Ex parte Gibson

Board of Patent Appeals and Interferences

Jun 9, 2000

08628556 (B.P.A.I. Jun. 9, 2000)

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journal and (2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte BOBBY L. GIBSON
________________
Appeal No. 1998-1188
Application No. 08/628,556
________________
ON BRIEF
________________
Before ABRAMS, McQUADE and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1998-1188
Application No. 08/628,556
Claims 1 and 7 were amended subsequent to the final rejection. See1
Paper No. 9.
This is an appeal from the examiner’s final rejection of
claims 1 through 11 and 13 through 21. Claims 12, 22 and 23,1
the only other claims remaining in the application, have been
indicated as allowable, subject to being rewritten in
independent form.
We AFFIRM-IN-PART.
The subject matter on appeal is directed to a support
structure and method for anchoring a covering member, such as
an umbrella or the like (specification, page 4). A copy of
the appealed claims appears in an appendix to the main brief
(Paper No. 12).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Hall et al. 5,293,889 Mar. 15, 1994
(Hall)
Rodriguez et al. 5,535,978 Jul. 16, 1996
(Rodriguez)
Edwards 2,020,967 Nov. 28, 1979
Appeal No. 1998-1188 Page 3
Application No. 08/628,556
(UK ‘967) (United Kingdom)
Carbone 0,312,675 Apr. 26, 1989
(EP ‘675) (European Patent Office)
The following rejections are before us for review:
(I) claims 1 through 8, 10, 11 and 18 through 21 stand
rejected under 35 U.S.C. § 103 as being unpatentable over Hall
in view of UK ‘967;
(II) claims 9, 13 and 15 through 17 stand rejected under
35 U.S.C. § 103 as being unpatentable over Hall in view of UK
‘967 in combination with EP ‘675; and
(III) claim 14 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Hall in view of UK ‘967 in combination
with EP ‘675 and Rodriguez.
The full text of the examiner's rejections and the
responses to the arguments presented by the appellant appear
in the final rejection (Paper No. 5) and the answer (Paper No.
13), while the complete statement of the appellant’s arguments
can be found in the main and reply briefs (Paper Nos. 12 and
14, respectively).

OPINION
Appeal No. 1998-1188 Page 4
Application No. 08/628,556
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 the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we have made the
determinations which follow.
Rejection (I)
We turn first to the examiner's rejection of independent
claims 1 and 8 based on 35 U.S.C. § 103 as being unpatentable
over Hall in view of UK ‘967. After considering the
collective teachings of the applied prior art, we agree with
the appellant that the examiner has failed to establish a
prima facie case of obviousness.
The examiner describes Hall as showing: a pole 12 having,
at one end thereof, an elongated spike and a single blade 16;
a pivot member 14a; and a handle 14. The examiner
acknowledges that Hall does not show a handle configured to
conform to the outer surface of the elongated pole when the
Appeal No. 1998-1188 Page 5
Application No. 08/628,556
handle is in a closed or inward position as recited in claim 1
or the handle engaging the pole along the length of the handle
when the handle is in a closed or unextended position as
called for in claim 8. To remedy the deficiencies in Hall,
the examiner cites UK ‘967 for a teaching of what the examiner
describes as a “handle” 4 conforming to the outer surface of
an elongated pole. The examiner then concludes that it would
have been obvious to replace the handles in Hall with the
"handles" of UK ‘967 to provided an “aesthetically pleasing
appearance” (final rejection, page 5).
The appellant argues that UK ‘967 discloses a walking
stick that may be used to step over barbed wire fences as
shown in Figure 4 and is nonanalogous art. We agree.
In order to rely on a reference under 35 U.S.C. § 103,
the reference must either be in the field of the applicant's
endeavor or be reasonably pertinent to the particular problem
with which the inventor was concerned. In re Oetiker, 977
F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992).
