Ex Parte Bell

Board of Patent Appeals and Interferences

Aug 8, 2003

08901713 (B.P.A.I. Aug. 8, 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for publication and is not binding precedent of the Board.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. 34
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANDREA F. BELL
____________
Appeal No. 2003-1271
Application No. 08/901,713
____________
ON BRIEF
____________
Before ABRAMS, NASE, and BAHR, 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 to 31,
which are all of the claims pending in this application.
We REVERSE and REMAND.
Appeal No. 2003-1271
Application No. 08/901,713
Page 2
BACKGROUND
The appellant's invention relates to utility aprons useful for retaining various
items such as cleaning items (specification, p. 1). A copy of the claims under appeal is
set forth 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:
Baumgartner 3,678,977 July 25, 1972
Lindsay 4,993,551 Feb. 19, 1991
Yoo 5,431,265 July 11, 1995
Claims 1 to 31 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Lindsay in view of Baumgartner.
Claims 1 to 31 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Lindsay in view of Baumgartner and Yoo.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
rejection (Paper No. 26, mailed March 6, 2002) and the answer (Paper No. 32, mailed
December 20, 2002) for the examiner's complete reasoning in support of the rejections,
Appeal No. 2003-1271
Application No. 08/901,713
Page 3
and to the brief (Paper No. 30, filed October 9, 2002) 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 to 31 under 35 U.S.C. § 103. Our reasoning for this determination follows.
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 would have led one of ordinary skill in the art 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) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Appeal No. 2003-1271
Application No. 08/901,713
Page 4
With this as background, we analyze the prior art applied by the examiner in the
rejection of the claims on appeal.
Lindsay's invention relates to a tool holder and storage device which interfits and
hangs over the rim of a bucket equipped with a handle. In Figures 1 and 2, a tool
holder device 10 is shown draped over and supported by a five gallon, non-tapered
bucket 12 which can be any common bucket typically available to the craftsman and for
home use. Handle 14 extends across the opening and downwardly over the outside
surface of the bucket to median area position 18 on the outside surface of the bucket
where lower ends 16 of handle 14 engage in and attach to the bucket side wall. Tool
holder 10 includes a main tubular pliant and drapable cloth panel which drapes over the
upper rim of the bucket and extends downwardly essentially covering the inside surface
of bucket 12. That same piece of cloth drapes over the outside surface of bucket 12,
covering a major portion of that surface. The cloth drapes over the inside surface of the
bucket as inside panel 22 which drops downwardly close to bottom 50 of bucket 12
terminating at lower end 48 where it is folded continues upwardly to form lower inner
pockets 44. The same main body of cloth extends downwardly from section 20 of the
cloth over the outside surface of bucket 12 as outside section 24, terminating proximate
the lower edge of the outside surface of bucket 12. Pockets 26 are sewn onto inside
panel 22 to hold tools 27. Pockets 28 and 31 are formed on outside section 24.
Appeal No. 2003-1271
Application No. 08/901,713
Page 5
Baumgartner's invention relates generally to lady's bags wherein there are
provided a series of different pockets each of which is adaptable for a particular use.
As shown in Figures 1 and 4, on the upper side of the top panel 11 of a lady's overarm
carrying bag 10, a generally rectangular panel 23 is secured to panel 11 by means of
stitching to form a pocket 25 having an access opening 26 having an elastic band 27
along the edge thereof to gather the edge 26 and thus retain objects placed into the
pocket 25. As shown in Figure 6, the opposite sides of the panel 23 may be accordion
pleated as shown at 28 to allow expansion to receive objects there within. The pocket
25 serves to contain a pad and pencil, a pen, cleansing tissues, gloves or the like.
Yoo's invention relates generally to sports accessory bags having multiple
compartments for separate storage of athletic shoes and accessories, including at least
