Ex parte HAUK

Board of Patent Appeals and Interferences

Jul 23, 1998

08514835 (B.P.A.I. Jul. 23, 1998)

Application for patent filed August 14, 1995. According to 1
appellant, this application is a continuation of Application 08/337,948,
filed November 9, 1994, which is a division of Application 08/067,216,
filed May 26, 1993, now U.S. Patent No. 5,386,746, issued February 7, 1995.
1
Paper No. 24
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte THOMAS D. HAUK
______________
Appeal No. 96-3463
Application 08/514,8351
_______________
ON BRIEF
_______________
Before MEISTER, FRANKFORT and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Thomas D. Hauk (the appellant) appeals from the final
rejection of claims 12, 14-18 and 20-25, the only claims
remaining in the application.
We REVERSE.
Appeal No. 96-3463
Application 08/514,835
2
The appellant's invention pertains a power jaw apparatus
for applying high torques to sections of threadedly connected
pipe. Of particular importance is the provision of a pair of
cooperating toothed pipe-gripping dies wherein one die is mounted
for rotation through a relatively large angle and the other die
is either (1) fixed or (2) mounted for rotation through a
relatively small angle. According to the appellant's
specification, this arrangement (1) achieves the advantages of
(a) providing "more stability" than the examiner's primary
reference to Hauk and (b) maximizes the extension of the power
cylinder (see the paragraph bridging pages 12 and 13). The
appellant's specification further states that the required
arrangement (2) provides the above-noted advantages (a) and (b)
and, in addition, provides the advantage of (c) "spreading" the
load over different teeth (see pages 13 and 14). Independent
claims 12 and 15 are further illustrative of the appealed subject
matter and copies thereof may be found in the appendix to the
appellant's brief.
The references relied on by the examiner are:
Wheeler 2,959,996 Nov. 15, 1960
Inoue 4,706,528 Nov. 17, 1987
Schulze-Beckinghausen 5,044,232 Sep. 3, 1991
Hauk 5,060,542 Oct. 29, 1991
Appeal No. 96-3463
Application 08/514,835
3
Claims 12, 14, 16, 18, 20, 22, 23 and 25 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Hauk in view
of Schulze-Beckinghausen.
Claims 15, 17, 21 and 24 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Hauk in view of Wheeler or
Inoue.
The examiner's rejections are explained on pages 2 and 3
of the answer. The arguments of the appellant and examiner in
support of their respective positions may be found on pages 4-10
of the brief, pages 1-3 of the reply brief, pages 3-5 of the
answer and page 2 of the supplemental answer.
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions advanced
by the appellant in the brief and reply brief and by the examiner
in the answer and supplemental answer. This review leads us to
conclude that the prior art relied on by the examiner fails to
establish the obviousness of the appealed subject matter within
the meaning of 35 U.S.C. § 103.
Appeal No. 96-3463
Application 08/514,835
4
Initially we note that in rejecting claims under 35 U.S.C.
§ 103 the examiner bears the initial burden of presenting a prima
facie case of obviousness. In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that
burden is met does the burden of coming forward with evidence or
argument shift to the applicant. Id. If the examiner fails to
establish a prima facie case, the rejection is improper and will
be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988).
Turning specifically to the rejection of claims 12, 14,
16, 18, 20, 22, 23 and 25 under 35 U.S.C. § 103 as being
unpatentable over Hauk in view of Schulze-Beckinghausen, the
examiner considers that it would have been obvious
to modify Hauk by using two movable jaw dies, one
movable to a greater degree than the other because
Schulze-Beckinghausen suggests the use of two movable
jaw dies, one movable to a greater degree than the
other to allow for better gripping and ungripping.
[Answer, page 3.]
In support of this position the examiner urges that the active
jaw 27 of Schulze-Beckinghausen is mounted for
Appeal No. 96-3463
Application 08/514,835
5
pivotal movement about the pin 34 against the cam
surfaces 32, 33. Thus there is a small degree of
pivoting as compared to the passive jaw 26. This is
the claimed improvement over appellant's prior patent.
[Answer, page 4.]
We will not support the examiner's position. We observe
that the manner and circumstances under which the passive jaw
26 and active jaw 27 (both of which carry gripping dies affixed
thereto) of Schulze-Beckinghausen are moved, as well as for what
purpose, are less than clear. With respect to the passive jaw
26, even though this jaw is illustrated in Figs. 1, 3 and 5 as
being attached to the "third" piece 25 by an unnumbered bolt via
an arcuate slot 127, the sole explanation given by Schulze-
Beckinghausen with respect to this arrangement is that:
The third piece 25 carries a passive jaw 26 which
is slidably mounted on the third piece 25 within the
confines of a slot 127. [Column 3, lines 51-53.]
It is unclear from this explanation, however, whether the passive
jaw 26 is "slidably mounted" simply for adjustment purposes and
then the bolt is tightened or whether the bolt and slot is a
