Ex Parte Marcoz

Board of Patent Appeals and Interferences

Mar 27, 2009

11246869 (B.P.A.I. Mar. 27, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JAMES R. MARCOZ
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Appeal 2009-0100
Application 11/246,869
Technology Center 3700
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Decided:1 March 27, 2009
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Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0100
Application 11/246,869

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The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).

The Invention
The Appellant claims an apparatus for assisting in turning the handle
of a spigot. Claim 1 is illustrative:
1. An apparatus for assisting in turning the handle of a spigot, said
apparatus comprising:
(a) a first substantially flat member having a first
predetermined shape and made of a predetermined material, said
first member having a plurality of apertures disposed therein;
(b) a second member made of a second predetermined material
having a second predetermined shape and engageable with said
first member adjacent an outer edge thereof, said second member
disposed at substantially a right angle to said first member;
and
(c) a means engageable with said first member and such
handle for attaching said first member to such handle of such
spigot.
The References
Hayes 4,036,205 Jul. 19, 1977
Grant 4,266,320 May 12, 1981
Ensign 4,865,078 Sep. 12, 1989
Ballonez 5,607,127 Mar. 4, 1997
Clark 6,293,515 B1 Sep. 25, 2001
Jacobsen 6,662,821 B2 Dec. 16, 2003
Fortino 6,908,068 B2 Jun. 21, 2005
The Rejections
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Application 11/246,869

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The claims stand rejected as follows: claims 1, 2, 5, and 15 under
35 U.S.C. § 102(b) over Grant; claims 1, 5, 15, and 16 under
35 U.S.C. § 102(b) over Jacobsen; claims 3 and 4 under 35 U.S.C. § 103
over Grant in view of Fortino; claims 6, 7, 9, 17, and 18 under
35 U.S.C. § 103 over Grant in view of Ballonez; claim 8 under
35 U.S.C. § 103 over Grant in view of Ballonez and Clark; claims 10 and 19
under 35 U.S.C. § 103 over Grant in view of Ballonez and Hayes; and
claims 11-14 and 20 over Grant in view of Ensign.
OPINION
The rejections of claims 1, 2, 5, and 15 under 35 U.S.C. § 102(b) over
Grant, claims 6, 7, 9, 17, and 18 under 35 U.S.C. § 103 over Grant in view
of Ballonez, claims 10 and 19 under 35 U.S.C. § 103 over Grant in view of
Ballonez and Hayes, and claims 11-14 and 20 under 35 U.S.C. § 103 over
Grant in view of Ensign are affirmed. The rejections of claims 1, 5, 15,
and 16 under 35 U.S.C. § 102(b) over Jacobsen, claims 3 and 4 under
35 U.S.C. § 103 over Grant in view of Fortino, and claim 8 under
35 U.S.C. § 103 over Grant in view of Ballonez and Clark are reversed.
Rejection of claims 1, 2, 5 and 15 under
35 U.S.C. § 102(b) over Grant
The Appellant argues claims 1, 2, 5, and 15 as a group (Ans. 6-7). We
therefore limit our discussion to one claim in that group, i.e., claim 1, which
is the sole independent claim among those claims. Claims 2, 5, and 15 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Grant discloses, expressly or inherently, a second member
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engagable with a first substantially flat member adjacent an outer edge
thereof?
Findings of Fact
The Examiner relies upon Grant’s member 36 as corresponding to the
Appellant’s first substantially flat member, and Grant’s shank portion 37 as
corresponding to the Appellant’s second member (col. 3, l. 42; Fig. 2).
Analysis
“Anticipation requires that every limitation of the claim in issue be
disclosed, either expressly or under principles of inherency, in a single prior
art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868
F.2d 1251, 1255-56 (Fed. Cir. 1989).
The Appellant argues that Grant’s shank portion 37 is in the center of
member 36, not adjacent to an outer edge thereof, and must be in the center
or the apparatus would be unwieldy and inoperative (Br. 7).
“[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification.” See In re
Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (quoting In re
Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000)). The Appellant’s Specification
does not define “adjacent”. We therefore use the ordinary meaning of that
term, which is “not distant: NEARBY ”.2 Grant’s
shank portion 37 is nearby or not distant from the long edge of member 36
(Fig. 2). There is a small amount of member 36 material between shank
portion 37 and the edge of member 36 (Fig. 2), but that amount of material

