Ex parte Anitole

Board of Patent Appeals and Interferences

Apr 28, 2000

08876762 (B.P.A.I. Apr. 28, 2000)

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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(2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GEORGE ANITOLE
__________
Appeal No. 1999-1039
Application 08/876,762
__________
ON BRIEF
__________
Before COHEN, ABRAMS, and CRAWFORD, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-4 and 11-13. Claims 5-10 have been
withdrawn from consideration as being directed to a non-
elected invention. No claims have been allowed.
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Application No. 08/876,762
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The appellant's invention is directed to a camouflage
structure. The claims before us on appeal have been
reproduced in an appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Volk 2,255,837 Sep. 16, 1941
Nilsson (PCT) 91/19872 Dec. 26, 1991
THE REJECTIONS
The following rejections stand under 35 U.S.C. § 103:
(1) Claims 1, 2, 4, 11 and 12 on the basis of Nilsson.
(2) Claims 3 and 13 on the basis of Nilsson and Volk.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejections, we make reference to the
Examiner’s Answer (Paper No. 14) and the Appellant’s Brief
(Paper No. 13).
OPINION
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
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in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima
facie case of obviousness, it is incumbent upon the examiner
to provide a reason why one of ordinary skill in the art would
have been led to modify a prior art reference or to combine
reference teachings to arrive at the claimed invention. See
Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985).
To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
The appellant’s invention pertains to three-dimensional
structures that provide building shape modification for
edifices in order to break up and camouflage the expanse and
form of large roofed buildings, and which can be deployed or
altered rapidly, on short notice. Independent claim 1 is
directed to “[a] three-dimensional shape modification
camouflage structure for camouflaging large, roofed edifices
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Application No. 08/876,762
We have interpreted the phraseology regarding “raising”1
and “lowering” as meaning between fully erected and completely
collapsed positions, in that these are the only two positions
in which the invention is disclosed as being utilized.
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from aerial observation.” The invention comprises a metal
frame of horizontal and vertical arrays of metal bar members
connected together by hinge means so they can be “raised or
lowered,” a fabric cover “imbued on its outside surface with
shapes and colors resembling detailed attributes of
surrounding smaller edifices for placement over the frame to
form a three-dimensional camouflage structure,” and crank,
cable, pulley and support means “wherein the frame is capable
of being raised and lowered repeatedly and successively with
the fabric cover placed over the frame.” Independent claim1
11 sets forth the invention in almost identical fashion,
except that it recites powered drive means capable of raising
and lowering the frame and directly connected to the frame.
Claims 1 and 11 stand rejected as being unpatentable over
Nilsson, which discloses an erectable structure comprising a
metal framework over which a canvas cover is stretched. The
structure is assembled in several stages. First, the beams
are placed in a row, with each beam positioned slightly
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inclined to the horizontal with the center portions
“approximately one meter above the ground” (page 3, lines 7
and 8; Figure 3), whereupon supplementary longitudinal beams
and cross-pieces are installed and the canvas cover is
unrolled over the frame. At this point, the frame is raised
“sufficiently far to provide sufficient headroom for a person
to stand underneath” (page 3, lines 32 and 33) and “further
erection is temporarily interrupted” so the canvas can be
stretched and secured to the frame at a number of attachment
points (page 3, lines 33-36). Upon completion of these steps,
the structure is pulled to its erect position by a winch and
cable. The process is reversed to disassemble the structure.
It is the examiner’s view that all of the subject matter
recited in claims 1 and 11 is taught by Nilsson except for the
material of which the frame is made and the “coloring” of the
cover and, as to claim 11, the powered drive means. However,
it is the examiner’s position that it would have been obvious
to one of ordinary skill in the art to make the frame of metal
because metal is a well-known material for making such
structures, to color the cover to resemble the detailed
attributes of the surrounding elements since such is “old and
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well known in the art of camouflaging,” and to replace the
mechanical drive means with powered means, on the basis of
routine skill in the art. In the Brief, the appellant argues
that the examiner has failed to provide evidence that it would
have been obvious to modify the Nilsson canvas cover to meet
the terms of the claims, particularly in view of the specific
problem to which the invention is directed, that is, providing
a structure that can be quickly erected from a collapsed
position to camouflage a location. The appellant additionally
asserts that the Nilsson device is not capable of being raised
and lowered repeatedly and successively with the fabric cover
placed over the frame.
It is our conclusion that the evidence adduced by the
examiner fails to establish a prima facie case of obviousness
with regard to the subject matter recited in independent
claims 1 and 11, essentially for the reasons pointed out by
the appellant. Nilsson’s disclosure is devoid of any teaching
regarding the color of the outside of the cover, much less
that the structure be used for camouflage. When challenged by
the appellant to produce evidence in support of the conclusion
that it would have been obvious to imbue the Nilsson cover
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with the claimed shapes and colors resembling detailed
attributes of the surrounding smaller edifices, the examiner
failed to produce such information. In addition, it is clear
from the description and operation of the Nilsson structure
that it was not intended ever to be in a fully collapsed
position, or even in the initial assembly (inclined) position,
with the cover in place over the frame, and therefore the
inventor appears not to have contemplated raising and lowering
the structure repeatedly.
Moreover, in our view, to conclude that the structure is
capable of being operated in the manner set forth in the
appellant’s claims is speculative.
In the final analysis, while the Nilsson structure might
be capable of being modified so that it meets the terms of the
appellant’s claims, the mere fact it could be modified does
not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). We find
such to be lacking here, for the only motivation to modify the
prior art device in the manner proposed by the examiner is
found in the luxury of the hindsight accorded one who first
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viewed the appellant’s disclosure. This, of course, is an
improper basis upon which to base a conclusion of obviousness.
See In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784
(Fed. Cir. 1992).
The shortcomings discussed above with regard to Nilsson
are not alleviated by further considering Volk, which was
applied to dependent claims 3 and 13 for its teaching of
providing bracing means for holding the vertical members of a
supplementary structure upright against the wall of a main
structure.
SUMMARY
Neither rejection is sustained.
The decision of the examiner is reversed.
REVERSED
Irwin Charles Cohen )
Administrative Patent Judge )
)
)
)
Neal E. Abrams ) BOARD OF
PATENT
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Application No. 08/876,762
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Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Murriel E. Crawford )
Administrative Patent Judge )
tdl
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US Army CECOM
AMSEL -RD-NV-CD-CCD (Mr. Anitole)
Night Vision and Electronic Sensors
Directorate 10221 Burbeck Road, Ste. 43
Ft. Belvoir, VA 22060-5806