Our review of UK ‘967 confirms that the reference
describes a walking stick which can be used for crossing
barbed wire fences. For this purpose, the body portion 3 is
Appeal No. 1998-1188 Page 6
Application No. 08/628,556
provided at one end with a guard or crosspiece 1 and a pair of
step members or arms 4 pivoted to the body 3 as shown in
Figure 6. In order to use the walking stick to cross a wire
fence, the guard 1 is placed over the top strand of the fence,
the foot 6 or pointed end of the body is forced into the
ground by the user exerting pressure with his or her foot on
the flange 6w and the step arms are unfolded as shown in
Figures 1 and 4. The user then steps onto the nearest arm 4,
swings his or her other leg over the fence, placing the other
foot on the further step.
Recognizing that the walking stick described in UK ‘967
is not in the field of the applicant's endeavor, the examiner
asserts that UK ‘967 is reasonably pertinent to the particular
“issue” with which the inventor was concerned (answer, page
6). To support the assertion, the examiner describes the step
member 4 as “handles.” However, as correctly pointed out by
the appellant (reply brief, page 4), the elements 4 are not
handles and the walking stick disclosed by the reference is
not intended to be planted in the ground by rotation. In
fact, UK ‘967 teaches implanting a stick or pole in the ground
using one’s weight by stepping on the plate 6w. There is
Appeal No. 1998-1188 Page 7
Application No. 08/628,556
simply no teaching or suggestion in the reference that the
step members 4 are to be used as handles. Thus, we are
constrained to agree with the appellant that UK ‘967 is not
reasonably pertinent to the particular problem with which the
appellant was concerned, i.e., providing a firm ground anchor
for various types of soil that is light weight, compact and
requires no additional heavy, bulky parts to be carried
(specification, page 3).
In light of the foregoing, we will not sustain the
standing 35 U.S.C § 103 rejection of independent claims 1 and
8 and dependent claims 2 through 7, 10 and 11.
Independent claim 18 recites a method for anchoring a
pole [17] including the step of hingeably pivoting a
monolithic handle [36] away from an anchor body [16] so that
it extends radially outwardly to provide at least two hand
grips on opposite sides of the anchor body for rotating the
anchor body. We agree with the appellant’s argument that the
combined teachings of the applied prior art fail to disclose
this step. In this regard, we disagree not only with the
examiner’s determination that the elements 4 of UK ‘967 are
handles, but also with the examiner’s determination that the
Appeal No. 1998-1188 Page 8
Application No. 08/628,556
Webster’s Third New International Dictionary of the English Language,2
Unabridged, G. & C. Merriam Co., Springfield, MA, 1971 (hereinafter Webster’s)
defines “monolithic” as "constituting one massive undifferentiated whole
exhibiting solid uniformity often without diversity or variability.”
independently hinged elements 4 together form a “monolithic”
member.
It is a well-settled maxim of our patent law that, in
proceedings before the Patent and Trademark Office, claims
must be given their broadest reasonable interpretation
consistent with the specification, and that the claim language
cannot be read in a vacuum, but instead must be read in light
of the specification as it would be interpreted by one of
ordinary skill in the pertinent art. See In re Sneed, 710
F.2d 1544, 1548, 218 USPQ 385, 388 (Fed. Cir. 1983). With
that in mind, we understand the word “monolithic” as used in
claim 18 to mean one-piece. This interpretation of the word
“monolithic” is also consistent with the dictionary definition
of the word. Neither the independently hinged elements 4 of2
UK ‘967 nor the independently hinged handles 14 and 15 of Hall
constitute a one-piece member. Thus, we conclude that the
combined teachings of the applied prior art fail to teach or
suggest the claimed subject matter.
Appeal No. 1998-1188 Page 9
Application No. 08/628,556
Since all limitations of independent claim 18 are not
taught or suggested by the applied prior art, we will not
sustain the standing 35 U.S.C. § 103 rejection of independent
claim 18 and dependent claims 19 through 21.
