Ex parte Arbuckle

Board of Patent Appeals and Interferences

Sep 21, 1998

08456109 (B.P.A.I. Sep. 21, 1998)

Application for patent filed May 31, 1995.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 8
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GARRY D. ARBUCKLE
_____________
Appeal No. 97-2780
Application 08/456,1091
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge and
FRANKFORT and NASE, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
and
REMAND TO THE EXAMINER
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 6 under 35 U.S.C. § 103. No
other claims are pending in the application.
Appeal No. 97-2780
Application 08/456,109
The recitation of “a respective cavity” in line 7 of claim 1 lacks2
antecedent basis. However, when read in context with the remainder of the claim, it is
apparent that the cavity is intended to refer to the specific form of the holder for
each lightweight object. Although this informality does not obscure the metes and bounds
of the claimed invention, it nonetheless is deserving of correction in the event of
further prosecution before the examiner.
2
Appellant’s claimed invention relates to a novelty
display device or novelty display item, as it is called in the
appealed claims. According to claim 1, the only independent
claim on appeal, the novelty display item comprises a
plurality of lightweight objects (4-6) each formed of a soft
foam resilient material, a rigid base (7) having an array of
holders for holding the lightweight objects, and a label (8-
10) with a different lettered message attached to the base
under each object. As disclosed in appellant’s specification,2
the novelty display item may be used in a meeting in which
participants are free to select one of the lightweight
objects, depending upon the message on the associated label,
and to toss the selected object at the speaker.
A copy of the appealed claims is appended to
appellant’s brief.
Appeal No. 97-2780
Application 08/456,109
3
The following references are relied upon by the
examiner as evidence of obviousness in support of his
rejection under 35 U.S.C. § 103:
Kelling 3,073,661 Jan. 15, 1963
Alton 4,955,485 Sep. 11, 1990
Claims 1 through 6 stand rejected under 35 U.S.C. § 103
as being unpatentable over Alton in view of Kelling. According
to the examiner’s findings (see pages 3-4 of the answer),
Alton discloses a display base having a plurality of cavities
for displaying baseballs or other items. Based upon his
analysis of the scope and content of the Alton reference, the
examiner concedes that Alton lacks a teaching of labels on the
base (see page 3 of the answer) and, also, a teaching of
forming the displayed items or objects from a soft, foam
resilient material as called for in appealed claim 1 (see
pages 4-5 of the answer).
With regard to the difference pertaining to the labels,
the examiner concludes that the teachings of Kelling would
have made it obvious “to modify Alton by attaching labels to
Appeal No. 97-2780
Application 08/456,109
4
the base since this would allow additional information to be
displayed with regard to the balls placed on the base”
(answer, page 4). With regard to the difference pertaining to
the material used to form the displayed objects, the examiner
asserts that because “soft foam rubber balls are well known in
the art, it is considered to have been obvious to one [of
ordinary skill] in the art to modify Alton by using soft foam
rubber balls instead of baseballs since foam balls are just
one of the many types of balls that could be stored on the
base” (emphasis added; answer, page 4). The examiner
additionally maintains on page 5 of the answer that “[i]t is
considered to be within one skilled in the art [sic, within
the skill of the art] to place any known type of spherical
object on the stand of Alton . . .”
Even if it is assumed arguendo that it would have been
obvious to provide labels on Alton’s base, we nonetheless
cannot agree that the examiner has made out a prima facie case
of obviousness with respect to the claimed subject matter. In
the first place, the mere fact that Alton’s display device
“could be” modified to form the balls from a soft foam
Appeal No. 97-2780
Application 08/456,109
5
material as proposed by the examiner, would not have made the
modification obvious unless the prior art suggested the
desirability of making the modification. See In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Moreover, the mere fact that soft foam rubber balls “are
well known in the art,” presumably in the prior art, also is
insufficient basis by itself for establishing the requisite
motivation for modifying the display device of Alton. See
Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1549, 220 USPQ
193, 199 (Fed. Cir. 1983) and Custom Accessories, Inc. v.
Jeffrey-Allan Industries, Inc., 807 F.2d 955, 959, 1 USPQ2d
1196, 1198 (Fed. Cir. 1986). Furthermore, in making a
determination of obviousness under § 103, the criterion is not
measured in terms of what would have been within the level of
ordinary skill in the art as intimated by the examiner on page
5 of the answer. Instead, there must be some teaching,
suggestion or inference in the prior art as a whole or some
knowledge generally available to one of ordinary skill in the
art that would have led one of ordinary skill in the art to
make the modification needed to arrive at the claimed
Appeal No. 97-2780
Application 08/456,109
6
invention. See inter alia, In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed Cir. 1988). No such suggestion is found
in the prior art relied upon by the examiner.
Based on the prior art before us, we therefore cannot
sustain the examiner’s § 103 rejection of the appealed claims.
This application is herewith remanded to the examiner to
consult with the examiner who examines in Class 273 to
determine if there is a relevant field of search in Class 273.
The examiner’s decision rejecting appealed claims 1 through 6
is reversed.
Appeal No. 97-2780
Application 08/456,109
7
REVERSED
)
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
HEMc:yrt
Appeal No. 97-2780
Application 08/456,109
8
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