Ex Parte Mccarthy

Board of Patent Appeals and Interferences

Aug 31, 2004

09302714 (B.P.A.I. Aug. 31, 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for publication and is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL PATRICK McCARTHY
____________
Appeal No. 2004-1920
Application No. 09/302,714
____________
ON BRIEF
____________
Before COHEN, ABRAMS, and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-20,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2004-1920
Application No. 09/302,1999
Page 2
BACKGROUND
The appellant's invention relates to an impact tool in combination with a hollow
pole. An understanding of the invention can be derived from a reading of exemplary
claim 1, which appears in the appendix to the Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Moeller 2,572,370 Oct. 23, 1951
Pesaturo 2,759,486 Aug. 21, 1956
De Rosa et al. (De Rosa) 4,836,232 Jun. 6, 1989
Reed et al. (Reed) 4,920,897 May 1, 1990
The following rejections stand under 35 U.S.C. § 103(a):
(1) Claims 1, 6-13, 16, 17, 19 and 20 on the basis of Moeller in view of De Rosa and
Pesaturo.
(2) Claims 1-5, 13-15 and 18 on the basis of De Rosa in view of Pesaturo and Moeller.
(3) Claim 18 on the basis of De Rosa in view of Pesaturo, Moeller and Reed.
(4) Claims 1-17, 19 and 20 on the basis of Pesaturo in view of De Rosa and Moeller.
(5) Claim 18 on the basis of Pesaturo in view of De Rosa, Moeller and Reed.
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. 24) for the examiner's reasoning in support of the rejections, and to the Brief
(Paper No. 23) and Reply Brief (Paper No. 25) for the appellant's arguments
thereagainst.
Appeal No. 2004-1920
Application No. 09/302,1999
Page 3
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. As a consequence
of our review, we make the determinations which follow.
The appellant’s invention relates to a means for driving a hollow pole, such as
those used to support beach umbrellas, into the ground, and removing it from the
ground. Claim 1 is directed to the combination of an impact tool with a hollow pole. The
claim recites a hollow pole and a ring member having top and bottom surfaces and an
annular outer circumference mounted on the mid-section of the pole. It also recites an
impact tool comprising a cylindrically shaped sleeve having open ends defining a center
channel having an annular circumference greater than that of the annular ring, and first
and second weight members mounted within the center channel on opposed sides of
the annular ring member such that the first and second weight members can impact the
top and bottom surfaces of the annular ring member when the sleeve is moved in
downward strokes or upward strokes to cause the pole to be moved into or out of the
ground.
Appeal No. 2004-1920
Application No. 09/302,1999
Page 4
(1)
The first of the examiner’s rejections is that independent claims 1 and 13 and
dependent claims 6-12, 16, 17, 19 and 20 are unpatentable over Moeller in view of De
Rosa and Pesaturo.
The examiner finds all of the subject matter recited in claim 1 to be disclosed or
taught by Moeller, except for using the impact tool to insert into or remove from the
ground a closed, pointed, hollow pole such as those used on beach umbrellas.
However, the examiner has taken the position that it would have been obvious to so
utilize the Moeller impact device in view of the teachings of De Rosa and Pesaturo. 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).
Appeal No. 2004-1920
Application No. 09/302,1999
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Applying this guidance to the situation at hand leads us to conclude that this rejection of
claim 1 cannot be sustained. Our reasoning follows.
Moeller discloses a hammer 6 in combination with a stem 5. The objective of the
invention is to provide “a tool for performing pulling, driving or rotating operations” on
the stem (column 1, lines 1-4). An attachment screw 12 is provided at the end of the
stem to allow the element which is to be pulled, driven or rotated to be attached to the
stem, and a boss 9 is fixedly attached about the mid-portion of the stem. Boss 9 is not
annular, but has a flat area 11 (Figure 3). Hammer 6 comprises a sleeve-like member
having a hand-grasping cylindrical part 14 with an annular flange 16 at its upper end, a
passage 18 through its center, and a lower end that includes an inward-facing shoulder
19. Passage 18 terminates at its upper end in internal threads 17 that receive the
threads of a removable stop collar 7 which is provided with a bottom edge surface 26.
Passage 18 is not annular, but has a flat side 20 that cooperates with flat area 11 of
boss 9 to cause the hammer and the stem to be locked together when the hammer is
rotated but slidable when the hammer is moved longitudinally. With collar 7 removed,
hammer 6 is slipped over stem 8, whereafter the collar is screwed into place to anchor
the hammer on the stem.
In operation, pushing force is applied to stem 8 by sliding hammer 6 downwardly
until shoulder 26 of stop collar 7 impacts the upper face of flange 16, pulling force is
applied by sliding hammer 6 upwardly until the upper surface of inward-facing shoulder
Appeal No. 2004-1920
Application No. 09/302,1999
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19 impacts the lower surface of flange 16, and rotating force is applied by twisting
hammer 6, thus causing the stem to be rotated by the mated flats 11 and 20.
In the Moeller device, the boss attached to the stem is provided with a flat area,
and thus it is not annular, as is required by claim 1. However, it is the examiner’s view
