Ex parte Reilly

Board of Patent Appeals and Interferences

Dec 18, 2001

09221543 (B.P.A.I. Dec. 18, 2001)

On October 3, 2001, the appellant waived the oral1
hearing (see Paper No. 16) scheduled for November 7, 2001.
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for publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GEORGE W. REILLY
____________
Appeal No. 2001-0730
Application No. 09/221,543
____________
ON BRIEF1
____________
Before COHEN, FRANKFORT, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 5 to 7 and 12, which are all of the claims
pending in this application.
We REVERSE and REMAND.
Appeal No. 2001-0730 Page 2
Application No. 09/221,543
BACKGROUND
The appellant's invention relates to hardware for
mounting toilet bowls, and more particularly, closet bolts
(specification, p. 1). A copy of the claims under appeal is
set forth in the appendix to the appellant's brief.
The prior art of record relied upon by the examiner in
rejecting the appealed claims is:
Flood 3,339,215 Sept. 5,
1967
Kemper 3,424,212 Jan. 28,
1969
Patyna et al. 3,457,573 July 29,
1969
(Patyna)
In addition, the examiner also relied upon the appellant's
admission of prior art (specification, pages 1-2; Figure 1)
relating to closet bolts and nuts to secure a toilet bowl in
place (Admitted Prior Art).
Claims 5 to 7 and 12 stand rejected under 35 U.S.C. § 103
as being unpatentable over the Admitted Prior Art, Flood,
Kemper and Patyna.
Appeal No. 2001-0730 Page 3
Application No. 09/221,543
Thus, there is no need for us to consider the2
appellant's declaration under 37 CFR § 1.132 dated February
28, 2000 (Paper No. 6).
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 11,
mailed July 7, 2000) for the examiner's complete reasoning in
support of the rejection, and to the brief (Paper No. 9, filed
June 5, 2000) and reply brief (Paper No. 12, filed September
11, 2000) for the appellant's arguments thereagainst.
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, and to the respective
positions articulated by the appellant and the examiner. Upon
evaluation of that evidence, it is our conclusion that the
evidence adduced by the examiner is insufficient to establish
a prima facie case of obviousness with respect to the claims
under appeal. Accordingly, we will not sustain the2
Appeal No. 2001-0730 Page 4
Application No. 09/221,543
examiner's rejection of claims 5 to 7 and 12 under 35 U.S.C. §
103. Our reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
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). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
A critical step in analyzing the patentability of claims
pursuant to 35 U.S.C. § 103 is casting the mind back to the
time of invention, to consider the thinking of one of ordinary
skill in the art, guided only by the prior art references and
the then-accepted wisdom in the field. See In re Dembiczak,
175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
Close adherence to this methodology is especially important in
Appeal No. 2001-0730 Page 5
Application No. 09/221,543
cases where the very ease with which the invention can be
understood may prompt one "to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the
invention taught is used against
its teacher." Id. (quoting W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed.
Cir. 1983)).
Most if not all inventions arise from a combination of
old elements. See In re Rouffet, 149 F.3d 1350, 1357, 47
USPQ2d 1453, 1457 (Fed. Cir. 1998). Thus, every element of a
claimed invention may often be found in the prior art. See id.
However, identification in the prior art of each individual
part claimed is insufficient to defeat patentability of the
whole claimed invention. See id. Rather, to establish
obviousness based on a
combination of the elements disclosed in the prior art, there
must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made
by the appellant. See In re Dance, 160 F.3d 1339, 1343, 48
Appeal No. 2001-0730 Page 6
Application No. 09/221,543
USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Claim 12, the only independent claim on appeal, reads as
follows:
A closet bolt assembly for securing a toilet bowl
flange to a fixed ring below the toilet bowl, said ring
having a slot therein and said toilet bowl flange having
a hole extending therethrough, said closet bolt assembly
comprising:
a nut; and
a closet bolt having a cylindrical shaft with
opposed first and second ends, a planar flange integrally
connected to the second end of said cylindrical shaft and
disposed generally perpendicular to the longitudinal axis
thereof for engaging the fixed ring, with the outer
surface of said cylindrical shaft being threaded from
said first end to a point intermediate the length thereof
a sufficient distance for engaging said nut to said
closet bolt to secure said toilet bowl flange to said
ring, said cylindrical shaft having a hollow passage
extending from said first end toward said second end
thereof, said hollow passage being of non-circular cross-
section whereby when an elongated tool of corresponding
cross-section to said hollow passage is disposed within
said hollow passage of the cylindrical shaft, the closet
bolt may be restrained from rotation to enable said nut
to be threadedly tightened on and threadedly screwed off
of said cylindrical shaft.
In the rejection before us in this appeal (answer, pp. 4-
5), the examiner appears to have ascertained that the Admitted
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Application No. 09/221,543
Prior Art discloses all the claimed limitations except for a
hexagonal passage (i.e., a hollow passage of non-circular
cross-section extending from the first end of the bolt toward
the second end of the bolt). The examiner then set forth the
pertinent teachings of Flood, Kemper and Patyna and concluded
that in consideration of the teachings of the applied prior
art "it would have been obvious to one of ordinary skill in
the art to associate an internal wrenching surface (hollow
passage) with the prior art bolt shaft in order to prevent
bolt rotation during manipulation."
The appellant argues that the applied prior art does not
suggest the claimed subject matter. We agree. In our view,
the only suggestion for modifying the Admitted Prior Art in
the manner proposed by the examiner to arrive at the claimed
subject matter stems from hindsight knowledge derived from the
appellant's own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C.
§ 103 is, of course, impermissible. That is, we fail to see
sufficient suggestion or motivation in the teachings of Flood,
Kemper and Patyna for a person of ordinary skill in the art at
Appeal No. 2001-0730 Page 8
Application No. 09/221,543
the time the invention was made to have associated an internal
wrenching surface (hollow passage) with the bolt shaft of the
Admitted Prior Art. It follows that we cannot sustain the
examiner's rejections of claims 5 to 7 and 12 under 35 U.S.C.
§ 103.
REMAND
We remand the application to the examiner for further
consideration of the following issue under 35 U.S.C. § 103.
The examiner has set forth the pertinent teachings of Patyna
(answer, p. 4) and has appeared to determine (answer, p. 7)
that Patyna discloses all the subject matter of claim 12
except for the nut. We remand the application to the examiner
to determine whether or not it would have been obvious at the
time the invention was made to a person of ordinary skill in
the art to have used Patyna's hollow bolt with a nut and if
so, to determine if any of the pending claims should be
rejected under 35 U.S.C. § 103.
CONCLUSION
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Application No. 09/221,543
To summarize, the decision of the examiner to reject
claims 5 to 7 and 12 under 35 U.S.C. § 103 is reversed. In
addition, this application has been remanded to the examiner
for further consideration.
This application, by virtue of its "special" status,
requires immediate action, see MPEP § 708.01 (Eighth Edition,
Aug. 2001).
REVERSED and REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-0730 Page 10
Application No. 09/221,543
LUDOMIR A. BUDZYN
CASELLA & HESPOS
274 MADISON AVENUE
SUITE 1703
NEW YORK, NY 10016
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Application No. 09/221,543
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