Ex Parte Kinskey

Board of Patent Appeals and Interferences

Apr 30, 2012

11070203 (B.P.A.I. Apr. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/070,203 03/03/2005 Terry Kinskey 2590
7590 04/30/2012
Terry Kinskey
1011 Tullamore Place
Alpharetta, GA 30022-8077
EXAMINER
MEISLIN, DEBRA S
ART UNIT PAPER NUMBER
3727
MAIL DATE DELIVERY MODE
04/30/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TERRY KINSKEY
____________

Appeal 2009-014585
Application 11/070,203
Technology Center 3700
____________

Before JENNIFER D. BAHR, JOHN C. KERINS, and
GAY ANN SPAHN, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Terry Kinskey (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s rejection of claims 1-15, 17, and 18. Appellant cancelled
claims 16 and 19. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE, and pursuant to our authority under 37 C.F.R.
§ 41.50(b), we enter a NEW GROUND OF REJECTION for claims 1-15,
17, and 18.
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The Claimed Subject Matter
The claimed subject matter is directed to a ratcheting tool for bolt or
nut removal, which is adjustable to accommodate varying sizes of bolt heads
and nuts. Spec. 1, para. [0001]. Claims 1 and 10 are independent and claim
1, reproduced below, is illustrative of the subject matter on appeal.
1. A ratchet device comprising:
a ratchet body;
an adjustable dimension opening member to
accommodate varying size bolt heads or nuts, said
adjustable dimension opening member rotationally
connected to said ratchet body; and
a tool bit holder disposed on an end of said
ratchet body opposite said adjustable dimension
opening member, said tool bit holder extending in
a longitudinal direction from said hatchet body.

Independent claim 10 is directed to a tool for tightening or loosing a
bolt or nut, including an adjustable dimension opening member, a handle,
and “a tool bit holder extending in a longitudinal direction of said handle
from an end of said handle opposite said adjustable dimension opening
member.”
The Rejections
The following Examiner’s rejections are before us for review.1

1 In the “GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL”
section of the Brief, Appellant sets forth Grounds 1-8. Br. 5. Ground 7 is
based upon 35 U.S.C. § 132(a) and discussed in Footnote 3 infra. Ground 8
is based upon 37 C.F.R. § 1.83(a) and will not be addressed for the reasons
the Examiner articulated on page 10 of the Answer, i.e., the issue raised is a
petitionable matter, and thus is not within the jurisdiction of the Board. See
In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002) (citing In re Hengehold,
440 F.2d 1395, 1403-04 (CCPA 1971) (stating that there are many kinds of
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1. Claims 1-12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Guimarin (US 4,112,792, issued Sep. 12, 1978) and Chen
ʼ034 (US 6,431,034 B1, issued Aug. 13, 2002). Ans. 3-4.
2. Claims 1-12 and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Guimarin and Chen ʼ034.2 Ans. 4-5.
3. Claim 13 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Guimarin, Chen ʼ034, and Jenrich (US 928,764, issued Jul. 20, 1909).
Ans. 5-6.
4. Claim14 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Guimarin, Chen ʼ034, and McFarland (US 3,635,654, issued Jan. 18,
1972). Ans. 6.
5. Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Guimarin, Chen ʼ034, and either Malkin (US 5,960,683, issued Oct. 5,
1999) or Bailey (US 5,007,312, issued Apr. 16, 1991). Ans. 6.
6. Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Guimarin, Chen ʼ034, and Chen ʼ167 (US 6,164,167, issued Dec. 26,
2000). Ans. 7.

