Ex parte Leonhardt

Board of Patent Appeals and Interferences

Apr 30, 2001

08779706 (B.P.A.I. Apr. 30, 2001)

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for publication and is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DUANE LEONHARDT
____________
Appeal No. 2001-0201
Application No. 08/779,706
____________
ON BRIEF
____________
Before CALVERT, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 and 2, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
Appeal No. 2001-0201 Page 2
Application No. 08/779,706
The appellant's invention relates to a hose coupling
member for connection to an identical hose coupling member for
use with a 1/2 to 7/8 inch hose. A copy of the claims under
appeal is set forth 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:
Weaver 1,911,659 May 30,
1933
Fandetti et al. 3,645,562 Feb. 29,
1972
(Fandetti)
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Fandetti in view of Weaver.
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.
13, mailed March 9, 1999) and the answer (Paper No. 16, mailed
May 27, 2000) for the examiner's complete reasoning in support
of the rejection, and to the brief (Paper No. 15, filed
Appeal No. 2001-0201 Page 3
Application No. 08/779,706
January 10, 2000) and reply brief (Paper No. 17, filed May 30,
2000) for the appellant's arguments thereagainst.
Appeal No. 2001-0201 Page 4
Application No. 08/779,706
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 1 and 2 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
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
Appeal No. 2001-0201 Page 5
Application No. 08/779,706
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Claim 1, the sole independent claim on appeal, reads as
follows:
A hose coupling member for connection to an
identical hose coupling member for use with a 1/2 to 7/8
inch hose, said coupling member having opposing identical
fastening means and a cylindrical opening therethrough,
each fastening means comprising a cam, a ramp and
lug, each cam having a ramp angle between 4 and 5
degrees,
a face surrounding said cylindrical opening inward
of each said fastening means and supporting a sealing
gasket, the gasket having a thickness of between 220 and
280 microns, and
the gasket having a face area between 0.4 and 0.6
square inches.
In the final rejection of claim 1, the examiner
determined that the patent to Fandetti disclosed the claimed
subject matter "with the exception of the ramp angle and
gasket size." The examiner then determined that the patent to
Weaver teaches that "the ramp angle and gasket thickness need
to be selected to ensure that the joint remains tight under
the pressures it will encounter." The examiner then concluded
that "it would have been obvious to a person having ordinary
Appeal No. 2001-0201 Page 6
Application No. 08/779,706
We are aware of the examiner's view set forth in the1
response to argument section of the answer (p. 3) that the
claimed hose sizes are common hose sizes and therefore
(continued...)
skill in the art to arrive at the recited values [ramp angle,
gasket size/thickness], since it has been held that
discovering an optimum value of a result effective variable
involves only routine skill in the art."
The appellant argues that the applied prior art does not
suggest the subject matter of claim 1. We agree for the
reasons that follow.
First, in the final rejection, the examiner did not
correctly determine all the differences between Fandetti and
claim 1 since claim 1 recites that the hose coupling member is
for use with a 1/2 to 7/8 inch hose and that the coupling
member has opposing identical fastening means and a
cylindrical opening therethrough. In our view, these
limitations impose a size limitation on the hose coupling
member that the examiner has not dealt with in the rejection
before us in this appeal.1
Appeal No. 2001-0201 Page 7
Application No. 08/779,706
(...continued)1
obvious, however, the examiner did not incorporate this
conclusion of obviousness into the rejection before us in this
appeal.
Second, while Weaver does suggest that the "ramp angle"
is a result effective variable that needs to be selected based
upon the diameter of the piping (page 2, lines 105-113), we
have found no specific teaching in Weaver that the "gasket
thickness" is a result effective variable. Moreover, even if
the "gasket thickness" were a result effective variable, the
examiner has not presented any evidence that the claimed
"gasket face area" is a result effective variable.
Lastly, we disagree with the examiner's position (answer,
p. 5) that claim 6 of Fandetti suggests more than one sealing
means may be used. In that regard, Fandetti clearly teaches
(column 3, lines 31-35) that a sealing gasket may be
interposed between his identical coupling units 10 and 11 and
that such a gasket may register with recesses 22 of the
identical coupling units 10 and 11. While in accordance with
35 U.S.C. § 112, the "fluid sealing means" recited in claim 6
Appeal No. 2001-0201 Page 8
Application No. 08/779,706
of Fandetti may cover both "a sealing gasket" and two sealing
gaskets, the language of claim 6, by itself (i.e., without
evidence establishing that two sealing gaskets were the
equivalent of "a sealing gasket"), is insufficient, in our
view, to suggest two sealing gaskets. Accordingly, it is our
opinion that the single sealing gasket taught by Fandetti
would be thicker than the thickness recited in claim 1.
For the reasons set forth above, the decision of the
examiner to reject claim 1, and claim 2 dependent thereon,
under 35 U.S.C. § 103 is reversed.
CONCLUSION
Appeal No. 2001-0201 Page 9
Application No. 08/779,706
To summarize, the decision of the examiner to reject
claims 1 and 2 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-0201 Page 10
Application No. 08/779,706
BIRCH, STEWART, KOLASCH & BIRCH, LLP
P.O. BOX 747
FALLS CHURCH, VA 22040-0747
Appeal No. 2001-0201 Page 11
Application No. 08/779,706
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