Ex parte Gapco

Board of Patent Appeals and Interferences

Feb 23, 2000

08523330 (B.P.A.I. Feb. 23, 2000)

1
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not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BRIAN E. GAPCO
_____________
Appeal No. 1999-1480
Application No. 08/523,330
______________
ON BRIEF
_______________
Before STONER, Chief Administrative Patent Judge, and
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 52-70, which are all of the claims
remaining in the application. Claims 1-51 have been canceled.
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Appellant’s invention relates to a key-holding apparatus
having a spheroidal body for enabling easier grasping and
turning of a key, particularly by individuals who suffer from
arthritis or other debilitating medical conditions that impact
digital dexterity. Various forms of attachment and/or
clamping structures are disclosed for connecting the
spheroidal body to a key. A copy of claims 52-70 on appeal
may be found in the Appendix to appellant’s brief.
Representative claim 52 is set forth below:
52. A key-holding apparatus having a spheroidal body
for gripping and applying torque to a key, said apparatus
comprising:
a front body portion having a slot formed therein for
accepting said key;
a substantially hemispherical rear body portion opposed
to said front body portion, said rear body portion providing
an engagement surface engageable with an operator’s hand; and

a torque transmitting key attachment structure extending
along said slot for transmitting torque from said operator’s
hand to said key via said engagement surface, said key
attachment structure comprising a thermoexpansive clamping
structure.
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The prior art references of record relied upon by the
examiner as evidence of obviousness are:
McRae et al. (McRae) 4,035,865 July 19, 1977
Thomas 4,312,200 Jan. 26, 1982
Schmalz, Jr. (Schmalz) 4,768,362 Sept. 6, 1988
Taylor 4,910,983 Mar. 27, 1990
Linsalato et al. (Linsalato) 5,435,160 July 25,
1995
(filed June 28, 1993)
Claim 66 stands rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not
described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor,
at the time the application was filed, had possession of the
claimed invention. According to the examiner “[t]he
specification fails to reasonably convey to one skilled in the
art that, at the time the application was filed, Appellant had
possession of a key and handle apparatus wherein the key is
permanently and thermo-expansively bonded to the handle.”
Claims 52 and 55 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over McRae in view of Taylor.
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Claims 53 and 54 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over McRae in view of Taylor as applied
to claim 52, and further in view of Schmalz.
Claim 56 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over McRae in view of Taylor as applied to
claim 52, and further in view of Linsalato.
Claims 57-59 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over McRae in view of Thomas.

