Ex parte Alexander

Board of Patent Appeals and Interferences

Apr 9, 2001

08794869 (B.P.A.I. Apr. 9, 2001)

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for publication and is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KEVIN L. ALEXANDER
____________
Appeal No. 2000-1296
Application No. 08/794,869
____________
ON BRIEF
____________
Before ABRAMS, NASE, and GONZALES, 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 to 6, which are all of the claims
pending in this application.
We REVERSE.
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Application No. 08/794,869
BACKGROUND
The appellant's invention relates to a dispensing device
for a coating material. 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:
Woodson 4,815,241 Mar. 28,
1989
Chabert 5,353,995 Oct. 11,
1994
Claims 1 to 6 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Chabert in view of Woodson.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 15,
mailed July 27, 1999) for the examiner's complete reasoning in
support of the rejection, and to the brief (Paper No. 14,
filed July 1, 1999) and reply brief (Paper No. 16, filed
August 16, 1999) for the appellant's arguments thereagainst.
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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 to 6 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
Appeal No. 2000-1296 Page 5
Application No. 08/794,869
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Claim 1, the sole independent claim on appeal, reads as
follows:
A dispensing device for a coating material, the
dispensing device including an outer portion including a
first, inner surface, the outer portion having a central
passageway for mounting the outer portion on a rotary
shaft for rotating the dispensing device, and an inner
portion having a second, outer surface shaped
complementarily to the first surface and a somewhat bell-
or cup-shaped third, inner surface, and means for
retaining the inner portion in the outer portion with the
first and second surfaces in engagement.
In the rejection before us in this appeal (answer, pp. 3-
4), the examiner set forth the pertinent teachings of Chabert
and Woodson. In addition, the examiner stated that "Chabert
does not show an inner portion having a second outer surface
shaped complementarily to the inner surface of the outer
portion." Thereafter, the examiner concluded that
[i]t would have been obvious to one of ordinary skill in
the art at the time the invention was made to have added
an inner portion of complementarily shape to the outer
portion of Chabert's dispensing device so as to be able
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Application No. 08/794,869
to provide a suitable wear and erosion resistant liner as
shown and taught by Woodson.
The Supreme Court observed in Graham v. John Deere Co.,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966):
While the ultimate question of patent validity is
one of law, . . . the § 103 condition [that is,
nonobviousness] . . . lends itself to several basic
factual inquiries. Under § 103, the scope and
content of the prior art are to be determined;
differences between the prior art and the claims at
issue are to be ascertained; and the level of
ordinary skill in the pertinent art resolved.
Against this background, the obviousness or
nonobviousness of the subject matter is determined.
Such secondary considerations as commercial success,
long felt but unresolved needs, failure of others,
etc., might be utilized to give light to the
circumstances surrounding the origin of the subject
matter sought to be patented. As indicia of
obviousness or nonobviousness, these inquiries may
have relevancy.
Thus, initially, the scope and content of the applied
prior art are to be determined. This the examiner has done
(answer, p. 3). Next, the differences between the applied
prior art and the claims at issue are to be ascertained. The
examiner has not correctly ascertained the actual differences
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Application No. 08/794,869
between the applied prior art (i.e., Chabert) and the claims
at issue (e.g., claim 1) as explained below. Thus, the
examiner has not determined if the ascertained differences
between the subject matter sought to be patented and the prior
art (i.e., Chabert) are such that the subject matter as a
whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art.
Based on our analysis and review of Chabert and claim 1,
it is our opinion that the differences are (1) "an inner
portion having a second, outer surface shaped complementarily
to the first [inner] surface [of the outer portion] and a
somewhat bell- or cup-shaped third, inner surface," and (2)
"means for retaining the inner portion in the outer portion
with the first and second surfaces in engagement."
Since the examiner has not determined that the above-
noted differences between the subject matter sought to be
patented and the prior art (i.e., Chabert) are such that the
subject matter as a whole would have been obvious at the time
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Application No. 08/794,869
the invention was made to a person having ordinary skill in
the art, we are constrained to reverse the decision of the
examiner to reject claims 1 to 6 under 35 U.S.C. § 103.
Moreover, assuming arguendo that Woodson is analogous art
as explained by the examiner (answer, p. 4), we find ourselves
in agreement with the appellant's argument (brief, pp. 5-8;
reply brief, pp. 2-5) that there is no motivation in the
applied prior art to modify Chabert's ionizer head by
Woodson's wear liner tube. Instead, it appears to us that the
examiner relied on hindsight in reaching his obviousness
determination. However, our reviewing court has said, "To
imbue one of ordinary skill in the art with knowledge of the
invention in suit, when no prior art reference or references
of record convey or suggest that knowledge, is to fall victim
to the insidious effect of a hindsight syndrome wherein that
which only the inventor taught is used against its teacher."
W. L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). It is essential that "the decisionmaker forget what
he or she has been taught . . . about the claimed invention
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and cast the mind back to the time the invention was made . .
. to occupy the mind of one skilled in the art who is
presented only with the references, and who is normally guided
by the then-accepted wisdom in the art." Id.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 6 under 35 U.S.C. § 103 is
reversed.
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Application No. 08/794,869
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 6 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
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
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BARNES & THORNBURG
11 SOUTH MERIDIAN STREET
1313 MERCHANTS BANK BUILDING
INDIANAPOLIS, IN 46204
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