Ex Parte Conte

Board of Patent Appeals and Interferences

Sep 20, 2001

08331851 (B.P.A.I. Sep. 20, 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publication and is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FRANCIS L. CONTE

_____________
Appeal No. 2000-2033
Application 08/331,851
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ON BRIEF
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Before PATE, STAAB, and McQUADE, Administrative Patent Judges.
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is the second appeal of the final rejection of claims 1
and 4 through 15. Claims 2 and 3 have been canceled. These are
all the claims in the application.
In a first ex parte appeal, this board rendered a decision
on September 22, 1998 reversing all rejections of claims 1 and 4
through 15. Subsequent to the appeal the examiner reopened
Appeal No. 2000-2033
Application 08/331,851
2
prosecution under 37 CFR § 1.198 and rejected all claims on art
previously of record. The applicant petitioned under 37 CFR §
1.181 contending, inter alia, that the reopened prosecution
failed to comply with 37 CFR § 1.198. In a petition decision
rendered on May 21, 1999, applicant’s petition was denied.
Thereafter, the examiner issued a third office action rejecting
all claims. On June 3, 1999, the applicant again filed a
petition challenging the propriety of the reopened prosecution.
Applicant subsequently filed a Notice of Appeal, and the petition
was denied. Thereafter, applicant filed a brief and the examiner
submitted an examiner’s answer, and the case comes to us as a
normal ex parte appeal.
The claimed subject matter is directed to an insect swatter
which uses an elastic lash in the form of annular rubber band for
swatting an insect. The swatter is in the shape of a pistol and
the band is stretched along the barrel. A release means is
actuated by a latch means to release the stretched rubber band
toward the insect.
The references of record relied upon by the examiner as
evidence of obviousness are:
Kopp 1,009,531 Nov. 21, 1911
Caron 2,054,719 Sep. 15, 1936
Watkins 2,642,057 June 16, 1953
Appeal No. 2000-2033
Application 08/331,851
1 Unlike the examiner, we do not consider the order in which prior art is applied in a
rejection to be significant. See, for example, In re Bush 296 F.2d 491, 496, 131 USPQ 263, 267
(CCPA 1961) ("[i]n a case of this type where a rejection is predicated on two references each
containing pertinent disclosure which has been pointed out to the applicant, we deem it to be a
matter of no significance, but merely a matter of exposition, that the rejection is stated to be on A
in view of B instead of B in view of A, or to term one reference primary and the other
secondary."); In re Cook, 372 F.2d 563, 152 USPQ 615 (CCPA 1967).
3
THE REJECTIONS
Claims 1 and 4 through 6 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Caron in view of Kopp.
Claims 1 and 4 through 6 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Kopp in view of Caron.1
Claims 7 through 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Caron in view of Kopp and further in view of
Watkins.
Claims 7 through 15 stand rejected under 35 U.S.C. § 103 as
unpatentable over Kopp in view of Caron and further in view of
Watkins.
OPINION
We have carefully reviewed the rejections on appeal in light
of the arguments of the appellant and the examiner. As a result
of this review, we have reached the conclusion that the applied
prior art establishes a prima facie case of obviousness with
respect to claims 1, 4 through 6 and 7 through 10 on appeal.
Appeal No. 2000-2033
Application 08/331,851
4
This prima facie case of obviousness has not been rebutted by
additional evidence from the appellant. Accordingly, the
rejections of claims 1, 4 through 6 and 7 through 10 are
affirmed. The applied art does not establish the prima facie
obviousness of claims 11 through 15. The rejection of these
claims is reversed. Our reasons follow.
Appellant’s first argument is that the new rejection of
claims 1 and 4 through 15 is unwarranted under the doctrine of
res judicata, or law of the case, in view of the full reversal of
the same claims on evidence in the record by the prior decision
of the Board. However, the predecessor to our reviewing court
has previously dealt with this issue. The court stated in In re
Borkowski, 505 F.2d 713, 718, 184 USPQ 29, 32-33 (CCPA 1974):
Appellants’ contention that the prior board
decision reversing a rejection under 35 U.S.C. § 103
over Borkowski et al. in a parent application should
have been "res judicata" to the examiner in this case
is unpersuasive. This court stated in In re Craig, 411
F.2d 1333, 56 C.C.P.A. 1438 (1969), that the policy and
purpose of the patent laws preclude the applicability
of any doctrine akin to the judicially-developed
doctrine of "res judicata" to bar the granting of
patents on inventions that comply with the statute.
The same policy and purpose precludes reliance on any
such doctrine to force the granting of patents on
inventions that do not comply with the statute. The
Patent Office must have the flexibility to reconsider
and correct prior decisions that it may find to have
been in error.
Appeal No. 2000-2033
Application 08/331,851
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Next, appellant raises the issue of a rejection based on
cited prior art that was never applied in a reexamination as was
the case in In re Portola Packaging, Inc, 110 F.3d 786, 42 USPQ2d
1295 (Fed. Cir. 1997). However, it is clear, that the result in
Portola was dictated by the narrow scope of reexamination
afforded the PTO by the statute. In the case of an application
for patent, the PTO has broad scope. The court explicitly
recognized in Portola the PTO’s goal of performing a thorough and
conscientious examination before allowing applications to be
patented. 110 F.3d at 791, 42 USPQ2d at 1300.
Turning to the rejections based on prior art, it is our
