Ex Parte Natoli

Board of Patent Appeals and Interferences

Aug 26, 2009

11462764 (B.P.A.I. Aug. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MICHAEL E. NATOLI
____________

Appeal 2009-001607
Application 11/462,764
Technology Center 3700
____________

Decided: August 26, 2009
____________

Before LINDA E. HORNER, JOHN C. KERINS, and
MICHAEL W. O'NEILL, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Michael E. Natoli (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1, 2, 3, and 5. Claim 4 has been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is a wrench adapted to receive a
gas meter valve. Spec. 1:6-7. Claim 1, reproduced below, is representative
of the subject matter on appeal.
1. A tool for opening and closing a shut-off
valve of a gas meter, comprising:
an elongated member having a first end, a
second end, and a diagonal section that extends
between the first end and the second end; and
wherein at least one end has at least one slot
adapted to receive the shut-off valve.

THE EVIDENCE
The Examiner relies upon the following evidence:
Cleland US Des. 344,437 Feb. 22, 1994
Mobile US 5,425,292 Jun. 20, 1995
Tuanmu US Des. 486,366 S Feb. 10, 2004
Russell US 2005/0150332 A1 Jul. 14, 2005

THE REJECTIONS
The Appellant seeks review of the following decisions by the
Examiner:
1. Rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Cleland and Tuanmu.
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2. Rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Cleland and Mobile.
3. Rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) as
unpatentable over Cleland and Russell.

ISSUES
First Rejection
The Examiner concluded it would have been obvious to a person of
ordinary skill in the art to modify Cleland’s device by forming a diagonal
section between the first and second ends of the tool “to provide the
ornamental design as taught by Tuanmu or to allow for the application of
added torque as inherently taught by Tuanmu.” Ans. 3.
The Appellant contends there is no reason to combine the references
as proposed because Tuanmu’s shape does not inherently teach increased
leverage. Reply Br. 2-4.
The issue before us for the first rejection is:
Has the Appellant rebutted the Examiner’s conclusion of obviousness
by showing a person of ordinary skill in the art would not have been led to
combine Cleland’s wrench with Tuanmu’s diagonal section extending
between the first and second ends of the tool?
Second Rejection
In the second rejection, the Examiner found that Cleland discloses all
of the limitations of the claims except that Cleland does not disclose having
a diagonal section that extends between the first and second ends of the tool.
Ans. 3. The Examiner found that Mobile discloses a diagonal section that
extends between the first and second ends of the tool. Ans. 3. The
Examiner concluded it would have been obvious to a person of ordinary skill
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in the art to modify Cleland’s device by forming a diagonal section between
the first and second ends of the tool, as taught by Mobile, “to allow for the
application of added torque or leverage as taught by Mobile.” Ans. 3-4; see
also Ans. 6-7.
The Appellant argues claims 1-3 and 5 as a group. App. Br. 8-10. As
such, we select claim 1 as the representative claim, and claims 2, 3, and 5
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2008). The
Appellant argues that Mobile does not teach the claim limitation of a
diagonal section extending between the first and second ends of the tool.
App. Br. 9-10. The Appellant also makes four contentions in support of the
argument that there is no reason to combine the references as proposed.
First, the Appellant contends that Cleland does not have a need for the
placement of a shoe or foot against it to apply force. App. Br. 9. Second,
the Appellant contends that there is no indication that the use of the curved
surfaces of Mobile would enhance ornamental features. App. Br. 9. Third,
the Appellant argues that as a design patent, Cleland is concerned with
ornamental design and not function, so that the reference teaches away from
a modification to the reference based on functionality. Reply Br. 2. Fourth,
the Appellant contends that Mobile does not teach a diagonal section that
enhances leverage as claimed, but rather teaches a shape that allows an
individual to place their shoe against the tool to apply greater force. Reply
Br. 3.
The issues before us for the second rejection are:
Has the Appellant shown the Examiner erred in rejecting claim 1 as
unpatentable over Cleland and Mobile because the combined references do
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not teach or suggest a diagonal section extending between the first and
second ends of the tool?
Has the Appellant rebutted the Examiner’s conclusion of obviousness
by showing a person of ordinary skill in the art would not have been led to
combine Cleland’s wrench with Mobile’s diagonal section extending
between the first and second ends of the tool?
Third Rejection
The Examiner concluded it would have been obvious to a person of
ordinary skill in the art to modify Cleland’s device by forming a diagonal
section between the first and second ends of the tool, as taught by Russell
“to allow for the application of added torque as inherently taught by
Russell.” Ans. 4.
The Appellant contends there is no reason to combine the references
as proposed because Russell’s shape does not inherently teach increased
leverage. Reply Br. 2-4.
The issue before us for the third rejection is:
Has the Appellant rebutted the Examiner’s conclusion of obviousness
by showing a person of ordinary skill in the art would not have combined
Cleland’s wrench with Russell’s diagonal section extending between the first
and second ends of the tool?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
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1. Torque is the product of a force and a distance. This means that
torque is defined as a product of the force and the perpendicular
distance from the axis to the line of action of the force. See Henry
Semat, Ph.D. & Robert Katz, Ph.D. Physics, 57-58, Rinehart &
Co., Inc. 1958. Torque is equal to the force applied multiplied by
the distance from the point of rotation to the point on which the
force is acting (the torque arm).
2. Mobile discloses a wrench adapted to use with a plurality of
different size screws, nuts, and bolts, configured for both hand
gripping and foot assisted torquing. Mobile, col. 1, ll. 5-11.
3. Mobile discloses that the body 12 of the wrench device 10 has
substantially identical end portions 12a and 12b with finger grips
along marginal edges 32 and 34, opposite generally rectilinear
edges 36a, 36b which lie generally on the longitudinal center
axis 24 of the wrench body 12. Mobile, col. 2, ll. 7-10; col. 2, l. 67
to col. 3, l. 2; col. 3, ll. 8-12; fig. 1.
4. Substantially identical offset end portions 12a, 12b are joined at
concave edge surfaces 38a, 38b, so that a portion of the linear edge
surfaces 36a, 36b is merged to form a segment of the tool between
the two end portions that is at an angle to the longitudinal center
axis 24. Mobile, col. 3, ll. 12-16; fig. 1.
5. Mobile discloses that concave edge surfaces 38a, 38b provide a
reference surface to facilitate placement of the sole of the
operator’s shoe against either of rectilinear edges 36a and 36b to
permit greater application of force than is possible with hand
gripping. Mobile, col. 3, ll. 16-21; fig. 1.
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6. Cleland does not discuss, discourage, or discredit the notion of
creating an angle between ends of the tool. Cleland, passim.
7. Russell discloses a wrench configured particularly for securing a
ballcock valve assembly or water supply line for a toilet tank.
Russell 1, para. 0002.
8. Russell discloses that one or both ends 104, 106 of the wrench 100
may have a planar offset; however, Russell makes no disclosure
regarding the effect of the offset on torque produced by use of the
wrench. Russell 3, para. 0031.

PRINCIPLES OF LAW
The Appellant has the burden on appeal to the Board to demonstrate
error in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985-86
(Fed. Cir. 2006) (“On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
“The analogous-art test requires that the Board show that a reference
is either in the field of the applicant's endeavor or is reasonably pertinent to
the problem with which the inventor was concerned in order to rely on that
reference as a basis for rejection.” In re Kahn, 441 F.3d 977, 986-87 (Fed.
Cir. 2006) (citing In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992)).
"It is well settled that a prior art reference may anticipate when the
claim limitations not expressly found in that reference are nonetheless
inherent in it. Under the principles of inherency, if the prior art necessarily
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functions in accordance with, or includes, the claimed limitations, it
anticipates." In re Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir.
2002) (citations and internal quotation marks omitted). "Inherency,
however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient." In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations
and internal quotation marks omitted).
Once a prima facie case of anticipation has been established, the
burden shifts to the Appellant to prove that the prior art product does not
necessarily or inherently possess the characteristics of the claimed product.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.”). See also In re Spada,
911 F.2d 705, 708-09 (Fed. Cir. 1990). This is the case whether the
rejection is based on inherency under 35 U.S.C. § 102, prima facie
obviousness under 35 U.S.C. § 103, or both jointly or alternatively. See In
re Best, 562 F.2d at 1255.

