Ex parte Virgil

Board of Patent Appeals and Interferences

Oct 27, 2000

08238681 (B.P.A.I. Oct. 27, 2000)

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publication and is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HALL VIRGIL JR.
____________
Appeal No. 1996-1049
Application No. 08/238,681
____________
ON BRIEF
____________
Before JOHN D. SMITH, GARRIS and OWENS, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-9, which are all of the claims in the application.
The rejection of claim 3 is withdrawn in the examiner’s answer
(page 5).
THE INVENTION
Appellant claims a molded element and a mold for making
the molded element.
Appeal No. 1996-1049
Application No. 08/238,681
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In a reply brief filed on October 30, 1995 (paper no.
11), appellant requested that claim 1, which is the sole
independent claim directed toward the molded element, be
amended to read as follows:
1. In a molded element containing therein a horizontally
disposed bore for receiving a fastener therein, the
improvement comprising:
a plurality of downwardly disposed first elements having
distal ends, said plurality of first elements being spaced
apart from one another; and
a plurality of upwardly disposed second elements having
distal ends, said plurality of second elements being spaced
apart from one another;
wherein said plurality of first elements are offset from
said plurality of second elements;
wherein said distal ends of said plurality of first
elements and said distal ends of said plurality of second
elements are outwardly arcuate and combine to form a
horizontally disposed bore cylindrical having at least one end
open for receiving a threaded fastener therein.
This amendment, which added “are outwardly arcuate and”,
“cylindrical” and “threaded” in the last element of claim 1,
and canceled claim 3, was not submitted in a separate paper
and entered into the record. In a subsequent amendment filed
on May 27, 1997 (paper no. 15), an amendment was submitted
which included adding “cylindrical” but did not include adding
Appeal No. 1996-1049
Application No. 08/238,681
See the remand at the end of this opinion.1
3
“are outwardly arcuate and” or “threaded”. This amendment was
entered and is the most recent amendment of record.
Appellant (brief, page 3; reply brief, page 1) and the
examiner (answer, pages 3-5) argue the case as though the
amendment in the October 30, 1995 reply brief has been
entered. For purposes of expediting prosecution and making
efficient use of the board’s resources, we decide the appeal
of the rejection of claim 1 based upon the claim as argued by
appellant and the examiner, i.e., as it appears in the October
30, 1995 reply brief, even though the amendment therein has
not yet been clerically entered. 1
Claim 9, which is the sole claim directed toward the
mold, is argued by appellant and the examiner as it appears of
record. That claim is as follows:
9. In a mold for producing a molded element containing
therein a horizontally disposed bore for receiving a threaded
fastener therein, the improvement comprising:
an upper portion containing a plurality of downwardly
disposed elements, said downwardly disposed elements being
spaced apart in parallel planes and having arcuate distal
ends; and
Appeal No. 1996-1049
Application No. 08/238,681
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a lower portion containing a plurality of upwardly
disposed elements, said upwardly disposed elements being
spaced apart in parallel planes and having arcuate distal
ends,
wherein said lower portion and said upper portion are
aligned so that upon closing the mold, said upwardly disposed
elements and said downwardly disposed elements are located in
alternating planes, and the arcuate ends of said upwardly
disposed elements and the arcuate ends of said downwardly
disposed elements define a horizontally disposed cylindrical
bore having an opening in at least one end thereof for
receiving a threaded fastener therein.
THE REFERENCE
Harrison 4,514,356 Apr. 30,
1985
THE REJECTION
Claims 1, 2 and 4-9 stand rejected under 35 U.S.C. § 103
as being unpatentable over Harrison.
OPINION
We have carefully considered all of the arguments
advanced by appellant and the examiner and agree with
appellant that the aforementioned rejection is not well
founded. Accordingly, we reverse this rejection.
Appellant’s claims require that the upwardly and
downwardly disposed elements are arcuate and form a
Appeal No. 1996-1049
Application No. 08/238,681
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cylindrical bore capable of receiving a threaded fastener.
Harrison’s upwardly and downwardly disposed elements have
teeth which face, respectively, downwardly and upwardly, for
locking with upper and lower saw-tooth surfaces of male
connectors which are inserted between the upwardly and
downwardly disposed elements (col. 2, lines 20-29; col. 4,
lines 47-66; col. 5, lines 44-47). The male connectors can be
square or rectangular (col. 5, lines 3-15), and can have
vertical and canted surfaces which extend over their sides as
well as the top and bottom (col. 4, line 67 - col. 5, line 3).
The examiner argues that “[i]t would have been an obvious
matter of design choice to modify Harrison’s distal ends to
have outwardly arcuate shape, since such a change would have
involved a mere change in the shape of a component. A change
in shape is generally recognized as being within the level of
ordinary skill in the art. In re Dailey, [357 F.2d 669,] 149
USPQ 47 (CCPA 1976 [sic, 1966]).” In Dailey, the majority was
not convinced that the “less than hemisphere” shape of each
section of a nursing bottle which has a rigid section near the
nipple and a flexible section which is drawn into the rigid
section as the bottle is emptied, “is significant or is
Appeal No. 1996-1049
Application No. 08/238,681
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anything more than one of numerous configurations a person of
ordinary skill in the art would find obvious for the purpose
of providing mating surfaces in the collapsed container” of
the applied reference. See Dailey, 357 F.2d at 672-73, 149
USPQ at 50.
Appellant argues that appellant’s arcuate elements are
significant because they result in a cylindrical bore which
allows for a threaded fastener to be used rather than
Harrison’s square or rectangular fastener which is pushed into
the female connector (brief, page 3). The examiner provides
no reasoning as to why one of ordinary skill in the art would
have considered the difference between Harrison’s
configuration and appellant’s arcuate configuration to be
insignificant such that Harrison’s configuration would have
fairly suggested appellant’s configuration to one of ordinary
skill in the art. The examiner, instead, merely relies upon a
per se rule that mere changes of shape are obvious. As stated
by the Federal Circuit in In re Ochiai, 71 F.3d 1565, 1572, 37
USPQ2d 1127, 1133 (Fed. Cir. 1995), “reliance on per se rules
of obviousness is legally incorrect and must cease.”
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Application No. 08/238,681
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The examiner argues that Harrison’s column 6, lines 11-15
suggest that this reference is not limited to rectangular or
square lugs (answer, page 5). That portion of Harrison
states: “While numerous modification [sic, modifications] of
the disclosed embodiments will undoubtedly occur to those of
skill in the art, it should be understood that the spirit and
scope of the invention is to be limited solely by the appended
claims.” The examiner’s argument is not convincing because
the examiner has not explained why this disclosure would have
fairly suggested, to one of ordinary skill in the art, use of
arcuate elements which form a cylindrical bore which is
capable of receiving a threaded fastener.
The examiner argues that appellant’s claims 1, 2, 4-6 and
8 are directed to a molded product and that the particular
arcuate shape of the elements of the mold are not part of the
product as claimed and, therefore, are not a positive
limitation (answer, page 5). As indicated by page 5 of the
examiner’s answer, claim 1 as interpreted by the examiner
expressly recites that the distal ends of the elements of the
molded product are outwardly arcuate.
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Application No. 08/238,681
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The examiner argues that Harrison clearly shows a
cylindrical fastener in figures 2 and 4 and, therefore,
discloses a cylindrical bore (answer, page 5). Harrison,
however, states that “[t]he bottom lugs 34 are positioned out
of vertical alignment with respect to the upper lock lugs 32
and are bisected by a vertical plane bisecting the space
between adjacent ones of the upper lock lugs 32 as will be
apparent from inspection of FIG. 4. The upper lock lugs 32
extend transversely with respect to the seat in a horizontal
manner at an elevation above the elevation of the lower
portion of the bed plate ...” (col. 3, lines 58-65). This
disclosure indicates that the upper and lower lock lugs are
flat rather than arcuate and, therefore, provides no
indication that the bore is cylindrical. Figure 2 shows these
same upper and lower lock lugs (32 and 34).
For the above reasons, we conclude that the examiner has
not carried the burden of establishing a prima facie case of
obviousness of appellant’s claimed invention. We therefore
reverse the examiner’s rejection.
REMAND
Appeal No. 1996-1049
Application No. 08/238,681
As indicated by the amendment filed on May 27, 19972
(paper no. 15), in claim 1 in the October 30, 1995 reply
brief, "cylindrical" should appear before rather than after
"bore".
9
We remand the application to the examiner for the
examiner to obtain from appellant a separate paper wherein
claim 1 is amended to read as argued by appellant and the
examiner in this appeal, i.e., as it appears on page 2 of the
reply brief filed on October 30, 1995 , and claim 3 is2
canceled, and to enter this amendment into the record.
Appeal No. 1996-1049
Application No. 08/238,681
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DECISION
The rejection of claims 1, 2 and 4-9 under 35 U.S.C.
§ 103 over Harrison is reversed.
REVERSED and REMANDED
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
jg
Appeal No. 1996-1049
Application No. 08/238,681
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DANA F. BIGELOW
CARRIER CORPORATION
P.O. BOX 4800
SYRACUSE, NY 13221