Ex parte Gold

Board of Patent Appeals and Interferences

Oct 25, 1999

08368099 (B.P.A.I. Oct. 25, 1999)

Application for patent filed January 03, 1995.1
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not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PETER GOLD
_____________
Appeal No. 1997-0380
Application No. 08/368,099 1
______________
HEARD: October 6, 1999
_______________
Before McCandlish, Senior Administrative Patent Judge and
Abrams and GONZALES, Administrative Patent Judges
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner's final
rejection of claim 1, which is the sole claim pending in the
Appeal No. 1997-0380
Application No. 08/368,099
Claim 1 was amended subsequent to the final rejection to include the2
subject matter of dependent claim 2.
2
application. We REVERSE.2
The subject matter on appeal is directed to a screw head
nail having a generally cylindrical and enlarged diameter nail
head [26] with a frustoconical [30] defining an outwardly
flared opening therethrough and which is aligned with a
cylindrical bore [28] formed in the nail shank [22]. The
cylindrical bore is provided to receive a conventional machine
screw. The enlarged nail head is configured to prevent
obstruction of the cylindrical bore upon hammering of the nail
into a work piece.
A copy of the appealed claim is appended to the main
brief (Paper No. 10).
The prior art references of record relied upon by the
examiner in rejecting the appealed claim are:
Farrington 824,983 Jul. 03, 1906
Meyer 2,802,297 Aug. 13, 1957
The claim stands rejected under 35 U.S.C. § 103 as
being unpatentable over Farrington, alone, and over Meyer in
Appeal No. 1997-0380
Application No. 08/368,099
3
view of Farrington.
The full text of the examiner's rejections and the
responses to the arguments presented by appellant appear in
the answer (Paper No. 11, mailed August 20, 1996), while the
complete
statement of appellant's arguments can be found in the main
brief (Paper No. 10, filed July 26, 1996).
OPINION
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 conclude that
the
§ 103 rejections cannot be sustained.
Considering first the § 103 rejection based on
Farrington, alone, we find that Farrington discloses "a screw
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Application No. 08/368,099
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which may be inserted in wood or other material in the usual
manner, but which cannot be withdrawn without mutilation"
(lines 11-14). Farrington illustrates two embodiments. The
first embodiment shown in Figures 1 and 2, includes a screw
body [a] provided with exterior screw threads [e] and a
longitudinal socket [b] extending downwardly from the top of
the screw body. The socket [b] is provided with interior
screw threads [f] adapted to receive a false head [c] having a
rounded top with a slot and a flat outer edge conforming to
the flat outer edge of the top of the screw body. The second
embodiment illustrated in Figures 3
and 4 is similar to the first embodiment, except the false
head [k] has a flat top with a slot and a generally conical
bottom and the upper end of the screw body is flared to
conform to the conical shape of the false head.
The examiner admits that Farrington does not show a
generally cylindrical head with an enlarged diameter relative
to the nail shank and a frustoconical opening being recessed
within the nail head (answer, page 3). However, it is the
Appeal No. 1997-0380
Application No. 08/368,099
5
examiner's position that it would have been obvious "to
provide the internally threaded bore of Figure 1 with a
frustoconical opening in order to receive a screw with a
frustoconical head as taught in Figure 4" (id.).
It is well settled that it is the teachings of the
prior art taken as a whole which must provide the motivation
or suggestion to combine the references. See Uniroyal, Inc.
v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434,
1438 (Fed. Cir. 1988) and Interconnect Planning Corp. v. Feil,
774 F.2d 1132, 1143, 227 USPQ 543, 550-51 (Fed. Cir. 1985).
It is apparent from a reading of Farrington that the
embodiment shown in Figures 1 and 2 was never intended to be
used with a false
head screw having a frustoconical head. Thus, the only
suggestion for combining the different embodiments of the
reference in the manner proposed by the examiner stems from
hindsight knowledge derived solely from the appellant's
disclosure. The use of hindsight knowledge to support a
Appeal No. 1997-0380
Application No. 08/368,099
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conclusion of obviousness is, of course, impermissible.
Therefore, we will not sustain the standing 35 U.S.C. § 103
