Ex Parte Lagasse

Board of Patent Appeals and Interferences

Mar 22, 2007

10662935 (B.P.A.I. Mar. 22, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROLAND LAGASSE
____________

Appeal 2006-2711
Application 10/662,935
Technology Center 3700
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Decided: March 22, 2007
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Before WILLIAM F. PATE, III, MURRIEL E. CRAWFORD, and
JENNIFER D. BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Roland Lagasse (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision rejecting claims 1-6, 8-10, 12-14, and 16. Claims 7, 11,
and 15 have been canceled . We have jurisdiction over this appeal under
35 U.S.C. § 6.
Appeal 2006-2711
Application 10/662,935

Appellant invented a joint for a shower arm arrangement. The joint
allows two links to pivot relative to one another, but the joint itself is less
likely to rotate than other joints in the prior art (Specification 1). Claim 13
is illustrative of the invention and reads as follows:
13. A pivot connection for a shower comprising:

a pair of links, said links being hollow and
allowing passage of water through said links to a
showerhead;

one of said links including an end wall, with
a cup extending from said end wall, and a threaded
member immovably fixed to said end wall and
extending through and beyond said cup;

the other of said links including a hollow
cylindrical member abutting said cup, with a nut
attached to said threaded member on an opposed
side of said hollow cylindrical member from said
cup, with said threaded member being immovably
fixed to said end wall; and

wherein the immovability of said threaded
member is independent of the attachment of said
nut.

The Examiner relies upon the following as evidence of
unpatentability:
Smith US 56,284 Jul. 10, 1866
Warren US 557,735 Apr. 07, 1896
Campbell US 628,692 Jul. 11, 1899
Wellington US 1,297,763 Mar. 18, 1919
Judell US 2,024,930 Dec. 17, 1935
Thulin US 2,472,030 May 31, 1949

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Appellant seeks review of the Examiner’s rejections under 35 U.S.C.
§ 103(a) of claims 1, 2, 8, 13, and 16 as unpatentable over Thulin in view of
Warren, claims 6 and 14 as unpatentable over Thulin in view of Warren and
Smith, claim 3 as unpatentable over Thulin in view of Warren and
Wellington, claim 4 as unpatentable over Thulin in view of Warren and
Campbell, claim 5 as unpatentable over Thulin in view of Warren and
Judell, and claims 9, 10, and 12 as unpatentable over Thulin in view of
Warren, Judell, and Smith. The Examiner has withdrawn the rejection under
35 U.S.C. § 112, second paragraph (Answer 3).
The Examiner provides reasoning in support of the rejections in the
Answer (mailed March 30, 2006). Appellant presents opposing arguments
in the Brief (filed January 25, 2006) and Reply Brief (filed May 5, 2006).

OPINION
Appellant argues that the combination of Warren with Thulin, on
which all of the Examiner’s rejections are grounded, at least in part, is
improper. Specifically, Appellant argues that Warren is so unrelated to the
Thulin environment as to be non-analogous. Further, Appellant contends
that, since there is no benefit or function described for the Warren structure,
there is no suggestion to combine them (Br. 4).
Appellant does not argue claims 1, 2, 8, 13, and 16 separately from
one another. Therefore, in accordance with 37 C.F.R. § 41.37(c)(1)(vii), we
select claim 13 as the representative claim to decide the appeal of the
rejection of claims 1, 2, 8, 13, and 16 as unpatentable over Thulin in view of
Warren, with claims 1, 2, 8, and 16 standing or falling with claim 13.
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Application 10/662,935

Thulin discloses a bathtub shower bath appliance that can be coupled
to the outlet spout of a faucet for directing a spray of water vertically
downwardly and at various angles, through a short tubular arm 20, a knuckle
joint, and a long tubular arm 27 from a spray nozzle 41, by adjustment of the
angular position of the long tubular arm 27 (Thulin 1: 25-30, 2: 32-50, and
3: 25-29). As best illustrated in Fig. 7, the members 22, 25 of the knuckle
joint are held together by “suitable fastening means,” such as a bolt 29
extending axially through the members with a nut 30 threaded onto the end
of the bolt (Thulin 3: 1-5).
The Examiner finds that Thulin’s threaded member (bolt 29) is not
immovably fixed to knuckle joint member 25 in such a way that its
immovability is independent of the attachment of the nut 30, as called for in
each of Appellant’s independent claims (Answer 4). Warren teaches, in a
similar pivot joint, a threaded fastening member (stud 10) extending through
the pivot joint and being integrally formed as one piece with one of the
members of the pivot joint (Warren 1: 102-103 and Fig. 3). Warren’s pivot
joint permits part 9 of racking-tube 7 to swing freely on its seat while also
ensuring a tight joint (Warren 2: 1-3). The Examiner contends that it would
have been obvious to one of ordinary skill in the art to immovably fix the
threaded member of Thulin’s knuckle joint “in order to facilitate tightening
of the connection” (Answer 4).
The first issue before us is whether, as argued by Appellant, Warren is
so unrelated to the Thulin environment as to be non-analogous. Two criteria
have evolved for determining whether prior art is analogous: (1) whether the
art is from the same field of endeavor, regardless of the problem addressed,
and (2) if the reference is not within the field of the inventor's endeavor,
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Application 10/662,935

whether the reference still is reasonably pertinent to the particular problem
with which the inventor is involved. In re Clay, 966 F.2d 656, 658-59, 23
USPQ2d 1058, 1060 (Fed. Cir. 1992). In this instance, both Appellant and
Warren deal with pivot joint couplings for permitting swinging or angular
adjustment of one tubular member of a tubular conduit relative to another
tubular member of the tubular conduit while still providing a tight joint
between the two members (Specification 1-2 and 3; Warren 2: 1-3).
Additionally, the tubular members and joints of both Warren and Appellant
are used for directing liquid therethrough. We therefore conclude that
Warren is reasonably pertinent to the particular problem with which
Appellant is involved and is thus analogous to Appellant’s invention.
Having established that Warren is analogous prior art, the next
question is whether it would have been obvious to combine Warren with
Thulin in the manner proposed by the Examiner. A suggestion, teaching, or
motivation to combine the relevant prior art teachings does not have to be
found explicitly in the prior art, as the teaching, motivation, or suggestion
may be implicit from the prior art as a whole, rather than expressly stated in
the references. The test for an implicit showing is what the combined
teachings, knowledge of one of ordinary skill in the art, and the nature of the
problem to be solved as a whole would have suggested to those of ordinary
skill in the art. In re Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000).
Furthermore, like our reviewing court, “[w]e start from the self-
evident proposition that mankind, in particular, inventors, strive to improve
that which already exists.” Dystar Textilfarben GMBH & Co. Deutschland
KG v. C.H. Patrick Co., 464 F.3d 1356, 1363, 80 USPQ2d 1641, 1647 (Fed.
Cir. Oct. 3, 2006) (quoting Pro-Mold & Tool Co. Inc. v. Great Lakes
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Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir.
1996). As stated in Dystar,
an implicit motivation to combine exists not only
when a suggestion may be gleaned from the prior
art as a whole, but when the “improvement” is
technology-independent and the combination of
references results in a product or process that is
more desirable, for example because it is stronger,
cheaper, cleaner, faster, lighter, smaller, more
durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a
product or process is universal – and even
common-sensical – we have held that there exists
in these situations a motivation to combine prior
art references even absent any hint of suggestion in
the references themselves. In such situations, the
proper question is whether the ordinary artisan
possesses knowledge and skills rendering him
capable of combining the prior art references.

