Ex parte Casteel et al.

Board of Patent Appeals and Interferences

Jul 31, 2000

08123092 (B.P.A.I. Jul. 31, 2000)

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(2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DONALD CASTEEL and JOHN MULLER
_____________
Appeal No. 1997-0074
Application No. 08/123,092
______________
ON BRIEF
_______________
Before ABRAMS, STAAB, and MCQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-8 and 11-20. Claims 9 and 10 have
been allowed.
The appellants' invention is directed to a method of
Appeal No. 1997-0074
Application No. 08/123,092
2
manufacturing a composite plastic article having an integral
handle. The claims on appeal have been reproduced in an
appendix to the brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Hunt 2,656,294 Oct.
20, 1953
Wilfert 3,068,044 Dec. 11,
1962
Michel 4,016,230 Apr. 5,
1977
Ashtiani-Zarandi et al. 4,890,877 Jan. 2,
1990
(Ashtiani-Zarandi)
Mills 5,252,164 Oct. 12,
1993
THE REJECTIONS
Claims 1-5, 7, 8, 11 and 14-16 stand rejected under
35 U.S.C. § 103 as being unpatentable over Ashtiani-Zarandi in
view of Wilfert, Mills and Michel.
Claims 6, 12, 13 and 17-20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Ashtiani-Zarandi in view of
Wilfert, Mills, Michel and Hunt.
Appeal No. 1997-0074
Application No. 08/123,092
3
Rather than attempt to reiterate the examiner's full
commentary with regard to the above-noted rejection and the
conflicting viewpoints advanced by the examiner and the
appellants, we make reference to the Examiner's Answers
(Papers
No. 12 and 16) and to the Appellants' Briefs (Papers No. 11
and 15).
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
examiner and the appellants as set forth in the Answer and the
Brief. As a result of our review, and applying the guidance
provided by our reviewing court, we have determined that the
rejections should not be sustained. Our reasoning in support
of this conclusion follows.
All of the claims stand rejected as being unpatentable
under 35 U.S.C. § 103. 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
Appeal No. 1997-0074
Application No. 08/123,092
4
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, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
All three of the appellants' independent claims are
directed to a method of manufacturing an article having an
integral handle. Claim 1 is representative, setting forth the
invention as comprising the following steps:
providing a structural substrate that has a handle
hole of sufficient size to provide a space for
gripping a handle that spans the hole,
Appeal No. 1997-0074
Application No. 08/123,092
5
attaching a handle frame to the substrate so that it
spans the handle hole,
draping a sheet of stretchable material over the
substrate and the handle frame so that it covers the
handle hole, and
forming the stretchable sheet against the top of the
structural substrate and at least partially around
the handle frame by differential pressure applied to
the draped sheet.
The examiner combines the teachings of four references in
order to meet the terms of the claim. The primary reference
is Ashtiani-Zarandi, which is cited for its disclosure of an
inner door panel having an integral handle and arm rest that
are covered with a decorative material. Wilfert is relied
upon for showing a handle that is completely encased in a
cover. The examiner has not explained how these two
references are to be combined, but acknowledges that they fail
to describe the techniques used to apply the decorative
coverings to the handles. He also states that they "appear to
teach covering the handles in a separate step and subsequently
attaching them to the inner door panel" (Answer, page 5)
which, of course, is contrary to the appellants' claimed
method. The examiner then looks to Mills, stating that this
reference "teaches that it is desirable to cover the panel
Appeal No. 1997-0074
Application No. 08/123,092
6
face and the insert in a single cover forming operation so
that . . . [both] will be covered by the same material"
(Answer, page 5), after which he concludes that "it therefore
would have been obvious to one of ordinary skill in the art to
use the vacuum cover application technique of Mills to apply
the covering to the handle and panel face in the processes of
Ashtiani-Zarandi and Wilfert" (Answer, page 6). Finally, the
examiner applies Michel, which is directed to a method of
forming articles such as pallets, opining that it would have
been obvious, in view of Michel, to draw and secure the
vacuum-formed cover of a handle around the handle “because
Mills shows this to be possible and Michel teaches the use of
vacuum for drawing a covering around a substrate” (Answer,
pages 6-7).
The first step in the method recited in claim 1 is
providing a structural substrate that has a handle hole, and
the second is to attach a handle frame to the substrate so
that it spans the hole. These two steps clearly are not
explicitly disclosed or taught by either Ashtiani-Zarandi or
Wilfert, which are the only two references that even disclose
a handle, nor is there reason to believe that such inherently
Appeal No. 1997-0074
Application No. 08/123,092
7
would be the case. In this regard, we again note the
examiner's opinion that in these references the handle is
separately made and covered and then is attached to the
supporting substrate. While the door and the panel disclosed
by Mills are in juxtaposition once they are installed in the
vehicle, the essence of the Mills teaching is merely covering
a plurality of separate objects in a single pass, and then
cutting them apart for separate use. Therefore, from our
perspective, the combined teachings of the first three of the
applied references would have provided no suggestion to one of
ordinary skill in the art to attach a door handle to a
substrate that has a handle hole and then to cover this
structure with a single sheet of material by any means, much
less by differential pressure. Although Michel discloses
attaching two elements together by using differential pressure
to form a material about them, it still provides no suggestion
to do so to form a composite article comprising a handle and a
substrate having a handle hole.
The mere fact that the prior art structure could be
modified does not make such a modification obvious unless the
Appeal No. 1997-0074
Application No. 08/123,092
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 11271
(Fed. Cir. 1984).
In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 17842
(Fed. Cir. 1992).
8
prior art suggests the desirability of doing so. In the1
present case, we fail to perceive any teaching, suggestion or
incentive which would have motivated one of ordinary skill in
the art to utilize the method recited in claim 1 other than
the hindsight accorded one who first viewed the appellants'
disclosure. This, of course, is not a proper basis for a
rejection under 35 U.S.C.
§ 103.2
It therefore is our conclusion that the combined
teachings of the four references applied against claim 1 fail
to establish a prima facie case of obviousness with regard to
the claimed subject matter. We will not sustain the rejection
of claim 1 or, it follows, of claims 2-5, which depend
therefrom. The same rationale applies to independent method
claims 7 and 11, which describe the invention in slightly
different terms, and the claims that depend from them. The
rejection of claims 7-11 and 14-16 also is not sustained.
Appeal No. 1997-0074
Application No. 08/123,092
9
Hunt has additionally been cited in the rejection of
dependent claims 6, 12, 13 and 17-20, for its teaching of
tucking the edges of the covering into a slot in the item
being covered. Even if one considers Hunt, which is directed
to covering a bowling pin with a fabric and lacquer, to be
analogous art, it fails to alleviate the shortcomings
discussed above with regard to the four references applied
against the independent claims. The rejection of these claims
is not sustained.
SUMMARY
Neither rejection is sustained.
Appeal No. 1997-0074
Application No. 08/123,092
10
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. MCQUADE )
Administrative Patent Judge )
NEA:lmb
Appeal No. 1997-0074
Application No. 08/123,092
11
F. J. FODALE
REISING, ETHINGTON, BARNARD,
PERRY & MILTON
P.O. BOX 4390
TROY, MI 48099-9998