Ex Parte Rafferty

Board of Patent Appeals and Interferences

Mar 31, 2004

09795701 (B.P.A.I. Mar. 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for publication and is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT E. RAFFERTY
____________
Appeal No. 2004-0827
Application No. 09/795,701
____________
ON BRIEF
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Before WALTZ, KRATZ and JEFFREY T. SMITH, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1, 2 and 6 through 8. The remaining
claims pending in this application are claims 3 through 5, which
stand objected to by the examiner as depending on a rejected claim
but would be allowable if rewritten in independent form (Answer,
page 2, ¶(3)). We have jurisdiction pursuant to 35 U.S.C. § 134.
According to appellant, the invention is directed to a lock
assembly for a utility box (Brief, page 2). Further details of the
Appeal No. 2004-0827
Application No. 09/795,701
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invention may be seen from representative independent claim 1 which
is reproduced below:
1. For use in combination with a utility box having a bottom,
a side wall, and a cover which may be opened to gain access to the
interior of the box, and which when closed, overlaps an upper edge
of the side wall, a lock assembly for maintaining the cover in its
closed position, said lock assembly comprising:
a bracket having first and second mutually spaced flanges
integrally joined by an intermediate web;
a jaw mechanically interengaged with and carried by said
bracket for movement between said first and second flanges, said
bracket being configured for removable mounting on said side wall,
with said intermediate web interposed between said cover and the
upper edge of said side wall, and with said first flange and
said jaw respectively located adjacent exterior and interior
surfaces of said side wall;
force exerting means for urging said jaw towards said first
flange to thereby clamp said side wall therebetween;
a cap having a lip configured and dimensioned to overlap said
cover; and interlocking means for securing said cap to said
bracket.
The examiner has relied upon the following references as
evidence of obviousness:
Nielsen, Jr. (Nielsen) 4,080,811 Mar. 28, 1978
Redmayne 4,202,574 May 13, 1980
The claims on appeal stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Nielsen in view of Redmayne (Answer, page 3,
referring to Paper No. 11). We reverse this rejection essentially
Appeal No. 2004-0827
Application No. 09/795,701
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for the reasons stated in the Brief, Reply Brief, and those reasons
set forth below.
OPINION
The examiner finds, and appellant does not contest, that
Nielsen discloses a locking assembly for a utility box comprising
every claimed limitation except that Nielsen fails to disclose or
suggest that the lock assembly contains a jaw mechanically
interengaged with and carried by the bracket that clamps the first
flange against the side wall (Paper No. 11, pages 2-3; see also the
Answer, page 3, Findings 1-8, and page 4; and the Brief, page 3,
¶8). The examiner further finds that Redmayne discloses a lock
assembly comprising a lid and a jaw, including mechanical
interengagement of the jaw and the lid and force exerting means
urging the jaw towards the first flange to clamp the sidewall
(Paper No. 11, page 3; Answer, page 4). From these findings, the
examiner concludes that it would have been obvious to one of
ordinary skill in the art “to have the jaw with the force exerting
means taught by Redmayne in the lock assembly disclosed by Nielsen”
to ensure proper clamping of the jaw and the sidewall (Paper No.
11, page 3; Answer, paragraph bridging pages 4-5). We disagree.
As correctly argued by appellant (Brief, page 4; Reply Brief,
pages 1-2), the examiner has not identified any convincing reason
Appeal No. 2004-0827
Application No. 09/795,701
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or suggestion for combining the references as proposed in the
rejection on appeal. The examiner has only set forth a conclusory
statement without identifying any convincing reasons or suggestions
why one of ordinary skill in this art would have added the jaw of
Redmayne to the locking assembly of Nielsen (see the Reply Brief,
page 2). See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614,
1617 (Fed. Cir. 1999). “[W]hen determining the patentability of a
claimed invention which combines two known elements, ‘the question
is whether there is something in the prior art as a whole to
suggest the desirability, and thus the obviousness, of making the
combination.’ [Citations omitted].” In re Rouffet, 149 F.3d 1350,
1356, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). On the record before
us, we determine that the examiner has not identified any
convincing suggestion or reason for the desirability of adding the
jaw of Redmayne to the lock assembly of Nielsen. The examiner has
not explained why the locking assembly of Nielsen requires “proper
clamping” which would be achieved by use of the jaw taught by
Redmayne.
Additionally, as correctly argued by appellant (Brief, page
3), the “jaw” of Redmayne is mounted on a depending flange 20 of
the lid of the refuse container. The U-shaped bracket disclosed by
Redmayne is engaged with the undersurface of the lid bead 16 as
Appeal No. 2004-0827
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well as the lower beaded portion 24 (see the abstract; Figure 2;
col. 1, ll. 32-34; and col. 2, ll. 35-38). The examiner has not
established why one of ordinary skill in the art would have added
this “jaw” or U-shaped locking assembly of Redmayne, unique to the
shape and beaded portion of the refuse container lid, to the
locking assembly for a utility box disclosed by Nielsen.
For the foregoing reasons and those stated in the Brief and
Reply Brief, we determine that the examiner has not met the initial
burden of establishing a prima facie case of obviousness in view of
the reference evidence. Therefore we cannot sustain the rejection
on appeal.
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The decision of the examiner is reversed.
REVERSED
THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2004-0827
Application No. 09/795,701
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