Ex Parte Goacher, Sr.

Board of Patent Appeals and Interferences

Jun 7, 2004

09933329 (B.P.A.I. Jun. 7, 2004)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the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 DARRELL D. GOACHER SR.
__________
Appeal No. 2004-1319
Application 09/933,329
___________
ON BRIEF
___________
Before FRANKFORT, McQUADE, 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 1 through 16, 18 and 19. Claims 20 and 21
have been canceled. Claim 17, the only other claim remaining in
the application, stands withdrawn from further consideration as
being directed to a non-elected invention.
Appeal No. 2004-1319
Application 09/933,329
2
Appellant’s invention relates to a wire connector fastening
tool and method of using such a fastening tool to connect a
plurality of wires to one another via a conventional wire
connector of the type seen in Figures 5-7 of the present
application. Independent claims 1, 10 and 18 are representative
of the subject matter on appeal, and a copy of those claims can
be found in the Appendix to appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the claims before us on appeal are:
Moore 4,461,194 Jul. 24, 1984
Givot 4,860,618 Aug. 29, 1989
Jore 5,309,799 May 10, 1994
Fuca 5,542,321 Aug. 6, 1996
Lassiter 5,974,916 Nov. 2, 1999
Parker et al. (Parker) 6,053,078 Apr. 25, 2000
Rosenbaum 6,257,099B1 Jul. 10, 2001
Claims 1 through 8, 10 through 14 and 16 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Fuca in view
of Parker or Rosenbaum.
Claims 9 and 15 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fuca in view of Parker or Rosenbaum as
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Application 09/933,329
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applied to claims 1 and 10 above, and further in view of Moore or
Jore.
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lassiter in view of Givot.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and appellant regarding the above-noted rejections,
we refer to the examiner's answer (Paper No. 16, mailed September
5, 2003) for an exposition of the examiner’s positions, and to
appellant’s brief (Paper No. 15, filed July 22, 2003) for the
arguments thereagainst.
OPINION
Having carefully reviewed the obviousness rejections raised
in this appeal in light of the record before us, we have made the
determinations which follow.
Looking first to the examiner’s rejection of claims 1
through 8, 10 through 14 and 16 under 35 U.S.C. § 103(a) as being
unpatentable over Fuca in view of Parker or Rosenbaum, we note
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Application 09/933,329
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that it is now clear from the comments on pages 4 and 5 of the
answer (Paper No. 16) that the examiner is of the opinion that
Fuca discloses a wrench or fastening tool (10) meeting all of the
requirements of representative independent claim 1, except that
mandating the body of the tool to have “an outer hand-engaging
surface with a uniform outside diameter from its first end to its
second end.” The examiner also points to the requirements in
dependent claims 5 and 6 regarding flutes on the outer hand-
engaging surface extending from the first end to the second end
of the body, and the requirement of dependent claim 7 that the
body be formed of a polymeric material, noting that such features
are not taught or suggested in Fuca. To account for the above-
noted differences, the examiner looks to the teachings of Parker
or Rosenbaum, contending that these patents each suggest that a
hand-held tool can have flutes along a uniform diameter outer
hand-engaging surface of a wrench body and that such a tool can
be formed of polymeric material. Based on the collective
teachings of Fuca and Parker, or Fuca and Rosenbaum, the examiner
has now concluded that it would have been obvious to one of
ordinary skill in the art at the time of appellant’s invention to
modify the tool of Fuca by providing it with a body having a
uniform outer diameter hand-engaging surface and flutes extending
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Application 09/933,329
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along the uniform diameter outer surface so as to enhance the
grip of a user when the outer surface of the tool is to be
manually gripped as taught or suggested in Parker or Rosenbaum,
and to also make the wrench of Fuca from a polymeric material as
suggested in either Parker or Rosenbaum.
On page 10 of the brief, appellant has denominated claims 1
through 8, 10 through 14 and 16 as constituting issue A, and
specifically indicated that such claims “stand or fall together
with respect to issue A.” Accordingly, we have selected claim 1
as being representative of issue A, and will decide the appeal
with regard to the claims listed under issue A on the basis of
claim 1 alone. Claims 2 through 8, 10 through 14 and 16 will
thus stand or fall with claim 1.
Concerning independent claim 1, appellant argues the
examiner’s two alternative rejections noted above separately. On
pages 12 and 13 of the brief, appellant argues the § 103
rejection based on Fuca in view of Parker. In particular,
appellant points out that Fuca does not disclose, teach or
suggest a tool having “a uniform outside diameter from its first
end to its second end,” and contends that Parker fails to make up
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Application 09/933,329
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for the shortcomings of Fuca. More specifically, appellant
contends that Parker does not disclose, teach or suggest a tool
having a body with an “outer hand-engaging surface” that has “a
uniform outside diameter from one end to the other” and that the
examiner has therefore failed to make out a prima facie case of
obviousness because Fuca and Parker fail to disclose all features
of the claimed invention. In appellant’s view the device of
Parker has three distinct sections, 1) the top part of the “T”;
2) the bottom part of the “T”; and 3) the “working end” of the
wrench (20), which appellant urges is not itself engaged manually
by the user.
