Ex Parte Schepman

Board of Patent Appeals and Interferences

Aug 11, 2009

11444561 (B.P.A.I. Aug. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte MICHAEL SCHEPMAN
____________________

Appeal 2009-002554
Application 11/444,561
Technology Center 3700
____________________

Decided: August 11, 2009
____________________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY
and MICHAEL W. O’NEILL, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 1
The Appellant appeals under 35 U.S.C. § 134 (2002) from the 2
Examiner’s decision finally rejecting claims 1 and 4 under 35 U.S.C. 3
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§ 103(a) (2002) as being unpatentable over Jarrett (US 2001/0020403 A1, 1
publ. Sep. 13, 2001) and Saxby (US 2,633,768, issued Apr. 7, 1953); finally 2
rejecting claim 2 under § 103(a) as being unpatentable over Jarrett, Saxby 3
and Mandl (US 1,724,491, issued Aug. 13, 1929); finally rejecting claim 5 4
under § 103(a) as being unpatentable over Jarrett, Saxby and the Examiner’s 5
Official Notice that “the use of 6-point star-shaped drives are notoriously old 6
and well-known in the art” (Ans. 5); and finally rejecting claim 7 under 7
§ 103(a) as being unpatentable over Jarrett, Saxby and Vogel (US 2,803,980, 8
issued Aug. 27, 1957). We have jurisdiction under 35 U.S.C. § 6(b) (2002). 9
We AFFIRM. 10
Claim 1 is the sole independent claim on appeal: 11
12
1. A plurality of hand tools, each tool 13
comprising: 14
a T-shaped handle having a central bottom 15
portion and opposing ends with a lengthwise bore; 16
a driver implement disposed within the bore, 17
the driver implement having first and second ends 18
which extend outwardly past the opposing ends of 19
the handle; 20
a ratchet mechanism within the handle, the 21
ratchet mechanism being operative to limit the 22
rotation of the driver implement in one direction, 23
enabling a user to use the first end of the 24
implement to tighten a component and the second 25
end of the implement to loosen the component; 26
a physically fixed driver implement 27
extending outwardly from the bottom portion; and 28
wherein the driver implement having the 29
first and second ends, and the physically fixed 30
driver implement, are the same for a particular 31
tool, but are of a different size for each tool in the 32
plurality. 33
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ISSUES 1
The Examiner finds that Jarrett discloses each limitation of claim 1 2
except a plurality of tools such that both driver implements of the tool are 3
the same for a particular tool, but are of a different size for each tool in the 4
plurality. (Ans. 3). The Examiner also finds that Saxby discloses providing 5
a set of hand tools having driver implements of different sizes. (Id.) From 6
these findings, the Examiner concludes that “[i]t would have been obvious to 7
one having ordinary skill in the art to form the tool of Jarrett as a tool set 8
having different sizes with each tool having a particular size for added 9
versatility as taught by Saxby.” (Ans. 4). 10
In contesting the rejection of claim 1, the Appellant contends that 11
Jarrett teaches away from providing a set of tools having driver implements 12
of different sizes because Jarrett describes a single tool having a driver 13
implement to which socket heads of different sizes may be attached. (App. 14
Br. 4; Reply Br. 1). The Appellant relies solely on the same argument in 15
contesting the rejections of claims 2, 5 and 7. (App. Br. 5; see also Reply 16
Br. 2). The Appellant argues claim 4 separately from claim 1, contending 17
that both Jarrett and Saxby fail to disclose driver implements which are 18
screwdrivers. (App. Br. 5; Reply Br. 1). 19
This appeal turns on two issues: 20
Has the Appellant shown that the Examiner failed to 21
articulate reasoning with some rational underpinning sufficient 22
to support the conclusion that Jarrett and Saxby would have 23
provided one of ordinary skill in the art reason to provide a set 24
of tools having housings, tubes and torque bars arranged as 25
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disclosed by Jarrett in which the tools have driver implements 1
of different sizes? 2
Has the Appellant shown that the Examiner failed to 3
articulate reasoning with some rational underpinning sufficient 4
to support the conclusion that Jarrett and Saxby would have 5
provided one of ordinary skill in the art reason to provide a set 6
of tools having screwdrivers at the ends of torque bars arranged 7
as disclosed by Jarrett? 8
9
FINDINGS OF FACT 10
The record supports the following findings of fact (“FF”) by a 11
preponderance of the evidence. 12
1. Jarrett describes an integrated tool which may be used either as 13
a ratchet wrench or as a T-bar wrench. (Jarrett 2, ¶ 0031). 14
2. Jarrett’s tool includes a housing 7, tubes 11 projecting from 15
opposite ends of the housing 7 and a tube 16 extending perpendicularly to 16
the lengths of the tubes 11. (Jarrett 2, ¶ 0026, ¶ 0029 and fig. 1). 17
3. Jarrett’s housing 7, tubes 11 and tube 16 together constitute a 18
T-shaped handle having a central bottom portion, namely, the tube 16, and 19
opposing ends with a lengthwise bore extending through the housing 7 and 20
the tubes 11. 21
4. Jarrett’s tool also includes two in-line torque bars 5, 6 integrally 22
connected to form a single component. (Jarrett 1-2, ¶ 0025). 23
5. Jarrett’s two in-line torque bars 5, 6 together constitute a driver 24