finding, that Kopp discloses a toy gun in the form of an elastic
lash made of an annular rubber band having a first loop joined to
the distal end of an elongated rod. When the lash is released,
it spontaneously contracts and may be used to strike "some object
such as a fly or an insect [sic]." Kopp releases the elastic
lash by way of a trigger made of a single piece of resilient
material 9. Thus, Kopp differs from the claimed subject matter
in having a resilient trigger 9 which does not include a latch or
a means pivotally joined adjacent to the latch for releasing the
lash.
Appeal No. 2000-2033
Application 08/331,851
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It is our finding that Caron also discloses a toy gun having
an elongated rod wherein an elastic member formed of an annular
rubber band is placed on the end of the rod. Caron teaches
releasing the lash by means of a pivoting latch member 8 which is
adjacent the proximal end of the rod and which engages the second
loop of the elastic band. The pivotal latch is released by a
trigger which is pivotally joined to the rod and placed adjacent
to the latch for selectively releasing the latch and allowing the
annular rubber band to spontaneously contract and be launched off
the end of the toy gun. Caron differs from the subject matter
claimed in that Caron does not disclose the utility of using the
elastic lash for impacting an insect. Furthermore, Caron does
not disclose the elastic lash fixedly joined to the distal end of
the rod. Inasmuch as Caron discloses a latch and a means
comprising a trigger for selectively releasing the latch for the
benefit of providing discharge parts of a toy gun with positive
control and shock absorption, it would have been obvious to use
the pivotal latch and the latch releasing mean of Caron on the
toy gun as disclosed in Kopp.
Appellant argues that Caron and Kopp are non-analogous art.
We disagree. Turning first to Kopp, the reference teaching is
within appellant’s field of endeavor, i.e., killing insects with
Appeal No. 2000-2033
Application 08/331,851
7
an elastic lash attached to a toy pistol handle. Furthermore,
since Caron is directed to a disclosure which is concerned with
releasing an elastic band, Caron is clearly reasonably pertinent
to appellant’s problem.
Appellant argues that there is no suggestion for the
examiner’s proposed combination of references. This is clearly
not the case. Caron specifically discloses that his release
means and his latch are provided to enable a positive acting
release of the elastic band. Furthermore, Caron teaches that the
provision of spring 16 on his latch means provides a shock
absorbing mechanism to preclude the possibility of damage to the
pistol. These are express, written suggestions of the
desirability of the mechanism of Caron which would have clearly
motivate one of ordinary skill to include such modifications on
the pistol of Kopp.
We are further in agreement with the examiner that claims 1
and 4 through 10 do not preclude the presence of a knot on the
pistol of Kopp. We further disagree with the appellant’s
repeated assertion that the "primary function of Kopp’s toy gun
is a toy gun." It seems clear that the disclosure in Kopp
mentions killing insects in several locations, and Fig. 1 of the
patent clearly discloses using the gun to kill an insect.
Appeal No. 2000-2033
Application 08/331,851
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Likewise, we affirm the rejection of claims 7 through 10
based on the combined teachings of Kopp, Caron and Watkins.
Watkins is cited to disclose a preferred manner of securing the
rubber band to the distal portion of the elongated rod of the
pistol shaped frame. Watkins uses a keyhole slot which allows
ready replacement of the rubber band, but insures that the rubber
band will not become easily detached under even the most violent
manipulation of the gun. Following this express disclosure of
Watkins, it would have been obvious to use a keyhole slot to
attach the rubber band to the insect killing gun of Kopp.
Appellant argues that Watkins is not within appellant’s
field of endeavor. Even if this were the case, appellant has not
argued that Watkins is not reasonably pertinent to the problem
with which appellant is concerned. In our view, the gun of
Watkins is reasonably pertinent to appellant’s problem.
Appellant states there is no motivation for using the feature of
Watkins with the combined teachings of Caron and Kopp. As noted
above, Watkins provides express, written motivation or suggestion
for the examiner’s proposed combination for claims 8 and 9. We
agree with the examiner that the exact orientation of the keyhole
slot is a design choice. We note appellant’s reliance on
benefits such as loose support of the lash, easy replacement
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Application 08/331,851
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thereof, self retention upon firing, etc. The first three of
these benefits are expressly disclosed in Watkins’ disclosure.
With respect to claims 11 through 15, we are in agreement
with the appellant that the applied prior art of Kopp, Caron and
Watkins does not render obvious the provision of a thumb grip on
the latch as claimed in claim 11. We are cognizant of the
examiner’s argument that such a thumb grip is prevalent in the
art, but we are not convinced of the propriety of maintaining the
rejection due to the lack of an evidentiary basis thereof. For
this reason it is our conclusion of law that claims 11 through 15
would not have been obvious for the lack of any disclosure in the
references of a thumb grip.
SUMMARY
Rejections of claims 1 and 4 through 10 are affirmed. The
rejection of claims 11 through 15 is reversed.
Appeal No. 2000-2033
Application 08/331,851
10
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )

Appeal No. 2000-2033
Application 08/331,851
11
Francis L. Conte
6 Puritan Avenue
Swampscott, MA 01907