that it would have been obvious to one of ordinary skill in the art to modify Moeller by
removing this flat area from the boss and presumably from the center passage of the
hammer because the omission of an element and its function “involves only routine skill
in the art” (Answer, page 5). In the present case, we cannot agree.
An object of the Moeller invention is “to provide a side percussion tool that is
equally effective for driving operations, for pulling operations and for rotating operations”
(column 1, lines 18 and 19; emphasis added). To modify the Moeller device in
accordance with the examiner’s instructions would eliminate a key feature of the
invention, which in our view would operate as a disincentive for one of ordinary skill in
the art to make the proposed modification. 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. In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). We fail to perceive any teaching, suggestion or incentive
which would have led one of ordinary skill in the art to remove from the Moeller device
the flats that enable rotating operation, other than the hindsight afforded one who first
viewed the appellant’s disclosure, which cannot form the basis for a rejection under
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Application No. 09/302,1999
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Section 103. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992). This problem is not alleviated by consideration of the teachings of De Rosa and
Pesaturo.
The examiner also has taken the position that Moeller meets the requirements in
claim 1 that the impact tool comprise a cylindrically shaped hammer sleeve having open
ends within which first and second weight members are mounted. In order to arrive at
this conclusion, the examiner has found that there is in Moeller a first weight member
comprising the annular flange 16 that forms the upper portion of hammer 6 taken
together with removable stop collar 7, a second weight member comprising the
“cylindrical area [of hammer 6] below plane of surface [shoulder] 19,” and a cylindrically
shaped sleeve that comprises passage 18 in hammer 6 plus an extension of passage
18 which passes through the portion of the weight that defines shoulder 19 (Answer,
page 3). In other words, the examiner has divided hammer 6 into several pieces and
has created from the disclosed one-piece hammer another separate element in order to
define elements that will meet the limitations of claim 1. From our perspective, this
contrived reading of the claim language on the Moeller device can be accomplished only
by means of hindsight.
For the reasons expressed above, it is our conclusion that the teachings of
Moeller taken in view of those of De Rosa and Pesaturo fail to establish a prima facie
Appeal No. 2004-1920
Application No. 09/302,1999
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case of obviousness with regard to the subject matter recited in claim 1, and we will not
sustain this rejection of independent claim 1 or of claims 6-12, which depend therefrom.
Since independent claim 13 contains the same limitations, we also will not
sustain this rejection of claim 13 and dependent claims 16, 17, 19 and 20.
(2)
The examiner further has rejected independent claims 1 and 13, along with
dependent claims 2-5, 14, 15 and 18, as being unpatentable over De Rosa in view of
Pesaturo and Moeller. In this rejection the examiner finds all of the subject matter
recited in claims 1 and 13 to be disclosed by De Rosa, except for the impact means,
and takes the position that it would have been obvious to use an impact means to drive
an umbrella pole in view of Pesaturo, and to utilize the impact means disclosed by
Moeller to do so. While the order of the references in this rejection differs from that of
the first rejection of claims 1 and 13, the individual references are relied upon for the
same teachings. In particular, as was the case in the first rejection of claims 1 and 13,
Moeller is deficient insofar as disclosing the impact means required by claim 1, and the
present rejection cannot be sustained for the same reasons we advanced above against
the first.
This rejection is not sustained.
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Application No. 09/302,1999
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(3)
Claim 18, which depends from claim 13, additionally has been rejected as being
unpatentable over De Rosa in view of Pesaturo and Moeller as cited against claim 13,
taken further in view of Reed, which is applied for teaching an umbrella having a table
attached to the pole. Be that as it may, Reed fails to alleviate the deficiencies in Moeller
with regard to the construction of the impact tool, and therefore this rejection cannot be
sustained.
(4)
A third rejection of independent claims 1 and 13 is based upon Pesaturo in view
of De Rosa and Moeller. Again, the references are applied for the same teachings as in
the other two rejections of these claims, and Moeller suffers from the same problems.
The rejection of claims 1-17, 19 and 20 on this basis is not sustained.
(5)
We reach the same conclusion, on the same basis, with regard to the rejection of
claim 18 as being unpatentable over Pesaturo in view of De Rosa and Moeller, taken
further in view of Reed.
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CONCLUSION
None of the rejections is sustained.
The decision of the examiner is reversed.
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
NEA:pgc
Appeal No. 2004-1920
Application No. 09/302,1999
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LARSON AND LARSON
11199 69TH STREET NORTH
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