Ex parte Crockett

Board of Patent Appeals and Interferences

Dec 4, 1998

08115299 (B.P.A.I. Dec. 4, 1998)

Application for patent filed September 01, 19931
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(2) is not binding precedent of the Board.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 ROBERT J. CROCKETT

_____________
Appeal No. 96-1465
Application 08/115,2991
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ON BRIEF
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Before JERRY SMITH, BARRETT, and FLEMING, Administrative
Patent Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL

This is a decision on the appeal under 35 U.S.C. § 134
Appeal No. 96-1465
Application No. 08/115,299
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from the examiner’s rejection of claims 1-5 and 19-21, which
constitute all the claims remaining in the application.
The disclosed invention pertains to a display assembly
which is positioned within the interior of a computer housing.
The display assembly is located adjacent to a printed circuit
board having electrical components mounted thereon. A
metallic protective base is secured between the printed
circuit board and the display device such that no portion of
the rear surface of the display device is directly exposed to
the electrical components mounted on the printed circuit
board.
Representative claim 1 is reproduced as follows:
1. A display assembly which is positionable
substantially adjacent to a printed circuit board within an
interior of a computer housing, with the printed circuit board
having electrical components mounted thereon, comprising:
a display device positionable within the interior of
the computer housing, said display device having a rear
surface; and
a metallic protective base, secured between the
printed circuit board and said display device for supporting
the rear surface of said display device, wherein said
protective base covers the entire rear surface of the display
device so that no portion of the rear surface of said display
device is directly exposed to electrical components mounted on
the printed circuit board.
Appeal No. 96-1465
Application No. 08/115,299
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The examiner relies on the following references:
Lehmann et al. (Lehmann) 4,241,380 Dec. 23, 1980
Momose (Japanese Kokai) 2-264,994 Oct. 29, 1990
Fukuda (Japanese Kokai) 3-211,587 Sep. 17, 1991
Claims 1-5 and 19-21 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over “Fukuda in view of Momose
and Lehmann” [answer, page 3]. Although this is the only
statement of the rejection, the explanation of the rejection
indicates that the claims are unpatentable over Fukuda taken
alone or over Fukuda in view of either Momose or Lehmann [Id.
at pages 3-6].
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
Appeal No. 96-1465
Application No. 08/115,299
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rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
before us, that the evidence relied upon and the level of
skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as
set forth in claims 1-5 and 19-21. Accordingly, we reverse.
Appellant has indicated that for purposes of this
appeal the claims will all stand or fall together as a single
group [brief, page 3]. Consistent with this indication
appellant has made no separate arguments with respect to any
of the claims on appeal. Accordingly, all the claims before
us will stand or fall together. Note In re King, 801 F.2d
1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Accordingly, we will only consider the rejection against
independent claim 1 as representative of all the claims on
appeal.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
Appeal No. 96-1465
Application No. 08/115,299
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support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (CCPA 1966), and to provide a reason
why one having ordinary skill in the pertinent art would have
been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason
must stem from some teaching, suggestion or implication in the
prior art as a whole or knowledge generally available to one
having ordinary skill in the art. Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed.
Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v.
Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ
657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986);
ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577,
221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
Appeal No. 96-1465
Application No. 08/115,299
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With respect to the rejection of claim 1 on Fukuda
taken alone, the rejection concentrates on the fact that no
portion of the rear surface of the display device in Fukuda is
directly exposed to electrical components mounted on the
printed circuit board because of the reflector board 2b
[answer, pages 3-4]. The rejection, however, makes no mention
of the claim limitation that the protective base is metallic.
Appellant correctly argues that there is no suggestion in
Fukuda that the reflector board is made from a metallic
material [reply brief, page 4]. The examiner simply concludes
that the invention of claim 1 would have been obvious to the
artisan without addressing the metallic limitation. Since
appellant argues the nonobviousness of this metallic
limitation, and since the examiner offers no analysis
regarding the obviousness of this limitation, we are
constrained to hold that, on this record, the examiner has
failed to establish a prima facie case of the obviousness of
claim 1 based on the teachings of Fukuda alone.
Appellant also argues that the reflector board 2b in
Fukuda is part of the display device so that it cannot be
considered to be a protective base between the printed circuit
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Application No. 08/115,299
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board and the display device [Id. at pages 3-4]. The examiner
also fails to respond to this argument which provides
additional support for the position that the examiner has not
established a prima facie case of obviousness for the
invention of claim 1.
With respect to the additional teachings of Momose,
the examiner points to the metallic frame in Momose and its
described advantages of securing, integrating and protecting
the various components of the Momose display device [answer,
page 5]. We fail to see how the metallic frame of Momose
would have led the artisan to modify Fukuda so that the
protective base in Fukuda would be metallic and would
completely cover the rear surface of the display device in the
manner recited in claim 1. Appellant has pointed out
deficiencies in this rejection in the reply brief, and the
examiner has again simply ignored the arguments. Thus, we are
also constrained to hold that, on this record, the rejection
of claim 1 based on the collective teachings of Fukuda and
Momose cannot be sustained.
With respect to the additional teachings of Lehmann,
the examiner points to Lehmann’s teaching of separating
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Application No. 08/115,299
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electrical components with a metallic plate to prevent heat
interference between the circuits. The examiner asserts that
it would have been obvious to the artisan to separate the
printed circuit board and display device of Fukuda with a
metallic plate as taught by Lehmann. Appellant argues that
Lehmann is directed to high heat producing components and
would not prove helpful in Fukuda’s liquid crystal display
device. We agree with appellant. We can find no motivation
for the artisan to apply Lehmann’s high heat dissipation
techniques to Fukuda’s liquid crystal display assembly. The
only basis for applying Lehmann’s teachings to the Fukuda
device comes from an improper attempt to reconstruct the
invention in hindsight.
In conclusion, the record in this case does not
support a rejection of claim 1 under 35 U.S.C. § 103 based on
the teachings of Fukuda, Momose and Lehmann, taken singly or
in any combination.
Therefore, we do not sustain the rejection of claims 1-5 and
19-21 under 35 U.S.C. § 103, and the decision of the examiner
rejecting these claims is reversed.
Appeal No. 96-1465
Application No. 08/115,299
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REVERSED
)
JERRY SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE BARRETT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
MICHAEL R. FLEMING )
Administrative Patent Judge )
JS/dym
Appeal No. 96-1465
Application No. 08/115,299
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Paul J. Maginot
Intellectual Property Section
Law Department
NCR Corporation, World Headquarters
Dayton, OH 45479