Dystar, 464 F.3d at 1368, 80 USPQ2d at 1651.
While Warren does not expressly state the benefit of forming the stud
10 as one piece with the wall of part 8, the difficulty of tightening nuts onto
freely rotatable through bolts, sometimes requiring one hand and tool to fix
the bolt head against rotation while tightening the nut with a second hand
and tool, was notoriously well known at the time of Appellant’s invention.
The benefit of integrally forming the bolt or threaded member with one of
the parts to be secured, such that the threaded member is fixed against
rotation, is clearly not limited to the field of beer racking but, rather, is
technology-independent, and would have been recognized as such by one of
ordinary skill in the art. Moreover, one of ordinary skill in the art of shower
arm arrangements would have readily understood how to form the threaded
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member or bolt 29 of Thulin integrally with the knuckle joint member 25.
We therefore conclude that it would have been obvious to modify Thulin as
proposed by the Examiner, in order to facilitate tightening of the connection,
to arrive at the subject matter recited in claim 13. The rejection of claim 13,
and claims 1, 2, 8, and 16, which stand or fall with claim 13, as unpatentable
over Thulin in view of Warren is sustained.
We also sustain the rejections of claim 3 as unpatentable over Thulin
in view of Warren and Wellington, claim 4 as unpatentable over Thulin in
view of Warren and Campbell, and claim 5 as unpatentable over Thulin in
view of Warren and Judell, as Appellant has not challenged such apart from
the rejection of claim 13 (see In re Nielson, 816 F.2d 1567, 1572, 2USPQ2d
1525, 1528 (Fed. Cir. 1987)).
Appellant separately argues the further combination of Smith with
Thulin and Warren. The issue with regard to the rejections of claims 6 and
14 as unpatentable over Thulin in view of Warren and Smith and claims 9,
10, and 12 as unpatentable over Thulin in view of Warren, Judell, and Smith
is whether Smith would have suggested providing a complementary boss on
each of the knuckle joint members of Thulin rather than on just one of the
two members.
The Examiner relies on Smith for its teaching of providing
complementary ledges and bosses on both sections of the joint of a water-
pipe. Specifically, as best seen in Fig. 2 of Smith, the mating face of one
section of the joint is formed with an inner rim e (a ledge) and an annular
flange h (a boss), the annular flange provided with an internal screw, and the
outer surface of the other section is formed with an annular groove, the
groove receiving a ring d provided with an external screw onto which the
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flange h of the first section is securely threaded to secure the sections
together. The ring has free circular movement within the groove to permit
the oblique ends of the sections to be revolved relative to one another (Smith
1).
Appellant argues that the knuckle joints of Thulin and the joints of
Smith are so different from one another both structurally and in their
operation that there would have been no suggestion to combine the
references as proposed by the Examiner to associate a boss and ledge with
each of the knuckle joint sections (Br. 4-5). We agree.
The examiner may not pick and choose from any one reference only
so much of it as will support a given position, to the exclusion of other parts
necessary to the full appreciation of what such reference fairly suggests to
one of ordinary skill in the art (Bausch & Lomb, Inc., v. Barnes
Hind/Hydrocurve Inc., 796 F.2d 443, 448, 230 USPQ 416, 419 (Fed. Cir.
1986)
The threaded flange and ring/groove arrangement of Smith is used to
secure the two joint sections together as well as to permit oblique rotary
motion between the two sections. Thulin, on the other hand, uses a separate
threaded member and nut to secure the parts of the knuckle joint together.
The separate threaded member and nut of Thulin would not be needed on a
joint secured using the threaded flange and ring/groove arrangement taught
by Smith. In short, Thulin and Smith disclose two different and mutually
exclusive securement arrangements. Consequently, one of ordinary skill in
the art would not have found suggestion to use them together or to pick and
choose elements of one for use on the other.
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In light of the above, we conclude that Appellant has demonstrated
that the Examiner erred in rejecting claims 6 and 14 as unpatentable over
Thulin in view of Warren and Smith and claims 9, 10, and 12 as
unpatentable over Thulin in view of Warren, Judell, and Smith. The
rejections cannot be sustained.

SUMMARY AND ORDER
The Examiner’s decision is affirmed as to claims 1-5, 8, 13, and 16
and reversed as to claims 6, 9, 10, 12, and 14.
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).
AFFIRMED-IN-PART

JRG
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Appeal 2006-2711
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