Ex Parte Dadbeh

Board of Patent Appeals and Interferences

Jun 15, 2005

10134902 (B.P.A.I. Jun. 15, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BENANALI DADBEH
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Appeal No. 2005-1244
Application No. 10/134,902
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ON BRIEF
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Before FRANKFORT, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 21 to 29,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2005-1244
Application No. 10/134,902
Page 2
BACKGROUND
The appellant's invention relates to a collapsible tennis table which is relatively
simple in construction and wherein, when folded, provides a compact unit for shipping
and storage (specification, p. 1). A copy of the claims under appeal is set forth in the
appendix to the appellant's brief.
Claims 21 to 29 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Sportcraft Table Tennis Table Assembly Instructions & Rules, Model No. 18-0855
(Sportcraft) in view of Lifetime Model #6502 (Lifetime).
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the answer
(mailed August 25, 2004) for the examiner's complete reasoning in support of the
rejection, and to the brief (filed May 7, 2004) and reply brief (filed November 1, 2004) for
the appellant's arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the examiner. Upon evaluation of
Appeal No. 2005-1244
Application No. 10/134,902
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1Thus, there is no need for us to weigh the 37 CFR § 1.132 declaration of Ken
Wickman.
all the evidence before us, it is our conclusion that the evidence adduced by the
examiner is insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal.1 Accordingly, we will not sustain the examiner's rejection of
claims 21 to 29 under 35 U.S.C. § 103. Our reasoning for this determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention. See
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
A critical step in analyzing the patentability of claims pursuant to 35 U.S.C.
§ 103 is casting the mind back to the time of invention, to consider the thinking of one of
ordinary skill in the art, guided only by the prior art references and the then-accepted
wisdom in the field. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617
(Fed. Cir. 1999). Close adherence to this methodology is especially important in cases
Appeal No. 2005-1244
Application No. 10/134,902
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where the very ease with which the invention can be understood may prompt one "to fall
victim to the insidious effect of a hindsight syndrome wherein that which only the
invention taught is used against its teacher." Id. (quoting W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983)).
Most if not all inventions arise from a combination of old elements. See In re
Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457 (Fed. Cir. 1998). Thus, every
element of a claimed invention may often be found in the prior art. See id. However,
identification in the prior art of each individual part claimed is insufficient to defeat
patentability of the whole claimed invention. See id. Rather, to establish obviousness
based on a combination of the elements disclosed in the prior art, there must be some
motivation, suggestion or teaching of the desirability of making the specific combination
that was made by the appellant. See In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d
1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984).
The motivation, suggestion or teaching may come explicitly from statements in
the prior art, the knowledge of one of ordinary skill in the art, or, in some cases the
nature of the problem to be solved. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at
1617. In addition, the teaching, motivation or suggestion may be implicit from the prior
Appeal No. 2005-1244
Application No. 10/134,902
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art as a whole, rather than expressly stated in the references. See WMS Gaming, Inc.
v. International Game Tech., 184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir.
1999). The test for an implicit showing is what the combined teachings, knowledge of
one of ordinary skill in the art, and the nature of the problem to be solved as a whole
would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981) (and cases cited therein). Whether the
examiner relies on an express or an implicit showing, the examiner must provide
particular findings related thereto. See Dembiczak, 175 F.3d at 999, 50 USPQ2d at
1617. Broad conclusory statements standing alone are not "evidence." Id. When an
examiner relies on general knowledge to negate patentability, that knowledge must be
articulated and placed on the record. See In re Lee, 277 F.3d 1338, 1342-45, 61
USPQ2d 1430, 1433-35 (Fed. Cir. 2002).
Sportcraft teaches a multi-section table tennis table which when assembled has
table halves movable between stowed and playing positions, comprising four table
portions, wherein the table portions are joinable to form first and second table halves of
a table tennis table. Each table half includes first and second table portions; a larger leg
member made from two interconnecting pieces; and a smaller leg member made from
