Ex parte Jarvis

Board of Patent Appeals and Interferences

Jan 5, 2000

08731857 (B.P.A.I. Jan. 5, 2000)

Application for patent filed October 21, 1996. 1
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for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JACK D. JARVIS
____________
Appeal No. 1999-2439
Application No. 08/731,8571
____________
ON BRIEF
____________
Before McQUADE, 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 4, 5 and 14 to 20, which are all of the
claims pending in this application.
We REVERSE.
Appeal No. 1999-2439 Page 2
Application No. 08/731,857
BACKGROUND
The appellant's invention relates generally to hand tools
and more specifically to an articulating multi-sized adapter
(specification, p. 2). An understanding of the invention can
be derived from a reading of the independent claims on appeal
(i.e., claims 14, 16 and 19), copies of which are reproduced
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:
Van Hoose 4,114,401 Sep.
19, 1978
Cromwell 5,168,782 Dec. 8,
1992
Claims 4, 5 and 14 to 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Van Hoose in view of
Cromwell.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the final rejection (Paper No.
Appeal No. 1999-2439 Page 3
Application No. 08/731,857
4, mailed September 18, 1998) and the answer (Paper No. 8,
mailed April 13, 1999) for the examiner's complete reasoning
in support of the rejection, and to the brief (Paper No. 6,
filed March 22, 1999) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision 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. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 4, 5 and 14 to
20 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
Appeal No. 1999-2439 Page 4
Application No. 08/731,857
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art 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) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
In the rejection before us in this appeal, the examiner
determined (final rejection, p. 2) that it would have been
obvious in view of the teachings of Cromwell to have replaced
Van Hoose's female member 94 with a male square drive member,
thus the modified Van Hoose's adapter 10 would have a square
drive at each end thereof. We do not agree.
In our view, the only suggestion for modifying Van Hoose
in the manner proposed by the examiner stems from hindsight
knowledge derived from the appellant's own disclosure. The
use of such hindsight knowledge to support an obviousness
rejection under 35 U.S.C. § 103 is, of course, impermissible.
Appeal No. 1999-2439 Page 5
Application No. 08/731,857
The test for obviousness is what the combined teachings2
of the references would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18
USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981).
See, for example, W. L. Gore and Associates, Inc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). In that regard, it
is our view that the combined teachings of the applied prior2
art would have made it obvious at the time the invention was
made to a person having ordinary skill in the art to have
modified Van Hoose's male member (i.e., rectangular shank 16)
to accept the extension bar 12 of Cromwell's tool extension
adapter 10.
Moreover, we agree with the appellant's argument (brief,
p. 10) that the applied prior art does not teach or suggest
either (1) a socket having different sized openings at each
end thereof as recited in claim 14, or (2) a straight adapter
having different sized openings at each end thereof as recited
in claim 14. Likewise, the applied prior art does not teach
Appeal No. 1999-2439 Page 6
Application No. 08/731,857
or suggest a female drive member as recited in either claim 16
or claim 19.
For the reasons set forth above, we cannot sustain the
examiner's rejections of claims 4, 5 and 14 to 20.
Appeal No. 1999-2439 Page 7
Application No. 08/731,857
CONCLUSION
To summarize, the decision of the examiner to reject
claims 4, 5 and 14 to 20 under 35 U.S.C. § 103 is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-2439 Page 8
Application No. 08/731,857
PAUL M. DENK
763 SOUTH NEW BALLAS ROAD
ST LOUIS, MO 63141
APPEAL NO. 1999-2439 - JUDGE NASE
APPLICATION NO. 08/731,857
APJ NASE
APJ McQUADE
APJ BAHR
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 03 Jan 00
FINAL TYPED: