Ex Parte Braud

Board of Patent Appeals and Interferences

Jul 22, 2003

09247557 (B.P.A.I. Jul. 22, 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for publication and is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARCEL-CLAUDE BRAUD
____________
Appeal No. 2003-0690
Application No. 09/247,557
____________
ON BRIEF
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Before COHEN, McQUADE, 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 5 to 7, 9
to 16, 18 and 20 to 22, which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/247,557
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BACKGROUND
The appellant's invention relates to an automotive vehicle with a telescopic load
carrying arm (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:
Hayward 4,280,783 July 28, 1981
van der Lely 4,585,084 April 29, 1986
van der Lely 4,618,016 Oct. 21, 1986
Brown 5,618,156 April 8, 1997
Braud 5,687,809 Nov. 18, 1997
Claims 5 to 7, 9 to 16, 18 and 20 to 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Brown in view of Braud, Hayward and van der Lely '016.
Claims 5 to 7, 9 to 16, 18 and 20 to 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Brown in view of Braud, Hayward, van der Lely '016 and van
der Lely '084.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the answer
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Application No. 09/247,557
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(Paper No. 24, mailed November 4, 2002) for the examiner's complete reasoning in
support of the rejections, and to the brief (Paper No. 23, filed August 2, 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 case of obviousness with respect to the claims
under appeal. Accordingly, we will not sustain the examiner's rejection of claims 5 to 7,
9 to 16, 18 and 20 to 22 under 35 U.S.C. § 103. Our reasoning for this determination
follows.
A critical step in analyzing the patentability of claims pursuant to 35 U.S.C.
§ 103 is casting the mind back to the time of invention, to consider the thinking of one
of ordinary skill in the art, guided only by the prior art references and the then-accepted
wisdom in the field. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617
(Fed. Cir. 1999). Close adherence to this methodology is especially important in cases
where the very ease with which the invention can be understood may prompt one "to
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Application No. 09/247,557
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fall victim to the insidious effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher." Id. (quoting W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983)).
Most if not all inventions arise from a combination of old elements. See In re
Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998). Thus, every
element of a claimed invention may often be found in the prior art. See id. However,
identification in the prior art of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention. See id. Rather, to establish obviousness
based on a combination of the elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of making the specific combination
that was made by the appellant. See In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
In this case, while the applied prior art (i.e., Brown, Braud, Hayward, van der Lely
'016 and van der Lely '084) may individually disclose every element of the claimed
invention, it is our opinion that the claimed subject matter as a whole would not have
been obvious at the time the invention was made to a person of ordinary skill in the art
from the teachings of the applied prior art. That is, the claimed vehicle having a
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Application No. 09/247,557
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transversely oriented internal combustion motor between a front wheel and a rear
wheel, a reservoir of onboard fluid between another front wheel and a rear wheel, and a
gearbox oriented longitudinally and disposed substantially in a central position of the
vehicle below the support of the telescopic load carrying arm is not suggested by the
applied prior art. In particular, we find ourselves in agreement with the appellant's
argument (brief, pp. 4-9) that there is insufficient reason, suggestion, teaching, or
motivation in Braud for an artisan to have modified Brown in the manner set forth in the
rejections (answer, pp. 3-5) under appeal.
For the reasons set forth above, the decision of the examiner to reject claims 5
to 7, 9 to 16, 18 and 20 to 22 under 35 U.S.C. § 103 is reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 5 to 7, 9 to 16, 18
and 20 to 22 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 09/247,557
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