Ex parte WALMSLEY

Board of Patent Appeals and Interferences

Sep 18, 1998

08190618 (B.P.A.I. Sep. 18, 1998)

Application for patent filed January 3, 1994. According1
to appellant, this application is a continuation of
Application 07/696,260 filed April 30, 1991, now abandoned;
which is a continuation of Application 07/356,672 filed May 3,
1989, now abandoned; which is a continuation of Application
07/099,671 filed September 21, 1987, now abandoned; and which
is a continuation of Application 06/710,063 filed March 11,
1985, now 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not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte OWEN WALMSLEY
__________
Appeal No. 97-4247
Application No. 08/190,6181
__________
ON BRIEF
__________
Before CALVERT, ABRAMS and CRAWFORD, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
Appeal No. 97-4247
Application No. 08/190,618
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Appeal No. 97-4247
Application No. 08/190,618
3
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 15-27, which constitute all of the
claims remaining of record in the application.
The appellant's invention is directed to a clamp for
gripping an elongate member such as a pipe. The subject
matter before us on appeal is illustrated by reference to
claim 15, which has been reproduced in an appendix to the
Brief on Appeal (Paper No. 10).
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Dillon 2,182,797 Dec. 12,
1939
British specification (Atlas) 651,556 Apr.
4, 1951
German patent (Price) 952,307 Oct. 21,
1956
British specification 1,478,861 Jul. 6,
1977
(Compagnie)
THE REJECTIONS
Appeal No. 97-4247
Application No. 08/190,618
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Claims 15 and 17-27 stand rejected under 35 U.S.C. § 103
as being unpatentable over Dillon in view of Price.
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Application No. 08/190,618
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Claims 15, 17, 19 and 23-27 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Atlas in view of Price.
Claim 16 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Dillon in view of Price and Compagnie, or
Atlas in view of Price and Compagnie.
The rejections are explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief on Appeal.
OPINION
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima
facie case of obviousness under 35 U.S.C. § 103, it is
incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a
prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
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Application No. 08/190,618
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972, 973 (Bd. Pat. App. & Int. 1985). To this end, the
requisite motivation must stem from some teaching, suggestion
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and
not from the appellant's disclosure. See, for example,
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988). The appellant’s invention is a clamp for
gripping elongate members. It comprises a body having an axis
and a surface inclined at an acute angle to the axis, a
support having apertures, and movable elements which extend
through the apertures for operative engagement with the
inclined surface on the one hand and with the outer surface of
the elongate member on the other hand. An objective of the
appellant’s invention is to accommodate differences in the
ovality of a pipe-shaped element in a clamp (specification,
page 2). This is manifested in independent claims 15 and 19
by the requirement of
the apertures being shaped to permit both axial and
radial movement of the elements relative to the
support for accommodating ovality of the elongate
member when the movable elements move relatively
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along said inclined surface into gripping engagement
with the surface of the elongate member, the movable
elements being free to move axially within the
support apertures and relative to each other a
sufficient amount such that the respective movable
elements may adopt differing radial and axial
positions when gripping the elongate member to
accommodate such ovality.
It is the examiner’s position that both Dillon and Atlas
disclose the basic structure required by claims 15 and 19,
except for the elongated apertures, but that it would have
been obvious to one of ordinary skill in the art to elongate
the apertures in view of the teachings of Price. The
appellant disagrees, on the basis that there would have been
no suggestion to do so. We agree with the appellant, our
reasoning being as follows.
From our perspective, both Dillon and Atlas disclose
exactly the type of gripping device over which the appellant
believes his invention to be an improvement. While the theory
of operation and the structures themselves have much in common
with the claimed invention, neither of these references
recognizes the problem solved by the appellant, nor do they
disclose structure which inherently would solve the problem.
In both, the apertures through which the locking balls extend
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clearly are circular, and thus, while they permit radial
movement of the balls with respect to the support in which
they are mounted, they do not permit the axial movement
required by the appellant’s two independent claims. This is
acknowledged by the examiner (Answer, page 3).
Price discloses a pipe coupling in which a male element
(Figure 2) is locked onto a female element (Figure 1) into
which it is received. The male element is provided with an
annular groove (2) into which are received a plurality of
locking balls (3) carried by the female element. The balls
extend into the receiving cavity through a plurality of
elongated apertures (15). However, the Price coupling is a
different type than that of Dillon or Atlas, it operates in a
different manner, and the purpose of the elongations in the
apertures is far afield from that of the appellant’s
invention. Initially, it must be recognized that the Price
coupling attaches two ends of a pipe, each of which is
provided with a fixture. It does not and cannot receive an
elongate member of the type with which the two primary
references, and the appellant’s invention, are intended to
operate. The elongated apertures disclosed by Price are for
Appeal No. 97-4247
Application No. 08/190,618
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the purpose of allowing the balls to be moved axially by the
shoulder (24) of the advancing male member into a location
where they can be radially displaced into a recess (13), to
allow the shoulder to pass. Thereafter, the balls move
radially inwardly to seat in the annular groove (2) in the
male member, to lock it in place. When gripping the male
members, the balls cannot adopt differing radial and axial
positions with respect to one another; they all are seated in
the groove in identical radial and axial positions.
The mere fact that the prior art structure could be
modified does not make such a modification obvious unless the
prior art suggests the desirability of doing so. See In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). We fail to perceive any teaching, suggestion or
incentive in the applied references which would have led one
of ordinary skill in the art to modify the devices of Dillon
or Atlas by replacing the round apertures with ones shaped to
allow both radial and axial movement. In our opinion, the
only suggestion for making such a modification is found in the
luxury of first viewing the appellant’s disclosure. This, of
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course, is not a permissible basis for a rejection. In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992).
For the above reasons, it is our opinion that the
combined teachings of Dillon and Price, and Atlas and Price,
each fail to establish a prima facie case of obviousness with
regard to the subject matter recited in independent claims 15
and 19 and, it follows, with regard to that of the dependent
claims. Compagnie, cited against claim 16 for its showing of
another feature, fails to cure this deficiency.
None of the rejections are sustained.
Appeal No. 97-4247
Application No. 08/190,618
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The decision of the examiner is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge)
Appeal No. 97-4247
Application No. 08/190,618
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William R. Hinds
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