Rejection (II)
We will also not sustain the standing 35 U.S.C. § 103
rejection of claim 9. Claim 9 is dependent on claim 8 and,
accordingly, includes the limitation of claim 8 found lacking
in Hall and UK ‘967, supra. The additionally cited EP ‘675
reference does nothing to remedy the deficiencies in Hall and
UK ‘967. Therefore, we conclude that the combined teachings
of the applied prior art fails to teach or suggest the claimed
invention.
Turning next to the examiner's rejection of claims 13 and
15 through 17, it is the examiner’s position that Hall and UK
‘967 teach or suggest all of the claimed subject matter,
except for a bit at one end of an anchor pole having a
centrally disposed spike and at least one blade forming from
two to four turns around the spike with the spike having a
diameter much smaller than the anchor pole (final rejection,
page 5). The examiner relies on EP ‘675 for a teaching of a
Appeal No. 1998-1188 Page 10
Application No. 08/628,556
sunshade stick having a screw-point for easy penetration of
the ground (col. 1, lines 17-22 and col. 2, lines 52-54).
Specifically, the reference discloses a stick or support
member 2 for anchoring an umbrella including a pointed end or
spike 1 and a helical screw thread or blade 3 having a
diameter slightly greater than the diameter of the stick 2
(col. 1, lines 29-34). The examiner determined that EP ‘675
teaches a spike 1 having a smaller diameter that the stick 2
(final rejection, page 5). We agree. Figures 1, 4, 5 and 8
all show the spike 1 as having a smaller diameter that the
pole or stick 2. The expression “much smaller” does not
distinguish the claimed subject matter from what is shown in
EP ‘675, since the appellant has not defined the expression
with any particularity in the specification. Thus, the
expression is considered to read on the pointed end 1 and
stick 2 of EP ‘675.
The examiner concluded that it would have been obvious to
modify Hall by providing “a nail member having a smaller
diameter than the anchor pole, and a blade forms from two to
four turns around the spike” in order to facilitate insertion
of the support member into the ground, as suggested by EP ‘675
Appeal No. 1998-1188 Page 11
Application No. 08/628,556
(final rejection, page 6). As to the limitation of claim 13
that the blade forms from two to four turns around the spike,
the examiner takes the position that the limitation is taught
by EP ‘675. In addition, the examiner asserts that the number
of turns recited in claim 13 and the three to six inch range
for the length of the spike recited in claim 17 are obvious
matters of design choice (final rejection, page 6 and answer,
page 8).
We do not agree with the examiner’s position that EP ‘675
teaches a blade forming from two to four turns around the
spike. Claim 13 calls for a range of two to four turns, i.e.,
at least two but no more than 4 turns. Such is clearly not
shown in EP ‘675. However, we do agree with the examiner that
the ranges recited in claims 13 and 17 are obvious matters of
design choice. We observe that Hall discloses a bit having a
single turn (see, e.g., Figure 1) and that EP ‘675 discloses a
bit having approximately ten turns. Also, the references show
that the pitch of the helical blade and the length of the
spike portion varies. Thus, it is known in the art to provide
a blade with as few as one and as many as 10 turns and to vary
the length of the spike, clearly establishing that the
Appeal No. 1998-1188 Page 12
Application No. 08/628,556
particular number of turns and the length of the spike are
result effective variables which are recognized in the art.
This being the case, the selection of an optimum value for
such variables is ordinarily an obvious matter which is within
the skill of the art. In re Geisler, 116 F.3rd 1465, 1470, 43
USPQ2d 1362, 1365 (Fed. Cir. 1997) and In re Boesch, 617 F.2d
272, 276, 205 USPQ 215, 219 (CCPA 1980). See also In re
Fields, 304 F.2d 691, 695-96, 134 USPQ 242, 245 (CCPA 1962),
In re Troiel, 274 F.2d 944, 949, 124 USPQ 502, 505 (CCPA 1960)
and In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA
1955).