ANALYSIS
Rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) as unpatentable over
Cleland and Tuanmu
We cannot sustain the Examiner’s conclusion that it would have been
obvious to a person of ordinary skill in the art to modify Cleland’s device by
forming a diagonal section between the first and second ends of the tool “to
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provide the ornamental design as taught by Tuanmu.” Ans. 3. The
Examiner makes no finding or findings that this reason to combine comes
from the references, from the knowledge of a person of ordinary skill in the
art, or from the nature of the problem to be solved. Ans. passim. Further,
the Examiner’s conclusion recites no benefit that would be apparent to a
person of ordinary skill in the art from the proposed combination. Ans.
passim. Keeping in mind that the Examiner’s alleged reason to combine is
rooted in altering the ornamental appearance of the Cleland device, and that
the Cleland patent, being a design patent, evinces a teaching of a particular
ornamental appearance, the Appellant’s contention that proposed changes to
the ornamental design would be undesired (Reply Br. 2) amounts to a
challenge to the Examiner to establish why the specific change proposed
would have been obvious to a person of ordinary skill in the art.
All the Examiner has provided is a circular rationale in stating that
Tuanmu’s ornamental design could be added to Cleland’s device in order to
add Tuanmu’s ornamental design. The Examiner’s reason to combine the
references here is nothing more than a conclusory statement of obviousness.
Particularly where, as here, an Appellant has called into question the
propriety of modifying the appearance of a device disclosed in a design
patent, “[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int'l Co., 550 U.S. at 418 (“a patent composed of several
elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art”). The Examiner has
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not supported this reason with a sufficient rational underpinning, and thus no
prima facie case of obviousness has been established.
We also cannot sustain the Examiner’s alternate conclusion that it
would have been obvious to a person of ordinary skill in the art to modify
Cleland’s device “to allow for the application of added torque as inherently
taught by Tuanmu.” Ans. 3. The Examiner’s conclusion is based on a
finding that Tuanmu inherently teaches the application of added torque.
Because torque is a product of force multiplied by the torque arm (Fact 1),
inclusion of a diagonal section between the ends of the tool will not affect
the torque produced unless either the force applied or the torque arm is also
changed. In other words, if a first tool includes a diagonal portion between
the ends of the tool, and a second tool does not include a diagonal portion,
and each tool has the same distance from the point of rotation to the point on
which the force is acting (torque arm), then application of an equivalent
force will produce equivalent torque for each tool, and inclusion of a
diagonal section does not add torque. Because Tuanmu does not necessarily
possess this characteristic, Tuanmu does not inherently disclose increased
torque by virtue of inclusion of a diagonal section between the ends of the
tool, and the Examiner’s finding is incorrect.
In Response to Argument, the Examiner further finds that Tuanmu
inherently teaches added leverage by allowing for engagement of otherwise
inaccessible workpieces or allowing for the workpiece to be turned over a
longer arc. Ans. 5-6. The Examiner does not provide any objective
evidence to show that these problems were known in the art at the time of
Appellant’s invention. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419-
20 (2007) (“One of the ways in which a patent's subject matter can be
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proved obvious is by noting that there existed at the time of invention a
known problem for which there was an obvious solution encompassed by the
patent's claims”) (emphasis added). The Examiner’s rationale of increased
leverage seems to have no basis other than the Appellant’s own disclosure,
which describes that the claimed device provides additional leverage. Spec.
1:14-20 and Spec. 3:1-3.
Thus, absent hindsight, we see no reason, and the Examiner has not
provided an adequate articulation of a reason, why a person of ordinary skill
in the art would have been led to modify Cleland to include a diagonal
between the ends of the tool as taught by Tuanmu. The Appellant has
demonstrated the Examiner erred in the rejection of claims 1-3 and 5 as
unpatentable over Cleland and Tuanmu.

Rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) as unpatentable over
Cleland and Mobile
Mobile discloses concave edge surfaces that provide a reference
surface to facilitate placement of the operator’s shoe on the rectilinear edges
of the tool (Fact 5). Mobile teaches that use of the operator’s shoe permits
greater application of force than is possible with hand gripping the tool (Fact
5). Those concave edge surfaces of Mobile create a tool with the claimed
diagonal section extending between the first and second ends (Facts 2-4).
The Appellant contends that a person of ordinary skill in the art would
not combine the shape of Mobile with the tool of Cleland to facilitate
placement of a shoe against the tool for the reason that Cleland does not
have the need for such a modification, and because gas meters are not
located where placement of a foot on the wrench would provide
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advantageous force. App. Br. 9. The Examiner concluded a person of
ordinary skill would make the proposed modification of Cleland’s tool to
allow for the application of greater torque, as taught by Mobile. We agree
with the Examiner’s rationale. The Appellant’s Specification discloses that
the shut-off valve for conventional gas pipes is approximately 6 to 8 inches
above the ground. Spec. 1:8-10. Cleland’s tool is also for use for a gas
meter. The Examiner’s rationale for modifying the tool of Cleland is
reasonable, because it would be easier for a user to turn the shut off-valve
using Cleland’s tool, which is disposed close to the ground, by applying
force with the user’s foot than by bending over and applying force with the
user’s hand. As taught by Mobile, in order to effectively apply force to a
tool using an operator’s foot, it is preferable to provide a reference surface to
facilitate placement of the operator’s shoe against the surface of the tool
(Fact 5). By adding the offset of Mobile to the tool of Cleland, the operator
will be able to effectively apply force to the distal end of the tool using the
operator’s foot without having the operator’s foot slide along the length of
the tool. The Appellant’s argument fails to demonstrate error in the
Examiner’s conclusion of obviousness.
We find no merit to the Appellant’s contention that a person of
ordinary skill in the art would not combine the shape of Mobile with the tool
of Cleland for the reason that there is no indication that the use of the curved
surfaces of Mobile would enhance ornamental features. App. Br. 9. The
proper test is not if use of the curved surfaces of Mobile would enhance
ornamental features, the proper question is if the Appellant has demonstrated
error in the rationale for the proposed combination put forth by the
Examiner. The Examiner concluded a person of ordinary skill would make
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the proposed modification to Cleland’s tool to allow for the application of
greater torque. The Appellant’s argument is irrelevant to the rationale put
forth by the Examiner, and fails to demonstrate error by the Examiner.
We are not persuaded by the Appellant’s argument that, as a design
patent, Cleland is concerned with ornamental design and not function, so
that the reference teaches away from a modification to the reference based
on functionality. Reply Br. 2. First, contrary to the Appellant’s assertion, a
design patent can be used in rejection of a utility patent. See In re Aslanian,
590 F.2d 911, 913-914 (CCPA 1979) (design patents are properly citable as
prior art in a rejection based on obviousness under 35 U.S.C. § 103).
Second, we find nothing in the disclosure of Cleland that would have led a
person of ordinary skill in the art in a direction divergent from the path
chosen by the Appellant, namely, to add a diagonal between the ends of the
tool (Fact 6). See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A
reference may be said to teach away when a person of ordinary skill, upon
reading the reference would be led in a direction divergent from the path that
was taken by the applicant.”).
The Appellant also contends that Mobile does not teach the use of a
diagonal to provide enhanced “leverage.” Reply Br. 3. Assuming that the
Appellant intended “leverage” as a synonym for torque, we are not
persuaded by the Appellant’s contention that Mobile does not teach added
leverage because Mobile discloses a shape that allows an individual to place
their shoe against the tool to apply greater force (Fact 4), and increased
force, applied over the same torque arm (the same tool) would produce
increased torque, as found by the Examiner (Fact 1). Ans. 3-4.
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Each of the Appellant’s arguments as to why there is no reason to
combine the references as proposed fails to demonstrate error by the
Examiner in the decision to reject claim 1. Claims 2, 3, and 5 fall with
claim 1.

Rejection of claims 1-3 and 5 under 35 U.S.C. § 103(a) as unpatentable over
Cleland and Russell
We cannot sustain the Examiner’s conclusion that it would have been
obvious to a person of ordinary skill in the art to modify Cleland’s device
“to allow for the application of added torque as inherently taught by
Russell.” Ans. 4. Here, as with the first rejection, the Examiner’s
conclusion is based on a finding that the reference inherently teaches the
application of added torque. However, as we concluded in the analysis of
the first rejection, supra, inclusion of a diagonal section between the ends of
the tool will not affect the torque produced unless either the force applied or
the torque arm is also changed. Because Russell does not necessarily
possess this characteristic, Russell does not inherently disclose increased
torque by virtue of inclusion of a diagonal section between the ends of the
tool. Because the Examiner has not provided an adequate articulation of a
reason why a person of ordinary skill in the art would have been led to
modify Cleland to include a diagonal between the ends of the tool as taught
by Russell, the Appellant has demonstrated the Examiner erred in the
rejection of claims 1-3 and 5 as unpatentable over Cleland and Russell.

