Ex Parte Willems

Board of Patent Appeals and Interferences

Apr 26, 2006

09997934 (B.P.A.I. Apr. 26, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROGER P. WILLEMS
____________

Appeal No. 2006-0679
Application No. 09/997,934
____________

ON BRIEF
____________

Before FRANKFORT, CRAWFORD, and BAHR, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
Appellant originally appealed from the examiner’s final rejection of claims 1-30.
As indicated on page 4 of the answer (mailed April 20, 2004), the examiner has
withdrawn the rejection of claims 13-29. Accordingly, only claims 1-12 and 30 are
involved in this appeal.
We REVERSE and enter a new ground of rejection.
Appeal No. 2006-0679 Page 2
Application No. 09/997,934

BACKGROUND
The appellant's invention relates to a sprung surface handle pivotably mounted
on a base plate, the base plate provided with a raised handle-protecting part, or parts,
between an edge or edges of the plate and an arm or arms of the handle to protect the
handle from engagement with other objects (see present specification, page 1). A copy
of the claims under appeal is set forth in the appendix to the appellant's brief.

Applied Prior Art

Koll 2,715,243 Aug. 16, 1955
Willems 5,797,635 Aug. 25, 1998

The Rejection
Claims 1-12 and 30 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Koll in view of Willems.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding this appeal, we make reference to the examiner's answer for the
examiner's complete reasoning in support of the rejection and to the appellant's brief
(filed January 15, 2004) for the appellant's arguments thereagainst.

Appeal No. 2006-0679 Page 3
Application No. 09/997,934

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, and to the respective
positions articulated by the appellant and the examiner. As a consequence of our
review, we make the following determinations.
We note, at the outset, an inconsistency in the examiner’s decision, as
articulated on page 4 of the answer, to withdraw the rejection of independent claim 29
as being unpatentable over Koll in view of Willems and to maintain the like rejection of
claim 30, which depends from claim 29. This inconsistency is of no real consequence in
our decision as, for the following reasons, we have determined that the rejection of the
examiner cannot be sustained with respect to any of the claims.
Each of appellant’s claims 1-12 and 30 recites a sprung surface handle
comprising, inter alia, a base plate having an edge, a handle and a raised handle
protecting part, on said base plate, between an edge of the base plate and at least one
arm of the handle (or between an edge of the base plate and the handle, as in claim
30). Claims 1-12 additionally recite a handle-mounting plate on the base plate. The
examiner considers Koll’s bracket plate 5 to respond to the handle-mounting plate
recited in claims 1-12 and has determined that Koll lacks the mounting plate mounting
the handle to a base plate and the base plate having raised handle-protecting parts.
The examiner somehow finds suggestion to modify Koll to provide these lacking
Appeal No. 2006-0679 Page 4
Application No. 09/997,934

features in the teachings of Willems of providing a base plate (frame 40) with raised
protecting parts (projecting parts 127, 128) for use with a latching element having a
handle 66.
Willems discloses a latch for holding a pair of case parts together, the latch
including a frame 40 having a dish 42 for mounting in a hole in one of the two case parts
and a hasp 20 adapted for engaging a strike 16 mounted on the other case part. The
hasp 20 has a first end mounted on one end of a slide 70 slidingly mounted on the
bracket 50 fixed to the dish 42 and has a second end provided with a catch 26 for
engaging the strike 16. A bolt 30 is mounted on the slide to move up and down with the
slide, can turn about a bolt axis 64 and has a handle 66 pivotally mounted thereto that
enables turning of the bolt to move the hasp 20 until the catch 26 presses firmly down
against the strike 16. The bolt 30 is moved in the opposite direction to raise the hasp 20
so that the hasp can pivot out of line with the strike 16. As disclosed in column 3, lines
17-28 of Willems,
[t]he dish perimeter 46 includes primarily the flat flange 48
especially at the middle top 122 and middle bottom 124,
where the hasp lies in its use and and [sic] stowed positions.
The perimeter also has six projecting parts 130 that help
strengthen the dish perimeter and that also provide rounded
bumps that keep objects away from the dish so they are less
likely to engage other parts of the latch that could harm a
person or another package. The projecting parts include
four parts 127 at the four corners of the rectangular flange,
and two vertically elongated projecting parts 128 at the
laterally opposite sides of the flange. The projecting parts
Appeal No. 2006-0679 Page 5
Application No. 09/997,934

project by more than twice the thickness T of the sheet
metal.

Given the disparate structures and functions of Koll’s handle assembly and
Willems’ latch, Willems would not appear to provide any suggestion to modify the Koll
handle assembly to provide a base plate to which the bracket plate is mounted and to
provide raised or projecting parts, such as projecting parts 127, 128 of Willems, on such
base plate to keep objects away from Koll’s handle, as the examiner contends on pages
4 and 5 of the answer.1 From our perspective, the only suggestion for modifying Koll’s
handle assembly in this manner is found in the luxury of hindsight accorded one who
first viewed appellant’s disclosure. This, of course, is not a proper basis for a rejection.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).

NEW GROUND OF REJECTION
Pursuant to our authority under 37 CFR § 41.50(b), we enter the following new
ground of rejection.
Claims 29 and 30 are rejected under 35 U.S.C. § 102(b) as being anticipated by
Koll.

Unlike claims 1-12, claims 29 and 30 do not recite a handle-mounting plate on
the base plate or any of the details of the handle. Koll discloses a handle assembly
Appeal No. 2006-0679 Page 6
Application No. 09/997,934

comprising a base plate (bracket plate 5) having edges, a handle (hand grasp 7)
rotationally mounted on said base plate, a raised handle protecting part (stops 25, 26)
on said base plate between the top edge thereof and said handle, when said handle is
adjacent said base plate, and a spring 18 to bias said handle adjacent said base plate
(see column 2, lines 6-10).

CONCLUSION
To summarize, the decision of the examiner to reject claims 1-12 and 30 is
REVERSED and a new ground of rejection of claims 29 and 30 is entered pursuant to
37 CFR § 41.50(b).
This decision contains a new ground of rejection pursuant to 37 CFR § 41.50(b)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz.
Pat. Office 21 (September 7, 2004)). 37 CFR § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial review."
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two options
with respect to the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence

1 We presume this to be the “modification” referred to by the examiner on page 4 of the answer.
Appeal No. 2006-0679 Page 7
Application No. 09/997,934

relating to the claims so rejected, or both, and have the
matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .

(2) Request rehearing. Request that the proceeding
be reheard under 37 CFR § 41.52 by the Board upon the
same record. . . .

No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
REVERSED; 37 CFR § 41.50(b)

CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2006-0679 Page 8
Application No. 09/997,934

Robert D. Hornbaker
Freilich, Hornbaker & Rosen
10960 Wilshire Blvd., Suite 1220
Los Angeles, CA 90024

M TEAM

TINA LEE
JENINE GILLIS
KIMBERLY INABINET

APPEAL NO. 2006-0679
APPLICATION NO. 09/997,934

Copies:

______ APJ BAHR

______ APJ FRANKFORT

______ APJ CRAWFORD

DECISION: REVERSED; 37 CFR § 41.50(b)

PREPARED: May 13, 2006

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