Ex Parte Hawkins

Board of Patent Appeals and Interferences

Aug 18, 2003

09887179 (B.P.A.I. Aug. 18, 2003)

1 Claim 11 was amended subsequent to the final rejection.
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for publication and is not binding precedent of the Board.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 ERIC H. HAWKINS
____________
Appeal No. 2003-1284
Application No. 09/887,179
____________
ON BRIEF
____________
Before COHEN, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 6 to 11,
which are all of the claims pending in this application.1
We AFFIRM.
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BACKGROUND
The appellant's invention relates generally to a multi-function pocket tool which
includes adjustable pliers and other selected tools, and in particular tools for bicycle
maintenance and repair (specification, p. 1). A copy of the claims under appeal is set
forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Leatherman 4,238,862 Dec. 16, 1980
Chuang 5,711,042 Jan. 27, 1998
Claims 6 to 11 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Leatherman in view of Chuang.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the answer
(Paper No. 14, mailed January 9, 2003) for the examiner's complete reasoning in
support of the rejection, and to the brief (Paper No. 13, filed November 25, 2002) and
reply brief (Paper No. 15, filed March 11, 2003) for the appellant's arguments
thereagainst.
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OPINION
In accordance with 37 CFR § 1.192(c)(7), we have selected claim 6 as the
representative claim from the appellant's grouping of claims 6 to 11 to decide the
appeal on the rejection under 35 U.S.C. § 103. See page 2 of the appellant's brief.
Claim 6 reads as follows:
A folding multi-tool, comprising:
(a) a pair of channel-shaped handles;
(b) a pliers;
(c) a spoke wrench; and
(d) a bicycle chain tool,
wherein the pliers, the spoke wrench, and the bicycle chain tool
pivot into the channel-shaped handles.
In reaching our decision on the obviousness issue under 35 U.S.C. § 103 raised
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 make the
determinations which follow.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
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established by presenting evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be supported by evidence, as shown
by some objective teaching in the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual to combine the relevant
teachings of the references to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on 35 U.S.C.
§ 103 must rest on a factual basis with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The examiner may not, because of
doubt that the invention is patentable, resort to speculation, unfounded assumption or
hindsight reconstruction to supply deficiencies in the factual basis for the rejection. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against employing
hindsight by using the appellant's disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See, e.g., Grain Processing Corp.
v. American Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir.
1988).
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With this as background, we analyze the prior art applied by the examiner in the
rejection of the claims on appeal.
Teachings of Leatherman
Leatherman's invention relates to improvements in a folding pocket multiple tool
having pliers and other frequently needed tools incorporated into a single instrument.
Leatherman teaches (column 1, lines 8-63) that:
Certain tools are often needed in situations where it is impractical or at
least inconvenient to go prepared with a well equipped tool box. For example,
hunters, fishermen, campers, bicyclists and even motorcyclists and automobilists
have frequent need for a variety of common tools which are not available when
the need arises. Even in the home workshop or portable tool box it is often
convenient to provide a single multiple tool that will take the place of a
considerable number or separate tools.
A review of U.S. Pat. Nos. 1,474,592; 2,747,446; 1,174,132; 1,334,425;
3,044,081; 1,187,842; 2,561,682; 1,619,181; 858,003 and British Pat. Nos.
5,375 (1882); 21,369 (1894) and 15,859 (1904) shows that devices herefore
proposed for such purposes have not been as satisfactory in regard to the
performance and effectiveness of the individual tools as the present invention,
nor have they included as many useful tools in as compact and novel an
arrangement.
Objects of the present invention are therefore to provide an improved
multiple tool, to provide a multiple tool having both cross-jaw pliers and
parallel-jaw pliers, to provide an instrument in which certain of the auxiliary tools
are arranged to serve as handle extensions for increasing the leverage on the
pliers, to provide novel and improved locking means for the pliers and to provide
a pocket tool of the type described which is convenient to store and efficient in
operation.
SUMMARY OF THE INVENTION
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In the present construction a pair of channel shaped handles are foldable
over plier jaws for compact carrying and storage. Auxilary [sic] parallel jaws are
operable by the main jaws when desired. Locking means operable on both sets
of jaws are provided to maintain a strong grip on an object when the handles are
released. The handles also contain various other tools, some of which may be
opened out to provide handle extensions for increasing the leverage on the
pliers.
In the preferred embodiments illustrated, the two pairs of plier jaws are
mounted on one end of the handles while the other tools are arranged to pivot
out to operative positions at the opposite ends of the handle members.
