] to lock
the shaft [29] in any selected extended or retracted position. (Col. 3, ll.
18-24).
3. The chuck collar [35] can be loosened by turning collar [35] on threads
[27]. (Col. 3, ll. 34-38).
Figure 2, reproduced from Schroeder’s figure 5, is below.

Figure 2 depicts an extension element for a ratchet wrench.
Official Notice
4. We take official notice that nearly all screw threads are right-handed
screw threads such that a clockwise motion results in tightening of a bolt
or nut on a screw and counter-clockwise motion results in loosening of a
bolt or nut on a screw.
C. Principles of Law
“Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
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combination of references.” In re Merck & Co., Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
“Two separate tests define the scope of analogous prior art: (1) whether
the art is from the same field of endeavor, regardless of the problem
addressed and, (2) if the reference is not within the field of the inventor's
endeavor, whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved.” In re Bigio, 381 F.3d 1320,
1325 (Fed. Cir. 2004).
In KSR, the Supreme Court rejected the rigid application of the “teaching
suggestion, or motivation” (TSM) test, instead favoring the “expansive and
flexible approach” used by the Court. KSR Int'l Co. v. Teleflex Inc., 127
S.Ct. 1727, 1739 (2007).
“The question is . . . whether the combination was obvious to a person
with ordinary skill in the art. Under the correct analysis, any need or
problem known in the field of endeavor at the time of the invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.” Id. at 1742.
In an obviousness analysis, it is not necessary to find precise teachings in
the prior art directed to the specific subject matter claimed because
inferences and creative steps that a person of ordinary skill in the art would
employ can be taken into account. Id. at 1741.
“A person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 1742.
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D. Analysis
Rejection of claims 1-9 over the prior art
Dougherty argues that the references or combination of references
do not teach or suggest every element of the claims. (App. Br. 6).
Dougherty submits that “applicant fails to see any similarity between
Valadez and Henrit that would suggest that they could replace each
other as enabling references for the present invention, neither is there
any indication that they can be used in conjunction with the Schroeder
device to make a telescopic ratchet extension.” (App. Br. 6, emphasis
omitted). Dougherty also argues that (1) Tarquinio describes a holder
for hexagonal type wrenches “the applicability of which is also not
seen in conjunction with the present invention,” and (2) Long and
Lojczyc describe pipe wrenches and adjustable wrenches. (App. Br.
6).
Dougherty’s arguments are unpersuasive because Dougherty does
not explain which elements of the claims are not taught or suggested
by the references. Dougherty’s arguments attack the references
individually instead of addressing the teachings of the combined
references. Attacking references individually where the rejection is
based upon the teachings of a combination of references is insufficient
to establish non-obviousness.
To the extent that Dougherty argues that the references are non-
analogous art, the arguments are unpersuasive. Dougherty has not
explained why the Schroeder, Valadez, Henrit, Tarquinio, Long and
Lojczyc references are not from the same field of endeavor, or why
the references are not reasonably pertinent to the particular problem
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with which the inventor is involved. All of the references are directed
to hand tools.
For all these reasons, Dougherty has not shown that the Examiner erred
in determining that claims 1-9 are obvious over the applied prior art.
Rejection of claims 1-6 as obvious over Schroeder and Henrit or Schroeder
and Valadez
Independent claim 1 is representative and recites “[a] ratchet extension
comprising: an elongated, cylindrical extension member . . . is telescopic and
fabricated of tool steel metal material being chrome plated . . . and a locking
apparatus . . . includes a locking tool.” (App. Br. 9).
The Examiner finds that Schroeder meets the claim limitations
with the exception of the extension member being chrome plated.
(Final Rejection 2, Ans. 3). Schroeder describes a ratchet extension
including an elongated cylindrical extension member [26] and a
locking apparatus [27], [28], [31], [35] including a locking tool [35].
(FF 1). The Examiner finds that Henrit or Valadez suggest that a tool
can have chrome plating for appearance and rust proofing. (Final
Rejection 2, Ans. 3). The Examiner concluded that it would have
been obvious to one with ordinary skill in the art at the time the
invention was made to modify Schroeder to use chrome plating to
form the tool body because either Henrit or Valadez suggests the use
of chrome plating in tools. (Final Rejection 2, Ans. 3-4).
Dougherty argues that the Examiner uses hindsight reasoning and does
not provide a teaching or suggestion found in the prior art to modify or
combine the references. (App. Br. 7-8). The Supreme Court has rejected the
rigid application of the teaching suggestion or motivation test. In an
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obviousness analysis, it is not necessary to find precise teachings in the prior
art directed to the specific subject matter claimed because inferences and
creative steps that a person of ordinary skill in the art would employ can be
taken into account.
In this case, Dougherty does not dispute the Examiner’s finding that (1)
chrome plating of hand tools is notoriously old and well known in the art;
and (2) a tool can have chrome plating for the purpose of appearance and
rust proofing. (Final Rejection 2, Ans. 3, 5). One with ordinary skill in the
art at the time the invention was made would appreciate that providing an
