Ex parte Chouinard

Board of Patent Appeals and Interferences

Oct 19, 2001

08659380 (B.P.A.I. Oct. 19, 2001)

1
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not written for publication and is not binding precedent of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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL R. CHOUINARD
__________
Appeal No. 1999-2425
Application 08/659,380
___________
ON BRIEF
___________
Before KIMLIN, OWENS and WALTZ, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 1-11, which are all of the claims in the application.
THE INVENTION
The claimed invention is directed toward a kneeler device
for exerting pressure on joined carpet sections when making
carpet seams. Claim 1 is illustrative:
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1. A kneeler device for use in making carpet seams
comprising:
an elongated, generally rectangular rigid member of a
width sufficient to accommodate only one knee of a user
kneeling thereon with one knee, said member having a flat
bottom unencumbered with obstructions so as to enable exerting
pressure by the flat bottom extending across a carpet seam and
under at least part of the weight of the user having one knee
resting atop the member at a forward location thereon;
a curved recess formed into an upper surface at said
forward end of said member adapted to receive the bent knee of
the user, with a forward ridge extending across the width of
the member at a forward edge of said forward edge, whereby a
user can move said member forward along a seam solely by leg
movement and engagement with said bent knee.
THE REFERENCES
Ashbridge 1,382,883 Jun. 28,
1921
Novak 1,529,498 Mar. 10,
1925
Gordon 2,448,427 Aug. 31,
1948
Reinhard 2,677,410 May 4,
1954
Wentz 4,780,173 Oct. 25,
1988
THE REJECTIONS
The claims stand rejected under 35 U.S.C. § 103 as
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follows: claims 1-3, 9 and 11 over Wentz in view of Reinhard
and Gordon; claims 4-8 over Wentz in view of Reinhard, Gordon
and Ashbridge; and claim 10 over Wentz in view of Reinhard,
Gordon and Novak.
OPINION
We reverse the aforementioned rejections.
The appellant’s claims require that the kneeler device
has a flat bottom. Wentz discloses a carpet seam-making
kneeler device having a bottom surface which preferably is
slightly convex across its width and has air vent holes
(abstract). The convex surface inclines at an angle of about
15E to valleys (25 and 26) on both sides of the convex surface
(col. 3, lines 26-28; figure 1). The convex surface functions
to impart an upwardly concave curvature to a cooling hot glue
tape below the carpet seam thereby producing a concave set in
the tape such that subsequent stretching of the carpet causes
the joint at the seam to be pulled level with the carpet
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surface, or almost imperceptibly below the carpet surface, as
opposed to having a bump or a peak, thereby producing a
relatively invisible seam (col. 1, lines 17-24 and 53-57; col.
2, lines 19-21 and 29-36). Runners on each side of the convex
surface keep the tool aligned with the carpet seam as the tool
is scooted along by the knee and leg of the carpet installer,
bearing most or all of the installer’s weight (col. 1, lines
60-64).
For a teaching of a flat surface the examiner relies upon
Reinhard. This reference discloses a hand-operated tool for
applying binding tape to carpet and for bringing abutting
edges of adjoining sections of carpeting into proper
relationship so that the carpet appears seamless (col. 1,
lines 28-34). The tool includes an elongated flat plate (1)
having an operating handle (4) secured to its top and having a
downwardly flanged longitudinal edge (2) (col. 1, line 55 -
col. 2, line 6). The downwardly flanged longitudinal edge
functions in feeding binding tape as the tool is moved along
an edge of a carpet section being taped along its edges to
prevent raveling (col. 3, lines 11-16 and 57-65; figure 2).
This flanged longitudinal edge, which has a depth such that it
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engages the carpet piles just above the fabric backing, also
functions during laying of the carpet by pulling pile away
from a carpet seam so that the carpet edges are brought into
close abutting relationship and the backing tape more firmly
locks the raw tufts and backing together (col. 2, lines 42-51;
figure 4a).
The examiner argues that “[i]t would have been obvious to
one having ordinary skill in the art to have employed a flat
