Ex parte LEATHERMAN et al.

Board of Patent Appeals and Interferences

Sep 10, 1998

08662263 (B.P.A.I. Sep. 10, 1998)

Application for patent filed June 7, 1996. According to appellants, the1
application is a continuation of Application 08/182,414, filed January 13, 1994.
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publication in a law journal and (2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TIMOTHY S. LEATHERMAN, BENJAMIN C.
RIVERA and PHILLIP C. GIBSON
_____________
Appeal No. 97-4206
Application 08/662,2631
______________
ON BRIEF
_______________
Before COHEN, MEISTER and NASE, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Timothy S. Leatherman, Benjamin C. Rivera and Phillip C.
Gibson (the appellants) appeal from the final rejection of
claims 1-8 and 22. Claims 17-21 stand allowed. Claims 9-16
and 23-26, the only other claims present in the application,
Appeal No. 97-4206
Application 08/662,263
The examiner failed to include the references to Brooker and Favreau in the2
listing of prior art on page 3 of the answer. Additionally, the examiner improperly
grouped the two references to Rohrer together as a single citation.
2
stand withdrawn from further consideration by the examiner
under the provisions of 37 CFR § 1.142(b) as being directed to
a nonelected invention.
We AFFIRM-IN-PART.
The appellants' invention pertains to a blade locking
mechanism for a tool of the type having a plurality of folding
blades. Independent claims 1, 5 and 6 are further
illustrative of the appealed subject matter and copies thereof
may be found in the appendix to the appellants' brief.
The prior art relied on by the examiner is;2
Rohrer (Rohrer '142) 1,362,142 Dec. 14,
1920
Rohrer (Rohrer '143) 1,362,143 Dec. 14,
1920
Smith 3,568,315 Mar. 09,
1971
Brooker 4,703,560 Nov. 03,
1987
Yamagishi 4,741,106 May
03, 1988
Favreau 5,327,651 Jul. 12,
1994
(filed May 03, 1993)
Herder 159,369 Dec. 24,
Appeal No. 97-4206
Application 08/662,263
Translation attached.3
3
1903
(Germany)3
The admitted prior art illustrated in Fig. 3 of the drawings
and described on pages 7 and 8 of the specification. (the
admitted prior art)
The claims on appeal stand rejected in the following
manner:
(1) Claims 1, 2, 7, 8 and 22 under 35 U.S.C. § 103 as
being unpatentable over the admitted prior art in view of
Brooker, Rohrer '143 or Favreau;
(2) Claims 1-4 and 22 under 35 U.S.C. § 103 as being
unpatentable over the admitted prior art in view of Smith or
Rohrer '142;
(3) Claims 5, 7 and 8 under 35 U.S.C. § 103 as being
unpatentable over the admitted prior art in view of Yamagishi
or Herder; and
(4) Claim 6 under 35 U.S.C. § 103 as being unpatentable
over the admitted prior art in view of Herder or Favreau.
Appeal No. 97-4206
Application 08/662,263
4
The examiner's rejections are explained on pages 3-6 of
the answer. The arguments of the appellants and examiner in
support of their respective positions may be found on pages 5-
14 of the brief and pages 6-8 of the answer.
OPINION
We have carefully reviewed the appellants' invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellants in the brief and by the examiner in
the answer. As a consequence of this review, we make the
following determinations.
Rejection (1)
Initially we note that, with respect to this rejection,
the appellant on page 5 of the brief state that "all of claims
1, 2, 7, 8, and 22 stand or fall together." Accordingly,
these claims will stand or fall with representative claim 1.
37 CFR § 1.192(c)(7).
Appeal No. 97-4206
Application 08/662,263
5
Considering first of claims 1, 2, 7, 8 and 22 based on
the combined teachings of the admitted prior art and Rohrer
'143, the examiner is of the opinion that it would have been
obvious to form the flange of the admitted prior art with "an
inside corner of approximately 90E having effectively a zero
radius of curvature," as set forth in representative claim 1,
in view of the teachings of Rohrer '143.
The appellants do not dispute the examiner's finding that
Rohrer '143 has a flange which has an inside corner that
extends at an angle of "approximately 90E" and has
"effectively a zero radius of curvature." Instead, the
appellants note the deficiencies of the references
individually and urge that there is no suggestion to combine
their teachings in the manner proposed by the examiner. With
respect to the relied on prior art the brief states that:
The prior art tool shown in FIG. 3 and
associated description at page 10, lines 8-
36, in the present application includes a
catch 341 including a spring 316 of thin
sheet metal, with an end of the spring bent
to form a flange 318, but forming a curved
inside corner 322, as well. Such a spring
Appeal No. 97-4206
Application 08/662,263
6
and flange need to be wide enough to span
the several blades or tool bits, and thin
enough to be flexible without too much
force, since the length of the spring is
limited by its formation as a part of the
back of the channel-shaped handle.
Formation of such a spring too long would
weaken the handle.
* * *
Rohrer '143 also discloses a single-
bladed tool. There is no suggestion to use
its construction, either, in a multi-bladed
tool. While Rohrer '143 discloses a blade-
locking member 13 carried on a spring, and
a cam lever 14 useful for unlatching the
single blade from its latched-open
position, the spring is of a narrow, deep
configuration. Rohrer does not suggest how
such a blade locking member could be
utilized for a multi-bladed tool of the
type shown in FIG. 3 of the present
application, where a spring and locking
member such as shown by Rohrer, if made
wide enough to engage several blades, would
be too stiff for practicality. [Pages 6
and 7.]
Thereafter, the appellants conclude that the examiner has used
a hindsight reconstruction of the references in arriving at a
conclusion of obviousness.
Appeal No. 97-4206
Application 08/662,263
7
We are unpersuaded by the appellant’s arguments. While
the obviousness of an invention cannot be established by
combining the teachings of the prior art absent some teaching,
suggestion or incentive supporting the combination (see ACS
Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572,
1577, 221 USPQ 929, 933 (Fed. Cir. 1984)), this does not mean
that the cited references or prior art must specifically
suggest making the combination (B.F. Goodrich Co. v. Aircraft
Braking Systems Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314,
1318 (Fed. Cir. 1996) and In re Nilssen, 851 F.2d 1401, 1403,
7 USPQ2d 1500, 1502 (Fed. Cir. 1988)). Rather, the test for
obviousness is what the combined teachings of the references
would have suggested to those of ordinary skill in the art.
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). Moreover, in evaluating such references it
is proper to take into account not only the specific teachings
of the references but also the inferences which one skilled in
the art would reasonably be expected to draw therefrom (In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968)), and
Appeal No. 97-4206
Application 08/662,263
8
all of the disclosures in a reference must be evaluated for
what they fairly teach one having
ordinary skill in the art (In re Boe, 355 F.2d 961, 965, 148
USPQ 507, 510 (CCPA 1966)).
Here, as the appellants recognize, the admitted prior art
and Rohrer '143 each utilize a spring arm having a generally
perpendicularly-extending flange on the end thereof in order
to engage a notch in the base of a pivotally-mounted blade,
and thereby latch the blade in an extended position. Both
references employ cams (347 in the case of the admitted prior
art and 18 in the case of Rohrer '143) on the bases of
adjacent tools that are pivotally mounted on the same axis as
their respective blades for the purpose of engaging the end of
the flange in such a manner so as to lift the flange from the
notch, and thus unlatch the blade. The flange 318 of the
admitted prior art, while extending from spring arm 316 at
approximately a 90E angle, has a significant radius of
curvature on the inside corner (see Fig. 3). The flange of
Rohrer '143, however, extends from spring arm 13 at
Appeal No. 97-4206
Application 08/662,263
The test for obviousness is not whether the features of a secondary reference4
may be bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.
9
approximately a 90E angle and has effectively a zero radius of
curvature on the inside corner (see Figs. 1-3). Taken as a
whole, the teachings of the admitted prior art and Rohrer '143
establish that the provision of generally perpendicularly-
extending flanges on the ends of spring arms having (1) a
radius of curvature on the inside corner and (2) effectively a
zero radius of curvature on the inside corner, are art-
recognized alternatives which are well known, and the
respective advantages and disadvantages of each would have
been apparent to one of ordinary skill in the art. See, e.g.,
In re Heinrich, 268 F.2d 753, 756, 122 USPQ 388, 390 (CCPA
1959). Applying the test for obviousness as set forth in In4
re Keller, 642 F.2d at 425, 208 USPQ at 881, we are convinced
that one of ordinary skill in this art would have found it
obvious to provide the flange 318 of the admitted prior art
with an effectively zero radius of curvature on the inside
corner in view of the teachings of Rohrer '143.
