Ex parte Sherman

Board of Patent Appeals and Interferences

Aug 6, 1999

08048969 (B.P.A.I. Aug. 6, 1999)

Application for patent filed April 16, 1993. According 1
to appellant, the application is a division of Application
07/852,060, filed March 16, 1992, abandoned.
1
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(2) is not binding precedent of the Board.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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SEYMOUR SHERMAN

_____________
Appeal No. 98-2755
Application 08/048,9691
______________
ON BRIEF
_______________
Before COHEN, ABRAMS and McQUADE, Administrative Patent
Judges.
Appeal No. 98-2755
Application 08/048,969
2
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
16 through 18. Claims 9 and 10 stand withdrawn from further
consideration by the examiner, pursuant to 37 CFR § 1.142(b),
as being based upon a non-elected invention. These claims
constitute all of the claims remaining in the application.
Appellant’s invention pertains to a method of in-
stalling a starter-generator having a drive end on an aircraft
engine. An understanding of the invention can be derived from
a reading of exemplary claim 16, a copy of which appears in
EXHIBIT A appended to the brief (Paper No. 33).
As evidence of obviousness, the examiner has applied
the documents listed below:
Kalikow 2,645,438 July 14, 1953
Herve 4,725,029 Feb. 16, 1988
Appeal No. 98-2755
Application 08/048,969
3
The following rejection is before us for review.
Claims 16 through 18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Kalikow in view of Herve.
The full text of the examiner's rejection and re-
sponse to the argument presented by appellant appears in the
answer (Paper No. 34), while the complete statement of appel-
lant’s argument can be found in the main and substitute reply
briefs (Paper Nos. 33 and 37).
OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claims, the applied
patents, and the respective viewpoints of appellant and the
examiner. As a consequence of our review, we make the deter-
mination which follows.
Appeal No. 98-2755
Application 08/048,969
4
We reverse the examiner’s rejection of claims 16
through 18 under 35 U.S.C. § 103 as being unpatentable over
Kalikow in view of Herve, for the reasons appearing below.
This panel of the board fully comprehends the exam-
iner’s assessment of the applied patents and the rationale
relied upon for their combination under 35 U.S.C. § 103. In
particular, we certainly appreciate that Herve discloses
(Figs. 1, 3, and 4) interfacing apertures 8 and nuts 4 for
mounting a brake booster to a firewall. The difficulty,
however, that we have with the proposed modification of the
mounting device of Kalikow is that it clearly would have
removed therefrom the consequential structure necessary for
the
achievement of the patentee’s objective, i.e., the wedge-
shaped flange lugs which exactly match wedge-shaped grooves to
best withstand engine vibration (column 3, lines 32 through
36). The importance of the lug and groove arrangement is
Appeal No. 98-2755
Application 08/048,969
5
further highlighted by the following. As explained by Kalikow
(column 4, lines 55 through 67), intermediate the flange lugs
13 in the flange end portion 10' are apertures 23 which split
the end portion into a plurality of separate arcuate rela-
tively flexible segments. The clamping ring 21 is intended to
constrict these segments so that the flange lugs 13 are firmly
wedged within the accommodating arcuate grooves 9. Based
upon the above, the conclusion that we reach is that one
having ordinary skill in the art would not have been motivated
to alter the mounting device of Kalikow as proposed. Thus,
the claimed subject matter would not have been obvious in view
of the applied teachings.
In summary, this panel of the board has reversed the
rejection of claims 16 through 18 under 35 U.S.C. § 103 as
being unpatentable over Kalikow in view of Herve.
The decision of the examiner is reversed.
REVERSED
Appeal No. 98-2755
Application 08/048,969
6
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFER-
ENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
ICC:psb
Appeal No. 98-2755
Application 08/048,969
7
Charles I. Brodsky, Esq.
2 Bucks Lane
Marlboro, NJ 07746