pressing surface on the tool taught by Wentz, since Reinhard
recognizes the desirability of employing a flat pressing
surface
on an operator-manipulated carpet seaming tool to provide
uniform pressing force” (final rejection mailed November 11,
1997, paper no. 7, pages 2-3). The examiner does not point
out, and it is not apparent, where Reinhard indicates that the
surface is flat in order to provide a uniform pressing force.
Regardless, even if a uniform force is beneficial in pressing
Reinhard’s binding tape to the carpet backing or pulling the
carpet piles back from the seam, the examiner has not
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explained why Reinhard’s disclosure of a tool having a flat
surface and a downwardly flanged longitudinal edge for
providing these functions would have fairly suggested, to one
of ordinary skill in the art, modifying the bottom of Wentz’s
tool, which has a different purpose, i.e., pressing a carpet
edge onto hot glue seaming tape, in a manner which renders the
tool incapable of performing the function desired by Wentz,
i.e., impressing a concave set in the tape. The Gordon,
Ashbridge and Novak references were not relied upon by the
examiner for any teaching which would remedy this deficiency
in the disclosures of Wentz and Reinhard.
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 143, 147 (CCPA 1976). The mere fact that the
prior art could be modified as proposed by the examiner is not
sufficient to establish a prima facie case of obviousness.
See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992). The examiner must explain why the prior art
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would have suggested to one of ordinary skill in the art the
desirability of the modification. See Fritch, 972 F.2d at
1266, 23 USPQ2d at 1783-84. The examiner has not provided
such an explanation. Instead, the record indicates that the
examiner relies solely upon the description of the appellant’s
invention in the specification for a reason to modify the
references so as to arrive at the claimed invention. Thus,
the examiner used impermissible hindsight when rejecting the
claims. See W.L. Gore & Associates v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984); In re Rothermel, 276 F.2d 393,
396, 125 USPQ 328, 331 (CCPA 1960). Accordingly, we reverse
the examiner’s rejection.
Other Issue
The examiner should consider whether Wentz would have
fairly suggested, to one of ordinary skill in the art, the
kneeler device recited in the appellant’s claims 1 and 11.
Wentz teaches
that the bottom surface “preferably” is slightly convex along
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its width with air vent holes (abstract). The examiner should
consider whether this disclosure of a preference for a
slightly convex bottom surface with air vent holes would have
fairly suggested, to one of ordinary skill in the art, a
surface which is not convex and which, therefore, does not
provide the benefits of a convex surface disclosed by Wentz.
See In re Kohler, 475 F.2d 651, 653, 177 USPQ 399, 400 (CCPA
1973); In re Mills, 470 F.2d 649, 651, 176 USPQ 196, 198 (CCPA
1972); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549
(CCPA 1969) (References are not limited to their preferred
embodiments.); In re Wilson, 377 F.2d 1014, 1017, 153 USPQ
740, 742 (CCPA 1967); In re Larson, 340 F.2d 965, 969, 144
USPQ 347, 350 (CCPA 1965); In re Brown, 228 F.2d 247, 249, 108
USPQ 232, 234 (CCPA 1955) (Prima facie obvious to eliminate a
feature along with its disclosed function). The examiner also
should consider whether Wentz’s teaching that the disclosed
kneeler differs from the prior art by having a convex bottom
(col. 1, lines 14-24) would have fairly suggested, to one of
ordinary skill in the art, a carpet seam-making kneeler having
a bottom which, instead of being convex and providing the
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benefit of a convex bottom disclosed by Wentz, is simply flat.
DECISION
The rejections under 35 U.S.C. § 103 of claims 1-3, 9 and
11 over Wentz in view of Reinhard and Gordon, claims 4-8 over
Wentz in view of Reinhard, Gordon and Ashbridge, and claim 10
over Wentz in view of Reinhard, Gordon and Novak, are
reversed.
REVERSED
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TERRY J. OWENS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
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TJO/ki
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John R. Benefiel
280 Daines Street
Suite 100 S
Birmingham, MI 48009-6244