Ex parte Dornhofer

Board of Patent Appeals and Interferences

Oct 30, 2000

08395411 (B.P.A.I. Oct. 30, 2000)

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for publication and is not binding precedent of the Board.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. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SIEGFRIED DORNHOFER
____________
Appeal No. 1998-1931
Application No. 08/395,411
____________
HEARD: OCTOBER 11, 2000
____________
Before COHEN, NASE, and JENNIFER D. BAHR, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal taken from the final rejection of
claims 1 through 5, 7, 8, 10, 11, 13 through 15, 17, and 18.
However, subsequent to the final rejection, claim 8 was
canceled and claims 2 and 7 were amended. Claim 12 stands
objected by the examiner, and claim 16 stands withdrawn
pursuant to 37 CFR
Appeal No. 1998-1931
Application No. 08/395,411
2
§ 1.142(b). In light of the above, claims 1 through 5, 7, 10,
11, 13 through 15, 17, and 18 are before us for review.

Appellant’s invention pertains to a roller-type skiing
device and to a roller skiboard for two footed stand. A basic
understanding of the invention can be derived from a reading
of exemplary claims 1 and 15, a copy of which appears in the
APPENDIX to the supplemental brief of June 12, 2000 (Paper
No. 25).
As evidence of obviousness, the examiner has applied the
documents listed below:
Peters 954,993 Apr. 12, 1910
Fowlkes 2,878,071 Mar. 17, 1959
Goodwin 3,622,172 Nov. 23, 1971
Hill 5,356,209 Oct. 18,
1994
(filed May 19, 1993)
Parker, Jr. 5,388,350 Feb. 14, 1995
(filed Dec. 31, 1992)
The following rejections are before us for review.
Appeal No. 1998-1931
Application No. 08/395,411
3
Claims 1, 3 through 5, 11, 13, 17, and 18 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Goodwin in
view of Parker, Jr. and Fowlkes.
Claims 2, 7, 10, and 15 stand rejected under 35 U.S.C. §
103 as being unpatentable over Goodwin in view of Parker, Jr.
and Fowlkes, as applied to claim 1 above, further in view of
Peters.
Claim 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Goodwin in view of Parker, Jr. and Fowlkes,
as applied to claim 1 above, further in view of Hill.
The full text of the examiner’s rejections and response
to the argument presented by appellants appears in the answer
(Paper No. 17), while the complete statement of appellant’s
argument can be found in the main and first and second
supplemental briefs (Paper Nos. 16, 18, and 25).
OPINION
Appeal No. 1998-1931
Application No. 08/395,411
In our evaluation of the applied prior art, we have1
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
4
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellant’s specification and claims, the applied teachings,1
and
the respective viewpoints of the appellant and the examiner.
As a consequence of our review, we make the determination
which follows.
We reverse each of the examiner’s rejections under
35 U.S.C. § 103.
The skiing device of independent claim 1 and the
skiboard of independent claim 15 each require an envelope with
Appeal No. 1998-1931
Application No. 08/395,411
Each of claims 1 and 15, as indicated, expressly refer2
to the "contour" of the envelope. Consistent with the
underlying specification (page 10, lines 4 through 11), we
understand the "contour" of the envelope to broadly denote an
outline of a curving figure. Webster’s New Collegiate
Dictionary, G. & C. Merriam Company, Springfield,
Massachusetts, 1979.
5
wheels of varying length to conform to the contour of the2
envelope, a terminal piece of hard material provided on an end
face of a wheel and forming an edge, and a hollow cylinder in
flush-mounted disposition to the terminal piece so that during
negotiation of a turn the edge of the terminal piece is
exposable to effect a firm grip.
Appeal No. 1998-1931
Application No. 08/395,411
6
We fully appreciate the examiner’s assessment of the
Goodwin, Parker, Jr., Fowlkes, Peters, and Hill patents, and
the manner in which they are applied in the respective
rejections on appeal. As more fully explained below, the
difficulty that we have with, for example, the rejections of
claims 1 and 15, respectively, is that only reliance upon
appellant’s own teaching and hindsight would have enabled one
of ordinary skill in the art to seek out and combine the
applied prior art, as proposed.
As can be discerned from a review of the Goodwin
reference, the torsion land skier thereof utilizes barrel-
shaped rollers having a convex periphery (column 1, lines 43
through 47). On the other hand, the Parker, Jr. patent
addresses a roller shoe with rollers of varying length
conforming to the contour of the shoe, while the patent to
Fowlkes teaches a laminated skate wheel
(Fig. 2) that includes outer discs 16, 18 of substantially
greater hardness and durability than an annular member 14.
Considering, in particular, the barrel-shaped roller intended
by patentee Goodwin, it at once becomes apparent to us that
Appeal No. 1998-1931
Application No. 08/395,411
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the selection of the type of wheel disclosed by Fowlkes for
use with a roller skier like that of Goodwin comes not from
the applied teachings themselves but from inappropriate
reliance upon appellant’s own teaching. It is for this reason
that the respective rejections of appellant’s claims must be
reversed. Our review of the patents to Peters and Hill
reveals to us that they do not overcome the deficiency of the
other applied art already discussed.
In summary, this panel of the board has reversed each of
the rejections under 35 U.S.C. § 103.
The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Appeal No. 1998-1931
Application No. 08/395,411
8
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
ICC/sld
Appeal No. 1998-1931
Application No. 08/395,411
9
HENRY M. FEIEREISEN
THE EMPIRE STATE BUILDING
350 FIFTH AVENUE
35TH FLOOR
NEW YORK, NY 10118
APPEAL NO. 1998-1931 - JUDGE
COHEN
APPLICATION NO. 08/395,411
APJ COHEN
APJ NASE
APJ BAHR
DECISION: REVERSED
Prepared By:
DRAFT TYPED: 02 Jul 01
FINAL TYPED: