Ex Parte Ball

Board of Patent Appeals and Interferences

Apr 15, 2003

09777647 (B.P.A.I. Apr. 15, 2003)

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for publication and is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM T. BALL
____________
Appeal No. 2003-0223
Application No. 09/777,647
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claim 5, which
is the only claim pending in this application.
We REVERSE.
Appeal No. 2003-0223
Application No. 09/777,647
Page 2
BACKGROUND
The appellant's invention relates to a waste water strainer assembly.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Wentzel et al. (Wentzel) 1,661,983 Mar. 6, 1928
Steele 2,697,840 Dec. 28, 1954
Lantz et al. (Lantz) 3,169,254 Feb. 16, 1965
Mowery 5,363,518 Nov. 15, 1994
The admitted prior as set forth in on page 1 of the appellant’s specification.
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable over the
admitted prior art in view of Mowery, Lantz, Steele and Wentzel.
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. 11) and the final rejection (Paper No. 7) for the examiner's complete
reasoning in support of the rejections, and to the Brief (Paper No. 10) and Reply Brief
(Paper No. 12) 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. As a consequence
of our review, we make the determinations which follow.
Appeal No. 2003-0223
Application No. 09/777,647
Page 3
The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill 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).
Claim 5 stands rejected as being unpatentable over applicant’s admitted prior
art, Mowery, Lantz, Steele and Wentzel (Paper No. 7, page 2). The examiner has
described the admitted prior art in terms of portions of the appellant’s invention as
shown in Figures 1-4, and has concluded that it “teaches all claimed elements except
for a circular horizontal flange (analogous to 28) of the drain assembly being threadingly
attached via a bushing to an attachment bushing (analogous to 40)” (Paper No. 7, page
3). The examiner continues by pointing out features of the devices disclosed by
Mowery, Lantz, Steele and Wentzel (Paper No. 7, pages 3 and 4). However, nowhere
does the examiner explain how the device of the admitted prior is to be modified in
Appeal No. 2003-0223
Application No. 09/777,647
Page 4
accordance with the teachings of each of the reference patents to meet the terms of
claim 5, nor does he set forth the reasons why one of ordinary skill in the art would have
been motivated to make such modifications. The examiner merely makes the
unsubstantiated conclusionary statement that “the feature of threadingly attaching a
circular horizontal flange to an attachment bushing, thereby creating a two-piece drain
assembly, is well known in the art” (Paper No. 7, page 3). The examiner provides an
indication of suggestion to combine references only with regard to Mowery, but in this
regard he erroneously opines that Mowery provides a circular horizontal flange
threaded into a drain assembly “to allow easy replacement of the flange in the event the
flange becomes tarnished” (Paper No. 7, page 3) when, in fact, no such suggestion
appears in Mowery, who teaches covering the flange with a replaceable decorative cap
52 to hide such tarnish (see column 1, line 67 et seq., column 4, lines 22-32, and
column 5, lines 4-12). Thus, to the extent that Mowery suggests a solution to the
tarnish problem, it is replacing the drain cap and not the circular flange.
The mere fact that the prior art structure 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). The examiner
has neither provided an explanation of how the device of the admitted prior art would be
modified to meet the terms of claim 5 nor set forth the suggestion provided by the prior
art for doing so, even though the appellant challenged him in this regard in the Brief
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Application No. 09/777,647
Page 5
(pages 6 and 7) and the Reply Brief (pages 3-7). Therefore, the examiner clearly has
not met the burden of establishing a prima facie case of obviousness with regard to the
subject matter recited in claim 5. This being the case, the rejection is fatally defective,
and we will not sustain it.
CONCLUSION
The rejection is not sustained.
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Application No. 09/777,647
Page 6
The decision of the examiner is reversed.

REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 2003-0223
Application No. 09/777,647
Page 7
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