two interconnecting pieces. Two caster base members are connected to a smaller leg
Appeal No. 2005-1244
Application No. 10/134,902
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2After the scope and content of the prior art are determined, the differences
between the prior art and the claims at issue are to be ascertained. Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
member securable to the first table half and to a smaller leg member securable to the
second table half.
Lifetime teaches a table tennis table having two table portions. Each table
portion is provided with an outside leg and an inside leg. The inside leg is made from
one piece, i.e., inner leg IL. The outside leg is made from three pieces, i.e., two outer
legs OL interconnected by an outer center leg OC. The outer center leg OC has first
and second end portions having a reduced diameter configured to be within an opening
in the outer legs OL as shown in Figures 6, 8 and 9.
In the rejection before us in this appeal, the examiner (answer, p. 5)
(1) ascertained2 that Sporcraft does not show the second leg member having an open
end, and the connecting member having a central portion with a diameter substantially
the same as the diameter of the first and second leg members and reduced diameter
end portions that are received within open ends of the first and second leg members;
and (2) concluded that
Absent a showing of new and unobvious results and in view of the teachings of
LIFETIME, it would have been obvious to provide a fully detachable connecting
means for the SportCraft table, since they are art recognized equivalents, and
Appeal No. 2005-1244
Application No. 10/134,902
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the selection of either one to form the support structure would be within the level
of ordinary skill in the art.
The appellant argues that the applied prior art does not suggest the claimed
subject matter. We agree.
All the claims under appeal require a table tennis table half to be made of two
portions interconnected by a supporting leg comprising first and second leg members
and a connecting member having both (1) a central portion with a diameter substantially
the same as the diameter of the first and second leg members and (2) reduced diameter
end portions that are received within open ends of the first and second leg members.
However, it is our opinion that these limitations are not suggested by the applied prior
art. In that regard, while Lifetime does teach a three piece supporting leg, Lifetime does
not teach or suggest using the three piece supporting leg to interconnect separate
portions of the table tennis table. As such, we fail to find any motivation, incentive,
suggestion or teaching in Lifetime that would have made it obvious at the time the
invention was made to a person having ordinary skill in the art to have modified
Sportcraft so as to arrive at the claimed subject matter. In our view, the only suggestion
for modifying Sportcraft in the manner proposed by the examiner to meet the above-
noted limitations stems from impermissible hindsight knowledge derived from the
appellant's own disclosure.
Appeal No. 2005-1244
Application No. 10/134,902
Page 8
3The Wickman declaration would appear to be some evidence to the contrary.
As to the examiner's belief that the three piece supporting leg of Lifetime and the
two piece supporting leg of Sportcraft are "art recognized equivalents," we note that no
evidence before us in this appeal supports that determination.3 The mere fact that both
the three piece supporting leg of Lifetime and the two piece supporting leg of Sportcraft
act as a support for a table tennis table does not, ipso facto, make them "art recognized
equivalents." The classical test for equivalence was whether the structures perform
substantially the same function in substantially the same way to obtain substantially the
same result. See Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 900, 221
USPQ 669, 679 (Fed. Cir.), cert. denied, 469 U.S. 857 (1984). In this case, the three
piece supporting leg of Lifetime does not perform substantially the same function in
substantially the same way to obtain substantially the same result as the two piece
supporting leg of Sportcraft since the two piece supporting leg of Sportcraft acts to
support two abutting table tennis table portions together while the three piece
supporting leg of Lifetime supports a single table tennis table portion. In our view, while
both the two piece supporting leg of Sportcraft and the three piece supporting leg of
Lifetime support the table tennis table, the applied prior art contains no motivation,
incentive, suggestion or teaching for an artisan to have modified Sportcraft so as to
arrive at the claimed subject matter.
Appeal No. 2005-1244
Application No. 10/134,902
Page 9
For the reasons set forth above, the decision of the examiner to reject claims 21
to 29 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject claims 21 to 29 under
35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2005-1244
Application No. 10/134,902
Page 10
WOODARD, EMHARDT, NAUGHTON, MORIARTY AND MCNETT
BANK ONE CENTER/TOWER
SUITE 3700
111 MONUMENT CIRCLE
INDIANAPOLIS, IN 46204-5137

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