Ex parte Sherry

Board of Patent Appeals and Interferences

Feb 17, 2000

08593334 (B.P.A.I. Feb. 17, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte NEIL J. SHERRY
____________
Appeal No. 1999-0939
Application No. 08/593,334
____________
HEARD: January 27, 1999
____________
Before STAAB, NASE, and GONZALES, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 13 through 23, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
Appeal No. 1999-0939 Page 2
Application No. 08/593,334
The appellant's invention relates to a method of
fastening members of an assembly, such as sheets or the like
(specification, p. 1). A copy of the claims under appeal is
set forth in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Parsons et al. 2,180,545 Nov. 21,
1939
(Parsons)
Lelaurain 2,017,426 (UK) Oct.
3, 1979
Bradley et al. 2,140,891 (UK) Dec. 5, 1984
(Bradley)
Claims 13 through 23 stand rejected under 35 U.S.C. § 103
as being unpatentable over Bradley in view of Parsons and
Lelaurain.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the final rejection (Paper No.
13, mailed November 24, 1997) and the answer (Paper No. 19,
Appeal No. 1999-0939 Page 3
Application No. 08/593,334
mailed July 14, 1998) for the examiner's complete reasoning in
support of the rejection, and to the brief (Paper No. 18,
filed April 28, 1998) and reply brief (Paper No. 20, filed
September 14, 1998) 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 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
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 13 through 23
under
35 U.S.C. § 103. Our reasoning for this determination
follows.
Appeal No. 1999-0939 Page 4
Application No. 08/593,334
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).
Claim 13, the sole independent claim on appeal, recites a
method of fastening two members together, comprising the steps
of (1) providing first and second members, (2) piecering the
second member to form an aperture and cleavage and then
deforming the aperture and cleavage into a wall having a
thread-like helical form, (3) bringing the first and second
members together in face to face relationship, (4) inserting a
tubular fastener through the aperture in the second member and
an aperture in the first member, and (5) radially expanding a
shank of the tubular fastener thereby causing the wall having
Appeal No. 1999-0939 Page 5
Application No. 08/593,334
a thread-like helical form to impress a helical groove into
the shank.
The appellant argues that the applied prior art does not
suggest the claimed subject matter. We agree. In our view,
the above-noted limitations of claim 13 are not suggested by
the applied prior art. In that regard, while Parsons does
teach piecering a member to form an aperture and cleavage and
then deforming the aperture and cleavage into a wall having a
thread-like helical form, it is our opinion that the applied
prior art would not have suggested replacing Bradley's second
member (i.e., workpiece 56) with Parsons' threaded member and
removing the threads from Bradley's fastener 10 so that
radially expanding Bradley's fastener 10 causes the wall
having a thread-like helical form of the second member to
impress a helical groove into Bradley's fastener 10.
In our view, the only suggestion for modifying Bradley in
the manner proposed by the examiner to meet the above-noted
limitations stems from hindsight knowledge derived from the
appellant's own disclosure. The use of such hindsight
Appeal No. 1999-0939 Page 6
Application No. 08/593,334
knowledge to support an obviousness rejection under 35 U.S.C.
§ 103 is, of course, impermissible. See, for example, W. L.
Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984). It follows that we cannot sustain the
examiner's rejection of claims 13 through 23.
Appeal No. 1999-0939 Page 7
Application No. 08/593,334
CONCLUSION
To summarize, the decision of the examiner to reject
claims 13 through 23 under 35 U.S.C. § 103 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1999-0939 Page 8
Application No. 08/593,334
OBLON SPIVAK MCCLELLAND MAIER & NUESTADT
FOURTH FLOOR
1755 JEFFERSON DAVIS HIGHWAY
ARLINGTON, VA 22202
APPEAL NO. 1999-0939 - JUDGE NASE
APPLICATION NO. 08/593,334
APJ NASE
APJ STAAB
APJ GONZALES
DECISION: REVERSED
Prepared By: Gloria
Henderson
DRAFT TYPED: 02 Feb 00
FINAL TYPED:
HEARD: January 27, 1999