rejection of the claim based on Farrington alone.
Turning next to the 35 U.S.C. § 103 rejection based on
Meyer in view of Farrington, Meyer discloses an upholstered
furniture tufting device comprising an elongated stud [10]
having a disc-shaped head portion [12] and a shank portion
[14] including a pointed tip [20]. The head has a well or
recess [22] communicating with a tapped bore [24]. The device
also includes a separate button [26] having a cylindrical head
[28] and a threaded shank [30]. In use, the shank of stud
[10] is inserted through the muslin-burlap covered stuffing
material [36, 38, 40] and a lock plate [32] is applied to the
exposed pointed tip [20] of stud shank [14]. Upholstery or
dress covering [42] having a plurality of grommet-reinforced
openings [44] is then applied over the furniture and the
threaded shanks [30] of the buttons
[26] are passed through openings [46] into engagement with the
Appeal No. 1997-0380
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7
tapped bores [24] of studs [10]. The grommets [46]
surrounding the openings [44] are received in the recesses
[22] of the disc-shaped head portion [12].
As implicitly conceded by the examiner, Meyer does not
teach or suggest a generally cylindrical head with an enlarged
diameter relative to the shank portion and a frustoconical
opening being recessed within the nail head. However, the
examiner has concluded that
[i]t would have been obvious to one having ordinary skill
in the art at the time the invention was made to provide
the internally threaded bore of Meyer '297 with a
frustoconical opening, as taught by Farrington '983, in
order to receive a screw with a frustoconical head. The
frustoconical opening would allow the head to sit within
the opening to make the head of the screw as flush as
possible to the surface of the furniture. The upholstery
would be wedged between the frustoconical opening and the
frustoconical head of the screw. (Answer, page 4)
We will not support the examiner's position. Here again,
absent the appellant's own disclosure, we can think of no
reason why one of ordinary skill in this art would have been
motivated to combine the teachings of Meyer and Farrington in
the manner that the examiner has proposed. The examiner
apparently is proposing to extract from the teachings of
Farrington the feature
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of a frustoconical opening communicating with a threaded bore
(as
illustrated by Farrington in Fig. 4) and incorporate this
feature into the elongated upholstery stud of Meyer, while at
the same time retaining Meyer's disc-shaped head [12]. The
examiner, however, may not pick and choose from any one
reference only so much of it as will support a given position,
to the exclusion of other parts necessary to the full
appreciation of what such reference fairly suggests to one of
ordinary skill in the art. See Bausch & Lomb, Inc., v.
Barnes-Hind/Hydrocurve Inc., 796 F.2d 443, 448, 230 USPQ 416,
419 (Fed. Cir. 1986), cert. denied, 484 U.S. 823 (1987) and In
re Kamm, 452 F.2d 1052, 1057, 172 USPQ 298, 301-02 (CCPA
1972). Here, Farrington does not teach or suggest forming a
frustoconical opening in a cylindrical head. Instead,
Farrington teaches a screw body [a] having a flared upper end
[i] which forms a frustoconical opening for receiving the
beveled section [n] of a flat head screw. Meyer teaches a
disc-shaped head [12] having a centrally located opening
communicating with a tapped bore [24]. There is simply
Appeal No. 1997-0380
Application No. 08/368,099
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nothing in the combined teachings of Meyer and Farrington
which would fairly suggest providing the elongated stud of
Meyer with a
frustoconical opening as illustrated by Farrington in Figure 4
for the purpose of receiving a flat head screw and, at the
same
time, discarding the flared end of the screw body illustrated
by Farrington (which is provided by Farrington to form the
frustoconical opening) and retaining the disc-shaped head [12]
taught by Meyer.
From our perspective, the examiner has impermissibly
relied upon the appellant’s own teachings in arriving at a
conclusion of obviousness. This being the case, we will not
sustain the rejection of the claim under 35 U.S.C. § 103 based
on the combined teachings of Meyer and Farrington.
In summary, both of the examiner's rejections of the
claim under 35 U.S.C. § 103 are reversed.
REVERSED
Appeal No. 1997-0380
Application No. 08/368,099
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HARRISON E. McCANDLISH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
vsh
Appeal No. 1997-0380
Application No. 08/368,099
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