Ex Parte Machovsky

Board of Patent Appeals and Interferences

Sep 26, 2003

09645845 (B.P.A.I. Sep. 26, 2003)

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for publication and is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANDREW J. MACHOVSKY
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Appeal No. 2003-0541
Application No. 09/645,845
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ON BRIEF
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Before COHEN, ABRAMS, and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 13-17,
which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/645,845
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BACKGROUND
The appellant's invention relates to a multi-purpose plumbing tool. An
understanding of the invention can be derived from a reading of exemplary claim 13,
which appears 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:
Kuhn 3,738,768 Jun. 12, 1973
Rogers 5,440,957 Aug. 15, 1995
Bayouth 5,996,447 Dec. 7, 1999
Claims 13-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Bayouth in view of Rogers.
Claims 16 and 17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bayouth in view of Rogers and Kuhn.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 8) for the examiner's complete reasoning in support of the rejections, and to
the Brief (Paper No. 7) for the appellant's arguments thereagainst.
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
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Application No. 09/645,845
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respective positions articulated by the appellant and the examiner. As a consequence
of our review, we make the determinations which follow.
As explained on pages 2 and 3 of the specification, the appellant’s invention
provides two different sized tubular wrench sockets, each of having four notches at its
operating end which can accommodate a square head of a pipe fitting plug or the
radially extending spokes of a bathtub drain or the like, with the larger of the two
sockets being attachable to and driveable by the smaller (see Figures 1, 5 and 7). The
configuration of the wrenches is such that they can be passed through an opening in a
wall, or through the pipe leading to, the items to be worked. The lower portion of the
second (larger) socket is receivable in the four notches in the upper portion of the first
(smaller) socket. According to claim 13, the first tubular socket and its notches are
sized to accommodate parts used with 1½ inch nominal diameter pipe and the larger to
accommodate parts used with 2 inch nominal diameter pipe.
The examiner has rejected independent claim 13 under 35 U.S.C. § 103(a) as
being obvious in view of the combined teachings of Bayouth and Rogers. In arriving at
this conclusion, the examiner has found that Bayouth discloses the claimed invention
“except for the use of a second socket of a different size to be secured to the working
end of the first socket tube in order to provide for a set that is usable on larger sized
elements.” However, the examiner is of the view that it would have been obvious to
one of ordinary skill in the art to have modified Bayouth by using a larger second socket
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Application No. 09/645,845
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with the same working end because “Rogers suggests the use of such a set of sockets
to allow use of the set on various sized elements.” Answer, page 3.
The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See, for example, In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie
case of obviousness, it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed invention. See Ex parte Clapp,
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill in the art and not from
the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
Applying this guidance to the situation at hand leads us to conclude that the
rejection of claim 13 cannot be sustained. Our reasoning follows.
Bayouth is directed to a wrench for removing hard-to-reach nuts from faucets
(see Figure 2). The wrench comprises a cylindrical pipe 11 and a socket 16. The
cylindrical pipe has notches 12-14 at one end and holes 17 and 18 at the other end.
The socket has an inner opening configured to accommodate the nut or other item to
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be turned and four radially outwardly projecting studs 12a-15a. The studs are received
in the notches, in which position they can be rotated by rotating the pipe, either by hand
or by means of an object inserted through the holes in the other end. There is no
teaching in Bayouth that the notches in the pipe are used to engage anything other than
the studs protruding from the socket, and no dimensions are given, except that the
diameter of the opening in the socket and that of the pipe are sufficient to allow these
two elements to pass over a water supply line (column 3, line 6 et seq.).
With regard to claim 13, Bayouth fails to disclose or teach a first tubular socket
having four notches for receiving a workpiece comprising parts used with 1½ inch
nominal diameter pipe. Nor does Bayouth disclose or teach a second tubular socket
having four notches for receiving parts used with 2 inch nominal diameter pipe, and rib
means on its interior surface for engaging the notches of the first socket.
Rogers discloses an oil filter wrench. Although the examiner has not directed us
to any particular portion of the specification or drawing, with reference to Figure 2, the
Rogers device comprises a driver adaptor 35 that can be engaged with the outer
surface of a driver 33 in order to accommodate oil filters that will fit the configuration
present in the smaller cavity thereof, or it can be engaged with the inner surface of
driver 33 in order to allow the driver to receive oil filters configured to fit the larger cavity
(column 4 and 5). Figures 11 and 12 show another embodiment, wherein the driver
adapter 97 can be engaged with a number of drivers 71 having different sizes and
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interior configurations (columns 5 and 6). Rogers does not utilize the driver adaptor as
a socket for accommodating a workpiece other than the oil filter wrench, which engages
the workpiece. The driver adaptor is used only as a means for driving a plurality of oil
filter wrenches of different sizes and configurations, which are selected to
accommodate the oil filter being worked upon.
The examiner has not explained how the Bayouth wrench would be modified by
the teachings of Rogers in order to meet the terms of claim 13, nor has any comment
been made regarding the limitations directed to the sizes of the complementary parts
engagable by the first and second sockets. The mere fact that the prior art structure
could be modified does not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). We fail to perceive any teaching, suggestion or incentive
in either Bayouth or Rogers which would have led one of ordinary skill in the art to
modify the Bayouth cylindrical device in such a manner as to meet the terms of the
claim, especially when considering that the first ends of the “first sockets” in both of the
references are designed only to accommodate the configuration of the “second
sockets” and not of the second sockets in addition to work pieces having the limitations
recited in the claim.
It therefore is our conclusion that the combined teachings of Bayouth and
Rogers fail to establish a prima facie case of obviousness with regard to the subject
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matter recited in claim 13, and we will not sustain the rejection of this claim or, it follows,
of claims 14 and 15, which depend therefrom.
The rejection of claims 16 and 17 also will not be sustained. The addition of
Kuhn, which was cited for teaching side holes in a wrench drive to receive a handle,
fails to overcome the aforementioned problems with Bayouth and Rogers.
CONCLUSION
Neither rejection is sustained.
The decision of the examiner is reversed.
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REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA/lbg
Appeal No. 2003-0541
Application No. 09/645,845
Page 9
JOHN D. LISTER
3841 EAST DIAMOND AVENUE
MESA, AZ 85206
APPEAL NO. 2003-0541 - JUDGE ABRAMS
APPLICATION NO. 09/645,845
APJ ABRAMS
APJ NASE
APJ COHEN
DECISION: REVERSED
Prepared By: Lesley Brooks
GAU: 3700
OB/HD
3 MEM CONF Y N
DRAFT TYPED: 15 Apr 04
FINAL TYPED: