10170744 (B.P.A.I. Feb. 27, 2009)

Ex Parte Hale

Board of Patent Appeals and InterferencesFeb 27, 2009

10170744 (B.P.A.I. Feb. 27, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte C. DAVID HALE ____________ Appeal 2008-2713 Application 10/170,744 Technology Center 3600 ____________ Decided:1 March 2, 2009 ____________ Before WILLIAM F. PATE III, LINDA E. HORNER, and JENNIFER D. BAHR, Administrative Patent Judges. WILLIAM F. PATE III, Administrative Patent Judge. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). DECISION ON APPEAL STATEMENT OF CASE This is an appeal from the final rejection of claims 1-8. These are the only claims in the application. We have jurisdiction over the appeal pursuant to 35 U.S C. §§ 6 and 134. The claimed invention is directed to a pair of couplers for connecting a pipe cleaning snake. The invention is characterized in that the female coupling member has a chamfer on the leading edge from an angle of between 25 and 35 degrees with the central axis of the cylindrical wall. The prior art is identical except that the chamfer angle is 45 degrees. Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. A pair of couplers for attachment one to the other comprising: a) a first coupler having an open ended socket, said socket formed by an axially extending cylindrical wall- having an open end and a closed end, said cylindrical wall having at least two diametrically opposed L shaped slots therein, one leg of each of said L shaped slots being open at the open end of said cylindrical wall, said open end of said cylindrical wall having an internal chamfered entry portion, the extended slope of said chamfered portion forming an angle of between twenty five and thirty five degrees with the central axis of said cylindrical, wall, Appeal 2008-2713 Application 10/170,744 b) a second coupler including a solid portion removably disposed within the socket of said first coupler, c) a plurality of rigid projections protruding radially from said solid portion of said second coupler said projections spaced so as to be movable within said L shaped slots in said first coupler's cylindrical wall, d) a locking pin extending radially from said second coupler, said locking pin depressible within the solid portion thereof, e) resilient means urging movement of said locking pin in a radial direction from said solid portion of said second coupler, as said locking pin moves into and out of said socket, f) said locking pin being axially and circumferentially spaced from said projections such that as said projections enter said cylindrical wall's L shaped slots said locking pin engages said chamfered portion of said cylindrical wall, said locking pin being depressed by action of the chamfered entry portion of said cylindrical wall as said second coupler is inserted into said first, g) said locking pin being released into one of said L shaped slots upon full insertion of said second coupling into said first coupling and said second coupling is rotated circumferentially. REFERENCES The references of record relied upon by the examiner as evidence of obviousness are: Deutsch 2,880,435 Apr. 07, 1959 Suchanek US 6,220,778 B1 Apr. 24, 2001 3 Appeal 2008-2713 Application 10/170,744 REJECTION Claims 1-8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Deutsch in view of Suchanek. ISSUES The issues presented for our consideration in this appeal are: 1) whether the sloped top of the detent for reciprocal locking member 88 of Suchanek precludes a finding of obviousness, 2) whether Suchanek should be considered as analogous art, and 3) whether, in the event a prima facie case of obviousness is found, secondary considerations exist which when balanced with the evidence for obviousness result in a legal conclusion that the claimed subject mater would not have been obvious to one of ordinary skill. FINDINGS OF FACT 1. The Deutsch patent is directed to a coupling that has become the standard coupling in the drain cleaning industry. See Affidavit of Hale, Appendix C, para. 3. Both Appellant and the Examiner agree that it has all of the features of the claimed subject matter except for the angle of the chamfer or bevel portion 62 at the mouth of the socket 58 of the female portion of the connector. See col. 3, ll. 44-49. Appellant admits that the prior art chamfer is at an angle of 45 degrees with respect to the central axis. Thus Appellant’s claimed subject matter differs from the Deutsch disclosure in that the claimed subject matter is directed to an angle of between 25 and 35 degrees with respect to the central axis. See Brief, 5:1-9. 4 Appeal 2008-2713 Application 10/170,744 2. Suchanek discloses a detent 88 to an electrical switch assembly installed in an automobile steering column. The detent and engaged portion of the housing 130 are shown in detail in Figures 2-6. The detent or reciprocal locking member 88 is disclosed within a first aperture 90 formed in a switch housing means 18. See col. 6, ll. 67- col. 7, ll. 3. The reciprocal member 88 is biased by a coil spring 92. In a preferred form the reciprocal member has a first ramp surface 146 and a second ramp surface 152. See col. 7, ll. 6-23. The housing comprises an inclined surface or chamfered entry portion 158 which has a leading edge 160 which engages the first ramp surface of the locking means 86 when the electrical contact is fully seated. The inclined surface 158 is disposed at an angle 162 that when measured with respect to the perpendicular to the central axis is given as between 45 degrees and 60 degrees inclusive. See col. 7, ll. 22-35. Thus the angle of the inclined surface or chamfered portion 158 is, by simple subtraction, 30 degrees to 45 degrees from the central axis. Additionally, Suchanek discloses that testing has shown that the different slopes provided on the reciprocal locking member 88 cooperating with the inclined surface or chamfered entry portion 158 and spring 92 yield different forces necessary for the installation and removal thereof. In other words, the slope 154 when cooperating with the slope 158 and edge 160 requires generally 7-10 Newtons for insertion. The same edge cooperating with the first ramp surface 146 requires forces in the range of 300-500 Newtons for removal. See col. 8, lines 6-22. Thus Suchanek provides evidence of a recognition in 5 Appeal 2008-2713 Application 10/170,744 the art that the inclination of the ramp that forms a chamfer for insertion along with the top surface of the detent or reciprocal locking member 88 may be optimized either to ease insertion and removal or to make removal and insertion more difficult. PRINCIPLES OF LAW Obviousness “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___, 127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including (1) the scope and content of the prior art, (2) any differences between the claimed subject matter and the prior art, (3) the level of skill in the art, and (4) where in evidence, so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. 398 at ___, 127 S. Ct. at 1734 (“While the sequence of these questions might be reordered in any particular case, the [Graham] factors continue to define the inquiry that controls.”). Whether a reference in the prior art is "analogous" is a fact question. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992) citing Panduit Corp. v. Dennison Mfg., 810 F.2d 1561, 1568 n.9 (Fed. Cir.), cert. denied, 481 U.S. 1052 (1987). Two criteria have evolved for determining whether prior art is 6 Appeal 2008-2713 Application 10/170,744 analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Id., citing In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.” In re Clay, 966 F.2d at 659. Whether a reference teaches away from a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). “A reference may be said to teach away when a person of ordinary skill, upon reading the reference, . . . would be led in a direction divergent from the path that was taken by the applicant.” In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (quoting Tec Air, Inc. v. Denso Mfg. Mich. Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999)). In our determination of obviousness under 35 U.S.C. § 103, we also carefully weigh, in addition to the evidence relied upon by the Examiner, the objective evidence of nonobviousness provided by Appellant. In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994) (Evidence of commercial success of articles not covered by the claims subject to the obviousness rejection was not probative of nonobviousness). 7 Appeal 2008-2713 Application 10/170,744 Establishing long-felt need requires objective evidence that an art-recognized problem existed in the art for a long period of time without solution. In particular, the evidence must show that the need was a persistent one that was recognized by those of ordinary skill in the art. In re Gershon, 372 F.2d 535, 539 (CCPA 1967). The relevance of long-felt need and the failure of others to the issue of obviousness depend on several factors. First, the need must have been a persistent one that was recognized by those of ordinary skill in the art. Orthopedic Equipment Co. v. All Orthopedic Appliances, Inc., 707 F.2d 1376 (Fed. Cir. 1983); see also In re Gershon, 372 F.2d 535, 539 (CCPA 1967). Second, the long-felt need must not have been satisfied by another before the invention by applicant. Newell