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CONCLUSIONS
The Appellant has shown the Examiner erred in the rejection of
claims 1-3 and 5 as unpatentable over Cleland and Tuanmu because the
Examiner has failed to adequately articulate why a person of ordinary skill
in the art would have been led to modify Cleland’s wrench with Tuanmu’s
diagonal section extending between the first and second end of the tool.
The Appellant has failed to show the Examiner erred in the rejection
of claim 1 as unpatentable over Cleland and Mobile because the combined
references disclose a diagonal section extending between the first and
second end of the tool.
The Appellant has failed to show the Examiner erred in the rejection
of claims 1-3 and 5 as unpatentable over Cleland and Mobile because the
Appellant has failed to show that a person of ordinary skill in the art would
not have been led to modify Cleland’s wrench with Mobile’s diagonal
section extending between the first and second end of the tool.
The Appellant has shown the Examiner erred in the rejection of
claims 1-3 and 5 as unpatentable over Cleland and Russell because the
Examiner has failed to adequately articulate why a person of ordinary skill
in the art would have been led to modify Cleland’s wrench with Russell’s
diagonal section extending between the first and second end of the tool.

DECISION
We affirm the Examiner's decision to reject claims 1-3 and 5.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

O’Neill, Administrative Patent Judge, Concurring.

I concur with my colleagues that the Examiner’s decision to reject the
claims as unpatentable over the prior art of record should be affirmed.
Where I disagree with my colleagues is that the Examiner’s rejection with
respect to Cleland and Tuanmu should be sustained as well.
The Supreme Court emphasized that “the principles laid down in
Graham reaffirmed the ‘functional approach’ of Hotchkiss, 11 How. 248”
(citing Graham, 383 U.S. at 12), and reaffirmed principles based on its
precedent that “[t]he combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 415-416. “The Court recognized that when a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.” Id. at 416 (citing
to United States v. Adams, 383 U.S. 39, 40). Accordingly, the operative
question in this “functional approach” is “whether the improvement is more
than the predictable use of prior art elements according to their established
functions.” Id. at 417.
“A person of ordinary skill is also a person of ordinary creativity, not
an automation.” Id. at 421.
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Wrench handles are wrench handles; they perform the same function,
viz. to permit a user to grasp the wrench and apply the appropriate force to
loosen or tighten the fastener’s head the wrench’s end is designed to
accommodate. Likewise, wrench ends are wrench ends; they perform the
same function, viz. tightening or loosening the fastener, albeit just on
different fastener head types, e.g. Phillips, slotted, hex, Torx, etc. As such, it
is not beyond the level of ordinary creativity of a person of ordinary skill in
the art to mix and match wrench ends and handles because each element in
the wrench performs the same function as it would prior to the substitution.
In this case, the Tuanmu “diagonal” wrench handle would perform the same
function on Cleland’s gas wrench when Tuanmu’s handle was substituted
for Cleland’s handle. In other words, the substitution yields the predictable
result of permitting the user to apply the appropriate force to either tighten or
loosen the fastener.
Arguendo, the prior art disclosure utilized to render the claimed
invention as prima facie obvious are design patents and thus their purpose is
for teaching particular ornamental appearances. See Op. at 9. The Supreme
Court has stated “[c]ommon sense teaches, however, that familiar items may
have obvious uses beyond their primary purposes, and in many cases a
person of ordinary skill will be able to fit the teachings of multiple patents
together like pieces of a puzzle.” KSR, 550 U.S. at 420. In this case, the art
of record discloses familiar items, wrenches, and a person of ordinary skill
could readily substitute the “diagonal” handle taught by Tuanmu for the
“straight” handle disclosed in Cleland.
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Accordingly, because this case is a mere substitution of one handle
(Tuanmu) for another handle (Cleland), each performing the same function
(application of force), the Examiner’s reason that Tuanmu’s diagonal
wrench handle could be added to Cleland’s device has a sufficient rational
underpinning to support the legal conclusion of obviousness.

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