decisions made by examiners that are not appealable to the Board when they
are not directly connected with the merits of issues involving rejections of
claims, and holding that “the kind of adverse decisions of the patent
examiner which are reviewable by the board of appeals must be those which
relate, at least indirectly, to matters involving the rejection of claims”)); and
In re Mindick, 371 F.2d 892, 894 (CCPA 1967) (holding that the refusal of
an examiner to enter an amendment of claims is reviewable by petition
under 37 C.F.R. § 1.181, and not by appeal to the Board).
2 This ground of rejection is presented separately from the first ground of
rejection because the Examiner presents an alternative interpretation of Chen
ʼ034 as is apparent from the annotated figures and the Examiner’s Response
to Argument. See Ans. 3-5, 7-8.
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OPINION
Claim 1-12 / 103 / Guimarin and Chen ʼ034
The Examiner finds that Guimarin discloses the subject matter of
independent claims 1 and 10, “except for having a tool bit holder.” Ans. 3.
The Examiner also finds that Chen ʼ034 discloses a ratchet body including a
tool bit holder which extends in the longitudinal direction of the ratchet body
and the Examiner attaches annotated Figures 1 and 3 of Chen ʼ 034 with an
arrow labeled “tool bit holder” pointing toward the rear portion 103 of the
base handle member 10 of Chen ʼ034’s tool device. Ans. 3-4. The
Examiner states that “[t]he holes/cavities of Chen [ʼ034] disclose either the
tray or the holder.” Ans. 7-8. The Examiner concludes that it would have
been obvious to one of ordinary skill in the art “to provide the ratchet body
of Guimarin with a tool bit holder that extends in a longitudinal direction of
the ratchet body to allow for the storage of bits and the ready accessibility
thereof as taught by Chen [ʼ034].” Ans. 4.
Appellant contends that the combination of Guimarin and Chen ʼ034
does not render claim 1 unpatentable since none of Chen ʼ034’s “‘holes or
cavities’ is disclosed as ‘extending in the longitudinal direction from said
ratchet body’ as recited in claim 1.” Br. 7. Indeed, Appellant points out that
all of Chen ʼ034’s holes or cavities are disposed transversely within the
handle and thus, Appellant argues that “[t]here is no teaching or suggestion
in Chen [ʼ034] of a tool bit holder extending in a longitudinal direction from
the ratchet body.” Br. 8. With respect to claim 10, Appellant similarly
argues that Chen ʼ034 “does not disclose a tool bit holder extending in a
longitudinal direction of said handle from an end of said handle.” Br. 9.
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We agree with Appellant that Chen ʼ034’s holes or cavities do not
extend in a longitudinal direction from the ratchet body as required by claim
1, and do not extend in a longitudinal direction of said handle from an end of
said handle, but rather are disposed transversely of the longitudinal direction
of the ratchet body. Thus, the Examiner’s finding that the holes or cavities
constitute claim 1’s “tool bit holder extending in a longitudinal direction
from said ratchet body” (Br., Clms. App’x.) is in error.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 1 and 10, and claims 2-9, 11, and 12 dependent thereon,
under 35 U.S.C. § 103(a) as unpatentable over Guimarin and Chen ʼ034.
Claim 1-12 and 15 / 103 / Guimarin and Chen ʼ034
The Examiner makes the same findings as discussed supra with
respect to Guimarin, and additionally finds that Guimarin fails to disclose a
tool bit tray; however, Chen ʼ034 discloses “a ratchet body including a tool
bit tray and tool bit holder.” Ans. 4. The Examiner annotates Figures 1 and
3 of Chen ʼ034 to have an arrow leading from the words “tool bit tray”
pointing toward the rear portion 103 of the base handle member 10 of Chen
ʼ034’s tool device, and annotates Figure 3 of Chen ʼ034 with another arrow
leading from the words “tool bit holder ‘50’” pointing to tool extension 50
which is located on the rear portion 103 of the ratchet body. Ans. 5. The
Examiner alleges that “[t]he tool bit holder ‘50’ extends in a longitudinal
direction from the ratchet body and is disposed on an end of the ratchet
body.” Ans. 4-5. The Examiner’s position is that the “holes/cavities of
Chen [ʼ034] disclose either the tray or the holder[; h]owever, when the
claims define both the tray and the holder, the holes/cavities disclose the tray
and the holder is disclosed as element ‘50’,” and “[e]lement ‘50’ clearly
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extends in a longitudinal direction of the handle on an opposite end from the
opening member.” Ans. 8. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to: (1) “provide the ratchet body
of Guimarin with a tool bit tray to allow for the storage of bits and the ready
accessibility thereof as taught by Chen [ʼ034];” and (2) “provide the ratchet
body of Guimarin with a tool bit holder to allow for the driving of tool bits
as taught by Chen [ʼ034].” Ans. 3-4.
Appellant makes the same arguments as discussed supra.
Since independent claim 1 and 10 only define a holder, not both a tray
and a holder, the Examiner finds Chen ʼ034’s holes or cavities to constitute
the holder and thus, for the same reasons as discussed supra, we do not
sustain the Examiner’s rejection of independent claims 1 and 10, and claims
2-9, 11, 12, and 15 dependent thereon, under 35 U.S.C. § 103(a) as
unpatentable over Guimarin and Chen ʼ034.
Claim 13 / 103 / Guimarin, Chen ʼ034, and Jenrich
The Examiner does not rely on Jenrich to cure the above-noted
deficiency of the combination of Guimarin and Chen ʼ034 in rendering
obvious claim 1, from which claim 13 indirectly depends. See Ans. 5-6, 9.
Accordingly, we do not sustain the Examiner’s rejection of claim 13 under
35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and Jenrich.
Claim 14 / 103 / Guimarin, Chen ʼ034, and McFarland
The Examiner does not rely on McFarland to cure the above-noted
deficiency of the combination of Guimarin and Chen ʼ034 in rendering
obvious claim 1, from which claim 14 depends. See Ans. 6, 9-10.
Accordingly, we do not sustain the Examiner’s rejection of claim 14 under
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35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and
McFarland.
Claim 17 / 103 / Guimarin, Chen ʼ034, and either Malkin or Bailey
The Examiner does not rely on either Malkin or Bailey to cure the
above-noted deficiency of the combination of Guimarin and Chen ʼ034 in
rendering obvious claim 1, from which claim 17 depends.. Ans. 6, 10.
Accordingly, we do not sustain the Examiner’s rejection of claim 17 under
35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen ʼ034, and either
Malkin or Bailey.
Claim 18 / 103 / Guimarin, Chen ʼ034, and Chen ʼ167
The Examiner does not rely on Chen ʼ167 to cure the above-noted
deficiency of the combination of Guimarin and Chen ʼ034 in rendering
obvious claim 1, from which claim 18 depends.. Ans. 7, 10. Accordingly,
we do not sustain the Examiner’s rejection of claim 13 under 35 U.S.C.
§ 103(a) as unpatentable over Guimarin, Chen ʼ034, and Chen ʼ167.

