Ex Parte EARNEST

Board of Patent Appeals and Interferences

Jan 12, 2011

11307403 (B.P.A.I. Jan. 12, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TODD EARNEST
____________

Appeal 2009-009188
Application 11/307,403
Technology Center 3600
____________

Before WILLIAM F. PATE, III, LINDA E. HORNER, and
MICHAEL W. O’NEILL, Administrative Patent Judges.

MICHAEL W. O’NEILL, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown in the PTOL-90A cover letter attached to this decision.

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Application 11/307,403

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STATEMENT OF THE CASE
Todd Earnest (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision finally rejecting:
(1) claims 1 and 8 under 35 U.S.C. § 103(a)
as unpatentable over Presler (U.S. Patent No.
4,023,372, issued May 17, 1977) and Groepper
(U.S. Patent Application Publication No.
2006/0196069 A1, published Sep. 7, 2006, filed
Jan. 19, 2006, and claiming priority to U.S.
Provisional Patent Application No. 60/645,528,
filed Jan. 20, 2005);
(2) claims 3, 6, and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Presler, Groepper,
and Risley (U.S. Patent No. 7,198,045 B2, issued
Apr. 3, 2007 and filed Feb. 10, 2003); and
(3) claim 9 under 35 U.S.C. § 103(a) as
unpatentable over Presler, Groepper, and Bryant
(U.S. Patent No. 5,922,437, issued Jul. 13, 1999).

Appellant cancelled claims 2, 4, and 5. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
The Invention
The claims on appeal relate to an inflatable temporary door that is
placed in a door frame when a doorway is being used to run electrical wires
or hoses therethrough.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. An inflatable temporary door comprising:
an inflated body adapted to fit within a door
frame;
a retractable doorway disposed through the
inflated body and having a retractable flap;
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a plurality of straps disposed around a
perimeter of the retractable doorway; [and]
a plurality of L-shaped brackets frictionally
engaging the door frame and releasably connected
to the plurality of straps to hold the inflatable door
within the door frame.