The invention will be better understood and the foregoing and additional
objects and advantages will be apparent from the following detailed description
of the preferred embodiments illustrated in the accompanying drawings. Various
changes may be made, however, in the details of construction and arrangement,
substitution or addition of parts; and certain features may be used without others.
All such modifications within the scope of the appended claims are included in
the invention.
Leatherman's instrument comprises a plurality of tools contained within a pair of
handles 10 and 11 when the handles are folded together in closed position as shown in
solid lines in Figure 1. Each handle has a connected end 12 and a free end 13.
Access to the various tools is obtained by spreading apart the free ends 13 of the
handles as indicated by the arrows and the positions of the handles shown in broken
lines as they are rotated away from each other toward the open positions indicated at
10A and 11A. In this opening movement each handle is rotated almost 180°.
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The handle positions at 10A and 11A in Figure 1 correspond with the handle
positions shown in Figure 2. Each handle 10 and 11 is of channel shape having a pair
of side flanges 14 bent up on opposite edges of web portions 15. When the handles
are folded together as shown in solid lines in Figure 1 the two channels face each
other and enclose all of the tools contained in the instrument, for storage. When the
handles are opened to their Figure 2 positions, the two channels face outward away
from each other, making all the tools accessible, as shown. In this position the web
portions 15 of the two channels are facing each other.
Transverse pivot pins 20 and 21 are mounted in the side flanges 14 at the
connected ends 12 of the two channels. Cross-jaw pliers 22 are connected to the pivot
pins 20 and 21. Each of these plier jaws has a nose end 23 with a flat gripping surface
24 intended primarily for gripping thin flat objects, and a shank end 25. Each shank
end 25 is apertured for pivotal mounting on its associated pivot pin 20 or 21. The plier
jaws are also equipped with wire cutter blades 26 and serrated concave gripping
portions 27 shaped to grip securely round, square and hex-shaped objects. The two
jaws are pivotally connected together by pivot 28 solely for rotation about the
longitudinal axis of this pivot.
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The instrument is also equipped with a pair of parallel jaw pliers jaws 35 each
having a nose and 36 and a shank end 37. The nose ends may be of needle nose
shape as shown or any other desired shape within the obvious constraints imposed by
other parts of the instrument. The shank ends 37 are of channel shape to close
over and slidingly receive the jaws of the cross-jaw pliers 22. Each parallel jaw nose
end 36 contains a cavity or pocket 40 to receive the nose end 23 of a jaw of the
cross-jaw pliers 22, the bases of the pockets 40 having cam surfaces 41 which are
slidably engaged by the gripping edges 29 of the cross-jaws pliers. The close fit
between the insides of the cavities 40 and the outsides of nose ends 23 of the cross
jaw pliers prevents lateral motion of the parallel jaws 35.
As shown in Figure 2, a pivot pin 70 mounted in side flanges 14 at the free end
13 of handle 10 provides pivotal mounting means for other tools such as a knife blade
71, an awl 72, a large screwdriver bit 73, scissors 74, and spacer 98 (see Figure 3).
The spacer 98 may be made of grindstone material suitable for sharpening fish
hooks. Similarly, in the other handle 11 a pivot pin 75 mounts a saw/file blade 76, a
small screwdriver bit 77, a medium screwdriver bit 99, a can and bottle opener 78, and
a Phillips screwdriver bit 79 permanently magnetized to hold a screw thereon. Each
tool is provided with a fingernail grip 80 for opening the tool or jaw out of its handle
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and provision is made for accessability of these fingernail grips. In the handles 10 and
11 the side flanges 14 are cut away at 81 for this purpose.
One side flange 14 of each handle is marked with a scale 95 to provide a ruler
as illustrated in Figure 13. The other side and the web could also be marked. To use
the ruler, the cross-jaw plier jaws 22 are closed with the parallel jaws 35 in storage and
the handles are aligned with adjacent ends abutting each other to provide a rule having
a length equal to the combined length of both handles. In the pocket tool illustrated by
way of example the length of the rule is seven and one-half inches.
The teachings of Chuang
Chuang's invention relates to a tool, and more particularly to a tool combination
for bicycle. Chuang teaches (column 1, lines 8-13) that:
Typical bicycles comprise a number of elements and parts that are
required to be fixed and repaired by a number of tools. The user have [sic, has]
to prepare a number of tools for engaging and disengaging the fastening
members and for repairing the chains. It is inconvenient to prepare and to retain
the tools in place.
