Ex Parte Wang

Board of Patent Appeals and Interferences

Feb 11, 2004

09943293 (B.P.A.I. Feb. 11, 2004)

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for publication and is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KUAN LIN WANG
____________
Appeal No. 2004-0364
Application No. 09/943,293
____________
ON BRIEF
____________
Before ABRAMS, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1 and 4,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2004-0364
Application No. 09/943,293
Page 2
BACKGROUND
The appellant's invention relates to a nozzle which is slidably connected to the
base of a nailer so that the nozzle can be conveniently replaced according to needs
(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:
Perkins 3,853,257 Dec. 10, 1974
Chen 5,642,849 July 1, 1997
Claims 1 and 4 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Chen in view of Perkins.
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. 4, mailed January 10, 2003) and the answer (Paper No. 7, mailed
August 1, 2003) for the examiner's complete reasoning in support of the rejection, and
to the brief (Paper No. 6, filed June 10, 2003) for the appellant's arguments
thereagainst.
Appeal No. 2004-0364
Application No. 09/943,293
Page 3
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 1 and 4 under 35 U.S.C. § 103. Our reasoning for this determination follows.
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).
The appellant argues that it would not have been obvious at the time the
invention was made to a person of ordinary skill in the art to have modified Chen based
on the teachings of Perkins to arrive at the claimed subject matter. We agree.
Appeal No. 2004-0364
Application No. 09/943,293
Page 4
Claim 1 recites a nozzle assembly for nailers comprising, inter alia, a base plate
connected to an end of a magazine adapted to be connected to a body of the nailer; a
plurality of openings defined through the base plate and communicating with a plurality
of slots defined in a side of the magazine; a nozzle having two wings and each wing
having a groove in which one of two sides of the base plate is slidably received; pins
extending through the wings and engaged with the base plate; a plurality of nail guide
holes defined through the nozzle and communicating with the openings; two hooks
extending from the nozzle; and a cap mounted on the nozzle and having two apertures
through which the hooks are engaged.
Claim 4 recites a nozzle assembly for nailers comprising, inter alia, a base plate
connected to an end of a magazine adapted to be connected to a body of the nailer; the
base plate having two grooves defined therein; a plurality of openings defined through
the base plate and communicating with a plurality of slots defined in a side of the
magazine; a nozzle slidably engaged with the two grooves of the base plate; a plurality
of nail guide holes defined through the nozzle and communicating with the openings;
two hooks extending from the nozzle; and a cap mounted on the nozzle and having two
apertures through which the hooks are engaged.
Appeal No. 2004-0364
Application No. 09/943,293
Page 5
Chen's invention relates to a nail driving gun, more particularly to a barrel unit
with a removable cover plate for a nail driving gun. Referring to Figure 5, the preferred
embodiment of a barrel unit according to Chen's invention is shown to be installed on a
front end of a nail driving gun 30 and includes an elongated base plate 40 and an
elongated cover plate 50 to be superimposed on the base plate 40. The base plate 40
extends forwardly from the housing of the nail driving gun 10 and has a top side formed
with a longitudinal discharge groove 400, a pair of upwardly extending positioning lugs
41 which are disposed respectively on opposite sides of the discharge groove 400 and
which are located at a rear portion of the base plate 40, and a pair of upwardly
extending hooking lugs 42 which are disposed respectively on opposite sides of the
discharge groove 400 and which are located at a front portion of the base plate 40.
Each of the positioning lugs 41 has a rearwardly inclining rear end surface 411.
Chen's cover plate 50 is formed with a pair of first slots 51 and a pair of second
slots 52 which permit extension of a respective one of the positioning lugs 41 and the
hooking lugs 42 therethrough. Preferably, the first and second slots 51, 52 are slightly
longer than the respective one of the positioning lugs 41 and the hooking lugs 42. Each
of the first slots 51 has a rearwardly inclining end wall surface 511 which abuts against
the rear end surface 411 of the respective one of the positioning lugs 41 when the
cover plate 50 is superimposed on the base plate 40. An operating lever 53 is mounted
Appeal No. 2004-0364
Application No. 09/943,293
Page 6
pivotally on the cover plate 50 and is located between the first and second slots 51, 52.
A U-shaped fastener 54 has two ends connected pivotally to the operating lever 53.
Perkins' invention is directed to a self-clearing nose section for a powered
fastener-driving tool. As shown in Figures 1-6, a nose section 13 for a powered
fastener-driving tool T is provided which includes a fixedly mounted inner plate 17, and
a removable outer plate 21 which is mounted in face-to-face relation on the inner plate.
The plates cooperate with one another to form an elongated guideway 22 into which the
fasteners are successively fed and from which they are subsequently discharged by a
reciprocating driver element 14. Overlying the outer plate and mounted for slidable
movement thereon is a guard piece 24 which is adapted to cooperate with a safety
device to render the trigger for the tool either operative or inoperative depending upon
the relative position of adjustment of the guard piece with respect to the outer plate. A
pair of adjustable arms 30 and 31 are provided which overlie the guard piece and, when
in one position of adjustment, resiliently maintain the inner and outer plates in
assembled face-to-face relation.
After the scope and content of the prior art are determined, the differences
between the prior art and the claims at issue are to be ascertained. Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Appeal No. 2004-0364
Application No. 09/943,293
Page 7
Based on our analysis and review of Chen and claim 1, it is our opinion that one
difference is the limitation that the nozzle has two wings and each wing has a groove in
which one of two sides of the base plate is slidably received. Based on our analysis
and review of Chen and claim 4, it is our opinion that one difference is the limitation that
the nozzle is slidably engaged with the two grooves of the base plate.
As set forth above, 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. In this case, it is
our opinion that there is no evidence in the combined teachings of Chen and Perkins
that would have led one of ordinary skill in the art to have modified Chen to arrive at the
claimed invention. Thus, it is our view that the only suggestion for modifying Chen 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 knowledge to support an obviousness rejection under 35 U.S.C. § 103 is, of
course, impermissible. See, for example, W. L. Gore and Assocs., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984).
Appeal No. 2004-0364
Application No. 09/943,293
Page 8
For the reasons set forth above, the decision of the examiner to reject claims 1
and 4 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 and 4 under
35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2004-0364
Application No. 09/943,293
Page 9
CHARLES E. BAXLEY
HART, BAXLEY, DANIELS & HOLTON
90 JOHN STREET
THIRD FLOOR
NEW YORK, NY 10038
JVN/jg