*2 Judge, Acting RICH, Chief Before ALMOND, MARTIN, SMITH Judge Judges, H. KIRKP WILLIAM ATRICK* Judge. SMITH, appeal presents issues for de- This two decide, termination: light first must we arguments presented court, opinions Ap- the Board of record, appeal- peals, and the whether the ed claims1 stand §§ U.S.C. 103; second, 102 or re- whether the jection may be sustained. re-

We hold on the first issue that the jection is under the of 35 terms 103 and on the second issue that it cannot be sustained.

The Invention and the Prior Art by The invention defined oscillating sprinkler claims is an water watering by quoted lawns. Claim Rose, George Clark, Chicago, Neil M. R. board, describes the invention when (Homer Montague, R. Washington, Pigs. considered with 1 and 5 herein re- C., counsel) appellant. D. produced : Judge application 188,407, 1. In District Ser. No. filed States Senior * United Apr. Pennsylvania, Sprinkler.” des entitled “Lawn the Eastern District of place ignated participate in of Chief examiner three claims. allowed provisions appeal. WORLEY, pursuant Judge Claims 1-9 are here on 294(d), States Title United of Section Code. ing 1. An elongated oscillating spray tube, ^[38] compris- car- time utilizing spray pattern rigid while at This rier means manual said spray operable angles [54], axis, pivotal tube on said carrier to said water motor [inside positioning means oscillate [46, about a horizontal axis, *3 [40,42] etc.] ^[47] for said carrier about for selective at various housing] [40, said variation in the width preferred As to the axis about oscillation as in the a result tube about an axis not embodiment, accomplished always of this .parallel to which rotation, perpendicular which, conventional rotating oscillates. defining sup- oscillating sprinkler. for a water conduit etc.] plying water to rejected claims The stand being water seal- last-mentioned means teachings patent: of one view the [40, 42, ed at of said various 46] 13,1883 288,222 Nov. Fiad angles, positioning of said describing “Ap- Fiad, The According appellant, Streets,” paratus Sprinkling are best for provides portions present The invention understood Figs. varying length and width 8 and 10 that reference: agree parties an to the amount of rotation utili Fiad shows without zing g2. plates sprinkling apparatus wherein curved streets (Fig. nozzle G rack h oscillation of causes g2may 8) plates moved for curved Rejection spray pat adjustment of the The board its decision reversed the a itself tern. The board concerned rejection then stat- of the examiner. It single Fiad. It ob feature of structural ed: Fiad, which nozzle of served that 196(b) provisions Rule to hollow Under the Fiad stated was “screwed” shaft rejected unpatent- F, claims 1 to 9 are rotated * * * proportion patent. able the Fiad be controlled over could argu- Hughes like further ion did not board elaborate dissenting opinion and, “unpatentable even the ment and over” proposi- Hughes support here, does not far considered the so as relevant together. Moreover, the solicitor’s pealed tion. claims per se “unpatentable over” here Appellant, interpreting de- the board’s po- 103 is means section rehearing, petition in his cision re argued by in In the solicitor sition Molnar, stated: pending be- presently PA tacitly While the seems urged it is In Molnar court. fore this actual admit that there is no disclosure per “unpatentable se over” patent contemplation or rotating citing re In 102 and both sections respect to the nozzle withG Foster, F, position taken the hollow shaft standing over,” “unpatentable The term “provides that Fiad a means which *4 only are alone, the claims that means spray F on carrier mounts to tube each reference and in of the view positioning.” selective manual to ascertain must be examined case gist rejection appears of that to be grounds rejection. precise of pro- is no in there invention involved viding adjustable an connection be- argued appel Second, that it is tween the and the oscil- nozzle statutory adequate of the lant had notice lating carrier. meaning ground rejection, section of way any, by of board, rehearing, remedy, was in its decision on and his following princi citing 196(b), stated in answer: Rule supra, * * ple Hughes, * F.2d at 185: 345 from Appellant our states * ** rejection ground of re- “providing” new involves ad- And if the an such, justable jection properly as in in is identified connection Fiad. This is rejection way prejudiced, applicant error since our on is in no is based adequate fact that a threaded connection is of for procedural has the benefit he 196(b). adjustable safeguards itself an and the of Rule connection directly claims read on Fiad without applicable principle where The above being anything “provided” therein. properly grounds rejection are new argument rejection The board also This stated the was as such. identified statutory surmising proper despite help in what “different structure” no ground rejection shown in intended. the reference in the board view appellant “broadly structure claimed.” argued Third, follows: it is argues Appellant suspect- that while he least, Office, at Before Patent ed the basis the board’s new statutory sec- lack of concern over this was section 103 first after the board’s Many practitioners common. tions is decision, language (“the read claims establishing some in realize that success directly Fiad”) by on in the board given mere- a reference difference over opinion clearly its second establish that larger ly of a invites consideration section 102 was intended. question, dif- “the or not viz. whether * * * are such that ferences arguments The solicitor’s in re would have as a whole matter First, argued buttal are fourfold: it is invention been obvious at the time the that “The Board’s 1-9 claims having ordinary person made to a unpatentable patent’ ‘as over * * * Hence, the .” skill the art signifies citing rejection,” a section 103 ques- comprehensive section more support dissenting opinion thereof the argued, than rather tion is oftentimes Hughes, 184, 185, in In re job half done. leave 1355, “particularly CCPA footnote 5. '[sic, footnote argument We are uncon Apparently 2?]” as- has two this by vinced first, or pects the citations and : in candor it is offered support majority opin- honesty practice thereof. explain to before ly Office; second, said carrier it seeks to connected oscillate and axis, argued said conduit the “sec- means about a water establish * * * extending question trans- rather than from said tion 103 length job versely it said leave the done.” We think half mounting contrary express said conduit directly water would be carrier means rotation of 35 such said terms to condone and, perpendicular to said about a “lack of if it does exist concern” vary further, size would to our deci- horizontal axis sprinkler, supra, said said Hughes, sion in to assume that argued pellant said conduit in- water section 103. rotary cluding retain- water seal and argued Finally, as follows: ing holding spray tube * * * Contrary appellant’s posi- any rotary position selected * * * portion of tion the aforesaid respect to carrier means. concerning Board’s read- statement Appellant explains: ability of the claims Fiad should portion construed, broadly of the claim not be out of The italicized context ** * represents significant aspect of the there literal sense. acknowledged claim defines remain means of which it dif- manifest Owing patentably over the art. ferences which in- belie reasonable Appellant’s the fact that invention ference the Board was charac- *5 terizing aspect being its addi- broadest involves the here as un- spray pattern tion of width ad- der 35 the U.S.C. 102. justment oscil- a conventional Proceeding proper in the manner to de- lating sprinkler, claim of elements ground statutory termine the of ad- 3 which are not italicized above are intended, from and be- the records briefs mittedly art in the conventional and old us, argu- fore and the oral oscillating sprinklers. other ment, we are that the in- convinced board reciting appeal claims on are similar in tended section find 103. As we that this oscillating more or less conventional rejection may not be sustained need we including and structure possible prejudice not consider the combination novel pellant arising from the failure of the spray provides hereto- tube which comply Patent Office 35 with U.S.C. § adjustment fore unknown width said, however, 132. It must be that there spray pattern. justifiable is no reason that a should case every appear in Each and one of the claims this court absent a statement appeal permitting position recites the structure Patent Office as to statutory adjustment spray grounds this tube rejection. between the oscillating supporting 132) and (35 It is to statute ** * and involves a needless waste of time Office, and the Solicitor’s argues: The solicitor briefing arguing question; ** * is no for as There warrant time, deciding question. of the court’s suming a appreciate did not Fiad joint pipe normal between connection Appeal Merits of carrier F and nozzle would afford G Appellant’s position is clear: the sub- On positioning of latter. suitable ject por- matter defined in the italicized hand, appar the other he [Fiad] below, tion of claim set forth ently possible of its use unaware differs from Fiad and would not ob- be varying spray pattern vious view of Fiad. manner, relying appellant’s instead oscillating sprinkler comprising g2 plates 3. An slide therefor. This elongated ordinary here, consequence an carrier means no an since pivotal pipe joint for tube about a his carrier threaded between driving- axis, power horizontal a F and could be to effect nozzle G