Claims 60 and 61 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over McRae in view of Thomas as applied
to claim 57 above, and further in view of Schmalz.
Claim 62 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over McRae in view of Thomas as applied to
claim 57 above, and further in view of Linsalato.
Claims 63-65, 67 and 70 stand rejected under 35 U.S.C.
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§ 103(a) as being unpatentable over McRae in view of
Linsalato.
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Claims 68 and 69 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over McRae in view of Linsalato as
applied to claim 63, and further in view of Schmalz.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the final
rejection (Paper No. 26, mailed June 9, 1998) and the
examiner’s answer (Paper No. 29, mailed December 22, 1998) for
the reasoning in support of the rejections, and to appellant’s
brief (Paper No. 28, mailed October 9, 1998) for the arguments
thereagainst.
OPINION
As a preliminary matter, we note that on page 7 of the
appeal brief appellant “solicits the independent consideration
of the independent claim in each group (Claim 52, Claim 57,
Claim 63), and additionally of Claims 65 and 66.”
Accordingly, we specifically address in our discussions below,
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In regards to claims 55 and 59, line 2, “said handle”1
has no proper antecedent basis. Upon review of appellant’s
proposed amendment on page 2 of the appeal brief, appellant
proposed to amend claims 55 and 59, line 2, by deleting the
word “handle” and substituting --spheroidal body--. As noted
by the examiner (answer, page 1), this amendment has not been
entered since it was not submitted in a separate paper from
the appeal brief. See MPEP § 1207.
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independent claims 52, 57, and 63 and dependent claim 66. In
accordance with appellant’s desires, claims 52-56 stand or
fall together, claims 57-62 stand or fall together, and claims
63-65 and 67-70 stand or fall together, and claim 66 stands or
fall on its own. Note, claim 65 stands or falls with claim
63, because appellant did not argue the claim separately.
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims , to the applied prior art references, and to the1
respective positions articulated by the appellant and the
examiner.
We turn first to the examiner’s rejection of appealed
claim 66 under 35 U.S.C. § 112, first paragraph, which
rejection we understand to be based upon the written
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description requirement of the first paragraph of § 112. In
general, the test for determining compliance with the written
description requirement of § 112 is whether the disclosure of
the application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language under consideration. Further, it is also well
settled that the content of the drawings may be considered in
determining compliance with the written description
requirement. See Wang Laboratories Inc. v. Toshiba Corp., 993
F.2d 858, 865, 26 USPQ2d 1767, 1774 (Fed. Cir. 1993); Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1563, 19 USPQ2d 1111, 1116-
1117 (Fed. Cir. 1991); see also In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
Upon reviewing claim 66, we note that claim 66 requires
the key to be “thermoexpansively bonded to said handle.”
Claim 63, from which claim 66 depends, additionally requires
the handle to be “permanently bonded to the end of the key.”
Therefore, claim 66 requires that the handle be
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“thermoexpansively bonded” and “permanently bonded” to the
key.
In this particular instance, after considering
appellant’s disclosure as a whole, we have determined that
appellant fails to describe a bond between a key and the
spheroidal handle wherein the handle is “permanently bonded”
to the end of a key as required by claims 63 and 66. We
construe “permanently bonded” as used in these claims to
require a connection between two elements that is intended to
last indefinitely without change and which can only be
separated by destroying at least a portion of one of the
bonded elements. We also understand, from page 5, lines 21-
28, of appellant’s disclosure, that a “thermoexpansive bond”
like that set forth in claim 66 is one which allows “easier
insertion of a key when the handle is cooled as in the freezer
compartment of a common refrigerator, but... [provides]
increased clamping or retention force when the handle assembly
is allowed to return to room temperature.”
It is clear from the foregoing that a “thermoexpansive
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bond” as described and claimed by appellant is not a
“permanent bond” since it is not intended to last indefinitely
without change and the key and handle can be easily separated
when desired without destroying any portion of either of the
components. Thus, we sustain the examiner’s rejection of claim
66, under 35 U.S.C.
§ 112, first paragraph, because the thermoexpansive clamping
arrangement disclosed by appellant clearly does not provide a
“permanent bond” between the key and the spherical handle.
Further, under the provisions of 37 C.F.R. § 1.196(b), we
enter the following new ground of rejection against
appellant's claims 63-65 and 67-70:
Claims 63-65 and 67-70 are rejected under 35 U.S.C. §
112, first paragraph, as containing subject matter which was
not described in the specification in such a way as to
reasonably convey to one skilled in the relevant art that the
appellant, at the time the invention was filed, had possession
of the claimed invention. Specifically, appellant has failed
to disclose a “permanent bond” as set forth in claim 63 and