2 Webster’s New Collegiate Dictionary 15 (G. & C. Merriam 1973).
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appears to be comparable to the amount of material between the Appellant’s
second member 6 and the edge of first substantially flat member 2 (Figs. 1,
2). Hence, Grant’s shank portion 37 is adjacent to an outer edge of
member 36 as the term “adjacent” is used by the Appellant.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that Grant discloses, expressly or inherently, a second member
engagable with a first substantially flat member adjacent an outer edge
thereof.
Rejection of claims 6, 7, 9, 17, and 18 under
35 U.S.C. § 103 over Grant in view of Ballonez
The Appellant relies, regarding the rejection of claims 6, 7, 9, 17, and
18 under 35 U.S.C. § 103 over Grant in view of Ballonez, upon the same
argument set forth with respect to claim 1 (Ans. 11-12). For the reasons
given above regarding the rejection of claim 1, that argument does not
convince us of reversible error in the Examiner’s rejection.
Rejection of claims 10 and 19 under 35 U.S.C. § 103
over Grant in view of Ballonez and Hayes
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a double faced adhesive and a
plurality of strapping ties disposed through a plurality of apertures in Grant’s
member 36 for fastening member 36 to handle 18?
Findings of Fact
Ballonez discloses clamp fasteners 39 that extend through openings in
a pipe clamp flange and engage corresponding openings in pipe clamp 38,
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and teaches that other connectors could also be used such as “bent wire
fasteners, adjustable plastic ties, U-bolts, adhesives and spot welds” (col. 3,
ll. 7-14).
Hayes uses double faced adhesive tape to receive a fiberglass strip and
thereby seal off a fireplace opening from a room to be heated (col. 3, ll. 22-
25).
Analysis
The Appellant argues (Br. 13-14):
Applicant again must point out that the Grant reference which
is the primary reference in the rejection since Ballonez is only used to
suggest that other means beside nuts and bolts can be used to attach
such first member to the handle still does not teach the present
invention. Hayes is only used to indicate that double faced tape can
be used to attach a fiberglass strip in a fireplace stove. The reference
of Hayes which relates to a fireplace stove is hardly analogous art.

The Appellant’s argument appears to be that Ballonez and Hayes do
not remedy the alleged deficiency in Grant, and Hayes is nonanalogous art.
As pointed out above regarding the rejection of claim 1, the alleged
deficiency in Grant does not exist.
As for the nonanalogous art argument, the test of whether a reference
is from an analogous art is first, whether it is within the field of the
inventor’s endeavor, and second, if it is not, whether it is reasonably
pertinent to the particular problem with which the inventor was involved.
See In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). A reference is
reasonably pertinent if, even though it may be in a different field of
endeavor, it is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s attention in
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considering the inventor’s problem. See In re Clay, 966 F.2d 656, 659 (Fed.
Cir. 1992). The Appellant’s mere statement that Hayes “is hardly analogous
art” (Br. 15) does not provide a substantive argument as to why Hayes is not
in the Appellant’s field of endeavor and is not reasonably pertinent to the
problem with which the Appellant was involved.
Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, a double faced adhesive and a
plurality of strapping ties disposed through a plurality of apertures in Grant’s
member 36 for fastening member 36 to handle 18.
Rejection of claims 11-14 and 20 under 35 U.S.C. § 103
over Grant in view of Ensign
The Appellant argues that Ensign does not remedy the alleged
deficiency in Grant (Br. 15-16). Thus, the Appellant appears to be relying
upon the same argument set forth with respect to claim 1. For the reasons
given above regarding the rejection of claim 1, that argument does not
persuade us of reversible error in the Examiner’s rejection.
Rejection of claims 1, 5, 15, and 16 under
35 U.S.C. § 102(b) over Jacobsen
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Jacobsen discloses, expressly or inherently, a second
member engagable with a first substantially flat member adjacent an outer
edge thereof?

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Findings of Fact
The Examiner relies upon Jacobsen’s coupler 120 as corresponding to
the Appellant’s first substantially flat member, and Jacobsen’s square drive
socket 130 as corresponding to the Appellant’s second member (Ans. 3-4).
Analysis
The Appellant argues that Jacobsen’s square drive socket 130 engages
coupler 120 substantially at its center, not adjacent to an outer edge thereof
(Br. 8-9).
The Examiner argues (Ans. 8):
Adjacent has been defined as “near or close to but not
necessarily touching”. As can be seen in Jacobsen et al. in Figure 1,
the second member [is] adjacent an outer edge of the first member
with the second member being close to the outer edge of the first
member.