OPINION
Appellant contends that there is no motivation or reason to combine
Presler and Groepper to arrive at the present invention “other than to use
Appellant’s claimed disclosure as a blueprint.” App. Br. 7 and see also
Reply Br. 3 and 5. Appellant contends that Presler and Groepper solve very
different problems since Presler is directed toward a means for effectively
isolating different portions of a mine from one another for safety reasons,
whereas Groepper is directed towards a marking device for hanging pictures
on a picture frame. App. Br. 8-9. Appellant also contends that since Presler
and Groepper address very different problems there is no reason why one of
ordinary skill in the art would consider modifying one by the other. App.
Br. 9. In view of the foregoing, Appellant contends that “the only reason to
combine these two reference[s] together to arrive at the claimed invention
comes from Appellant’s own disclosure” and thus, the Examiner used
improper hindsight reasoning to combine Presler and Groepper in order to
conclude claim 1 is obvious. Id.
The Examiner’s position is that Presler discloses the invention
substantially as claimed, except that Presler fails to disclose a plurality of L-
shaped brackets. Ans. 4-6. The Examiner posits that Groepper teaches an
L-shaped bracket 40 frictionally engaging (see Paragraph No. 38) a frame 80
and releasably connected to a strap 60. The Examiner concludes that it
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would have been obvious to one of ordinary skill in the art to have
substituted the L-shaped bracket and adjustable strap of Groepper for the
fixed straps 30, 32 of Presler in order “to have an adjustable, re-useable
means of securing an object to a frame.” Ans. 6. In response to Appellant’s
argument that Presler does not teach straps, the Examiner disagrees and
posits that Presler teaches a plurality of straps 30, 32 disposed around a
perimeter of a retractable doorway as specifically stated at column 3, lines
26 and 55. Ans. 10. The Examiner posits that it would have been obvious to
one of ordinary skill in the art to replace the plurality of straps 30, 32 of
Presler with the L-shaped brackets 40 and adjustable strap 60 of Groepper so
that a plurality of L-shaped brackets frictionally engage the door frame
60, 62 of Presler’s Figure 4 embodiment for easy and fast anchoring of the
door 10. Ans. 11-12.
Based on the foregoing contentions and positions, the determinative
issue in this appeal is whether the Examiner utilized impermissible hindsight
reconstruction in order to conclude that the claimed invention is obvious
given the content of Presler and Groepper and the Examiner reasoning for
the proposition to combine the teachings of Presler and Groepper.
As the Supreme Court admonished “[a] factfinder should be aware . . .
of the distortion caused by hindsight bias and must be cautious of arguments
reliant upon ex post reasoning.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966). As the
Court stated in KSR, Graham warned against a “temptation to read into the
prior art the teachings of the invention in issue” and instructed courts to
“guard against slipping into the use of hindsight” from which the Graham
Court was quoting from Monroe Auto Equipment Co. v. Heckethorn Mfg. &
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Supply Co., 332 F.2d 406, 412 (6th Cir. 1964). See also Sensonics, Inc. v.
Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (“To draw on
hindsight knowledge of the patented invention, when the prior art does not
contain or suggest that knowledge, is to use the invention as a template for
its own reconstruction—an illogical and inappropriate process by which to
determine patentability.” (citing W.L. Gore & Assoc. v. Garlock, Inc., 721
F.2d 1540, 1553 (Fed. Cir. 1983)).
We agree with Appellant that it would not have been prima facie
obvious to combine the applied references. The Examiner alleges that it
would have been obvious to one of ordinary skill in the art to replace the
plurality of straps 30, 32 of Presler with the L-shaped brackets 40 and
adjustable strap 60 of Groepper so that a plurality of L-shaped brackets
frictionally engage the door frame 60, 62 of Presler’s Figure 4 embodiment
to have an adjustable and reusable means of securing an object to a frame
(see Ans. 6) for easy and fast anchoring of the door 10 (see Ans. 16). This
reasoning lacks an underlying rational underpinning since it is based on
something that does not exist with Presler. With no rational underpinning, a
legal conclusion of obviousness cannot be supported by the combined
teachings of the prior art. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006) (“[T]here must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.”), cited with
approval in KSR, 550 U.S. at 418.
The Figure 4 embodiment of Presler that the Examiner relies upon for
the teaching of the frame does not even have the straps 30, 32 which the
Examiner proposes replacing with the L-shaped bracket 40 and adjustable
strap 60 of Groepper. Indeed, the straps 30, 32 are only shown in Presler’s
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Figures 1-3 and 5 embodiment. Presler’s Specification does not provide any
disclosure that the straps 30, 32 of the Figures 1-3 and 5 embodiment are
useable with the Figure 4 embodiment which is said to show a modified
form of the inflatable passage closing member or device 10 (see col. 2, ll.
64-66 and col. 4, l. 63). Moreover, the unnumbered members attaching the
cross-member 60 and frame member 62 to the ceiling and floor,
respectively, in Figure 4 cannot be considered to be a strap which is defined
as a narrow strip of flexible material, esp. leather, as for fastening or holding
things together.2 Accordingly, the Examiner’s articulated reasoning for the
proposed replacement of Presler’s straps 30, 32 with Groepper’s L-shaped
bracket and adjustable strap, namely, to have an adjustable, re-useable
means of securing an object to a frame, is ostensibly grounded on a
distortion of the content of Presler. Consequently, we cannot sustain the
rejection.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1 and 8 under 35 U.S.C. § 103(a) as unpatentable over Presler and
Groepper. Since the Examiner’s rejection of claim 3, 6, and 7 and the
Examiner’s rejection of claim 9 are based upon the same rationale as was
used to support the rejection claims 1 and 8, we also do not sustain the
Examiner’s rejection of claims 3, 6, and 7 under 35 U.S.C. § 103(a) as
unpatentable over Presler, Groepper, and Risley, and the Examiner’s
rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over Presler,
Groepper, and Bryant.

2 See Dictionary.com, "strap," in Dictionary.com Unabridged, Random
House, Inc., accessed at http://dictionary.reference.com/browse/strap on
Dec. 21, 2010.
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CONCLUSION
Given the content of Presler and Groepper, it would not have been
obvious to combine these teachings to arrive at the claimed subject matter.
DECISION
We reverse the Examiner’s rejections of: claims 1 and 8 under 35
U.S.C. § 103(a) as unpatentable over Presler and Groepper; claims 3, 6, and
7 under 35 U.S.C. § 103(a) as unpatentable over Presler, Groepper, and
Risley; claim 9 under 35 U.S.C. § 103(a) as unpatentable over Presler,
Groepper, and Bryant.
REVERSED

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