REJECTION OF CLAIMS 1-15, 17, AND 18 UNDER
35 U.S.C. § 112, FIRST PARAGRAPH PURSUANT
TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b)

Based upon our consideration of the claimed ratchet device of
independent claim 1 and tool for tightening or loosing a bolt or nut of
independent claim 10 taken as a whole, claims 1-15, 17, and 18 are rejected
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
The purpose of the written description requirement in 35 U.S.C. §
112, first paragraph, is to “‘clearly allow persons of ordinary skill in the art
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to recognize that [the inventor] invented what is claimed.’” Ariad Pharm.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing In re
Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). “[T]he test for sufficiency is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad at 1351.
Independent claim 1, lines 6-8, and claims 2-9 and 13-15, 17, and 18
either directly or indirectly dependent thereon, recite “a tool bit holder
disposed on an end of said ratchet body opposite said adjustable dimension
opening member, said tool bit holder extending in a longitudinal direction
from said ratchet body.” The recitation that the tool bit holder extends in a
longitudinal direction “from said ratchet body” constitutes new matter as not
being supported by the original disclosure. More particularly, on page 4,
para. [0020], the original Specification states that:
Handle 12 can be modified to include a tool
bit tray for accommodating various tool bits such
as screw driver bits or hex bits. Further, the handle
12 can be modified to include a tool bit holder
extending in the longitudinal direction of the
handle, at the end of the handle opposite the fork
arms 20, 22. The tool bit holder accommodates
various tool bits including those which can be
disposed in the tool bit tray.