loose connection which allows the passive jaw 26 to move or self-
align "slidably" during the pipe-gripping operation. It is also
not altogether clear as to the exact nature of the movement of
the active jaw 27 in the embodiment of Fig 1. of Schulze-
Beckinghausen (upon which the examiner apparently relies)
Appeal No. 96-3463
Application 08/514,835
6
although, admittedly, the artisan might reasonably infer from the
statements in column 4, lines 27-32, to the effect that an
unillustrated peg can be inserted in either bore 37 of bore 38'
to limit movement of the active jaw 27, that this jaw is in fact
pivotally mounted about pin 37 as the examiner asserts.
In any event, even if we were to agree with the examiner's
finding that in Schulze-Beckinghausen the jaw 26 is mounted for
rotation through a relatively large angle and that the jaw 27 is
mounted for rotation through a relatively small angle, the mere
fact that this is the case does not serve as a proper motivation
to combine the teachings of Hauk and Schulze-Beckinghausen in the
manner proposed by the examiner. Instead, it is the teachings of
the prior art which must suggest the desirability of the proposed
modification. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783-84 (Fed. Cir. 1992) and In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). Here, Hauk teaches that both
gripping dies should be mounted for rotation through relatively
large angles in order to achieve the advantage of high stress
concentration and thus prevent slippage (see column 9). On the
other hand, Schulze-Beckinghausen (even when construed in a light
most favorable to the examiner's position) at the most teaches
that one gripping die is mounted for rotation through a
Appeal No. 96-3463
Application 08/514,835
7
relatively large angle while the other gripping die is mounted
for rotation through a relatively small angle, with no reason
whatsoever being set forth as to what advantages such an
arrangement might provide. Although the examiner opines that the
incorporation of the arrangement of Schulze-Beckinghausen into
the device of Hauk would "allow for better gripping and
ungripping," there is nothing in Schulze-Beckinghausen which
either teaches or suggests that this is the case.
In our view, the examiner has impermissibly relied upon the
appellant's own teachings in arriving at a conclusion of obvious-
ness. Accordingly, we will not sustain the rejection of claims
12, 14, 16, 18, 20, 22, 23 and 25 under 35 U.S.C. § 103 based on
the combined teachings of Hauk and Schulze-Beckinghausen.
Turning to the rejection of claims 15, 17, 21 and 24 under
35 U.S.C. § 103 as being unpatentable over Hauk in view of
Wheeler or Inoue, it is the examiner's position that:
It would therefore be [sic, have been] obvious to one
skilled in the art at the time the invention was made
to modify Hauk by using one movable jaw die and one
fixed jaw die because either Wheeler or Inoue suggests
the use of one movable jaw die and one fixed jaw die to
allow for better gripping and ungripping. [Answer,
page 3.]
Appeal No. 96-3463
Application 08/514,835
8
We will not support the examiner's position. As we have
noted above in the rejection of claims 12, 14, 16, 18, 20, 22,
23 and 25 under § 103, it is the teachings of the prior art which
must suggest the desirability of the proposed modification. It
is true that, as a broad proposition, Wheeler and Inoue both
employ one fixed jaw die and one movable jaw die; however, the
movable jaws of both Wheeler and Inoue move rectilinearly along
an angular path. Wheeler is directed to a pipe wrench wherein
the movable jaw moves rectilinearly in order to accommodate "a
different sized pipe or fitting" (column 1, lines 33 and 34).
Inoue is directed to an adjustable wrench that can be used as
both "a crescent and pipe wrench" and wherein the movable jaw
moves rectilinearly for the purpose of gripping objects
"irrespective of the geometric configuration of the object" (see
column 1, lines 48-53). On the other hand, Hauk teaches that
both gripping dies should be mounted for rotation through
relatively large angles in order to achieve the advantage of high
stress concentration and thus prevent slippage (see column 9).
Absent the appellant's own teachings we are at a loss to
understand why one of ordinary skill in this art would have been
motivated to seek out the broad teaching of one movable gripping
die (which moves along a rectilinear path) and one fixed gripping
Appeal No. 96-3463
Application 08/514,835
9
die from the disparate teachings of either Wheeler and Inoue and
incorporate into the device of Hauk (who already teaches an
arrangement to prevent slippage by allowing both gripping dies to
move rotatably) in order to "allow for better gripping and
ungripping" as the examiner proposes to do. This being the case,
we will not sustain the rejection of claims 15, 17, 21 and 24
under 35 U.S.C. § 103 as being unpatentable over Hauk in view of
Wheeler or Inoue.
The examiner's rejections of the appealed claims 35 U.S.C.
§ 103 are reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )

Appeal No. 96-3463
Application 08/514,835
10
Richard J. Gausewitz
Poms, Smith, Lande & Rose
2029 Century Park East
38th Floor
Los Angeles, CA 90067-3024
JMM/cam
Appeal No. 96-3463
Application 08/514,835
11