one expandable compartment, and a reinforced compartment for carrying a racket. As
shown in Figure 6, the sports accessory bag includes a plurality of personal hygiene
compartments 28 designed to hold items such as hair spray, deodorant, powders,
perfumes, shampoo, conditioner, etc. Yoo teaches (column 4, line 68, to column 5, line
3) that these compartments 28 may be formed, for example, as pockets of fabric with
an elastic piece sewn in an opening edge to hold an item in the pocket opening.
Appeal No. 2003-1271
Application No. 08/901,713
Page 6
In the rejections under 35 U.S.C. § 103 before us in this appeal (final rejection,
pp. 2-8), the examiner (1) ascertained that Lindsay did not teach a pocket including a
resilient opening, the size of the opening being variable depending upon the extent to
which the resilient opening is extended; and (2) concluded that it would have been
obvious in view of the teachings of Baumgartner alone or the teachings of both
Baumgartner and Yoo to have provided elastic bands in the openings of Lindsay's
pockets 26 and 28 to resiliently retain items in the pockets 26 and 28.
The appellant argues that the applied prior art does not suggest the claimed
subject matter. We agree. In that regard, while both Baumgartner and Yoo teach the
use of a resilient opening pocket, we fail to discern any teaching, suggestion or
motivation therein which would have been obvious at the time the invention was made
to a person of ordinary skill in the art to have modified Lindsay's tool holder to include a
resilient opening pocket. In our view, the only suggestion for modifying Lindsay in the
manner proposed by the examiner in the rejections before us in this appeal to arrive at
the claimed invention stems from hindsight knowledge derived from the appellant's own
disclosure. The use of such hindsight knowledge to support an obviousness rejection
under 35 U.S.C. § 103 is, of course, impermissible. See, for example, W. L. Gore and
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
Appeal No. 2003-1271
Application No. 08/901,713
Page 7
1 Issued May 11, 1993.
2 Copy attached.
3 See the Declarations of Gary Cohen and Andrea F. Bell filed on January 7, 2002 and the
declaration of George Millican, Jr. filed on March 23, 2001.
1983), cert. denied, 469 U.S. 851 (1984). It follows that we cannot sustain the
examiner's rejections of claims 1 to 31.
REMAND
We remand the application to the examiner for further consideration of the
patentability of claims 1 to 31. Specifically, the examiner should determine whether or
not claims 1 to 31 are patentable under 35 U.S.C. § 103 over the teachings of Lindsay
combined with the teachings of U.S. Patent No. 5,209,3841 to Anderson2 taking into
account the evidence of non-obviousness of record in the application.3 The teachings
of Lindsay have been set forth above. Anderson's invention relates to a portable kit
which enables an individual to transport a complete set of hand tools with relative ease
and convenience. More particularly, Anderson's invention relates to a portable tool kit
with a plurality of vertically oriented tool storage compartments, each compartment
being configured with tool holders of varying configurations so that once tools are
placed in their appropriate holder they will remain in place until they are needed by the
operator. Each tool storage compartment has a separate sealing device. Anderson
teaches (column 5, lines 59-64) that
Appeal No. 2003-1271
Application No. 08/901,713
Page 8
Another configuration for retaining hand tools in place in tool holders is
shown in FIG. 4 where across the tops of pockets 58 there is a line or band of
elastic 60 which requires some force to insert the hand tool into the pocket and
thereafter holds the hand tool in place until a similar force is used to withdraw the
hand tool.
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 31 under
35 U.S.C. § 103 is reversed. In addition, we have remanded the application to the
examiner for further consideration.
Appeal No. 2003-1271
Application No. 08/901,713
Page 9
This application, by virtue of its "special" status, requires immediate action, see
MPEP § 708.01.
REVERSED and REMANDED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2003-1271
Application No. 08/901,713
Page 10
SULLIVAN LAW GROUP
1850 NORTH CENTRAL AVENUE
SUITE 1140
PHOENIX, AZ 85004
JVN/jg