411 adjustment appellant’s proof keep man width and means it in the desired recognized by position, produces ner. This was the Board no new functions with (R-59). patent respect parts individually any an “A mechanical nor ticipated surprising parts con device of like new or result of the as capable performing Supreme struction and sembled as a Court whole. Carnegie function,” Co., in Graham v. John 86 S.Ct. [Steel Deere Co.], 684, February 21, 1966, v. Cambria 185 U.S. forth the Co.] has set [Iron ^[*] ^[*] ^[*] [22 S.Ct. 46 L.Ed. 968] tests for which, obviousness under when applied to the facts U.S.C. here, § should, believe, I result in affirmance device, We do not think of the board. interpreted by solicitor, of like performs construction which same appellant’s

function as device nor does rotary

make obvious “a water seal and retaining holding means for rotary position selected

respect means,” to said carrier as defined in claim 3. think We it is too strained adjustable to maintain that an spray pattern may obtained device, by initially ignoring the Fiad Robert L. DREYFUS and John W. Fiad, construing Harrison, Appellants, rotary “screwed” connection to mean “a v. retaining water seal and means.” See In Thornhill, STERNAU, re Appellee. 49 CCPA 1179. Martin M. Appeal No. 7563. Considering the be differences sought tween matter to be United States Court of Customs *6 patented single and the Appeals. record, art not reference we do March 1966. find that matter as a whole would have been obvious at the time the having person

invention was made to or dinary skill in this art. 35 U.S.C. §

The decision of the board is reversed.

Reversed.

KIRKPATRICK, Judge (dissenting). agree

I cannot the decision

majority as to the non-obviousness majority opinion points

invention. The

out that nozzle of Fiad is

attached his a threaded connection to oscillating carrier, appears me and it quite that, obvious nozzle is turned thread, pat- on its vary. pre-

tern fact will that Fiad vary ferred other means to does not affect the obvious- physical

ness of this fact. disclosure, providing a

Given this

joint permits the rotation of the which

nozzle, joint means to make the water-