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therefore required by dependent claims 64, 65 and 67-70,
wherein a “permanent bond” is a connection between two
elements that is intended to last indefinitely without change
and which can only be separated by destroying at least a
portion of one of the bonded elements. Further, claim 64
requires that the “key is adhesively bonded to said handle”.
Adhesively bonded is understood from page 5, lines 16-20, of
appellant’s disclosure to be, e.g., “double-sided adhesive
foam tape”. The disclosed adhesive bond is not a “permanent
bond”. With respect to claim 65, this claim requires the key
to be “interference bonded” to said handle. Interference
bonded is understood from page 5, lines 29-35 and page 6,
lines 1-4 of appellant’s disclosure and shown in Figure 1B to
be resilient directional or nondirectional ridges, teeth or
the like that require significantly higher force and/or
deformation of the slot to remove the key. Therefore, an
interference bond is also not a “permanent bond”.
Next we turn to the rejections under 35 U.S.C. § 103. In
rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness
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(see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992)), which is established when
the teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
in the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993)). The conclusion that the claimed
subject matter is prima facie obvious must be supported by
evidence, as shown by some objective teaching in the prior art
or by knowledge generally available to one of ordinary skill
in the art that would have led that individual to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988).
With this as background, we turn to the examiner’s
rejections under 35 U.S.C. § 103(a) as being unpatentable over
McRae in view of Taylor of independent claim 52 and claims 53-
56 dependent therefrom.
We agree with the appellant that all the limitations
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recited in independent claim 52 are not met by the combined
teachings of the applied prior art (i.e., McRae and Taylor).
In particular, it is our opinion that the combined teachings
of the applied prior art fail to teach or suggest a key
attachment structure comprising a “thermoexpansive clamping
structure.” In our view the nut and bolt taught by Taylor
does not constitute a “thermoexpansive clamping structure” as
defined by appellant. The examiner noted that a nut and bolt
are commonly made of metal and that when metal is heated it
expands; therefore the nut and bolt form a thermoexpansive
clamping structure. As we noted above, appellant clearly sets
forth, on page 5, lines 21-28, of the instant specification,
that “a thermoexpansive material or arrangement of materials
may be used in the slot area or for the entire handle,
allowing easier insertion of a key when the handle is cooled
as in the freezer compartment of a common refrigerator, but
providing increased clamping or retention force when the
handle assembly is allowed to return to room temperature.”
Thus, we interpret the thermoexpansive clamping structure of
claim 52 as being a structure that exhibits the above
characteristics and that relies upon the thermal expansion
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properties of the thermoexpansive material itself to provide a
clamping force. While the nut and bolt of Taylor may have
some thermoexpansive properties it is clear to us that such a
mechanical clamping structure would not be viewed by one of
ordinary skill in the art as being a “thermoexpansive clamping
structure” like that set forth in claim 52 on appeal for
providing a clamping force of the type described by appellant
to a key.
In light of the foregoing, we will not sustain the
standing § 103 rejection of independent claim 52 and claims
53-56 which depend therefrom.
Next we turn to the rejections of claims 57-62 under 35
U.S.C. § 103 as being unpatentable over McRae in view of
Thomas. Looking first to the examiner’s rejection of
appellant’s claims 57-59 based on McRae and Thomas, we note
the examiner’s position that McRae shows the key holding
apparatus substantially as claimed. In this instance what the
examiner finds lacking in McRae is a key attachment structure
comprising a “resilient directional retention structure.” To
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make up for this difference between McRae and the claimed
subject matter, the examiner observed that Thomas clearly
teaches a slotted key holding apparatus provided with a key
attachment structure (34e in Figs. 10-12), presumably
considered by the examiner to be a resilient directional
retention structure. From these teachings, the examiner
concludes that for purposes of providing more holding
security, one having the ordinary level of skill in the art
would have found it obvious to include in the key holding
apparatus of McRae, a key attachment structure, as taught by
Thomas.
After reviewing the collective teachings of McRae and
Thomas, we, like appellant, are of the view that the key
attachment structure of Thomas is a symmetric, non-directional
detent and not a directional retention structure as required
in claim 57 on appeal. As defined in appellant’s
specification (page 5), the “resilient directional retention
structure” is a “series of resilient directional . . . ridges
6, teeth or the like [which] can be inwardly oriented from
each wall [of the slot] to allow easy insertion of the key
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base into the slot, yet
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provide firm hook-like key retention and require significantly
higher forces and or deformation of the slot to remove the
key.” Like appellant, we are of the opinion that the ribs
(34e) of Thomas would exhibit equal forces for insertion and
