Ex parte King et al.

Board of Patent Appeals and Interferences

Jan 31, 2001

08539858 (B.P.A.I. Jan. 31, 2001)

Application filed October 6, 1995.1
The examiner's 35 U.S.C. § 112, second paragraph2
rejections of claim 9 for twice reciting "a switch" and of
claim 15 as lacking an antecedent for "the base center axis"
(Final Rejection at 2) were withdrawn in the Answer (at 11).
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written for publication and is not binding precedent of the Board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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte JOHN E. KING and JAMES T. CARPENTER
_____________
Appeal No. 1998-0503
Application 08/539,8581
______________
ON BRIEF
_______________
Before THOMAS, MARTIN, and BARRETT, Administrative Patent
Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134
from the examiner's final rejection of claims 2, 3, 7-11, 14,
15, and 17-35 under 35 U.S.C. § 103, with claim 36 standing
objected to for depending on a rejected claim. We reverse.2
Appeal No. 1998-0503
Application 08/539,858
- 2 -
A. The invention
Referring to appellants' Figures 1 and 2, the invention
is a mounting structure 10 including a base 38, an arm 40,
and a switch mount 42, which structure is depicted being used
to mount a switch 32 to the end wall 16 of a motor housing 14
using a screw and nut fastener 74 (the screw passes through
bore 52 in the base). The distance between the end-wall-
engaging surface of base 38 and the corresponding end of the
arm 40 is selected to cause the arm to crimp the switch wires
34 and 36 between the arm and the end wall (Spec. at 13, lines
11-16).
B. The claims
Claim 7 is representative:
7. An apparatus for securing lead wires of an electric
switch to a device casing surface to hold the wires securely
to the device casing surface, the apparatus comprising:
a base separate from the device casing, an arm projecting
from the base, and the base having means for attaching the
base to the device casing surface with the arm spaced from the
device casing surface a set distance, the set distance being
sufficiently small to cause the arm to crimp lead wires of a
switch positioned between the arm and the device casing
surface when the base is attached to the devise [sic] casing
surface; and
Appeal No. 1998-0503
Application 08/539,858
- 3 -
at least one clasp connected to and supported by the
base, the clasp having means for grasping and holding a switch
to the base.
C. The references and rejections
The following U.S. patents are relied on by the examiner:
Pate et al. (Pate) 4,209,661 Jun. 24,
1980
Botz et al. (Botz) 4,398,073 Aug. 9,
1983
Morawa et al. (Morawa) 5,411,228 May 2,
1995
(filed Dec. 16,
1993)
Claims 2, 7-11, 15, 17-22, 26-30, and 32-35 stand
rejected under § 103 for obviousness over Morawa in view of
Botz.
Claims 3, 14, 23-25, and 31 stand rejected under § 103
for obviousness over Morawa in view of Botz and Pate.
D. The merits of the rejection based on Morawa in view of
Botz
Morawa discloses an improved cable clip for retaining
coaxial cables and the like against a mounting surface (col. 1
Appeal No. 1998-0503
Application 08/539,858
- 4 -
lines 6-8). Typically, such clips are used to hold an insulated
electrical cable to a building structure such as a floor, wall
or roof (col. 1, lines 15-17). Morawa's clip differs from
prior art clips by including fastener retainer means for
holding a fastening device in place relative to the clip prior
to installation (col. 1, lines 9-11). This is accomplished
using a plurality of segmented wall portions 26 (Figs. 4-6)
for gripping a screw 24, shown in Figure 7.
Appellants do not challenge the examiner's position that
the claimed base and arm read on Morawa's clip in the manner
shown in the annotated copy of Morawa's Figure 1 that appears
at (unnumbered) page 9 of the brief.
For a suggestion of modifying Morawa by adding the
claimed "at least one clasp connected to and supported by the
base, the clasp having means for grasping and holding a switch
to the base,” the examiner relies on Botz, which shows a
fastening arrangement which permits snap-in assembly of a
switch to a panel or receiving member (Abstract, lines 1-2).
A push-button switch is held in place in a cavity formed by
side walls 72 by means of a connector 84 holding elements 75
Appeal No. 1998-0503
Application 08/539,858
- 5 -
with lugs which releasably engage shoulders 79 of the side
walls.
We agree with appellants that the examiner's proposed
motivation for combining the teachings of Morawa and Botz,
i.e., "for easy yet precise mounting of a switch" (Answer at
12), is based, improperly, on hindsight obtained from
appellants' disclosure. See In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999)("Our case law makes
clear that the best defense against the subtle but powerful
attraction of a hindsight-based obviousness analysis is
rigorous application of the requirement for a showing of the
teaching or motivation to combine prior art references
[Citations omitted]."). As already noted, Morawa's clip is
designed to be fastened to a floor, wall, or roof. The
examiner has not satisfactorily explained why one skilled in
the art would have seen in Morawa and Botz any suggestion to
mount a switch or any other electrical device on such a clip.
Accordingly, the rejection based on Morawa in view of
Botz is reversed as to all of the claims rejected thereover.
Appeal No. 1998-0503
Application 08/539,858
- 6 -
Because Pate does not cure the above-noted deficiency,
the rejection based on Morawa in view of Botz and Pate is
reverse as to call claims rejected thereover.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN C. MARTIN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
LEE E. BARRETT )
Administrative Patent Judge )
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