Ex Parte Mancuso et al

Board of Patent Appeals and Interferences

Aug 20, 2004

09954766 (B.P.A.I. Aug. 20, 2004)

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for publication and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANTHONY J. MANCUSO and KEVIN GERACE
____________
Appeal No. 2004-1602
Application No. 09/954,766
____________
ON BRIEF
____________
Before GARRIS, WALTZ, and JEFFREY T. SMITH, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1 through 12, which are all of the claims
pending in this application (see the Brief, page 2). We have
jurisdiction pursuant to 35 U.S.C. § 134.
According to appellants, the invention is directed to a free-
standing coil reel hold-down device which comprises a base plate
secured to a floor, a snubber arm pivotably mounted to the base
plate including first and second sections disposed at an obtuse
angle with respect to each other, and a stand-alone means for
Appeal No. 2004-1602
Application No. 09/954,766
2
effecting a pivoting movement of the snubber arm relative to the
base plate (Brief, page 2).
Appellants state that the claims do not stand or fall together
(Brief, page 3). Appellants present reasonably specific,
substantive reasons for the separate patentability of several
claims (e.g., see the Brief, pages 8-9; Answer, page 2, ¶(7)). We
consider these claims separately to the extent appellants have
presented arguments for any individual claims. See 37 CFR
§ 1.192(c)(7)(2000); and In re McDaniel, 293 F.3d 1379, 1383,
63 USPQ2d 1462, 1465 (Fed. Cir. 2002). Representative independent
claim 1 is reproduced below:
1. A free-standing coil reel hold-down device, comprising:
a base plate operatively arranged to be secured to a floor;
a snubber arm pivotably mounted to said base plate and
arranged for pivoting rotation about a pivot point, said snubber
arm including a first section and a second section disposed at an
obtuse angle with respect to one another; and,
a stand-alone means for effecting a pivoting movement of said
snubber arm relative to said base plate.
The examiner has relied upon the following prior art as
evidence in support of the rejections on appeal:
Orii 4,589,605 May 20, 1986
Rodriguez et al. (Rodriguez) 5,330,119 Jul. 19, 1994
Appeal No. 2004-1602
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Claims 1-3, 6 and 10 stand rejected under 35 U.S.C. § 102(b)
as anticipated by Rodriguez (Answer, page 4). Claims 4-5 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Rodriguez in
view of Orii (id.). Claims 7-9, 11 and 12 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Rodriguez (Answer, page 5).
We affirm all of the rejections on appeal essentially for the
reasons stated in the Answer and those reasons set forth below.
OPINION
A. The Rejection under § 102(b)
The examiner finds that Rodriguez discloses a free-standing
coil reel hold-down device 266 comprising a base plate 268 secured
to floor 42, a pivotal snubber arm 270 mounted to the base plate,
with the snubber arm 270 having two sections disposed at an obtuse
angle with respect to each other, and a stand-alone means 274 for
effecting a pivoting movement of the snubber arm relative to the
base plate (Answer, page 4, citing Figure 9 of Rodriguez as well as
col. 10, ll. 6-7, 9-11 and 11-14).
Appellants argue that Rodriguez does not contain each and
every element of the claimed invention (Brief, page 4).
Specifically, appellants argue that Rodriguez does not disclose a
“Snubber Arm Including a First Section and a Second Section” as
required by claim 1 since the reference features a one-piece
Appeal No. 2004-1602
Application No. 09/954,766
1See Webster’s II, New Riverside University Dictionary, p.
1055, The Riverside Publishing Co., 1984 (a copy of this page is
attached to this decision).
4
bellcrank arm 270 (id.). Appellants submit that this one-piece
construction makes it impossible to have an obtuse angle in the
arm of Rodriguez, and the relatively short length of the one-piece
bellcrank arm results in a snubber contacting the coil on the side,
not the top as in appellants’ invention (Brief, pages 4-5 and 7).
