Ex parte Yamanaka

Board of Patent Appeals and Interferences

Jan 4, 2000

08890744 (B.P.A.I. Jan. 4, 2000)

Application for patent filed July 11, 1997. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MASAHIRO YAMANAKA
____________
Appeal No. 1999-2370
Application No. 08/890,7441
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, 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 claim 25, which is the only claim pending in this
application.
Appeal No. 1999-2370
Application No. 08/890,744
We REVERSE.
Appeal No. 1999-2370 Page 3
Application No. 08/890,744
BACKGROUND
The appellant's invention relates to a bolt. An
understanding of the invention can be derived from a reading
of claim 25, a copy of which appears in the opinion section
below.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Sedgwick 1,389,997 Sept. 6,
1921
Claim 25 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Sedgwick.
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.
5, mailed June 25, 1998) and the answer (Paper No. 8, mailed
January 28, 1999) for the examiner's complete reasoning in
support of the rejection, and to the brief (Paper No. 7, filed
Appeal No. 1999-2370 Page 4
Application No. 08/890,744
November 10, 1998) and reply brief (Paper No. 9, filed April
1, 1999) for the appellant's arguments thereagainst.
Appeal No. 1999-2370 Page 5
Application No. 08/890,744
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 reference, 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 claim 25. Accordingly, we will not sustain
the examiner's rejection of claim 25 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 the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 458 F.2d 1013, 1016, 173
Appeal No. 1999-2370 Page 6
Application No. 08/890,744
USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to arrive at the claimed invention. See In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections
based on § 103 must rest on a factual basis with these facts
being interpreted without hindsight reconstruction of the
invention from the prior art. The examiner may not, because
of doubt that the invention is patentable, resort to
speculation, unfounded assumption or hindsight reconstruction
to supply deficiencies in the factual basis for the rejection.
See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
Claim 25 reads as follows:
A bolt (54) comprising:
a head(541);
a threaded section (542) concentric with the
head(541) and having a diameter greater than the head
(541);
a flange (55) disposed between the head (541) and
the threaded section (542), the flange (55) having a
Appeal No. 1999-2370 Page 7
Application No. 08/890,744
diameter greater than the diameter of the threaded
section (542); and
wherein the head (541) defines a multiple-sided
tool-engaging hole (59) which extends axially into the
threaded section (542).
We now turn to the examiner's rejection of claim 25. The
examiner found (final rejection, p. 2) that
Sedgwick discloses a bolt comprising a head (20) and a
threaded section (27) with a flange (26) therebetween.
The bolt includes a tool-engaging hole extending through
both the head and threaded sections. Sedgwick discloses
a head and the threaded section being the same diameter.
The examiner then determined that
it would have been obvious matter of design choice for
one of ordinary skill in the art to change the relative
sizes of the bolt including wherein the threaded section
is greater than the head because the relative sizes are
not critical. Furthermore, a larger threaded portion
would strengthen the threaded connection.
We agree with the argument of the appellant that there is
no evidence in the applied prior art (i.e., Sedgwick) that
would have suggested modifying the diameter of Sedgwick's
threaded section (27) to have a diameter greater than the
diameter of the head (20). Evidence of a suggestion,
Appeal No. 1999-2370 Page 8
Application No. 08/890,744
teaching, or motivation to modify a reference may flow from
the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature
of the problem to be solved, see Pro-Mold & Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630
(Fed. Cir. 1996), Para-Ordinance Mfg. v. SGS Imports Intern.,
Inc., 73 F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir.
1995), although "the suggestion more often comes from the
teachings of the pertinent references," In re Rouffet, 149
F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). The
range of sources available, however, does not diminish the
requirement for actual evidence. That is, the showing must be
clear and particular. See, e.g., C.R. Bard, Inc. v. M3 Sys.,
Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225, 1232 (Fed. Cir.
1998). A broad conclusory statement regarding the obviousness
of modifying a reference, standing alone, is not "evidence."
E.g., McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576,
1578, 27 USPQ2d 1129, 1131 (Fed. Cir. 1993); In re Sichert,
566 F.2d 1154, 1164, 196 USPQ 209, 217 (CCPA 1977). See also
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999). In our view, the examiner's above-noted
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Application No. 08/890,744
obviousness determination is based on speculation unsupported
by any evidence. Since the applied prior art would not have
made the claimed subject matter obvious under 35 U.S.C. § 103
for the reason set forth above, the decision of the examiner
to reject claim 25 under 35 U.S.C. § 103 is reversed.
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Application No. 08/890,744
CONCLUSION
To summarize, the decision of the examiner to reject
claim 25 under 35 U.S.C. § 103 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-2370 Page 11
Application No. 08/890,744
JAMES A. DELAND
J. DELAND LAW OFFICE
2010 CROW CANYON PLACE
SUITE 100
SAN RAMON, CA 94583
APPEAL NO. 1999-2370 - JUDGE NASE
APPLICATION NO. 08/890,744
APJ NASE
APJ BAHR
SAPJ McCANDLISH
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 20 Dec 99
FINAL TYPED:
Gloria: Note panel changed