Companies v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no long-felt need or, indeed, a problem to be solved.”) Third, the invention must in fact satisfy the long- felt need. In re Cavanagh, 436 F.2d 491 (CCPA 1971). “[L]ong-felt need is analyzed as of the date of an articulated identified problem and evidence of efforts to solve that problem.” Texas Instruments, Inc. v. ITC, 988 F.2d 1165, 1178 (Fed. Cir. 1993). ANALYSIS It is apparent that Appellant and the Examiner disagree about the field of endeavor. Appellant argues that Appellant’s invention is directed to plumbing and specifically, the sewer cleaning industry. Appellant believes the Suchanek reference is directed to electrical connectors in the automotive industry. On the other hand, the Examiner is apparently of the view that 8 Appeal 2008-2713 Application 10/170,744 both the claimed subject matter and the Suchanek invention are in the field of zero or low insertion force connectors. Be that as it may, we are of the view that the problems discussed in Suchanek, i.e., the force needed to connect male and female members by the inward biasing of a spring biased detent is reasonably pertinent to the problem of the connection of the male and female members in the claimed subject matter. Accordingly, Appellants’ non-analogous art argument is not credited. With regards to obviousness, the sole difference between the Deutsch patent and the claimed subject matter is the angle that the chamfered surface makes with the longitudinal axis. Suchanek discloses that different ramp angles and different chamfered entry portions may be selected so that the forces required to mate a joint together can be optimized. Furthermore, as the Examiner has indicated on page 6 of the Answer, it is an elementary principle of physics that more gentle ramping, i.e., provision of an inclined plane at a lower included angle results in less force necessary to move an object up the plane. Accordingly, in our view, one of ordinary skill would have found it obvious to modify the Deutsch connector following the teachings of Suchanek of varying the entry angle of the chamfered portion and thereby varying the insertion force necessary to make up the joint. This is simply applying a known technique to a known device which is ready for improvement, which would yield predictable results. See KSR at ___, 127 S. Ct. at 1740. This is in keeping with the Supreme Court’s functional, common sense approach to the obviousness inquiry. Furthermore, in our view, the elementary principles of physics, alone, as they relate to inclined planes and the force necessary to move a body up 9 Appeal 2008-2713 Application 10/170,744 an inclined plane would have suggested the claimed subject matter to one of ordinary skill when viewed with the Deutsch coupling even without the teaching of the Suchanek reference. Thus the Examiner’s reliance on the elementary principles of physics supplies another rationale in support of prima facie obviousness. Appellant further argues that the pin 88 of Suchanek has a double sloped top portion, and thus the Suchanek teaching is not applicable to the Deutsch patent. However, we must remind Appellant that the claims on appeal do not preclude a ramp surface on the locking pin, and Suchanek does teach an inclined chamfered surface 158 that cooperates with the inclined surface 152 on the locking pin. So even if, as Appellant argues, one of ordinary skill would place a ramp surface on Deutsch as well as adjusting the angle of the chamfer, the modified device of Deutsch would still read on Appellant’s claimed subject matter. For the foregoing reasons, it is our legal conclusion that the Appellant has not established error on the part of the Examiner in the Examiner’s prima facie case of obviousness of claims 1-8 on appeal. SECONDARY CONSIDERATIONS As noted above, we have found the subject matter of the claims on appeal to be prima facie obvious. Whenever obviousness is found with respect to the subject matter on appeal, and Appellant furnishes evidence of secondary considerations, it is our duty to reconsider the issue of obviousness anew, carefully weighing the evidence for obviousness with respect to the evidence against obviousness. See, e.g., In re Eli Lily & Co., 902 F.2d, 943, 945 (Fed. Cir. 1990). We are also mindful that the objective 10 Appeal 2008-2713 Application 10/170,744 evidence of nonobviousness in any given case may be entitled to more or less weight depending on its nature and its relationship with the merits of the invention. See Stratoflex Inc. v. Aeroquip, 713 F.2d 1530, 1538 (Fed. Cir. 1983). To be given substantial weight in the determination of obviousness or