We do not find appellant’s above-noted arguments persuasive
of error in the examiner’s rejection of claim 1 on appeal under
35 U.S.C. § 103(a) based on Fuca in view of Parker. Like the
examiner, we observe that appellant has apparently failed to
appreciate the features of the wrench (20) shown in Figures 2A-2D
of Parker and the disclosure in Parker at column 3, lines 17-22,
concerning use of the wrench (20) “alone by gripping it
manually,” and the disclosure at column 3, lines 29-34, of
providing the cylindrical outer side surface (30) of the wrench
(20) with flutes (32) to facilitate gripping the wrench when it
Appeal No. 2004-1319
Application 09/933,329
7
is used alone. While the wrench (20) of Parker can also
optionally be used in conjunction with a detachable, existing
T-handle spike wrench like that seen in Figure 4A, the T-handle
is clearly not part of the wrench (20) and is not required to be
used with the wrench (20). Thus, appellant’s arguments
concerning the purported failings of Parker and the failure of
the combined disclosures of Fuca and Parker to disclose all
features of the claimed invention are in error and not
persuasive.
In light of the foregoing, we will sustain the examiner’s
rejection of claim 1 under 35 U.S.C. § 103(a) based on Fuca in
view of Parker. As for claims 2 through 8, 10 through 14 and 16,
also rejected by the examiner under 35 U.S.C. § 103(a) based on
the collective teachings of Fuca and Parker, given appellant’s
grouping of claims set forth on page 10 of the brief, it is our
determination that those claims will fall with independent
claim 1.
As for the examiner’s rejection of claims 1 through 8, 10
through 14 and 16 under 35 U.S.C. § 103(a) based on Fuca in view
of Rosenbaum, we note appellants’ arguments on pages 13-16 of the
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brief. In contesting this rejection, appellant urges that the
examiner has engaged in hindsight reconstruction of the claimed
invention by improperly taking appellant’s own disclosure as a
blueprint for selectively piecing together the applied prior art
to defeat patentability. After careful consideration of the
disclosures of Fuca and Rosenbaum, we agree with appellant.
More specifically, we observe that Fuca touts the extremely
simple construction of the basin wrench seen therein, and the
fact that the double-ended wrench depicted in Figure 2 is
inexpensively constructed of two lengths of steel pipe defining
wrench end portions (25) and (26), wherein the two lengths of
pipe are of different outside and inside diameters and are joined
together by being “telescoped together near adjacent ends and
then . . . welded to one another at 27” (col. 2, lines 46-48).
As seen in Figures 2 and 5-8, the two different diameter pipe
sections provide the basin wrench (10) of Fuca with a larger end
portion (25) and a smaller end portion (26), wherein the
different size end portions are adapted to cooperate with
different size and configuration nuts (18, 18A, 18B and 18C). By
contrast, Rosenbaum discloses a multi-function faucet wrench
molded out of a suitable plastic material (col. 3, lines 20-21)
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Application 09/933,329
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and including a uniform outside diameter elongate body member (2)
with a nut receiving socket (3) at one end, a fluted handgrip
portion (5) adjacent the other end, and a longitudinal bore (17)
extending through the body member.
Like appellant, we find nothing in either Fuca or Rosenbaum
regarding a teaching or suggestion that would have motivated one
of ordinary skill in the art at the time appellant’s invention
was made to selectively combine the features of the two wrenches
in the particular manner posited by the examiner. In that
regard, we note that the mere fact that the prior art could be
modified in the manner urged by the examiner would not have made
such a modification obvious unless the prior art suggested the
desirability of the modification. See In re Gordon, 773 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) and In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992). In this case, it is our opinion that the prior art does
not contain such a suggestion and that the examiner has
impermissibly drawn from appellant’s own teaching and fallen
victim to what our reviewing Court has called “the insidious
effect of a hindsight syndrome wherein that which only the
inventor has taught is used against its teacher.” W.L. Gore &
Appeal No. 2004-1319
Application 09/933,329
10
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 313 (Fed. Cir. 1983). Simply stated, there is no reason or
suggestion in the applied prior art for making the wrench of Fuca
with a uniform outside diameter from its first end to its second
end, as specified in independent claims 1 and 10 on appeal.
Moreover, given the disclosure of Fuca concerning the simplicity
and economy of construction of the wrench therein and use of the
different diameter end portions (25, 26) to accommodate different
size and configuration nuts, there would appear to be little or
no incentive for making such a modification therein.
