Ex parte PAUL A. HUMMEL

Board of Patent Appeals and Interferences

Nov 28, 1997

08395681 (B.P.A.I. Nov. 28, 1997)

Application for patent filed February 28, 1995. According1
to the appellant, the application is a continuation-in-part of
Application No. 08/199,559, filed February 22, 1994, which is now
abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PAUL A. HUMMEL
____________
Appeal No. 96-2653
Application No. 08/395,6811
____________
HEARD: October 17, 1997
____________
Before COHEN, NASE, and CRAWFORD, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 and 2, which are all of the claims pending
in this application.
We REVERSE.
Appeal No. 96-2653
Application No. 08/395,681
2
BACKGROUND
The appellant's invention relates to a vibration isolation
grommet. Claim 1 is representative of the subject matter on
appeal and a copy thereof is attached to this decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Schmitt 3,128,999 Apr. 14, 1964
Stewart et al. 3,350,042 Oct. 31, 1967
(Stewart)
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Schmitt in view of Stewart.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the § 103 rejection, we
make reference to the examiner's answer (Paper No. 8, remailed
March 5, 1996) for the examiner's complete reasoning in support
of the rejection, and to the appellant's brief (Paper No. 7,
filed January 22, 1996) for the appellant's arguments
thereagainst.
Appeal No. 96-2653
Application No. 08/395,681
3
Appeal No. 96-2653
Application No. 08/395,681
In rejecting claims under 35 U.S.C. § 103, the examiner2
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993).
4
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. Upon evaluation of all the evidence before us, it is
our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness with2
respect to claims 1 and 2. Accordingly, we will not sustain the
examiner's rejection of claims 1 and 2 under 35 U.S.C. § 103.
Our reasoning for this determination follows.
Before addressing the examiner's rejection based upon prior
art, it is an essential prerequisite that the claimed subject
matter be fully understood. Analysis of whether a claim is
patentable over the prior art under 35 U.S.C. § 103 begins with a
determination of the scope of the claim. The properly
interpreted claim must then be compared with the prior art.
Claim interpretation must begin with the language of the claim
Appeal No. 96-2653
Application No. 08/395,681
5
itself. See Smithkline Diagnostics, Inc. v. Helena Laboratories
Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed. Cir. 1988).
Our review of independent claim 1 reveals that it is drawn
to a vibration isolator grommet capable of preassembly with a
workpiece and cooperative with a workpiece supporting structure
to limit compression of an elastomeric element of the grommet and
requires, inter alia, a compression limiting metal sleeve having
a cylindrical portion with a radially outwardly extending flange
at one end thereof, and an annular elastomeric element having a
radially outwardly extending flange portion at one end thereof
underlying the flange on the sleeve and a cylindrical portion
with an inside diameter complementary to the outside diameter of
the cylindrical portion of the sleeve so as to be acceptable
thereover in a slidable frictional fit, the elastomeric element
having a radially inwardly extending portion at the opposite end
of the cylindrical portion thereof from the flange portion
thereon initially underlying the cylindrical portion of said
sleeve but movable radially outwardly upon axial advancement of
the sleeve relative to the elastomeric element to lock the
grommet in the aperture in a workpiece. The length of the
cylindrical portion of the metal sleeve is related to the length
Appeal No. 96-2653
Application No. 08/395,681
6
of the cylindrical portion of the elastomeric element so as to be
engageable with the supporting structure to limit compression of
the flange of the elastomeric element.
We view the claims on appeal as precisely defining a grommet
of interrelated parts (i.e., metal sleeve 12 and elastomeric
element 14). From the language of claim 1 highlighted above, it
is our opinion that these interrelated parts are recited in their
disassembled condition to be later assembled to form an installed
grommet. Thus, we view the claims on appeal, as reciting a
grommet "kit" (as shown if Figure 1), not an assembled grommet
(as shown in Figures 2-4). See In re Venezia, 530 F.2d 956, 958-
59, 189 USPQ 149, 151-52 (CCPA 1976). As with the kit in the
Venezia case, each part of the grommet herein is interrelated
with the other.
With regard to the 35 U.S.C. § 103 rejection of claims 1 and
2 as being unpatentable over Schmitt in view of Stewart (answer,
p. 4), the examiner found that
Schmitt discloses a grommet comprising a sleeve 12 and an
elastomeric element 9 having an inwardly extending flange 11
which moves outwardly as the sleeve is moved relative to the