nonobviousness, evidence of secondary considerations must be relevant to the subject matter as claimed, and therefore we must determine whether there is a nexus between the merits of the claimed invention and the evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986). Turning to the specifics of the affidavits, we note that in the affidavit of C. David Hale, paragraphs 1-5 discuss the commercial acceptance of the invention of the Deutsch patent. Paragraph 6 discusses complaints about the force necessary to connect the male and female connectors of Deutsch. However, an unquantified reference to customers, whose level of skill is not stated, and a vague reference to complaints is not sufficiently probative evidence to establish a persistent need that was recognized by those of ordinary skill in this art. Paragraph 7 states that neither the assignee nor its competitors have succeeded in improving connectors of drain cleaning cables. This paragraph fails to establish that competitors have felt a need to improve on the Deutsch subject matter or that competitors have tried and failed. See Texas Instruments, Inc. at 1178. There is simply no evidence that other competitors were concerned with the alleged problem or need or that they pursued a solution. Paragraphs 8 and 9 state the customers of the assignee have been complimentary towards the cleaning cable that embodies 11 Appeal 2008-2713 Application 10/170,744 the invention. Customer’s compliments alone are insufficient to establish industry-wide long-felt need. The specific compliments are not stated, and there is no way to definitively establish that they were specifically addressed to the features of the claims on appeal. To sum up, the entire affidavit, based as it is on perceived complaints, compliments, and generalities from unnamed people in this field, is bottomed on hearsay. However, establishing a long felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without a solution. Particularly, the evidence must show that the need was a persistent one that was recognized by those of ordinary skill in the art. Hale’s declaration does not even purport to show that the existence of the need was recognized by manufacturers of sewer cleaning cables. At most, the declaration states that compliments were received from users of the cables. Thus, there is no showing that other manufacturers recognized the need or that the other manufacturers regarded prior art cables as unsatisfactory. There is no evidence that others worked on a solution. The affidavit of Hale is thus entitled to but little weight. Turning to the affidavits of Fay, Newman and Kliest, these affidavits are similar in nature to that of Hale. However, at least these affidavits are based on first-hand experiences and do not reflect the hearsay problems of the first affidavit. The affiants have provided drain cleaning services over many years. They all complain about the force necessary to make up the joints covered in the Deutsch patent, and speak of the time it took to train apprentices to make up the joint properly. Thus these affidavits provide evidence that the joint is easier to connect using the claimed subject matter 12 Appeal 2008-2713 Application 10/170,744 of this application. This fact is not in dispute. It is entirely predictable. However, when they also describe that the claimed subject matter is long overdue and solves a long-standing problem, they state a conclusion that they fail to support. These declarations fail in showing that there was an industry concerned with the problem or that industry had tried and failed to solve this problem. Nor does this evidence reflect any industry-wide adoption of the solution offered by Appellant. On balance, we recognize the laudatory statements by three plumbers in the sewer field as some, albeit small, evidence of long-felt need. However, when balancing the evidence for obviousness and the evidence against obviousness, including all of the Appellant’s evidence of long-felt need, it is our conclusion that the evidence for obviousness far outweighs the evidence against obviousness. For the foregoing reasons, it is our conclusion that the Appellant has not established that the Examiner has erred in combining the references and in stating that Suchanek was analogous art. Nor has Appellant established that the Examiner erred when balancing all of the evidence anew. Accordingly, since the Appellant has not shown error on the part of the Examiner, the rejection of the claims on appeal is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED 13 Appeal 2008-2713 Application 10/170,744 vsh FROST BROWN TODD LLC 2200 PNC CENTER 201 E. FIFTH STREET CINCINNATI OH 45202-4182 14