Since we have determined that the teachings and suggestions
which would have been fairly derived from Fuca and Rosenbaum
would not have made the subject matter as a whole of independent
claims 1 and 10 on appeal obvious to one of ordinary skill in the
art at the time of appellant’s invention, we must refuse to
sustain the examiner’s rejection of claims 1 and 10, and the
claims which depend therefrom, under 35 U.S.C. § 103(a). Thus,
the examiner's rejection of claims 1 through 8, 10 through 14 and
16 under 35 U.S.C. § 103(a) based on Fuca and Rosenbaum will not
be sustained.
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Application 09/933,329
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We have also reviewed the patents to Moore and Jore applied
along with Fuca and Rosenbaum against dependent claims 9 and 15
on appeal under 35 U.S.C. § 103(a). However, we find nothing in
Moore or Jore which overcomes the deficiencies in the basic
combination of Fuca and Rosenbaum noted above or otherwise
renders obvious the wire connector fastening tool set forth in
claims 1 and 10 on appeal or in claims 9 and 15 which depend
therefrom. Thus, the examiner’s rejection of dependent claims 9
and 15 under 35 U.S.C. § 103(a) based on Fuca in view of
Rosenbaum and Moore or Jore will likewise not be sustained.
However, we reach a contrary conclusion with regard to the
examiner’s rejection of dependent claims 9 and 15 under 35 U.S.C.
§ 103(a) based on Fuca in view of Parker and Moore or Jore. On
pages 16-17 of the brief, appellant appears to concede that Moore
and/or Jore suggests the use of transparent material for allowing
viewing of some interior part of the tool, as the examiner has
urged on pages 4-5 of the answer, and thus acquiesced in this
aspect of the examiner’s rejection. What appellant contends
regarding the examiner’s rejection of claims 9 and 15 is that
neither Moore nor Jore makes up for that which appellant views as
lacking in the combined disclosures of Fuca and Parker, i.e., a
Appeal No. 2004-1319
Application 09/933,329
12
wrench with a uniform outside diameter from its first end to its
second end. For the same reasons set forth above in our
discussion of the rejection of independent claim 1 based on Fuca
and Parker, we again find this argument to be unpersuasive.
Accordingly, the examiner’s rejection of dependent claims 9 and
15 under 35 U.S.C. § 103(a) based on Fuca in view of Parker and
Moore or Jore will be sustained.
The next rejection for our review is that of method claims
18 and 19 under 35 U.S.C. § 103(a) as being unpatentable over
Lassiter in view of Givot. In this instance, the examiner has
determined (answer, page 3) that Lassiter shows or discloses the
claimed invention (e.g., in Figs. 4-10) except for the step of
turning the elongate body of the tool by manually gripping the
outer surface (59) of the tool to provide rotational torque to
both the tool and wire nut connector necessary for securing a
wire connector to the conducive ends of electrical wires.
However, the examiner finds in Givot a teaching/suggestion of a
wire nut fastening tool (e.g., Fig. 1) having an outer
cylindrical surface with appropriate gripping areas that
facilitate manual gripping of the fastening tool (col. 3, lines
17-19) to apply the torque necessary for securing a wire
Appeal No. 2004-1319
Application 09/933,329
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connector to the conducive ends of electrical wires. Givot also
shows (e.g., in Fig. 3) an embodiment of a wire nut fastening
tool incorporating both a manual gripping feature and a ratchet
mechanism (20) which can alternatively be used to apply the
necessary torque to the tool. From the combined teachings of
Lassiter and Givot, the examiner has concluded that it would have
been obvious to one of ordinary skill in the art at the time
appellant’s invention was made to modify the tool of Lassiter to
facilitate use of the wire connector fastening tool therein by
manually gripping the outer surface of the tool to apply the
torque necessary for securing a wire connector to the conducive
ends of electrical wires, because Givot suggests use of such
direct manual gripping of the outer surface of the tool as an
alternative to using the ratchet mechanism associated with the
tool for applying the necessary torque, if so desired.
We agree with the examiner. Appellant’s argument (brief,
page 19) that the body of Givot’s tool could not be extruded and
cut to length, as described in appellant’s specification, is of
no avail, since neither of claims 18 and 19 on appeal contain any
such requirement. As for appellant’s assertion (brief, page 20)
that the examiner has not provided any specific reason why one of
Appeal No. 2004-1319
Application 09/933,329
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ordinary skill in the art would have been motivated to combine
the Lassiter and Givot references, we find such argument equally
unavailing since the examiner has clearly set forth a reason,
based on teachings found in Givot, for using direct manual
gripping of the outer surface of the tool in Lassiter as an
alternative to using the ratchet mechanism associated with the
tool for applying the torque necessary for securing a wire
connector to the conducive ends of electrical wires.
In light of the foregoing, we will sustain the examiner’s
rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as being
obvious over the collective teachings of Lassiter and Givot.
Since at least one of the examiner’s rejections has been
sustained with regard to each of the claims before us on appeal,
it follows that the decision of the examiner is affirmed.
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Application 09/933,329
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
CEF:pgc
Appeal No. 2004-1319
Application 09/933,329
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