In Jacobsen’s Figure 1, square drive socket 130 appears to be attached
to the center of circular-shaped coupler 120. If, as argued by the Examiner
(Ans. 8), an attachment at the center of a circular piece is adjacent to an
outer edge thereof, then because other points on the circular piece are closer
than the center to the edge, any point on the circular piece is adjacent to an
outer edge thereof. That is not a reasonable interpretation of the term
“adjacent”.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that Jacobsen discloses, expressly or inherently, a second
member engagable with a first substantially flat member adjacent an outer
edge thereof.
Rejection of claims 3 and 4 under 35 U.S.C. § 103
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over Grant in view of Fortino
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, making Grant’s member 36
substantially ovate?
Findings of Fact
Fortino discloses “a valve closure system and assembly for promptly
and automatically closing tank valves, especially tank valves of railway tank
cars” (col. 1, ll. 17-19). The valve closure assembly (50) includes bracket 68
to which handle 74 is fastened (col. 4, ll. 3, 16-19). Handle 74 is grasped to
position valve closure assembly 50 over protective housing 160 (Col. 6,
ll. 40-41; Fig. 38).
Analysis
The Appellant argues that Fortino’s bracket 68 is not ovate (Br. 10).
The Examiner argues (Ans. 8):
Ovate has been defined as “of a leaf shape; egg-shaped with the
broader end at the base”. As can been [sic: be] seen in Fortino et al.,
the plate has an upper rounded end with the lower end having a
broader end at the base.

Fortino’s bracket 68 has a broader end opposite a narrower rounded
end, but the broader end is flat (Fig. 2). Thus, bracket 68 is not egg-shaped
(or leaf shaped) according to the Examiner’s definition of “ovate”.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
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obvious, to one of ordinary skill in the art, making Grant’s member 36
substantially ovate.
Rejection of claim 8 under 35 U.S.C. § 103
over Grant in view of Ballonez and Clark
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, three strapping ties disposed
through three apertures in Grant’s member 36 for fastening member 36 to
handle 18?
Findings of Fact
Clark discloses stub shaft 251 on one side of circular planar
portion 252 (col. 6, ll. 24-30; Fig. 5). On the other side of planar portion 252
are three tongs 253 that attach circular planar portion 252 to valve
handle 211 through valve handle holes 213 (col. 6, ll. 31-44; Fig. 5).
Analysis
The Appellant argues that Clark’s stub shaft 251 is at the center of
circular planar portion 252, not adjacent an outer edge thereof (Br. 13).
The Examiner argues that “Clark teaches the use of three attachment
means (tongs 253) to rotate a handle and operate a valve as shown in
figure 5” (Ans. 9).
As stated in KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41
(2007), establishing a prima facie case of obviousness of an invention
comprising a combination of known elements requires “an apparent reason
to combine the known elements in the fashion claimed”.
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The Examiner has not explained why one of ordinary skill in the art,
given Clark’s disclosure of stub shaft 251 attached at the center of circular
planar portion 252 when three tongs 253 are used to fasten planar
portion 252 to valve handle 211, would have modified Grant’s device such
that three strapping ties are used to fasten shank portion 37 to member 36,
yet shank portion 37 remains adjacent to an outer edge of member 36.
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that the applied references would have rendered prima facie
obvious, to one of ordinary skill in the art, three strapping ties disposed
through three apertures in Grant’s member 36 for fastening member 36 to
handle 18.
DECISION/ORDER
The rejections of claims 1, 2, 5, and 15 under 35 U.S.C. § 102(b) over
Grant, claims 6, 7, 9, 17, and 18 under 35 U.S.C. § 103 over Grant in view
of Ballonez, claims 10 and 19 under 35 U.S.C. § 103 over Grant in view of
Ballonez and Hayes, and claims 11-14 and 20 under 35 U.S.C. § 103 over
Grant in view of Ensign are affirmed. The rejections of claims 1, 5, 15, and
16 under 35 U.S.C. § 102(b) over Jacobsen, claims 3 and 4 under
35 U.S.C. § 103 over Grant in view of Fortino, and claim 8 under
35 U.S.C. § 103 over Grant in view of Ballonez and Clark are reversed.
It is ordered that the Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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PL Initial:
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