removal of the key member (32) into and out of the holder (34)
and accordingly the ribs (34e) are not resilient directional
retention structures as required by claim 57 on appeal.
Since McRae and Thomas relied upon by the examiner do not
disclose a “directional retention structure,” it follows that
we cannot sustain the examiner’s rejection of independent
claim 57 and dependent claims 58 and 59 under 35 U.S.C. § 103.
In regards to the examiner's rejections of claims 60-62
under 35 U.S.C. § 103 as being unpatentable over McRae in view
of Thomas, Schmalz and Linsalato. We agree with the examiner
that McRae and Thomas fail to disclose a series of
discontinuities provided on the engagement surface as in
claims 60-61 and a truncation in the spheroidal body as in
claim 62. We also agree that the above features are clearly
taught in the secondary references (Schmalz and Linsalato).
We agree with the examiner that it would have been obvious to
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one of ordinary skill in the art to provide the base reference
(McRae) with a series of discontinuities on the engagement
surface and a truncation in the spheroidal body as taught by
Schmalz and Linsalato. However, we are compelled to reverse
the examiner's rejections of claims 60-62 under 35 U.S.C. §
103 because the teachings of Schmalz and Linsalato do not
provide any teaching or suggestion of the "directional
retention structure" that we find lacking in the basic
combination of McRae and Thomas.
Next we turn to the rejections of claims 63-65 and 67-70
under 35 U.S.C. § 103. Looking first to the examiner’s
rejection of appellant’s independent claim 63 and dependent
claims 64-65, 67, and 70 under § 103 based on McRae and
Linsalato, we note that the examiner’s position is that McRae
discloses an implement (30) usable by a person afflicted with
arthritis. The implement being formed of a resilient elastic
material and comprising a substantially spheroidal handle.
What the examiner finds lacking in McRae with regard to the
claimed subject matter is that “McRae fails to teach the
implement being usable with a key” and also “fails to teach
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the implement being permanently bonded to the end of the key.”
To provide for these perceived differences between McRae and
the claimed subject matter, the examiner observed that Thomas
teaches the use of a double sided adhesive tape (104) to bond
a key (16) to a key handle (90). From these teachings, the
examiner concludes that for the purposes of comfortably
allowing a person with arthritis to use a key to open a lock
and for securely holding the key in place, one having the
ordinary skill in the art would have found it obvious to
permanently bond the key to the holder of McRae, as taught by
Thomas.
The examiner has failed to provide a prima facie case of
obviousness for the invention as claimed. We agree with the
examiner that the combination of McRae and Thomas provides an
adhesive bond between the handle and the key, however, it is
clear to us that the adhesive tape (104) in Thomas does not
provide a “permanent” bond between the handle and the key as
is required in claim 63 on appeal.
In view of our interpretation of the terminology
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“permanently bonded” set forth above, we will not sustain the
rejections under section 103 of claims 63-65 and 67-70, all of
which require a substantially spheroidal handle to be
“permanently bonded” to the end of the key opposed to the lock
engaging elements thereof.
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CONCLUSION
To summarize, the decision of the examiner to reject
claim 66 under 35 U.S.C. § 112, first paragraph, is affirmed.
The decision of the examiner to reject claims 52-65 and 67-70
under 35 U.S.C. § 103(a) is reversed. We have additionally
presented new grounds of rejection pursuant to 37 C.F.R. §
1.196(b) of claims 63-65 and 67-70 under 35 U.S.C. § 112,
first paragraph.
In addition to affirming the examiner’s rejection of one
or more claims, this decision contains a new ground of
rejection pursuant to 37 C.F.R. § 1.196(b)(amended effective
Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office
63, 122 (Oct. 21, 1997)). 37 C.F.R. § 1.196(b) provides, “A
new ground of rejection shall not be considered final for
purposes of judicial review.”
Regarding any affirmed rejection, 37 C.F.R. § 1.197(b)
provides:
(b) Appellant may file a single request for
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rehearing within two months from the date of the
original decision . . . .
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37 C.F.R. § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
C.F.R. § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should the appellant elect to prosecute further before
the Primary Examiner pursuant to 37 C.F.R. § 1.196(b)(1), in
order to preserve the right to seek review under 35 U.S.C. §§
141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
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If the appellant elects prosecution before the examiner
and this does not result in allowance of the application,
abandonment or a second appeal, this case should be returned
to the Board of Patent Appeals and Interferences for final
action on the affirmed rejection, including any timely request
for rehearing thereof.

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-IN-PART, 37 C.F.R. § 1.196(b)
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS
AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
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JEFFREY V. NASE )
Administrative Patent Judge )
CEF/dal
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BRIAN E. GAPCO
1185 TIMBERVIEW Trail
BLOOMFIELD HILLS, MI 48304-1554