Ex Parte Holcomb

Board of Patent Appeals and Interferences

Sep 25, 2003

09803720 (B.P.A.I. Sep. 25, 2003)

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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today was not written for publication and is not binding
precedent of the Board.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. 16

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte JIMMY F. HOLCOMB
______________

Appeal No. 2003-1645
Application 09/803,720
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ON BRIEF
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Before GARRIS, WARREN and OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, including
the opposing views of the examiner, in the answer, and appellant, in the brief, and reply brief and
based on our review, find that we cannot sustain the rejection of appealed claims 1 through 3,1 all
of the claims in the application, under 35 U.S.C. § 103(a) as being unpatentable over Welch.2
We refer to the examiner’s answer and to appellant’s brief and reply brief for a complete
exposition of the opposing positions advanced on appeal.
It is well settled that in order to establish a prima facie case of obviousness under
§ 103(a), the examiner must show that some objective teaching, suggestion or motivation in the

1 See the appendix to the brief
2 Answer, pages 3-4.
Appeal No. 2003-1645
Application 09/803,720
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applied prior art taken as a whole and/or knowledge generally available to one of ordinary skill in
this art would have led that person to the claimed invention as a whole, including each and every
limitation of the claims arranged as required by the claims, without recourse to the teachings in
appellant’s disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453,
1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992); In re Laskowski, 871 F.2d 115, 10 USPQ2d 1397 (Fed. Cir. 1989);
In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988).
Even a cursory comparison of the elements of the claimed cable reel level winding device
arranged as required in the appealed claim 1,3 as interpreted in light of the written description in
the specification and the specification drawings, and the elements of the line-distributing device
for reels disclosed by Welch (e.g., page 1 and FIGs. 1-4), supports appellant’s contentions that
the examiner has failed to read Welch on a number of claim elements arranged as required,
including, inter alia, the cam and cable guide arm arrangement as specified in appealed claim 1
(brief, pages 4-6; reply brief, pages 1-3). The examiner advances three reasons in support of the
position that the apparatus disclosed by Welch has “substantially all the claimed features”
(answer, page 3).
We find it necessary to our decision to discuss only the third reason advanced by the
examiner. The examiner contends that the line guide structure of Welch reads on the cable guide
structure of appealed claim 1 (answer, page 4). To place the examiner’s position in perspective,
we find that in Welch FIGs. 2-5, line guide arm 20 contains head 24 that travels in cam groove
18, is attached by pin 23 in slot 21 of pillar 22, and has eye 26 for the line. The line guide arm 20
moves back and forth at a constant speed with the rotative force applied by crank 16, pivoting at
pin 23 (page 1, lines 44-90). The clauses of appealed claim 1 involved here read as follows:
a cam follower in said [cam] groove and driven thereby, an arm carrying said cam
follower and oscillated back and forth thereby,

3 We decide this appeal on appealed claim 1 because appellant states in the brief (page 3) that the
appealed claims “stand or fall together” and the examiner agrees (answer, page 2) 37 CFR
§ 1.192(c)(7) (2002).
Appeal No. 2003-1645
Application 09/803,720
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a fourth shaft mounted for rotation in said housing and engaged with said cam follower so
as said cam follower oscillates back and forth, said fourth shaft oscillates back and forth, and
a cable guide arm mounted on said fourth shaft and having a cable guide eye through
which the cable passes so that when same cam is rotated in either direction, said cam causes said
cam follower arm to oscillate back and forth causing said fourth shaft to oscillate back and forth
thereby causing said cable guide to oscillate back and forth so that the cable passing through said
eye is wound evenly on said cable reel.
According to the examiner, “[t]he ‘fourth shaft’ reads on the portion of shaft 20 below the
pivot 23;” “[t]he ‘cable guide arm,’ which carries guide eye 26, reads on the portion of shaft 20
above pivot 23”; and “[t]he ‘cable guide arm’ connects the guide eye to the ‘fourth shaft’ . . .
[which] is centrally mounted as shown in fig. 2” (answer, page 4). Appellant submits that “[a]s
shown in Figures 2 and 4 . . . the cam follower 39 is mounted on a shaft 50 which oscillates or
rotates back and forth and rotates shaft 57 (the fourth shaft recited in claim 1) which in turn, has
the arm 60 mounted thereon so that arm 60 oscillates back and forth with oscillation of shaft 57 –
quite a different structure than the second-class lever of . . . Welch” (brief, page 6).
We find that the limitations in appealed claim 1 read on the structure that appellant
identifies in specification FIGs. 2 and 4 and not the structure of Welch as alleged by the
examiner. A comparison of these two structures in light of the limitations set forth in appealed
claim 1 establish that there indeed several differences. The examiner does not identify the
structure and function in Welch for certain claim limitations, such as the “arm carrying said cam
follower and oscillates back and forth thereby,” which “cam follower arm” engages the “cam
follower” with “a fourth shaft mounted for rotation in said housing” such that the “cam causes
said cam follower arm to oscillate back and forth causing said fourth shaft to oscillate back and
forth thereby causing said cable guide to oscillate back and forth.” The examiner has not
advanced a position that one of ordinary skill in this art would have found it obvious to modify
the apparatus of Welch in these respects.
Accordingly, because it is apparent that the line-distributing device for reels disclosed by
Welch does not read on the elements of the claimed cable reel level winding device arranged as
required in the appealed claim 1, we reverse the rejection of appealed claims 1 through 3 under
35 U.S.C. § 103(a).

Appeal No. 2003-1645
Application 09/803,720
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The examiner’s decision is reversed.
Reversed

BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
TERRY J. OWENS )
Administrative Patent Judge )

Appeal No. 2003-1645
Application 09/803,720
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