Ex parte Beatty

Board of Patent Appeals and Interferences

Jan 12, 1998

08424247 (B.P.A.I. Jan. 12, 1998)

Application filed April 17, 1995. According to appel-1
lant, the application is a continuation of Application
08/198,904, filed February 18, 1994, abandoned; which is a
reissue of U.S. Patent 5,135,279, issued August 4, 1992, which
derived from
Application 07/728,647, filed July 11, 1991.
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(2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ANNETTA BEATTY

_____________
Appeal No. 97-1133
Application 08/424,2471
______________
ON BRIEF
_______________
Appeal No. 97-1133
Application 08/424,247
2
Before COHEN, FRANKFORT and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claims 1, 5, 8, 11, 14 and 16. Claims 3, 4,
6, 7, 9, 10, 12 and 13 stand allowed. Claim 15, the only
other claim pending herein, has been objected to by the
examiner and indicated to be allowable if rewritten in
independent form. Claim 2 has been canceled.
Appellant's invention relates to a shade assembly
for the windshield or windows of a motor vehicle. Claim 1 is
representative of the subject matter on appeal and a copy of
that claim, as it appears in the Appendix to appellant's
brief, is attached to this decision.
The prior art references of record relied upon by
the examiner in rejecting the appealed claims are:
Appeal No. 97-1133
Application 08/424,247
3
Kivikink et al. (Kivikink) 1,468,115 Sept. 18,
1923
Selph 3,868,293 Feb. 25,
1975
Bryngelson 5,024,479 June 18,
1991
(filed Nov. 16, 1989)
Additional prior art references relied upon by this
panel of the Board in a new rejection of all of the pending
claims in this application under 37 CFR § 1.196(b) are:
Stulbach 3,183,033 May 11,
1965
Klose 4,979,775 Dec. 25,
1990
Claims 1, 5, 8, 11, 14 and 16 stand rejected under
35 U.S.C. § 103 as being unpatentable over Kivikink in view of
Bryngelson and Selph.
Rather than reiterate the examiner's full statement
of the above-noted rejection and the conflicting viewpoints
Appeal No. 97-1133
Application 08/424,247
4
advanced by the examiner and appellant regarding the rejec-
tion, we make reference to the final rejection (Paper No. 17,
mailed November 27, 1995) and to the examiner's answer (Paper
No. 24, mailed October 17, 1996) for the examiner's complete
reasoning in support of the rejection, and to appellant's
brief (Paper No. 23, filed September 4, 1996) for appellant's
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have
given careful consideration to appellant's specification and
claims, to the applied prior art references, and to the re-
spective positions articulated by appellant and the examiner.
As a consequence of
our review, we have made the determination that the examiner's
rejection of the appealed claims under 35 U.S.C. § 103 is not
well founded and will therefore not be sustained. However, we
have also decided to enter a new ground of rejection against
Appeal No. 97-1133
Application 08/424,247
5
all of the pending claims in this application under our au-
thority provided by 37 CFR § 1.196(b). Our reasoning in
support of these determinations follows.
Turning first to the examiner's rejection of the
appealed claims under 35 U.S.C. § 103, we share appellant's
view that there is no teaching or suggestion in the applied
prior art references which would have led a person of ordinary
skill in the art to selectively modify the antiglare screen
or shade of Kivikink in the manner urged by the examiner. It
is our view, after a careful review of these references, that
in searching for an incentive for modifying the shade of
Kivikink, the examiner has impermissibly drawn from appel-
lant's own teachings and fallen victim to what our reviewing
Court has called "the insidious effect of a hindsight syndrome
wherein that which only the inventor taught is used against
its teacher." W. L. Gore & Associates, Inc. v. Garlock, Inc.,
721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
Appeal No. 97-1133
Application 08/424,247
6
Since we have determined that the examiner's conclusion of
obviousness is based on a hindsight reconstruction using
appellant's own disclosure as a blueprint to arrive at the
claimed subject matter from disparate teachings in the prior
art, it follows that we will not sustain the examiner's rejec-
tion of appealed claims 1, 5, 8, 11, 14 and 16 under 35 U.S.C.
§ 103.
Under the authority provided by 37 CFR § 1.196(b),
as amended December 1, 1997, we make the following new rejec-
tion of all of the claims pending in this application.
Claims 1 and 3 through 16 are rejected under 35
U.S.C. § 103 as being unpatentable over Klose in view of
Stulbach or Kivikink and Selph.
As noted on page 1 of appellant's specification in
the "BACKGROUND OF THE INVENTION," Klose (U.S. Patent No.
4,979,775) discloses a windshield shade assembly like that
defined in appellant's pending claims, with the exception that
Appeal No. 97-1133
Application 08/424,247
7
the shade members (8) of Klose are not indicated to be made of
a "transparent plastic polarized material" which would allow
the shade members to be used to protect the driver's eyes from
the glare of
the sun, while not otherwise limiting his vision or restrict-
ing his field of view. Klose does not specifically indicate
what material the shade (8) is made from, but, notes at column
1, lines 36-39, that the window shade therein is intended to
substantially improve screening of a windshield and thus
improve the protection against sunlight and against light from
oncoming vehicles.
Stulbach discloses an antiglare shield or shade for
a motor vehicle windshield (58) wherein the retractable shade
members (e.g., 52, 54) are made of transparent plastic sheets
which are tinted or pigmented to be of different colors, such
as, blue and yellow, respectively (col. 2, lines 60-62). Each
shade is said to be pigmented so that glaring sunlight, street
lights and other elevated lights are most effectively excluded
Appeal No. 97-1133
Application 08/424,247
8
by the darker upper portions thereof, while the lower portions
which receive little glare are lighter in tint or color so as
to provide a better view of the roadway to the driver (col. 4,
lines 17-23).
Kivikink, like Stulbach, discloses an antiglare
shade or screen for a motor vehicle window wherein a retract-
able shade member (4) may be made of "any material suitable
for tempering or
diminishing the glare of light without obscuring the driver's
view of the roadway" (page 1, col. 2, lines 92-94). In
particular, Kivikink notes that the shade member (4) is
preferably made of transparent colored celluloid.
Selph discloses a reusable glare eliminator for use
in the windows of a motor vehicle. After discussing the
prior art attempts to use a tinted visor or patch to reduce or
eliminate the glare from the sun or other light sources (col.
1, lines 17-27), Selph suggests that a patch of polarized
Appeal No. 97-1133
Application 08/424,247
9
cellulose acetate, which may be tinted, can be employed to
provide the desired glare elimination, without the need of the
fairly heavy tinting required in the prior art devices.
After a collective evaluation of the teachings of
the applied references, it is our opinion that it would have
been obvious to one of ordinary skill in the art at the time
of appellant's invention to have made the shade members (8) of
Klose from a transparent tinted plastic material so as to
block a substantial portion of sunlight or other glare
producing lights that may impinge on the window, and to
provide such an advantage without otherwise obscuring the
driver's view of the roadway, as
clearly suggested in Stulbach or Kivikink. We further
consider that, based on the teachings of Selph, a person of
ordinary skill in the art would have been led to select a
transparent, tinted plastic polarized material as the
particular material from which to make the shades (8) of Klose
so as to gain the advantages noted in Selph (i.e., so as to
Appeal No. 97-1133
Application 08/424,247
10
block the desired degree of light, without unnecessarily
impairing the driver's view of the roadway and without the
need for the fairly heavy tinting used in the prior art).
With particular regard to previously allowed
independent claims 3, 7, 9 and 13, and the claims which depend
therefrom, we note again that the shade assembly of Klose is
fully responsive to the dual shade arrangement set forth in
these claims, except for the particular material from which
the shade members are made. As already articulated above, it
is our opinion that it would have been obvious to one of
ordinary skill in the art, from the combined teachings of
Klose, Stulbach, Kivikink and Selph, to modify the shade
arrangement of Klose to utilize a transparent, tinted plastic
polarized material as the particular material from which the
shades (8) are made, so as to gain the noted advantages
clearly set forth in the secondary references.
To summarize, the decision of the examiner to reject
claims 1, 5, 8, 11, 14 and 16 under 35 U.S.C. § 103 is
Appeal No. 97-1133
Application 08/424,247
11
reversed; however, a new ground of rejection against claims 1
and 3 through 16 has been entered by this panel of the Board
under 37 CFR § 1.196(b).
This decision contains a new ground of rejection
pur- suant to 37 CFR § 1.196(b) (amended effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 122
(Oct. 21, 1997)). 37 CFR § 1.196(b) provides that “[a] new
ground of rejection shall not be considered final for purposes
of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
cise one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of
facts relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
Appeal No. 97-1133
Application 08/424,247
12
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
No time period for taking any subsequent action in
con-nection with this appeal may be extended under 37 CFR §
1.136(a).
REVERSED, 37 CFR § 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-1133
Application 08/424,247
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Appeal No. 97-1133
Application 08/424,247
14
Darby & Darby
805 Third Avenue
New York, NY 10022
Appeal No. 97-1133
Application 08/424,247
15
APPENDIX
1. A shade assembly for a vehicle windshield
comprising:
at least two brackets attachable at a top of the
windshield at respective spaced apart locations of the
windshield and
at least one flexible shade member, said shade
member being made of a transparent plastic polarized material
that blocks a substantial portion of sunlight; and
a shade winding mechanism secured between said at
least two brackets, said shade winding mechanisms including
a non-rotatable axle having opposite ends securable in said
brackets and a cylindrical shaft rotatably mounted about said
axle, said shade member being fastened by one longitudinal
edge to the shaft so as to be vertically extendable such that
a vertical dimension of said shade varies upon rotation of
said shaft, and that when said shade is fully extended a
substantial portion of a vertical dimension of said windshield
is covered to block sunlight when in an unwound position and
when in a wound position said shade is wound upon the shaft.