Ex parte Bodine et al.

Board of Patent Appeals and Interferences

Jan 27, 1999

08297122 (B.P.A.I. Jan. 27, 1999)

Application for patent filed August 29, 1994. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DARRYL C. BODINE and DOUGLAS G. VERNAU
____________
Appeal No. 98-1449
Application No. 08/297,1221
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge,
FRANKFORT 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 6 and 7, which are all of the claims
pending in this application.
We REVERSE.
Appeal No. 98-1449 Page 2
Application No. 08/297,122
BACKGROUND
The appellants' invention relates to a ceiling system.
An understanding of the invention can be derived from a
reading of exemplary claim 6, which appears in the appendix to
the appellants' brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Shaub 4,769,965 Sept. 13,
1988
Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Shaub.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejection, we make reference to the examiner's answer (Paper
No. 13, mailed June 17, 1997) and the supplemental examiner's
answer (Paper No. 15, mailed September 17, 1997) for the
examiner's complete reasoning in support of the rejection, and
to the appellants' brief (Paper No. 12, filed March 24, 1997)
Appeal No. 98-1449 Page 3
Application No. 08/297,122
and reply brief (Paper No. 14, filed August 14, 1997) for the
appellants' arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art reference, and to the
respective positions articulated by the appellants 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 claims 6 and 7. Accordingly, we will not
sustain the examiner's rejection of claims 6 and 7 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 the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
Appeal No. 98-1449 Page 4
Application No. 08/297,122
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). The examiner may
not, because of doubt 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 claims 6 and 7. The examiner found (answer, p.
3) that Shaub teaches all the claimed subject matter except
that Shaub's ceiling board 30 does not include "depressed
areas in the support edge means at the corners of the board."
The examiner then stated (answer, pp. 3-4) that
Appeal No. 98-1449 Page 5
Application No. 08/297,122
[i]t is well known in any facet of construction that if
there are two or more elements which interfere with each
other or there is an interference fit that some form of
relieving, notching or removal of a portion of one of the
elements would be performed. This is a rather typical
procedure and is "obvious" in the true sense of the word.
The concept has universal application and is just as
relevant to an apparent unsightly suspended ceiling
system as to a basic framing of a building. It is
further well known to customize a component to fit into
an existing system. Therefore, if the raised portions of
the ceiling grid system cause the ceiling board to lie
unevenly, it would have been obvious to one with ordinary
skill in the art to modify the board of Shaub by removing
the offending portions thereof, i.e. creating depressions
in the corners, to create a tolerance for the raised
portions of the ceiling grid system so that the support
edge means of the board may lie flat against the support
means of the ceiling grid system around the entire
perimeter, thus presenting a level finished construction
by modifying the ceiling board with a method old and well
known in the art.
Appeal No. 98-1449 Page 6
Application No. 08/297,122
The examiner should consider whether the prior art of2
record (e.g., Likozar, Blacklin, Shaub, Meredith,
The appellants seasonably challenged (see Paper No. 5,
filed February 7, 1996, and the brief) the above-noted
assertions of well known prior art. Accordingly, the
assertions have not been established as admitted prior art.
The Manual of Patent Examining Procedure (MPEP) § 706.02(a)
states that "if the applicant traverses such an assertion the
examiner should cite a reference in support of his or her
position." In this case, the examiner did not cite a
reference in support of the assertions of "well known" prior
art.
Since the above-noted unsupported assertions cannot be
used as prior art, it is clear that the examiner's rejection
of claims 6 and 7 fails to establish a prima facie case of
obviousness. That is, the examiner has failed to present
evidence that would appear to be sufficient for one of
ordinary skill in the art to make the proposed modification.
Accordingly, the decision of the examiner to reject claims 6
and 7 under 35 U.S.C. § 103 is reversed.2
Appeal No. 98-1449 Page 7
Application No. 08/297,122
Fotheringham, etc.), or other prior art not presently of
record, taken with the appellants' evidence of nonobviousness
(i.e., the affidavit of Stephen M. Newcomer (attached to Paper
No. 5)) establishes obviousness of the claimed subject matter
under 35 U.S.C. § 103.
Appeal No. 98-1449 Page 8
Application No. 08/297,122
CONCLUSION
To summarize, the decision of the examiner to reject
claims 6 and 7 under 35 U.S.C. § 103 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 98-1449 Page 9
Application No. 08/297,122
CLIFFORD B. PRICE
ARMSTRONG WORLD INDUSTRIES, INC.
PATENT DEPARTMENT
P.O. BOX 3001
LANCASTER, PA 17604
APPEAL NO. 98-1449 - JUDGE NASE
APPLICATION NO. 08/297,122
APJ NASE
SAPJ McCANDLISH
APJ FRANKFORT
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 25 Jan 99
FINAL TYPED: