Appeal No. 2004-2286
Application 09/960,193
USPQ 11, 15 (CCPA 1978). Indeed, appellant supplies no evidence in support of his arguments
that the “taper’ of Wilson’s screw requires “a hole to be pre-drilled,” or that one of ordinary skill
in the art would recognize that “the very existence of the drive point in appellant’s claims
requires that limitation of the substantially straight, untapered barrel and permits no other
structure” (brief, pages 7-8).
Furthermore, there is no basis in Wilson for appellant’s allegation that the screw of the
reference has a first set of threads adjacent the head having a low pitch number relative to the
second set of threads adjacent the drive point, for indeed, it is clear from col. 1, lines 35-42, of
page 1 of the reference that the first set of threads has a “fine pitch” and the second set of threads
has a “coarse pitch,” which satisfies limitation “(f)” of appealed claim 1, as the examiner points
out (answer, pages 4-5). Cf. specification, page 4, lines 16-21.
With respect to the ground of rejection under § 103(a), appellant contends that Wilson’s
screw requires a pre-drilled hole and thus “[a]ppellant’s advantages are undisclosed” by the
reference (brief, page 9); that Habermehl does not overcome the alleged differences between the
claimed screw and that of Wilson; and that Habermehl alone does not establish obviousness
because the nail of Habermehl does not have a “score break” and thus “the only purpose thereof
is to show a square drive for the screw” (brief, page 10). We cannot agree,
We considered appellant’s pre-drilled hole allegations above. With respect to
Habermehl, we agree with appellant that the double pitch screw of this reference differs solely
from the claimed double pitched screw of appealed claim 4 in the absence of a score line.
However, we determine that one of ordinary skill in this art would have interchanged the slot
drive socket of Wilson with the square drive socket of Habermehl in the reasonable expectation
of driving the screw. See generally, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981)(“The test for obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references. Rather, the test is what
the combined teachings of the references would have suggested to those of ordinary skill in the
art.”); In re Siebentritt, 372 F.2d 566, 567-68, 152 USPQ 618, 619 (CCPA 1967) (express
suggestion to interchange methods which achieve the same or similar results is not necessary to
establish obviousness). The fact that the screw of Habermehl is not disclosed to have a “break
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