Ex parte EANDI

Board of Patent Appeals and Interferences

Jul 14, 1998

08417362 (B.P.A.I. Jul. 14, 1998)

Application for patent filed April 5, 1995.1
1
Paper No. 14
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ROGER E. EANDI
______________
Appeal No. 98-0197
Application 08/417,3621
_______________
ON BRIEF
_______________
Before FRANKFORT, PATE and CRAWFORD, Administrative Patent
Judges.
PATE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 4. Claims 5 through 7, the other remaining claims in
Appeal No. 98-0197
Application 08/417,362
2
the application, stand as nonelected and withdrawn from
consideration.
The claimed invention is directed to a plug washer that
is used with a support plate and a stud to reinforce a wall.
The claimed invention is further illustrated by reference
to claim 1, reproduced below.
1. A plug washer for use with a stud embedded in a
vertical wall for attachment to a vertical metal support
standing adjacent to said wall, said stud to extend from said
wall at an angle oblique to horizontal and through said metal
support comprising,
a washer portion having a support-bearing surface and a
nut-bearing surface, said support-bearing surface and said
nut-bearing surface diverging at said oblique angle,
a cylindrical plug portion having a smaller diameter than
said washer portion and extending from said support-bearing
surface with its axis perpendicular to said support-bearing
surface,
a passageway to receive said stud extending through said
washer portion and said plug portion with the axis of said
passageway perpendicular to said nut-bearing surface.
The references of record relied upon as evidence of
obviousness are:
Williams 3,311,012 Mar. 28, 1967
Hipkins 5,147,151 Sep. 15, 1992
Appeal No. 98-0197
Application 08/417,362
3
Claim 4 stands rejected under 35 U.S.C. § 112, second
paragraph, as indefinite. The examiner is of the view that
there is an inconsistency in the language of the preamble and
certain portions of the body of claim 1 when considered with
the recited subject matter of claim 4.
Claims 1 through 4 are rejected under 35 U.S.C. § 103 as
unpatentable over the combined teachings of Williams and
Hipkins.
The examiner is of the view that it would have been obvious to
include the cylindrical plug portion of Hipkins onto the
support bearing portion of Williams in order to obstruct any
grout from contacting the outside surface of the support
plate. Alter-natively, the examiner is of the view that it
would have been obvious to attach the washer portion of
Williams to the cylindrical plug portion of Hipkins with the
support bearing surface and nut bearing surface diverging at
an oblique angle
in order to have uniform stresses along the nut bearing
surface. See examiner’s answer, pages 5 and 6.
Appeal No. 98-0197
Application 08/417,362
4
According to the appellant on page 4 of the brief, the
claims stand or fall together.
OPINION
We have carefully reviewed the rejections on appeal in
light of the arguments of the appellant and the examiner. As
a result of this review, we have determined that the subject
matter of claims 4 is not indefinite within the purview of 35
U.S.C.
§ 112, second paragraph. We have further determined that the
Appeal No. 98-0197
Application 08/417,362
5
applied prior art does not establish the prima facie
obviousness of the subject matter of claims 1 through 4.
Therefore, the rejections made by the examiner are reversed.
Turning first to the rejection of claim 4 under 35 U.S.C.
§ 112, second paragraph, it is our view that claim 4 does not
raise an issue of whether a subcombination plug washer is
claimed, or whether a combination of a plug washer and support
plate are claimed, as the examiner suggests. A careful
reading of claim 4 establishes that claim 4 only references
the support plate to set out the thickness of the plug portion
of the plug washer being claimed in claim 1. Therefore, the
reference to the support plate in claim 4 is merely a
permissible reference to establish the dimensions of the plug
portion of the claimed subject matter. In our view, claim 4
does not raise the issue of a combination invention.
Therefore, the rejection of claim 4 under 35 U.S.C. § 112,
second paragraph, is reversed.
Turning to the rejection of claims 1 through 4 under
35 U.S.C. § 103, we note that the examiner has included two
rejections, one denominated as over Williams in view of
Appeal No. 98-0197
Application 08/417,362
6
Hipkins, and one denominated as over Hipkins in view of
Williams. However, as our reviewing court makes clear, a 35
U.S.C. § 103
Appeal No. 98-0197
Application 08/417,362
7
rejection is based on the combined teachings of the applied
references, and the order in which the references are recited
is of little moment. See In re Bush, 296 F.2d 491, 496, 131
USPQ 263, 267 (CCPA 1961).
Turning to a consideration of claim 1 on appeal, we note
that the ultimate limitation of the claim calls for a
passageway extending through the washer portion and the plug
portion with the axis of the passageway perpendicular to the
nut-bearing surface. Since the nut-bearing surface and the
support-bearing surface diverge at an oblique angle, the
passageway and the cylindrical plug portion must be at a
complementary angle to the oblique angle of divergence.
Neither reference applied teaches a plug portion with a
passageway skewed with respect to the plug portion axis.
Therefore, assuming for a moment, that it would have been
obvious to provide the plug portion of Hipkins on the beveled
washer of Williams, no reference teaches that the stud
passageway in such a plug portion would be any more than
axial. It is noted that Hipkins does not clearly show that
his passageway is skewed even after the washer insert has been
Appeal No. 98-0197
Application 08/417,362
8
distorted by tightening of the roof bolt. Since no reference
teaches a passageway that extends through a plug portion on a
skewed axis, the rejection of claims 1 through 4 under 35
U.S.C. § 103 must be reversed.
SUMMARY
The rejection of claim 4 under 35 U.S.C. § 112, second
paragraph, has been reversed.
The rejection of claim 1 through 4 under 35 U.S.C. § 103
has been reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
WILLIAM F. PATE, III ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
Appeal No. 98-0197
Application 08/417,362
9
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Glen R. Grunewald
166 Santa Clara Avenue
Oakland, CA 94610
Appeal No. 98-0197
Application 08/417,362
10
WFP/cam