flange. The outer diameter of the cylindrical portion 10 of
the elastomeric body 9 of Schmitt must be less than the
Appeal No. 96-2653
Application No. 08/395,681
7
inner diameter of hole 3 at least when the cylindrical
portion 10 is inserted into hole 3. Schmitt states, in
column 1 lines 34-35, that cylindrical portion 10 fits
easily in hole 3.
The examiner then determined that "Schmitt fails to teach a
flange on the sleeve." The examiner then found that Stewart
teaches "a grommet having a sleeve with and without a flange
(generally at 36)." The examiner concluded that
[i]t would have been obvious to one of ordinary skill in the
art at the time of the invention to have provided the
grommet of Schmitt with a flange on the sleeve, as taught by
Stewart et al, as to distribute the compressive load more
evenly over the flange portion of the elastomeric body and
achieve the desired compression limits of the elastomeric
body.
We agree with the examiner that it would have been obvious
to one of ordinary skill in the art at the time of the invention
to have provided the grommet of Schmitt with a flange on the
sleeve, as taught by Stewart. However, we agree with the
appellant's argument (brief, p. 4) that the modified grommet
(resulting from the combination of Schmitt and Stewart) would not
teach all the limitations of independent claim 1. Specifically,
the recitation in claim 1 that the elastomeric element has a
radially inwardly extending portion at the opposite end of the
cylindrical portion thereof from the flange portion thereon
Appeal No. 96-2653
Application No. 08/395,681
8
initially underlying the cylindrical portion of the sleeve but
movable radially outwardly upon axial advancement of the sleeve
relative to the elastomeric element to lock the grommet in the
aperture in the workpiece is not met by either Stewart's grommet
or the modified grommet. While both Stewart's grommet and the
modified grommet would have an inwardly extending flange (see
skirt 11 shown in Schmitt's Figure 1), the inwardly extending
flange is movable outwardly to the position shown in Schmitt's
Figure 2 only when the bolt 14 is tightened thereby forcing
washer 15 to engage the outer end of the skirt 11 and compress it
axially toward surface 7. Thus, the inwardly extending flange
is not movable radially outwardly upon axial advancement of the
sleeve relative to the elastomeric element.
Since all the limitations of independent claim 1 are not
taught or suggested by the applied prior art, the examiner has
failed to meet the initial burden of presenting a prima facie
case of obviousness. Thus, we cannot sustain the examiner's
rejection of appealed claim 1, and dependent claim 2, under
35 U.S.C. § 103 as being unpatentable over Schmitt in view of
Stewart.
Appeal No. 96-2653
Application No. 08/395,681
9
Appeal No. 96-2653
Application No. 08/395,681
10
CONCLUSION
To summarize, the decision of the examiner to reject claims
1 and 2 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-2653
Application No. 08/395,681
11
LYMAN R LYON, P.C.
SUITE 207
3883 TELEGRAPH RD.
BLOOMFIELD HILLS, MI 48302-1476
Appeal No. 96-2653
Application No. 08/395,681
1
APPENDIX
1. A vibration isolator grommet capable of preassembly
with a workpiece and cooperative with a workpiece supporting
structure to limit compression of an elastomeric element of the
grommet, said grommet comprising:
a compression limiting metal sleeve having a cylindrical
portion with a radially outwardly extending flange at
one end thereof, and
an annular elastomeric element having a radially outwardly
extending flange portion at one end thereof underlying the
flange on said sleeve and a cylindrical portion with an
inside diameter complementary to the outside diameter of the
cylindrical portion of said sleeve so as to be acceptable
thereover in a slidable frictional fit, the cylindrical
portion of said elastomeric element having an outside
diameter less than the diameter of a grommet accepting
aperture in said workpiece whereby said grommet is readily
accepted therein, said element having a radially inwardly
extending portion at the opposite end of the cylindrical
portion thereof from the flange portion thereon initially
underlying the cylindrical portion of said sleeve but
movable radially outwardly upon axial advancement of said
sleeve relative to said elastomeric element to lock said
grommet in the aperture in said workpiece, the length of the
cylindrical portion of said metal sleeve being related to
the length of the cylindrical portion of said elastomeric
element so as to be engageable with the supporting structure
Appeal No. 96-2653
Application No. 08/395,681
2
to limit compression of the flange of said elastomeric
element.
APPEAL NO. 96-2653 - JUDGE NASE
APPLICATION NO. 08/395,681
APJ NASE
APJ COHEN
APJ CRAWFORD
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 17 Oct 97
1st Rev. 24 Nov 97
FINAL TYPED:
HEARD: 17 Oct 97