Appeal No. 97-4206
Application 08/662,263
10
As to the appellants' contention that if the latching
member of were made wide enough to engage several blades it
would be "too stiff for practicality," we observe that all of
the features of the secondary reference need not be bodily
incorporated into the primary reference (see the above-noted
test for obviousness) and the artisan is not compelled to
blindly follow the teaching of one prior art reference over
the other without the exercise of independent judgment (Lear
Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889, 221 USPQ
1025, 1032 (Fed. Cir. 1984). Here, it is the admitted prior
art which teaches that the spring arm should not be so stiff
that it could not effectively engage several blades.
In view of the foregoing, we will sustain the rejection
of claims 1, 2, 7, 8 and 22 under 35 U.S.C. § 103 as being
unpatentable over the admitted prior art in view of Rohrer
'143.
Turning to the rejection of claims 1, 2, 7, 8 and 22
based on the combined teachings of the admitted prior art and
either Brooker or Favreau, the examiner is of the opinion that
it would have been obvious to form the flange of the admitted
Appeal No. 97-4206
Application 08/662,263
11
prior art with "an inside corner of approximately 90E having
effectively a zero radius of curvature," in view of the
teachings of either Brooker or Favreau. We observe, however,
that while Brooker and Favreau are both directed to latching
devices for pivotally mounted blades which have generally
perpendicularly extending flanges that can broadly be
considered to have an inside corner with a zero radius of
curvature, neither of the flanges are mounted on the end of a
spring arm. Brooker's flange 24 is formed on the end of a
rigid support unit 12 that is fixedly mounted on the handle in
such a manner so as to cooperate with a notch 19 on the blade
11 via a rectilinearly movable lost motion connection 14,18.
This lost motion connection includes a lock nut unit 14 which
must be loosened and re-tightened when moving the blade from
one position to another. Favreau's flange or engaging foot 20
is mounted one end of a rigid lever arm 18 that pivots about
an axle 19 and the engaging foot cooperates with ratchet teeth
17 formed on the base of the blade to position the blade in a
selected angular orientation. In order to secure the blade in
the selected orientation, the engaging foot is positioned in a
Appeal No. 97-4206
Application 08/662,263
12
desired ratchet tooth and the rigid lever arm is fastened to
the ratch mechanism by a threaded lock rod 26, which must be
unfastened and refastened each time the blade is moved from
one angular orientation to another. There is simply nothing
in the disparate teachings of either Brooker or Favreau which
would fairly suggest modifying the flange on the end of the
spring arm of the admitted prior art in the manner proposed by
the examiner. While the examiner opines that the proposed
modification would "more securely lock" the blade of the
admitted prior art, the mere fact that such a result would
occur does not serve as a proper basis for concluding that
such a modification would have been obvious. Instead, it is
the prior art teachings which must be sufficient to suggest to
one of ordinary skill in the art to make the modification
needed to arrive at the claimed invention (see, e.g., In re
Lalu, 747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir.
1984)). Here, there is no such suggestion. Accordingly, we
will not sustain the rejection of claims 1, 2, 7,
8 and 22 under 35 U.S.C. § 103 as being unpatentable over the
Appeal No. 97-4206
Application 08/662,263
13
admitted prior art in view of either Brooker or Favreau.
Rejections (2) and (3)
Each of these rejections is bottomed on the examiner's
view that it would have been obvious to form the flange of the
admitted prior art with "an inside corner of approximately 90E
having effectively a zero radius of curvature," in view of the
teachings of either Smith, Rohrer '142, Yamagishi or Herder;
however, each of these secondary references suffer from
generally the same deficiencies that we have noted above in
Rejection (1) with respect to the teachings of Brooker and
Favreau. That is, while each of the secondary references are
directed to latching devices for pivotally mounted blades
which have generally perpendicularly extending flanges that
can broadly be considered to have an inside corner with a zero
radius of curvature, none of the flanges are mounted on the
end of a spring arm. Instead, all the flanges are mounted on
the ends of rigid lever arms which pivot about a fixed axis.