Referring to the drawings, and initially to Figures 1 to 4, a tool combination
comprises a first tool assembly as shown in Figure 1, and a second tool assembly as
shown in Figure 2. The first tool assembly and the second tool assembly each includes
a number of tools provided therein which are good enough for fixing and repairing all of
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the elements and parts of the bicycle. The first tool assembly and the second tool
assembly includes a securing device for securing the tool assemblies together such that
the tool combination can be easily stored and carried.
As shown in Figure. 1, the first tool assembly includes a body 10 having a pair of
ears 11, 12 extended therefrom. The ears 11, 12 each includes a hole 111, 121 formed
therein for engaging with a bolt 21. The ear 12 includes a socket 122 for engaging with
screws, bolts or nuts. The body 10 includes a dovetail slot 133 formed therein and
includes a spanner 131 for engaging with the bicycle tire and for repairing the bicycle
tire. The body 10 includes a cap 14 formed on one side portion and having a rib 141
(Figures 1 and 6) formed therein. A number of screw drivers 15, 16, 17, 18, 19, 20
include one end rotatably engaged on the bolt 21 so as to form the first tool assembly.
A number of washers 151, 161, 171, 181, 191, 201 are engaged on the bolt 21 and
engaged between the screw drivers 15, 16, 17, 18, 19, 20 respectively.
As shown in Figure 2, the second tool assembly includes a block 30 having a
pair of ears 31, 32 extended therefrom. The ears 31, 32 each includes a hole 311, 321
formed therein for engaging with a bolt 35. The block 30 includes a dovetail 33 formed
therein for engaging with the dovetail slot 133 of the body 10 of the first tool assembly
(see Figure 5) such that the first tool assembly and the second tool assembly may be
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secured together so as to form the tool combination. The block 30 includes a spanner
331 for engaging with the bicycle tire and for repairing the bicycle tire. The block 30
includes a housing 36 formed on one side portion and having a pin 362 (see Figures 2,
3 and 6) pivotably secured therein. The pin 362 has two ends engaged in the holes
361 formed in the housing 36. A knob 37 has a center hole 371 formed therein for
engaging with the pin 362 such that the knob 37 is rotatable about the pin 362. The
knob 37 includes a projection 372 (see Figures 2 and 6) formed thereon for engaging
with the rib 141 of the body 10. A spring 363 is engaged on the pin 362 and is engaged
between the block 30 and the knob 37 for biasing the projection 372 of the knob 37 to
engage with the rib 141 of the body 10, such that the first tool assembly and the second
assembly may be secured together.
As shown in Figures 2 and 4, a number of wrenches 46, 47, 48 and a
screw driver 49 and a beam 40 are rotatably engaged on the bolt 35. The beam 40
includes a notch 42 formed therein for engaging with two screw drivers 44, 45 therein
which are rotatably engaged on the bolt 35 so as to form the second tool assembly. A
bolt 43 is threadedly engaged with the inner thread 44 of the beam 40 so as to form a
typical tool for engaging with and for repairing chains of bicycles. The screw driver 49
includes two notches 492, 493 formed therein for engaging with and for repairing typical
spokes.
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Ascertainment of differences
After the scope and content of the prior art are determined, the differences
between the prior art and the claims at issue are to be ascertained. Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Leatherman and claim 6, it is our opinion
that the differences are that Leatherman does not disclose a folding multi-tool having
(1) a spoke wrench which pivots into the channel-shaped handles; and (2) a bicycle
chain tool which pivots into the channel-shaped handles.
Level of ordinary skill in the art
The level of ordinary skill in the pertinent art must be resolved. Graham v. John
Deere Co., id. Six factors are relevant to a determination of the level of ordinary skill:
educational level of the inventor, type of problems encountered in the art, prior art
solutions, rapidity of innovation, sophistication of technology, and educational level of
active workers in the field. Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693,
697, 218 USPQ 865, 868-69 (Fed. Cir. 1983), cert. denied, 464 U.S. 1043 (1984) and
Orthopedic Equipment Co. v. All Orthopedic Appliances, 707 F.2d 1376, 1382, 217
USPQ 1281, 1285 (Fed. Cir. 1983). However, a specific finding of a particular level of
skill is not always necessary where, as here, the applied prior art itself reflects an
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appropriate level. Chore-Time Equip., Inc. v. Cumberland, 713 F.2d 774, 779 n.2, 218
USPQ 673, 676 n.2 (Fed. Cir. 1983).