These arguments are not persuasive. As correctly construed by
the examiner (Answer, page 7), the term “section” as recited in
claim 1 on appeal does not limit the snubber arm to any number of
pieces since even a one-piece construction could have multiple
sections. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023,
1027 (Fed. Cir. 1997)(“the PTO applies to the verbiage of the
proposed claims the broadest reasonable meaning of the words in
their ordinary usage as they would be understood by one of ordinary
skill in the art,” when read in light of the specification).
Appellants’ specification does not define “sections” as separate
pieces (see the specification, pages 7 and 9). Giving the ordinary
meaning to the word “section,” which is “[a] part or piece of
something,” there is no limitation that each section must be a
separate piece.1 In other words, appellants are arguing
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limitations that are not recited in the claims, namely the claims
do not recite that the snubber arm is constructed of two separate
pieces. See In re Huang, 100 F.3d 135, 139, 40 USPQ2d 1685, 1688
(Fed. Cir. 1996). Furthermore, as clearly shown by Figure 9 of
Rodriguez, the snubber arm has two sections at an obtuse angle with
respect to each other (see the bellcrank arm 270 with an unnumbered
pivotal point establishing two sections). Finally, we note that
claim 1 on appeal does not recite whether the snubber contacts the
coil on the side or the top, and thus appellants are again arguing
limitations not found in the claim.
Appellants also argue that Rodriguez does not disclose the
claimed element of “Effecting a Pivoting Movement of Said Snubber
Arm Relative to said Base Plate” but teaches bellcrank arm 270 is
pivotally mounted at a point intermediate its ends on a flange 276
(Brief, pages 5-6). Appellants further argue that Rodriguez does
not disclose “A Stand-Alone Means For Effecting a Pivoting
Movement” as required by claim 1 on appeal (Brief, page 6).
These arguments are not persuasive. As correctly noted by the
examiner (Answer, page 7), the exact location of the pivot point is
not recited in claim 1 on appeal. Accordingly, this argument is to
no avail since it concerns limitations not found in claim 1 on
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Application No. 09/954,766
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appeal. See In re Huang, supra. As further noted by the examiner
(id.), the snubber of Rodriguez is mounted to a floor separate
from but adjacent to the arbor holding the coil and thus is “free-
standing.” It is noted that the snubber of Rodriguez is in the
same position as disclosed by appellants, i.e., it is not
“integral” with the coil and thus “free-standing” as defined by
appellants’ specification (specification, page 6, ll. 9-13). See
In re Morris, supra.
Appellants argue that the Exhibit 1 demonstration makes
apparent the additional functional benefits derived from the
structural features of the present invention (Brief, page 7). This
argument is not well taken since unexpected results are not
relevant to this rejection based on section 102(b). See In re
Malagari, 499 F.2d 1297, 1302, 182 USPQ 549, 553 (CCPA 1974).
Furthermore, appellants have not established that the Exhibit 1
demonstration involves the same device as now claimed.
Other than reiterating the limitations of claims 2, 3, 6 and
10, appellants’ sole argument with respect to these dependent
claims is that there is no teaching in Rodriguez regarding the
length of the bellcrank arm 270, as required by claim 10 on appeal
(Brief, page 8). As correctly found by the examiner, one section
of the bellcrank arm 270 is “approximately” three times the length
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Application No. 09/954,766
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of the second section, noting that claim 10 does not specify which
section is first or second (Answer, page 4, citing Figure 9 of
Rodriguez). We note that terms of degree such as “approximately”
allow for some latitude on either side of the recited value. See
Eiselstein v. Frank, 52 F.3d 1035, 1040, 34 USPQ2d 1467, 1471 (Fed.
Cir. 1995); and In re Woodruff, 919 F.2d 1575, 1577, 16 USPQ2d
1934, 1936 (Fed. Cir. 1990).
