Ex Parte Frericks

Board of Patent Appeals and Interferences

Mar 4, 2009

10117528 (B.P.A.I. Mar. 4, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DONALD J. FRERICKS
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Appeal 2008-2700
Application 10/117,528
Technology Center 3600
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Decided: 1March 5, 2009
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Before: JENNIFER D. BAHR, LINDA E. HORNER and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304 (2008), begins to run from the
Decided Date shown on this page of the decision. The time period does not
run from the Mail Date (paper delivery) or the Notification Date (electronic
delivery).

Appeal 2008-2700
Application 10/117,528

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134 (2002) from the final
rejection of claim 1 under 35 U.S.C. § 103(a) (2002) as being unpatentable
over Beaman (US 417,805, issued Dec. 24, 1889) and Hong (US 5,549,234,
issued Aug. 27, 1996). We have jurisdiction under 35 U.S.C § 6(b) (2002).
We REVERSE.
Claim 1 recites:

1. A straightening system for insuring
that an object is hung and retained in a proper
horizontal and vertical orientation with respect to a
wall comprising, in combination:
an object having a back panel adapted to
face the wall;
a hanging assembly having a first screw
adapted to be attached to a left half of the back
panel and a second screw adapted to be attached to
the right half of the back panel, the hanging
assembly also have a wire with two ends each
adapted to be attached to one of the screws;
a hanger adapted to be attached to the wall
and to receive the wire;
a handle having a gripping portion formed
of a rigid material in a generally cylindrical
configuration adapted to be held by a hand of a
user and having a flat portion adapted to be struck
with a hammer;
the handle also having a support portion
formed of a rigid material in a generally cylindrical
configuration extending at right angles from a
central extent of the gripping portion, the support
portion terminating in a flat circular region remote
from the gripping portion, the support portion
having a cone-shaped recess in the center thereof;
and
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a pin assembly for coupling the object to the
wall to insure proper positioning and retention of
the proper positioning, the pin assembly having a
circular disc-shaped center with a first planar
surface and an opposed second planar surface and
with an axis parallel with the axis of the support
portion, the pin assembly having two pins, an
outwardly extending pin for positioning in the
object adjacent the wall with the first planar
surface in facing contact with the object during use
and an inwardly directed pin for positioning into
the cone-shaped recess with the second planar
surface in facing contact with the flat circular
region during insertion into the object whereby
pressure on the flat portion of the handle will
transfer forces from the flat circular region of the
handle to the second planar surface of the pin
assembly for driving the outwardly extending pin
into the object.

ISSUES
Beaman discloses a fastening device for holding pictures positively in
place. (Beaman, col. 1, ll. 26-36). The Appellant does not appear to contest
that Beaman discloses each limitation of claim 1 except a handle having a
support portion terminating in a flat circular region remote from the gripping
portion, the support portion having a cone-shaped recess in the center
thereof. (See Reply Br.) The Examiner concedes that Beaman fails to teach
a handle (Ans. 4) and relies on Hong for the suggestion of a handle having a
support portion. The Examiner reasons that:

Hong clearly teaches the recess of the handle
support portion having the same shape as the
fastener or pin of the pin assembly to be inserted
therein. It would have been obvious . . . to have
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modified the shape of the handle recess of Hong to
have incorporated the shape of Beaman’s pin for
the purpose of fitting the pin within the recess.

(Ans. 5-6.) Therefore, this appeal turns on one issue:
Has the Appellant shown that the Examiner failed to
articulate reasoning with some rational underpinning to support
the conclusion that it would have been obvious to have
modified the shape of the handle recess of Hong to have
incorporated the shape of Beaman’s pin for the purpose of
fitting the pin within the recess?

FINDINGS OF FACT
The record supports the following findings of fact (“FF”) by a
preponderance of the evidence.
1. Hong discloses a fastener and a tool for use with the fastener.
(Hong, col. 1, ll. 8-9.)
2. Hong’s fastener 20′′ includes a plate 30′′ of substantially
circular configuration. (Hong, col. 3, ll. 14-20.) The fastener 20′′ also
includes a head 36′′ connected to one flat surface of the plate 30′′. The head
36′′ includes a substantially cylindrical portion and a substantially semi-
spherical portion connected to the substantially cylindrical portion. (See
Hong, col. 2, ll. 32-38, which describes corresponding parts of a different
embodiment and Fig. 14.) A pointed shank extending from the other flat
surface of the plate 30 acts as a nail. (See Hong, col. 2, ll. 43-46 and Fig.
14.)
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3. Hong’s tool 52′ includes a body portion defining a substantially
cylindrical opening 60′ which extends into the body portion from an open
end to a closed end within the body portion. (See Hong, col. 2, ll. 57-61; see
also id., col. 3, ll. 29-32 and Fig. 12.)
4. The length of the cylindrical opening 60′ is greater than the
overall length of the head 36′′ of the fastener 20′′ so that the head 36′′ will fit
within the cylindrical opening 60′ without having the head 36′′ contact the
closed end of the cylindrical opening. (See Hong, col. 2, ll. 62-67 and col. 3,
ll. 60-63.) Hong discloses that the driving force of a hammer against the
tool 52′ is transmitted by the tool 52′ to the plate 30′′ of the fastener 20′′.
The head 36′′ of the fastener 20′′ does not receive any striking forces and the
finish of the head 36′′ is not marred. (See Hong, col. 3, l. 66 – col. 4, l. 4;
see also id., col. 4, ll. 16-28.)

PRINCIPLES OF LAW
The Appellant does not appear to rely on any objective evidence of
patentability in this appeal. Therefore, the Appellant’s burden in this appeal
is to show that the Examiner has identified insufficient evidence to support a
conclusion of prima facie obviousness. Kahn, 441 F.3d at 985-86 (citing In
re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)). The Examiner “need not
seek out precise teachings directed to the specific subject matter of the
challenged claim” to support the conclusion of obviousness, for the
Examiner’s reasoning “can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” KSR Int’l Co. v.
Teleflex, Inc., 550 U.S. ___, 127 S. Ct. 1727, 1741 (2007). That said,
“rejections on obviousness grounds cannot be sustained by mere conclusory
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statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.”
Kahn, 441 F.3d at 988.

ANALYSIS
The Examiner erred in finding that Hong teaches a handle support
portion having a recess of the same shape as a fastener or pin assembly to be
inserted into the recess. The head 36′′ of Hong’s fastener 20′′ has semi-
cylindrical and semi-spherical portions (FF 2), whereas the opening 60′ in
Hong’s tool 52′ is cylindrical (FF 3). Hong would have suggested that the
cylindrical opening of the tool used to drive Hong’s fastener should be larger
than the shape of the head inserted into the cylindrical opening so as not to
mar the finish of the head when driven by a hammer. (See FF 4.)
Consequently, nothing in Hong suggests that the shape of the opening 60′ of
the tool 52′ should conform to the shape of the head 36′′ of the fastener 20′′.
Without this erroneous finding, the Examiner’s reasoning in support of the
conclusion of obviousness, as set forth at pages 5-6 of the Answer, lacks
rational underpinning.

CONCLUSIONS
The Appellant has shown that the Examiner failed to articulate
reasoning with some rational underpinning to support the conclusion that it
would have been obvious to have modified the shape of the handle recess of
Hong to have incorporated the shape of Beaman’s pin for the purpose of
fitting the pin within the recess. Therefore, the Appellant has shown that the
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Examiner erred in rejecting claim 1 under § 103(a) as being unpatentable
over Beaman and Hong.

DECISION
The Examiner’s rejection of claim 1 is REVERSED.

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REVERSED

LV:

EDWARD P. DUTKIEWICZ, P.A.
EDWARD P. DUTKIEWICZ
P.O. Box 937
Dade City, FL 33526
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