As the court stated in In re Woodruff, 919 F.2d 1575,
1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990)
[n]or can patentability be found in the difference in
. . . ranges recited in the claims. The law is replete
with cases in which the difference between the claimed
invention and the prior art is some range or other
variable within the claims. . . . These cases have
consistently held that in such a situation, the applicant
must show that the particular range is critical,
generally by showing that the claimed range achieves
unexpected results relative to the prior art range . . .
(obviousness determination affirmed because dimensional
limitations in claims did not specify a device which
performed and operated differently from the prior art). .
. . [Citations omitted.]
Appeal No. 1998-1188 Page 13
Application No. 08/628,556
Here, however, the appellant has made no persuasive showing
that the particular ranges set forth in claims 13 and 17 are
in any way critical or produce results which would be
unexpected.
Claim 16 calls for a handle movable from a radially
extended position for rotating the elongated pole to a closed
position substantially flush with the elongate anchor pole 12.
Hall shows a handle, such as 14, movable about a pivot axle
14a from a radially extended position for rotating the pole 12
to a closed position in which it is adjacent to the pole 12
(see col. 3, lines 29-37 and Figure 3). Webster's defines
“flush” as meaning “directly abutting or immediately adjacent
to.” Thus, Hall’s handle 14 is immediately adjacent the pole
when in the closed position.
In view of the above, we conclude that Hall and EP ‘675
provide a sufficient evidentiary basis to establish the prima
facie obviousness of claims 13, 16 and 17 and that UK ‘967 is
surplusage.
It follows that we will sustain the standing 35 U.S.C. §
103 rejection of claims 13, 16 and 17.
Appeal No. 1998-1188 Page 14
Application No. 08/628,556
Claim 15 calls for a handle being tubular and
longitudinally cut to fit around the anchor pole with the
pivot member engaging the handle on either side of the pole.
No such structure is taught by Hall, UK ‘967 or EP ‘675 or
suggested by their combined teachings. Accordingly, we will
not sustain the standing 35 U.S.C. § 103 rejection of claim
15.
Rejection (III)
Finally, we will not sustain the standing 35 U.S.C. § 103
rejection of claim 14. Claim 14 is dependent on claim 13 and
further requires a bit cover for covering the spike during
transportation of the elongated pole. We agree with the
appellant’s argument (reply brief, page 8) that the tube 12 of
Rodriguez is not disclosed as a bit cover for covering the
spike during transportation of the elongated pole, but a tool
for digging a hole in wet sand and for supporting the lower
end of the umbrella support pole (col. 2, line 65 through col.
3, line 6). Since the support pole 12 of Hall does not
Appeal No. 1998-1188 Page 15
Application No. 08/628,556
require a separate tool for digging a hole in the ground, the
only suggestion for using the digging tool of Rodriguez with
the support pole of Hall is the appellant’s own disclosure.
SUMMARY
The rejection of claims 1 through 8, 10, 11 and 18
through 21 under 35 U.S.C. § 103 as being unpatentable over
Hall in view of UK ‘967 is reversed.
The rejection of claims 9, 13 and 15 through 17 under
35 U.S.C. § 103 as being unpatentable over Hall in view of UK
‘967 in combination with EP ’675 is affirmed as to claims 13,
16 and 17, but reversed as to claims 9 and 15.
The rejection of claim 14 under 35 U.S.C. § 103 as being
unpatentable over Hall in view of UK ‘967 in combination with
EP ’675 and Rodriguez is reversed.
The decision of the examiner is affirmed-in-part.
Appeal No. 1998-1188 Page 16
Application No. 08/628,556
No time period for taking any subsequent action in
connection with this appeal may be extended under
37 CFR § 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
Appeal No. 1998-1188 Page 17
Application No. 08/628,556
)
JOHN P. MCQUADE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
jg/rwk
KENNETH L NASH
LAW OFFICE OF KENNETH L NASH
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