Ex parte BABCOCK

Board of Patent Appeals and Interferences

Oct 8, 1998

08389904 (B.P.A.I. Oct. 8, 1998)

Application for patent filed February 16, 1995. 1
Claims 1, 3, 5, 11 and 15 were amended subsequent to the2
final rejection. Since the examiner did not include the
rejection of claims 1 through 11, 14 and 15 under 35 U.S.C.
§ 112, second paragraph, in the examiner's answer, we presume
that this ground of rejection raised in the final rejection
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journal and (2) is not binding precedent of the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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LLOYD A. BABCOCK, JR.
____________
Appeal No. 97-3068
Application No. 08/389,9041
____________
ON BRIEF
____________
Before COHEN, MEISTER, and NASE, 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 through 11, 14 and 15, which are all of
the claims pending in this application.2
Appeal No. 97-3068
Application No. 08/389,904
has been withdrawn by the examiner.
We REVERSE.
Appeal No. 97-3068 Page 3
Application No. 08/389,904
BACKGROUND
The appellant's invention relates to a fence wire
dispensing apparatus. An understanding of the invention can
be derived from a reading of exemplary claim 1, which appears
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:
Demmien 1,256,443 Feb. 12, 1918
Therrien 2,664,253 Dec. 29, 1953
Byfield, Jr. (Byfield) 4,579,358 April 1, 1986
Claims 1 through 5 and 7 through 11 stand rejected under
35 U.S.C. § 103 as being unpatentable over Byfield in view of
Therrien.
Claims 6, 14 and 15 stand rejected under 35 U.S.C. § 103
as being unpatentable over Byfield in view of Therrien and
Demmien.
Appeal No. 97-3068 Page 4
Application No. 08/389,904
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 14, mailed March 18, 1997) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 13, filed November 25, 1996) for the
appellant's arguments thereagainst.
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 through 11,
14 and 15 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
Appeal No. 97-3068 Page 5
Application No. 08/389,904
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 the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
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 1596, 1598 (Fed. Cir. 1988). Rejections based
on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
Appeal No. 97-3068 Page 6
Application No. 08/389,904
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
With this as background, we turn to the examiner's
rejection of claim 1, the only independent claim on appeal.
Claim 1 recites an apparatus for dispensing wire strands
from wire spools for construction of a wire fence, the
apparatus comprising, inter alia, a frame, a plurality of wire
spool receiving compartments wherein each compartment isolates
each of the wire spools from all other wire spools, and guide
means associated with each compartment. Claim 1 further
recites that the plurality of wire spool receiving
compartments include a first row of laterally disposed
compartments and a second row of laterally disposed
compartments disposed at a vertical location that is above the
first row of laterally disposed compartments. Claim 1 also
Appeal No. 97-3068 Page 7
Application No. 08/389,904
recites that each of the guide means is laterally separated
from adjacent guide means.
Byfield discloses a rack for spooled wire. As shown in
Figure 1, the rack includes a plurality of shelves 12
containing numerous apertures 13 in which spindles 14 can be
inserted. On or near the outer edge of each shelf 12 is a
wire guide 16 through which wire from a spool of wire can be
drawn.
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Byfield and claim 1,
it is our opinion that one difference is the limitation that
the plurality of wire spool receiving compartments include a
first row of laterally disposed compartments and a second row
of laterally disposed compartments disposed at a vertical
Appeal No. 97-3068 Page 8
Application No. 08/389,904
location that is above the first row of laterally disposed
compartments.
With regard to this difference, the examiner determined
(answer, p. 5) that
[t]o provide a "compartment" (as disclosed) for each
spool would have been obvious to a person having ordinary
skill in the art seeking to protect each spool from the
environment (including from adjacent spools) or for
aesthetic purposes. However, it should also be noted
that "compartment" is merely defined as a "partitioned
space" which is shown by Byfield, Jr. since holes 13 for
the spindles are spaced apart by a predetermined space.
We do not agree for the reasons set forth below.
First, Byfield does not disclose a rack having the
recited compartments. While the rack of Byfield (see Figure
1) does define two compartments defined between the three
shelves 12, Byfield does not disclose a first row of laterally
disposed compartments and a second row of laterally disposed
compartments disposed at a vertical location that is above the
first row of laterally disposed compartments as recited in
claim 1. In that regard, claim 1 recites that each
compartment isolates each of the wire spools from all other
Appeal No. 97-3068 Page 9
Application No. 08/389,904
We have also reviewed the references to Therrien and3
Demmien applied by the examiner, but find nothing therein
which makes up for the deficiencies of Byfield discussed
above.
wire spools. Clearly, the space between Byfield's shelves 13
define but one compartment capable of isolating wire spools in
one compartment from the wire spools in the other compartment.
Second, the examiner's determination that it would have
been obvious to provide a "compartment" for each spool to
protect each spool from the environment (including from
adjacent spools) or for aesthetic purposes is unsupported by
any evidence. There is no objective teaching in the applied
prior art or knowledge generally available to one of ordinary3
skill in the art that would have led that individual to modify
Byfield's rack to arrive at the claimed invention. Thus, we
agree with the appellant's argument (brief, pp. 9-10, 13-14,
and 16-18) that the applied prior art would not have been
suggestive of the claimed invention, absent impermissible
hindsight.
Appeal No. 97-3068 Page 10
Application No. 08/389,904
For the reasons set forth above, the decision of the
examiner to reject claims 1 through 11, 14 and 15 under 35
U.S.C. § 103 is reversed.
Appeal No. 97-3068 Page 11
Application No. 08/389,904
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 11, 14 and 15 under 35 U.S.C. § 103 is
reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-3068 Page 12
Application No. 08/389,904
DON M. BRADLEY
SHOOK HARDY & BACON
ONE KANSAS CITY PLACE
1200 MAIN STREET
KANSAS CITY, MO 64105-2118
APPEAL NO. 97-3068 - JUDGE NASE
APPLICATION NO. 08/389,904
APJ NASE
APJ COHEN
APJ MEISTER
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 06 Oct 98
FINAL TYPED: