Ex Parte Guzzoni

Board of Patent Appeals and Interferences

Oct 29, 2009

10183886 (B.P.A.I. Oct. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAOLO GUZZONI
____________

Appeal 2009-002815
Application 10/183,886
Technology Center 3600
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Decided: October 29, 2009
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Before WILLIAM F. PATE, III, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Paolo Guzzoni (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1, 2, 4-6, 8-10, 12, 15, 16, and 18-26.
Claims 3, 7, 11, 13, 14, and 17 have been canceled. Appellant’s
representative presented oral argument on October 6, 2009. We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

THE INVENTION
Appellant’s invention relates to a device for connecting piping
elements such as piping sections or hollow bars 11 for distributing both
gaseous and liquid fluids. Spec. 1, ll. 5-13 and fig. 2. The device includes
anchoring plates 19 fitted into channel grooves 15, 17 of piping elements 11,
connecting plate 21, and screws 22 for attaching connecting plate 21 and
anchoring plates 19. Spec. 6, ll. 10-15 and figs. 2 and 3.
Claim 1 is representative of the claimed invention and reads as
follows:
1. A device for connecting and blocking hollow elements used as
piping for fluids,
where each hollow element has a central hole and C shaped
grooves running along its walls and opening outwards, and
where plugs or anchoring plates are provided which can be
inserted singularly into the channel shaped grooves of the
adjacent elements to be connected, one connecting plate resting
on one wall of said adjacent elements, and anchoring screws
inserted into holes in said connection plate and screwed into
said anchoring plates to block the plate on said adjacent
elements,
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characterized in that at least the connecting plate has
protrusions or contact grips designed to physically penetrate
into the surface of the elements to be connected when the
connecting plate is anchored to the anchoring plate by the
screws.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Imai US 5,769,460 Jun. 23, 1998
Milhoux (translation) BE 869,746 Dec. 1, 1978
Guzzoni GB 2 246 609 A Feb. 5, 1992

The following rejections are before us for review:
The Examiner rejected claims 1, 2, 4-6, 8-10, 12, 15, and 21-26 under
35 U.S.C. § 103(a) as unpatentable over Guzzoni and Milhoux.
The Examiner rejected claims 16 and 18-20 under 35 U.S.C. § 103(a)
as unpatentable over Guzzoni, Milhoux, and Imai.

THE ISSUE
The Examiner found that Guzzoni discloses all the features of
independent claims 1 and 21-23 with the exception of a connecting plate
having “protrusions or contact grips designed to physically penetrate into the
surface of the elements to be connected when the connecting plate is
anchored to the anchoring plate by the screws.” Ans. 3-4.1 The Examiner
further found that Milhoux discloses a connecting plate 1, 1’ having

1 Throughout this opinion we shall refer to the Examiner’s
Supplemental Answer, mailed Nov. 3, 2006, as “Ans.”
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protrusions or contact grips 3, 3’ (ribs) that are designed to physically
penetrate into the surface of element 2. Ans. 4. See also Milhoux, page 4
and fig. 1. Further, the Examiner notes that:
[T]he protrusion or contact grip [of Milhoux] need
not actually physically penetrate into the surface
of the elements to be connected when the
connecting plate is anchored to the anchoring plate
by screws, because this limitation is not explicitly
claimed. Even if claimed, the invention of Milhoux
is fully capable of physically penetrating into the
surface of the elements (plastic element 2) (pg. 2,
lines 19-22 and pg. 4, line 16) to be connected
when the connecting plate (metal plates, see
crosshatch of Figure 1) is anchored to the
anchoring plate by screws.
Ans. 9. Emphasis added.
In other words, the Examiner appears to take the position that the ribs
3, 3’ of Milhoux are capable of penetrating the surface of part 2 because part
2 is made from a flowable material. Id. See also Reply Br. 4-5.2
Appellant argues that in contrast to the Examiner’s interpretation of
the disclosure of Milhoux, Milhoux does not explicitly describe penetration
of the plates 1, 1’ into part 2 because the grooves 4, 4’ and ribs 3, 3’ can be
engaged without penetration. Reply Br. 4. See also Milhoux, fig. 1.
Moreover, according to Appellant, because the flow of material in Milhoux
is undesirable and Guzzoni does not disclose using a flowable material, “the
prior art does not have any incentive or motivation to combine the references

2 Since Appellant’s Supplemental Reply Brief, filed Dec. 1, 2006 is
substantially the same as the Reply Brief filed Dec. 29, 2004, throughout this
opinion we shall refer to the Reply Brief filed Dec. 29, 2004 as “Reply Br.”.
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as indicated in the rejection.” Reply Br. 5. Hence, according to Appellant, a
person of ordinary skill in the art would not have been motivated to modify
the connecting plate of Guzzoni to include the ribs (protrusions or contact
grips) of Milhoux, as suggested by the Examiner.
Accordingly, the issue presented for our consideration is the
following:
Has Appellant demonstrated that the Examiner erred in determining
that the combined teachings of Guzzoni and Milhoux would have prompted
a person of ordinary skill in the art to modify the connecting plate of
Guzzoni to include the ribs of Milhoux?