Determination of obviousness
With regard to the above-noted differences, it is our conclusion that it would have
been obvious at the time the invention was made to a person of ordinary skill in the art
to have modified the pocket multiple tool of Leatherman to have included common tools
used by bicyclists such as a spoke wrench and a bicycle chain tool in view of (1) the
teachings of Leatherman to provide a multiple tool having both cross-jaw pliers and
parallel-jaw pliers and certain auxiliary tools, and that certain tools are often needed in
situations where it is impractical or at least inconvenient to go prepared with a well
equipped tool box, for example, hunters, fishermen, campers, bicyclists and even
motorcyclists and automobilists have frequent need for a variety of common tools which
are not available when the need arises; and (2) the teachings of Chuang that a tool
combination for a bicycle includes both a spoke wrench and a bicycle chain tool. In
making this modification to Leatherman, it is our view that one skilled in the art would
have replaced one or more of Leatherman's auxiliary tools (i.e., knife blade
71, awl 72, large screwdriver bit 73, scissors 74, spacer 98, saw/file blade 76, small
screwdriver bit 77, medium screwdriver bit 99, can and bottle opener 78 and
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Phillips screwdriver bit 79) with a spoke wrench and a bicycle chain tool wherein the
spoke wrench and the bicycle chain tool pivot into Leatherman's channel-shaped
handles.
In view of above determination that the subject matter of claim 6 is obvious over
the applied prior art, we affirm the decision of the examiner to reject claim 6 under
35 U.S.C. § 103. In accordance with the appellant's grouping of claims, claims 7 to 11
fall with claim 6. Thus, it follows that the decision of the examiner to reject claim s 7 to
11 under 35 U.S.C. § 103 is also affirmed.
Appellant's arguments
The appellant argues that a prima facie case of obviousness has not been set
forth since there is no motivation or suggestion in the applied prior art to have modified
Leatherman to arrive at the claimed invention. We do not agree. As set forth above,
the teachings of the applied prior art clearly set forth the motivation and suggestion for
an artisan to have modified Leatherman to arrive at the claimed invention. That
motivation is to provide a multiple tool having both cross-jaw pliers and parallel-jaw
pliers and certain of the auxiliary tools useful to bicyclists. In our view, Leatherman's
multiple tool shown in the drawings is but one example of a multiple tool falling within
the teachings of Leatherman. Leatherman's disclosure is suggestive of providing
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different multiple tools for hunters, fishermen, campers, bicyclists motorcyclists and
automobilists and Chuang clearly teaches that a bicyclist's combination tool should
include both a spoke wrench and a bicycle chain tool as well as other bicycle tools.
Accordingly, it is our determination that a prima facie case of obviousness has been set
forth in the rejection under 35 U.S.C. § 103 before us in this appeal.
The appellant also argues the deficiencies of each reference on an individual
basis, however, it is well settled that nonobviousness cannot be established by
attacking the references individually when the rejection is predicated upon a
combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097,
231 USPQ 375, 380 (Fed. Cir. 1986).
Lastly, the appellant argues that it is not physically possible to add a chain repair
tool to Leatherman without removing all of the tools from one of the handles and thus
makes the invention of Leatherman unsuitable for its intended purpose. There is no
evidence in the record before us in this appeal that adding a chain repair tool to
Leatherman requires removing all of the tools from one of the handles or that such a
change makes the invention of Leatherman unsuitable for its intended purpose.
Attorney argument in a brief cannot take the place of evidence. In re Pearson, 494
F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974). Moreover, even if all of the tools
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from one of Leatherman's handles (e.g., knife blade 71, awl 72, large screwdriver bit 73,
scissors 74, spacer 98) had to be removed to accommodate a chain repair tool, it is our
view that the applied prior art suggests doing so and that such would not make the
modified pocket tool of Leatherman unsuitable for its intended purpose (i.e., a multiple
tool having both cross-jaw pliers and parallel-jaw pliers and certain auxiliary tools) since
the modified pocket tool of Leatherman would still include both cross-jaw pliers and
parallel-jaw pliers and a chain repair tool in one handle and a spoke wrench and other
tools in the other handle.
CONCLUSION
To summarize, the decision of the examiner to reject claims 6 to 11 under
35 U.S.C. § 103 is affirmed.
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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
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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BRIGGS AND MORGAN, P.A.
2400 IDS CENTER
MINNEAPOLIS, MN 55402
JVN/jg