enhanced appearance and rust proofing would be beneficial and applicable
to all hand tools. A person of ordinary skill is a person of ordinary
creativity, not an automaton.
Dougherty also argues that the Examiner erred in determining that it is
obvious to use chrome plating to form the tool body and by not addressing
chrome plating of just the extension member of the ratchet extension.
(Reply Br. 3). Dougherty’s arguments are not commensurate in scope with
the claim limitations. The claim language does not limit the chrome plating
only to the extension member of the ratchet extension. As modified by the
Examiner, Schroeder’s entire tool, including the extension element [26], is
chrome plated.
Dougherty further argues that Schroeder does not describe a locking
apparatus with a locking tool that is separate from the extension member.
(Reply Br. 3). Dougherty argues that Schroeder describes all the parts are
integrally part of the extension element. (Reply Br. 3). Dougherty’s
arguments again are not commensurate in scope with the claim limitations.
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The claim language does not require the locking apparatus with a locking
tool to be separate from the extension member.
For all these reasons, Dougherty has not shown that the Examiner erred
in determining that claims 1-6 are obvious over Schroeder and Henrit or
Valadez.
Rejection of claims 7-8 as obvious over Schroeder, Henrit or Valadez, and
Tarquinio
Claim 8 is representative and recites “whereby manual clockwise
rotation of said locking tool actuates mechanical impingement . . . and
whereupon manual counter-clockwise rotation of said locking tool
facilitates removal of mechanical interference . . .”. (App. Br. 10-11,
Reply Br. 3-4). Dougherty argues that none of the references describe
the disputed limitations. (Reply Br. 4).
Dougherty’s arguments are unpersuasive because Schroeder
describes the disputed limitations. Schroeder describes a chuck collar
[35] (i.e., locking tool) which when screwed onto threads [27] locks
the shaft [29] in position (i.e., mechanical impingement). (FF 2). The
chuck collar [35] may be loosened by turning the collar on the threads
[27]. (FF 3). Dougherty does not explicitly state that chuck collar
[35] is screwed onto threads [27] with a clockwise motion and
loosened by a counterclockwise motion. Nearly all screw threads are
right-handed screw threads. (FF 4). It would have been obvious to
one with ordinary skill that rotating Schroeder’s chuck collar [35] on
threads [27] in a clockwise motion would result in locking shaft [29]
in position (i.e., mechanical impingement) and rotating the chuck
collar [35] on threads [27] in a counter-clockwise motion would
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loosen the chuck collar [25] (i.e., facilitate removal of the mechanical
interface).
For all these reasons, Dougherty has not shown that the Examiner erred
in determining that claims 7-8 are obvious over Schroeder and Henrit or
Valadez and Tarquinio.
Rejection of claim 9 as obvious over Schroeder, Henrit or Valadez, and
Long or Lojczyc
Claim 9 recites “wherein said inner cylinder has measuring indicia
engraved along an external circumferential surface of said inner cylinder in a
sequentially progressive manner . . .”. (App. Br. 11). Dougherty argues that
the Examiner uses hindsight reasoning, and there is no teaching, suggestion,
or motivation to modify or combine the references. (Reply Br. 4-5).
Dougherty’s arguments are unpersuasive. As explained before, the
Supreme Court has rejected the rigid application of the teaching, suggestion,
or motivation test. Precise teachings in the prior art directed to the specific
subject matter claimed are not necessary in an obviousness analysis.
In this case, the Examiner has identified that Long and Lojczyc describe
tools and suggest providing indicia on the inner member to indicate distance.
(Final Rejection 3, Ans. 4). One with ordinary skill in the art at the time the
invention was made would appreciate that it would be beneficial to provide
indicia on hand tools for the purpose of indicating distance.
For all these reasons, Dougherty has not shown that the Examiner erred
in determining that claim 9 is obvious over Schroeder and Henrit or Valadez
and Long or Lojczyc.
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E. Conclusions of Law
Based on the Findings of Fact and the Analysis above, Dougherty has
not shown that the Examiner erred in rejecting all of the claims as obvious
on the basis that the references or combination of references do not teach or
suggest every element of the claims or on the basis that the references are
non-analogous art.
Further, Doherty has not shown that the Examiner erred in rejecting
claims 1-6 as obvious on the basis that the prior art does not describe each
and every limitation of the claims or on the basis that the Examiner does not
provide a teaching or suggestion found in the prior art to modify or combine
the references.
Still further, Doherty has not shown that the Examiner erred in rejecting
claims 7-8 as obvious on the basis that the prior art does not describe each
and every limitation of the claims.
Yet still further, Doherty has not shown that the Examiner erred in
rejecting claim 9 as obvious on the basis that the Examiner does not provide
a teaching or suggestion found in the prior art to modify or combine the
references.
F. Decision
The decision of the Examiner rejecting claims 1-6 under 35 U.S.C. §
103(a) as unpatentable over Schroeder and Henrit or Valadez is affirmed.
The decision of the Examiner rejecting claims 7-8 under 35 U.S.C. §
103(a) as unpatentable over Schroeder, Henrit or Valadez, and Tarquinio is
affirmed.
The decision of the Examiner rejecting claim 9 under 35 U.S.C. § 103(a)
as unpatentable over Schroeder, Henrit or Valadez, and Long or Lojczyc is
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affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED

MAT

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