SUMMARY OF DECISION
We REVERSE.

OPINION
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In
making such a rejection, the Examiner has the initial duty of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in the factual basis. In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).
It is our finding that Guzzoni discloses a conduit coupling assembly
for conduits 10 including a tubular connector member 13, a connector plate
17 (connecting plate), block 19 (anchor plate) fitted within C-shaped
grooves 12 of conduit 10, and bolts 20 for attaching connector plate 17 and
block 19. Guzzoni, Abstract, p. 3, and figs. 3 and 4. However, as illustrated
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in Figure 3, Guzzoni does not disclose that connector plate 17 has any
protrusions that are designed to physically penetrate into the surface of the
elements that are to be connected when the connector plate 17 is anchored to
the block 19 (anchoring plate) using bolts 20, as required by independent
claims 1 and 21-23. As such, the Examiner then uses the disclosure of
Milhoux to show an assembly for transmitting a force to a part made of a
material capable of flowing without deforming the part. Milhoux, pp. 2-3.
The device of Milhoux includes two plates 1, 1’ made of a resistant material
arranged on sides of a part 2 made of a flowable material (e.g., plastic).
Milhoux, p. 3. The plates 1, 1’ are provided with ribs 3, 3’, while the part 2
is provided with grooves 4, 4’ such that the ribs and the grooves mesh
together. Milhoux, p. 4 and fig. 1. The Examiner then finally asserts that:
[I]t would have been obvious to one having
ordinary skill in the art at the time the invention
was made to provide at least a connecting plate
having protrusions or contact grips designed to
physically penetrate into the surface of the
elements to be connected when the connecting
plate is anchored to the anchoring plate by the
screws to intercept or distribute the applied force
to the element, as taught by BE 869746 [Milhoux].
Ans. 4.
However, the Examiner has not provided any factual basis to show
that the ribs (protrusions) of the connector plate of Guzzoni as modified by
Milhoux are necessarily capable of penetrating the surface of the elements of
Guzzoni that are to be connected when the connector plate 17 is anchored to
the block 19 (anchoring plate) using bolts 20, or that a person of ordinary
skill in the art would understand this to be the case. Further, the Examiner
has not provided any factual basis to show that the structure of Guzzoni is
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inadequate for intercepting or distributing the applied coupling (tightening)
force, as suggested by the Examiner. Furthermore, we note that the
capability of the ribs (protrusion) of the connector plate of Guzzoni as
modified by Milhoux to penetrate depends on a variety of factors such as the
tightening force, the shape of the ribs, and the type of material used to make
the ribs. For example, a person of ordinary skill in the art would have
readily recognized that the tightening force for the conduits of Guzzoni
which conduct fluids is different than that for the plates of Milhoux which
transfer a force to a part made of a material capable of flowing, namely
plastic, without deforming the part. Moreover, we note that the conduit
assembly of Guzzoni does not include a component made from a material
capable of flowing and as such, the material used to make the ribs of
Milhoux would not necessarily be capable of penetrating the surface of the
elements of Guzzoni that are to be connected when the connector plate 17 is
anchored to the block 19 (anchoring plate) using bolts 20. Hence, without
taking these factors into consideration, we find that it is not clear that the
ribs (protrusions) of the connector plate of Guzzoni as modified by Milhoux
is capable of penetration, as suggested by the Examiner. As such, we do not
find that the Examiner has established a factual basis to show that the ribs
(protrusions) of the connector plate of Guzzoni as modified by Milhoux is
capable of penetration, or that a person of ordinary skill in the art would
understand this to be the case.
Accordingly, the modification proposed by the Examiner of providing
the ribs of Milhoux to the connector plate of Guzzoni would not have been
obvious to the person of ordinary skill in the art. For the above stated
reasons, we conclude that the Examiner has not discharged the initial burden
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of establishing a prima facie case of obviousness of the subject matter of
independent claims 1 and 21-23 or their dependent claims 2, 4-6, 8-10, 12,
15, and 24-26. See In re Fine, 837 F.2d 1071, 1076 (Fed. Cir. 1988) (If an
independent claim is nonobvious under 35 U.S.C. § 103, then any claim
dependent therefrom is nonobvious). Therefore, the rejection of claims 1, 2,
4-6, 8-10, 12, 15, and 21-26 cannot be sustained.
With respect to claims 16 and 18-20, the application of the teachings
of Imai does not cure the deficiency of the combination of Guzzoni and
Milhoux, as discussed above. Accordingly, the rejection of claims 16 and
18-20 under 35 U.S.C. § 103(a) as unpatentable over Guzzoni in view of
Milhoux and Imai likewise cannot be sustained.

CONCLUSION
Appellant has demonstrated that the Examiner erred in determining
that the combined teachings of Guzzoni and Milhoux would have prompted
a person of ordinary skill in the art to modify the connecting plate of
Guzzoni to include the ribs (protrusions) of Milhoux.

DECISION
The Examiner’s decision to reject claims 1, 2, 4-6, 8-10, 12, 15, 16,
and 18-26 is reversed.

REVERSED

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