Ex parte Cushing

Board of Patent Appeals and Interferences

Sep 23, 1997

07890785 (B.P.A.I. Sep. 23, 1997)

Application for patent filed June 1, 1992.1
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not binding precedent of the Board.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. 39
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte VINCENT J. CUSHING

_____________
Appeal No. 96-2476
Application 07/890,7851
______________
ON BRIEF
_______________
Before MEISTER, ABRAMS and FRANKFORT, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-2476
Application 07/890,785
2
At the outset, it is necessary to review the final stages
of the prosecution of this application prior to its arrival at
the
Board of Patent Appeals and Interferences, for it bears upon
the status of some of the claims alleged to be on appeal.
At the time the final rejection was rendered in this
case, claims 14 through 35 were pending. However, as a result
of a requirement for election of species, claims 18 through 21
and 25 through 35 had been withdrawn from consideration, and
therefore the final rejection made by the examiner applied to
claims 14 through 17 and 22 through 24 (Paper No. 21), and
these were the claims recited in the appellant's Notice of
Appeal (Paper No. 27). However, in the Brief on Appeal the
appellant added to the appeal the propriety of the examiner's
refusal to include claims 25 through 28 and 33 through 35
among those claims readable on the elected species (Paper No.
31).
The Examiner's Answer (Paper No. 32) dealt with the
standing final rejection of claims 14 through 17 and 22
through 24 under 35 U.S.C. § 103. In addition, the examiner
Appeal No. 96-2476
Application 07/890,785
3
now added a new rejection under 35 U.S.C. § 112, second
paragraph, which was directed to claims 25 through 28 and 33
through 35, apparently responding to the suggestion set forth
in Section 821 of the Manual of Patent Examining Procedure.
There then followed from the appellant an amendment under Rule
193(b) (Paper No. 33), a reply brief (Paper No. 34), and a
reply brief accompanied by a supplemental amendment (Papers
No. 35), all of which were refused entry by the examiner
(Paper No. 36). A petition for entry of the latter two
documents (Paper No. 37) was denied (Paper No. 38).
The result of the above sequence of events is that the
record now before this panel of the Board is devoid of
arguments by the appellant in rebuttal to the rejection of
claims 25 through 28 and 33 through 35 under 35 U.S.C. § 112,
second paragraph, which the examiner made for the first time
in the Examiner's Answer. Since the Examiner's Answer sets
forth the requirement that a response to the new ground of
rejection be filed within two months (page 9), and because
such a response has not been made of record, the appeal as to
claims 25 through 28 and 33 through 35 is dismissed.
Appeal No. 96-2476
Application 07/890,785
4
Therefore, only claims 14 through 17 and 22 through 24
are before us on appeal.
The appellant's invention is directed to an in-line
roller skate having a plurality of operating surfaces on each
wheel. The subject matter before us on appeal is illustrated
by reference to claim 14, which reads as follows:
14. An inline roller skate for skating along a skating
surface, said skate comprising:
wheel means comprising at least one wheel attached to
said skate and constrained for rotation about only a first
axis, said wheel means comprising at least a rolling first
surface rotatable about said first axis, a second surface
disposed to one side of said first surface along said first
axis and a third surface disposed on an opposite side of said
first surface along said first axis; and
a first sliding surface disposed between said first and
second surfaces and a second sliding surface disposed between
said first and third surfaces, said first sliding surface
contacting said skating surface only when said skate is tilted
in a first direction and said second sliding surface
contacting said skating surface only when said skate is tilted
in a second direction, each of said sliding surfaces having a
lower friction coefficient than said rolling first surface.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Stein 1,988,055 Jan. 15, 1935
Liberkowski 4,618,158 Oct. 21, 1986
Appeal No. 96-2476
Application 07/890,785
5
THE REJECTIONS
Claims 14 through 17 and 22 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over Liberkowski.
Claims 23 and 24 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Liberkowski in view of Stein.
The rejections are explained in the Examiner's Answer and
Supplemental Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
Independent claim 14 stands rejected as being
unpatentable over Liberkowski. 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 In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). The appellant has argued
this reference would not have suggested the claimed subject
matter to one of ordinary skill in the art because the wheel
Appeal No. 96-2476
Application 07/890,785
See The Random House College Dictionary, Revised2
Edition, 1980, pages 95, 1013, and 1148.
6
in the reference rotates about two axes whereas the claim
requires that it be "constrained for rotation about only a
first axis" (emphasis added). The examiner's reply to this
assertion is that the Liberkowski wheel pivots, but does not
rotate, about the second axis. We agree with the appellant
and therefore will not sustain the rejection of this claim or
of those that depend from it.
While one might dwell upon intricacies of the definitions
of the verbs "rotate" and "pivot" in order to make a case for
them being different, a reasonable view is that there is an
overlap. That is, to rotate an object is to turn it around an
axis, which is defined as a line about which a rotating body
turns, and to pivot an object is to turn it about a pivot,
which is defined as a point around which an object rotates or
oscillates. From our perspective, therefore, the wheel of2
the Liberkowski skate is rotatable about a first axis Z1-Z1
and a second axis X-X
Appeal No. 96-2476
Application 07/890,785
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(Figure 1). The teachings of this reference thus do not
establish a prima facie case of obviousness with regard to the
subject matter of independent claim 14 or, it follows, of any
of the claims dependent therefrom. Nor is this deficiency
alleviated by considering Stein, which was cited by the
examiner for its teaching of utilizing a nose wheel mounted at
the forward end of the skate.
The rejections are not sustained, and the decision of the
examiner is reversed.
REVERSED
)
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 96-2476
Application 07/890,785
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