For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established that each and every
limitation of the claims is described by Rodriguez within the
meaning of section 102(b). Accordingly, we affirm the rejection
of claims 1-3, 6 and 10 under section 102(b) over Rodriguez.
B. The Rejections under § 103(a)
With regard to the rejection of claims 7-9 and 11-12 over
Rodriguez (Answer, page 5), appellants present the same arguments
with respect to Rodriguez as well as arguing the teachings of Orii
(Brief, page 12). However, Orii has not been applied against
claims 7-9 and 11-12. Therefore appellants’ argument regarding the
“combination of prior art references” is not well taken (Brief,
page 13).
Appellants argue that the examiner has failed to appreciate
the significance of the particular angle between sections of the
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arm and the particular amount of pivoting movement (Brief, page
12). However, as discussed above with respect to the rejection
under section 102(b), Rodriguez teaches an obtuse angle between
sections of the bellcrank arm 270, as well as pivotal movement (see
Figure 9). We note that appellants have failed to establish any
criticality for the particular values of the obtuse angle or the
amount of pivotal movement. See In re Woodruff, supra.
With regard to the rejection of claims 4 and 5, appellants
argue that even if Orii teaches a snubber in the form of a roller,
this reference cannot cure the deficiencies of Rodriguez (Brief,
paragraph bridging pages 9-10). This argument is not persuasive
for reasons discussed above.
Appellants argue that Rodrigues “teaches away” from the
present invention by requiring a plurality of large diameter coils
placed in a fixed feeding position (Brief, page 10). This argument
is not well taken since claims 4 and 5 do not exclude any of these
limitations, and appellants have not demonstrated how this
disclosure of Rodriguez “teaches away” from the invention as
claimed.
Appellants argue that Orii is directed to uncoiling a reel
which “teaches away” from the coil reel hold down device of the
present invention, and further this reference fails to disclose a
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bisectional arm with an obtuse angle and stand-alone means (Brief,
page 10). These arguments are not well taken since, as noted by
the examiner (Answer, page 9), Orii is directed to the same type of
device as claimed by appellants and disclosed by Rodriguez, namely
a coil reel hold down device. Appellants’ argument that Orii does
not contain all the claimed features is misplaced since the test
for obviousness is not what each reference discloses or suggests
but what the combined teachings of the prior art references would
have suggested to one of ordinary skill in the art. See In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Finally, appellants argue that the affidavit under 37 CFR
§ 1.132 shows secondary evidence of commercial success and thus
necessitates a conclusion that the invention is not obvious
(Brief, pages 10-11 and 13). This evidence is not convincing nor
sufficient to rebut the prima facie case of obviousness established
by the examiner since it merely consists of a sales report. See
In re Huang, 100 F.3d 135, 140, 40 USPQ2d 1685, 1689 (Fed. Cir.
1996)(“Evidence related solely to the number of units sold provides
a very weak showing of commercial success, if any. [Citation
omitted].”). Furthermore, appellants have not established that
these sales are significant, constituting a significant share of
the market, and are due only to the unique characteristics of the
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claimed invention. See In re Huang, supra. Finally, we note that
these sales figures were only shown for one month in each of two
years.
For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established a prima facie case of
obviousness based on the reference evidence. Based on the totality
of the record, including due consideration of appellants’ arguments
and evidence, we determine that the preponderance of evidence
weighs most heavily in favor of obviousness within the meaning of
section 103(a). Accordingly, we affirm both rejections on appeal
based on section 103(a).
C. Summary
The rejection of claims 1-3, 6 and 10 under 35 U.S.C. § 102(b)
over Rodriguez is affirmed. The rejection of claims 4-5 under
35 U.S.C. § 103(a) over Rodriguez in view of Orii is affirmed. The
rejection of claims 7-9 and 11-12 under 35 U.S.C. § 103(a) over
Rodriguez is affirmed.
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No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2004-1602
Application No. 09/954,766
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