implement which Figure 1 of Jarrett shows disposed within the lengthwise 25
bore extending through the housing 7 and the tubes 11. Figure 1 of Jarrett 26
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depicts the torque bars 5, 6 as having first and second ends which extend 1
outwardly past the opposing ends of the handle, that is, past the opposing 2
ends of the tubes 11. 3
6. Jarrett’s housing 7 contains a one-way ratchet mechanism. 4
(Jarrett 2, ¶ 0026). 5
7. Jarrett’s ratchet mechanism allows a user to use a first end of 6
the in-line torque bars 5, 6 to tighten a component and a second end of the 7
in-line torque bars to loosen the component. (Jarrett 2, ¶ 0028). 8
8. Jarrett’s tool also includes a T-bar wrench torque bar 17. 9
(Jarrett 2, ¶ 0031). Since Jarrett describes the T-bar wrench torque bar 17 as 10
capable of serving as the torque bar for a T-bar wrench (id.), one of ordinary 11
skill in the art would have understood that the torque bar 17 is physically 12
fixed to the housing 7. Figure 1 of Jarrett depicts the T-bar torque bar 17 13
extending outwardly from the tube 16 when the tube 16 abuts the housing 7. 14
9. Jarrett’s in-line torque bars 5, 6 mount male drive sockets 1, 2, 15
respectively, at their opposite ends. Jarrett’s T-bar wrench torque bar 17 16
mounts a male drive socket 3. (Jarrett 1, ¶ 0024 and fig. 1). 17
10. One of ordinary skill in the art would have recognized that 18
Jarrett would have provided a set of socket heads 4 of graduated sizes for 19
attachment to the male drive sockets 1-3 to enable Jarrett’s wrench to drive 20
components of different sizes. 21
11. Saxby teaches providing a set of wrenches in graduated sizes. 22
(Saxby, col. 2, ll. 12-19). 23
12. One of ordinary skill in the art would have recognized that 24
Saxby described providing a set of wrenches in graduated sizes to enable 25
Saxby’s wrenches to drive components of different sizes. 26
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13. Saxby describes providing a set of individual wrenches of the 1
hexagonal type commonly known as “Allen wrenches.” These wrenches of 2
hexagonal type are designed for engagement in matching hexagonal sockets 3
formed in the heads of screws or bolts. (Saxby, col. 1, ll. 28-34). Since 4
Saxby’s wrenches drive screws, and particularly since Saxby’s wrenches 5
drive screws by engagement in hexagonal sockets formed in the heads of the 6
screws, the wrenches fall within the ordinary usage of the term 7
“screwdrivers.” 8
9
PRINCIPLES OF LAW 10
A claim under examination is given its broadest reasonable 11
interpretation consistent with the underlying specification. In re American 12
Acad. of Science Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In the 13
absence of an express definition of a claim term in the specification, the 14
claim term is given its broadest reasonable meaning in its ordinary usage as 15
the term would be understood by one of ordinary skill in the art. In re ICON 16
Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Morris, 17
127 F.3d 1048, 1054 (Fed. Cir. 1997). Properties of preferred embodiments 18
described in the specification which are not recited in a claim do not limit 19
the reasonable scope of the claim. E-Pass Techs., Inc. v. 3Com Corp., 343 20
F.3d 1364, 1369 (Fed. Cir. 2003). 21
“[W]hen a patent claims a structure already known in the prior art that 22
is altered by the mere substitution of one element for another known in the 23
field, the combination must do more than yield a predictable result.” KSR 24
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007). 25
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As a general rule, a reference which “teaches away” from the subject 1
matter of a claim does not support a prima facie case that the subject matter 2
would have been obvious. A reference teaches away from the subject matter 3
of a claim only if “a person of ordinary skill, upon reading the reference, 4
would be discouraged from following the path set out in the reference, or 5
would be led in a direction divergent from the path that was taken by the 6
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). A reference 7
does not teach away from claimed subject matter merely because it describes 8
an alternative solution to a problem addressed by the subject matter. In re 9
Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). 10
11
ANALYSIS 12
Jarrett describes an integrated tool which may be used either as a 13
ratchet wrench or as a T-bar wrench. (FF 1). Jarrett’s tool includes male 14
drive sockets 1-3 (FF 9) designed to engage a set of socket heads 4 of 15
graduated sizes to drive components of different sizes (FF 10). Saxby 16
describes providing a set of wrenches in graduated sizes. (FF 12). One of 17
ordinary skill in the art would have recognized that Saxby’s reason for 18
providing the wrenches in graduated sizes was to drive components of 19
different sizes. (FF 13). Providing a single wrench tool designed to engage 20
a set of socket heads in graduated sizes and providing a set of wrench tools 21
in graduated sizes present alternative solutions to the same problem, namely, 22
driving components of different sizes. The interchangeability of the two 23
solutions would have provided one of ordinary skill in the art reason to 24
substitute a set of integrated tools having housings, tubes and torque bars 25
arranged as disclosed by Jarrett and also having permanently affixed driving 26
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heads in graduated sizes for the single tool described by Jarrett with its 1
accompanying set of socket heads in graduated sizes. 2
Jarrett would not have taught away from this substitution. At most, 3
Jarrett would have taught an alternative solution to the problem of driving 4
components of different sizes. The Appellant points to nothing in Jarrett 5
which would disparage the substitution of a set of tools of different sizes as a 6
solution to this problem or would have discouraged one of ordinary skill in 7
the art from attempting such a substitution. 8
The Appellant argues that “[t]he specification of Jarrett is replete with 9
references to a single tool and ‘only one hand tool that needs to be carried by 10
the mechanic.’” (Reply Br. 1). The full quote from Jarrett teaches that: 11
12
One objective of the present invention is to 13
combine both kinds of wrench [that is, a ratchet 14
wrench and a T-bar torque wrench] into one 15
integrated tool, providing the user with a single 16
versatile tool having a variable reach without the 17
addition of extension torque bars. In other words, 18
only one hand tool needs to be carried by the 19
mechanic, instead of two separate wrench tools 20
along with various extension torque bars. 21
22
(Jarrett 1, ¶ 0008). This passage addresses the advantage of providing a 23
single tool combining the utility of a ratchet wrench and a T-bar torque 24
wrench. The passage in context does not disparage providing a set of tools 25
for driving components of different sizes. 26
The Examiner is correct in reasoning (see Ans. 4) that one of ordinary 27
skill in the art would have had reason to form the tool of Jarrett as a tool set 28
having different sizes with each tool having a particular size. Doing so 29
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would have provided added versatility in the sense of providing an 1
alternative solution to the problem of driving components of different sizes. 2
The Appellant advances no persuasive argument explaining why substituting 3
a set of integrated tools having housings, tubes and torque bars arranged as 4
disclosed by Jarrett and also having permanently affixed driving heads in 5
graduated sizes for the single tool described by Jarrett with its accompanying 6
set of socket heads would have been beyond the level of ordinary skill in the 7
art. Neither does the Appellant advance any persuasive argument explaining 8
why one of ordinary skill in the art would not have had a reasonable 9
expectation that the substitution would provide a set of operative tools 10
capable of successfully addressing the problem of driving components of 11
different sizes. 12
Even assuming for purposes of this appeal only that the Appellant is 13
correct in asserting in opposition to the rejection of claim 4 (see App. Br. 5) 14
that Jarrett fails to describe a tool or tools having driver implements which 15
are screwdrivers, the Examiner is correct (see Ans. 7) in finding that Saxby 16
does disclose driver implements that are screwdrivers (see FF 13). The 17
Appellant advances no argument disputing the Examiner’s conclusion that it 18
would have been obvious to substitute Saxby’s Allen-type driver implements 19
for Jarrett’s socket heads 4 (or, alternatively, for Jarrett’s male socket drivers 20
1-3). 21
22
CONCLUSIONS 23
The Appellant has not shown that the Examiner failed to articulate 24
reasoning with some rational underpinning sufficient to support the 25
conclusion that Jarrett and Saxby would have provided one of ordinary skill 26
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in the art reason to provide a set of tools having housings, tubes and torque 1
bars arranged as disclosed by Jarrett in which the tools have driver 2
implements of different sizes. Therefore, the Appellant has not shown that 3
the Examiner erred in rejecting claim 1 under § 103(a) as being unpatentable 4
over Jarrett and Saxby. 5
The Appellant has not shown that the Examiner failed to articulate 6
reasoning with some rational underpinning sufficient to support the 7
conclusion that Jarrett and Saxby would have provided one of ordinary skill 8
in the art reason to provide a set of tools having screwdrivers at the ends of 9
torque bars arranged as disclosed by Jarrett. Therefore, the Appellant has 10
not shown that the Examiner erred in rejecting claim 4 under § 103(a) as 11
being unpatentable over Jarrett and Saxby. 12
The Appellant advances no argument opposing the rejections of 13
claims 2, 5 and 7 not advanced in opposition to the rejection of claims 1 and 14
4. Therefore, the Appellant has not shown that the Examiner erred in 15
rejecting claim 2 under § 103(a) as being unpatentable over Jarrett, Saxby 16
and Mandl; in rejecting claim 5 under § 103(a) as being unpatentable over 17
Jarrett, Saxby and the Examiner’s Official Notice; and in rejecting claim 7 18
under § 103(a) as being unpatentable over Jarrett, Saxby and Vogel. 19
20
DECISION 21
We AFFIRM the Examiner’s decision rejecting claims 1, 2, 4, 5 22
and 7. 23
No time period for taking any subsequent action in connection with 24
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 25
§ 1.136(a)(1)(iv) (2007). 26
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1
AFFIRMED 2
3
4
5
6
7
8
9
10
LV 11
12
GIFFORD, KRASS, SPRINKLE, ANDERSON 13
& CITKOWSKI, P.C. 14
P.O. BOX 7021 15
TROY, MI 48007-7021 16