This disclosure supports a tool bit holder extending in the longitudinal
direction of the handle and located at an end of the handle opposite the fork
arms 20, 22, but does not convey that Appellant was in possession of an
invention in which the tool bit holder extends from the ratchet body, as
distinguished from, for example, extending along the ratchet body. “[W]hile
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the description requirement does not demand any particular form of
disclosure, or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement. Ariad at 1352. When an explicit limitation in a
claim “is not present in the written description whose benefit is sought it
must be shown that a person of ordinary skill would have understood, at the
time the patent application was filed, that the description requires that
limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir. 1998). Thus,
we find that the Specification’s disclosure in paragraph [0020] does not
support that the tool bit holder extends in a longitudinal direction “from said
ratchet body” as recited in claim 1. Br., Clms. App’x.
Similarly, independent claim 10, and dependent claims 11 and 12 each
directly dependent thereon, recite “a tool bit holder extending in a
longitudinal direction of said handle from an end of said handle opposite
said adjustable dimension opening member.” Br., Clms. App’x. For the
same reason as discussed supra with respect to claim 1, we find that the
originally filed Specification does not provide support for the tool bit holder
extending in longitudinal direction of the handle “from an end of the handle
opposite said adjustable dimension opening member” as recited in claim 10.
Id.
Accordingly, the claims do not comply with the written description
requirement because the claims contain subject matter which was not
described in the Specification in such a way as to reasonably convey to one
skilled in the art that the inventor, at the time the application was filed, had
possession of the claimed invention. Appellant’s disclosure would not
reasonably convey to one of skill in the art that the inventor possessed: (1) a
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ratchet device of claim 1 having a ratchet body and a tool bit holder
extending in a longitudinal direction “from said ratchet body;” and (2) a tool
for tightening or loosing a bolt or nut of claim 10 having an adjustable
dimension opening member, a handle, and a tool bit holder extending in a
longitudinal direction of the handle “from an end of the handle opposite the
adjustable dimension opening member.”
In view of the foregoing, claims 1-15, 17, and 18 fail to comply with
the written description requirement under 35 U.S.C. § 112, first paragraph.3

DECISION
We reverse the Examiner’s rejections of: claims 1-12 under 35 U.S.C.
§ 103(a) as unpatentable over Guimarin and Chen ʼ034; claims 1-12 and 15
under 35 U.S.C. § 103(a) as unpatentable over Guimarin and Chen ʼ034;
claim 13 under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen
ʼ034, and Jenrich; claim14 under 35 U.S.C. § 103(a) as unpatentable over
Guimarin, Chen ʼ034, and McFarland; claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Guimarin, Chen ʼ034, and either Malkin or Bailey; and
claim 18 under 35 U.S.C. § 103(a) as unpatentable over Guimarin, Chen
ʼ034, and Chen ʼ167.

3 Appellant raises as an additional issue whether amended drawing Figure 2,
submitted by Appellant in the Amendment, filed January 17, 2008, contains
new matter. Br. 5, 16-17. (Ground 7). This issue is directed to the
Examiner’s objection to and refusal to enter amended drawing Figure 2 on
the basis that it introduces new matter into the disclosure. Final Rej. 5-6.
This objection to and denial of entry of the drawings turn on the same issues
as the rejection of claims 1-15, 17, and 18 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement, our
decision with respect to the written description requirement likewise is
dispositive as to the corresponding objection and denial of entry.
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Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection of claims 1-15, 17, and 18 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
FINALITY OF DECISION
37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Regarding the new ground of rejection, 37 C.F.R. § 41.50(b) also provides
that Appellant must, WITHIN TWO MONTHS FROM THE DATE OF
THE DECISION, exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the proceeding will be
remanded to the examiner. . . .

(2) Request rehearing. Request that the
proceeding be reheard under § 41.52 by the Board
upon the same record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

REVERSED; 37 C.F.R. § 41.50(b)

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