Thus, for generally the same reasons we have stated above in
Rejection (1) with respect to the teachings of Brooker and
Favreau, we find nothing in the combined teachings of the
Appeal No. 97-4206
Application 08/662,263
14
admitted prior art and either Smith, Rohrer '142, Yamagishi or
Herder which would fairly suggest the modification which the
examiner has proposed. Accordingly, we will not sustain the
rejections under 35 U.S.C. § 103 of claims 1-4 and 22 as being
unpatentable over the admitted prior art in view of Smith or
Rohrer '142 and claims 5, 7 and 8 as being unpatentable over
the admitted prior art in view of Yamagishi or Herder.
Rejection (4)
The examiner has taken the position that it would have
been obvious to provide the notch of the admitted prior art
with a bottom which is wider than the opening at the top in
view of the teachings of Herder or Favreau. We do not agree.
With respect to Favreau, there is not even any clear teaching
therein of a notch which is wider at the bottom, much less a
suggestion to combine Favreau's disparate teachings with those
of the admitted prior art. That is, the flange or engaging
foot 20 of Favreau is clearly depicted as having an arcuate
bottom "for reception between a plurality of said ratchet
teeth" (column 4, lines 43 and 44). See also column 1, lines
40-45. Thus, in Favreau the ratchet teeth form the notches
Appeal No. 97-4206
Application 08/662,263
15
and they are clearly narrower at the bottom than at the top.
As to Herder, while this reference does in fact teach a
notch that is wider at the bottom than at the top, it is used
to cooperate with a lever having a correspondingly shaped
flange on the end thereof that pivots about a vertical axis so
as to swing the flange laterally into and out of the notch,
thereby forming a "swallow-tailed" (translation, page 2) or
dovetail connection when the flange is engaged in the notch.
There is absolutely nothing in the combined teachings of the
admitted prior art and Herder which would suggest singling out
the feature of the notch having a wider bottom than opening at
the top (which was intended to cooperate with a
correspondingly shaped flange) and incorporate it into the
notch of the admitted prior art wherein the spring arm pivots
about a generally horizontal axis so as to swing the flange
vertically into and out of the notch. 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
Appeal No. 97-4206
Application 08/662,263
16
necessary to the full appreciation of what such reference
fairly suggests to one of ordinary skill in the art. See
Bausch & Lomb, Inc., v. Barnes-Hind/Hydrocurve Inc., 796 F.2d
443, 448, 230 USPQ 416, 419 (Fed. Cir. 1986) and In re Kamm,
452 F.2d 1052, 1057, 172 USPQ 298, 301-02 (CCPA 1972).
In view of the above, we will not sustain the rejection
of claim 6 under 35 U.S.C. § 103 as being unpatentable over
the admitted prior art in view of Herder or Favreau.
In summary:
The rejection of claims 1, 2, 7, 8 and 22 under 35 U.S.C.
§ 103 as being unpatentable over the admitted prior art in
view of Rohrer '143 is affirmed.
The rejection of claims 1, 2, 7, 8 and 22 under 35 U.S.C.
§ 103 as being unpatentable over the admitted prior art in
view of Brooker or Favreau is reversed.
The rejection of claims 1-4 and 22 under 35 U.S.C. § 103
as being unpatentable over the admitted prior art in view of
Smith or Rohrer '142 is reversed.
The rejection of claims 5, 7 and 8 under 35 U.S.C. § 103
Appeal No. 97-4206
Application 08/662,263
17
as being unpatentable over the admitted prior art in view of
Yamagishi or Herder is reversed.
The rejection of claim 6 under 35 U.S.C. § 103 as being
unpatentable over the admitted prior art in view of Herder or
Favreau is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
Appeal No. 97-4206
Application 08/662,263
18
) BOARD OF PATENT
JAMES M. MEISTER )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Donald B. Haslett
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