Ex Parte Morrison

Board of Patent Appeals and Interferences

Apr 14, 2005

10182886 (B.P.A.I. Apr. 14, 2005)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte MICHAEL JOSEPH MORRISON

Appeal No. 2005-0901
Application No. 10/182,886

ON BRIEF

Before CAROFF, KIMLIN and PAWLIKOWSKI, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-3,
12, 15 and 21. Claims 1 and 21 are illustrative:
1. A soil manipulating tool for manipulating soil, including;
a soil penetrating portion comprising a helical or spiral
member;
the helical or spiral member having an inner surface
defining a substantially cylindrical cavity in which a plug of
soil can locate, the cavity extending substantially the entire
length of the soil penetrating portion; and
the helical or spiral configuration of the soil penetrating
portion having a substantially constant amplitude along the soil
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Application No. 10/182,886
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penetrating portion and the soil penetrating portion having a tip
which terminates on the constant amplitude without extending into
the cavity,
said helical or spiral member being a free-standing,
unsupported member.
21. A soil manipulating tool for manipulating soil, including:
a soil penetrating portion comprising a helical or spiral
member;
the helical or spiral member having an inner surface
defining a substantially cylindrical cavity in which plug of soil
can locate, the cavity extending substantially the entire length
of the soil penetrating portion, said helical or spiral member
being a free-standing, unsupported member; and
wherein the helical or spiral member has a pitch or
wavelength at a portion of the helical or spiral member which is
greater than the remainder of the pitch or wavelength of the
helical or spiral member so as to create a spring effect at the
portion of greater pitch or wavelength.
The examiner relies upon the following references in the
rejections of the appealed claims:
Bracewell 4,942,932 Jul. 24, 1990
Reinhardt 5,454,435 Oct. 3, 1995
Appellant's claimed invention is directed to a soil
manipulating tool comprising a helical or spiral member having an
inner surface that defines a substantially cylindrical cavity in
which a plug of soil can locate. Claim 1 recites that the soil
penetrating portion of the tool has a tip which terminates on the
constant amplitude of the helical configuration without extending
into the cavity, while claim 21 recites that the helical member
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Application No. 10/182,886
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has a pitch or wavelength at a portion of the member which is
greater than the pitch or wavelength at the remainder of the
member. The portions of the member having a different pitch or
wavelength create a spring effect at the portion having the
greater pitch or wavelength. According to appellant, the
cylindrical cavity of the helical member "enables the tool to be
wound into soil and pulled directly out of the soil so a plug of
soil is located within the cavity" (page 2 of principal brief,
second paragraph). Appellant also relates that "when used to
aerate soil around a small seedling or the like, the tool can be
wound into the soil so that it extends about the root structure
of the seedling and does not damage the seedling as the tool is
wound into the soil" (id.).
Appealed claim 1 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Reinhardt. Claims 2, 3, 12, 15 and 21 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Reinhardt in view of Bracewell.
We have thoroughly reviewed the respective positions
advanced by appellant and the examiner. In so doing, we find
that the examiner's rejections are without the requisite factual
support. Accordingly, we will not sustain the examiner's
rejections.
Appeal No. 2005-0901
Application No. 10/182,886
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We consider first the examiner's rejection of claim 1 under
§ 102 over Reinhardt. Although Reinhardt, like appellant,
discloses a soil manipulating tool comprising a helical or spiral
member, we agree with appellant that the tool of Reinhardt fails
to comprise two of the features recited in claim 1. In order to
support a rejection under § 102, a reference must clearly
describe all the features of the claimed invention. In the
present case, we agree with appellant that Reinhardt does not
clearly describe a helical member having an inner surface
defining a substantially cylindrical cavity in which a plug of
soil can locate. The narrative of Reinhardt fails to describe
such a feature, and it is not clear from the figures of Reinhardt
that the windings of the tool are not extremely tight and define
no cavity at all. The examiner has not explained how the
diameter D2 of the tool's shaft necessarily requires a
cylindrical cavity of the type claimed.
We also concur with appellant that Figure 3 of Reinhardt,
relied upon by the examiner, fails to show the claimed tip of the
helical member which terminates on the constant amplitude without
extending into the cavity. As explained by appellant at page 2
of the Reply Brief, "when a straight line is drawn at the
constant amplitude [on Figure 3], the tip 20 is short of reaching
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Application No. 10/182,886
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the line." Also, Reinhardt provides no teaching that the tip of
the helical member terminates on the constant amplitude without
extending into the cavity of the member.
Accordingly, it cannot be said that Reinhardt describes the
element of claim 1 within the meaning of § 102.
As for the § 103 rejection, Bracewell does not cure the
deficiencies of Reinhardt discussed above. In addition, we
concur with appellant that Bracewell does not evidence the
obviousness of modifying the tool of Reinhardt such that it has a
means for increasing the size of the bore created by the soil
penetrating portion of the tool (claim 12) or has portions having
a greater pitch or wavelength to create a spring effect. While
the auger drilling system of Bracewell has portions of different
pitch or wavelength to stabilize the bore wall by compressing the
tailings against the bore wall, we agree with appellant that the
examiner has not provided any satisfactory explanation how such a
compression would necessarily result in an increasing of the size
of the bore. Furthermore, as urged by appellant, the flights 4
of Bracewell are welded to the stem 6, and the examiner has not
set forth how such a modification would have been implemented in
the tool of Reinhardt. Also, as submitted by appellant "it would
appear that such springing or oscillating movement is totally
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Application No. 10/182,886
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contrary to the teaching in Bracewell and would result in
Bracewell not operating in the manner described" (page 4 of Reply
Brief, last paragraph). Since the flights 4 of Bracewell are
welded to central stem 6, and the tool of Reinhardt has no
central stem, the examiner's rejection is based more upon what
one of ordinary skill in the art could have done rather than what
the teachings of the cited art would have suggested to one of
ordinary skill in the art.
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
MARC L. CAROFF )
Administrative Patent Judge )
)
)
)
)
EDWARD C. KIMLIN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
BEVERLY PAWLIKOWSKI )
Administrative Patent Judge )
ECK:clm
Appeal No. 2005-0901
Application No. 10/182,886
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