Ex parte Edwards et al.

Board of Patent Appeals and Interferences

Feb 17, 1999

08253721 (B.P.A.I. Feb. 17, 1999)

Application for patent filed June 3, 1994. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DONALD J. EDWARDS and DONALD V. EDWARDS
____________
Appeal No. 98-1922
Application No. 08/253,7211
____________
ON BRIEF
____________
Before MEISTER, NASE, and GONZALES, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2 through 13 and 16. Claims 15 and 17
have been allowed. Claims 1 and 14 have been canceled. On
page 2 of the substitute brief (Paper No. 8, filed August 19,
1997), the appellants canceled claim 13. Accordingly, this
Appeal No. 98-1922
Application No. 08/253,721
appeal with respect to claim 13 is dismissed. Claims 2
through 12 and 16 remain on appeal.
We AFFIRM-IN-PART.
Appeal No. 98-1922 Page 3
Application No. 08/253,721
In determining the teachings of Maeda, we will rely on2
the translation provided by the PTO. A copy of the
translation is attached for the appellants' convenience.
BACKGROUND
The appellants' invention relates to a furniture slide.
An understanding of the invention can be derived from a
reading of exemplary claim 16, which appears in the opinion
section below.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Ewell 3,169,652 Feb. 16,
1965
Maeda 60-218204 Oct. 31, 19852
(Japan)
Claims 10 and 16 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Maeda.
Claims 2-4, 6-9, 11 and 12 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Maeda.
Appeal No. 98-1922 Page 4
Application No. 08/253,721
Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Maeda in view of Ewell.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 11, mailed November 28, 1997) for the examiner's complete
reasoning in support of the rejections, and to the appellants'
substitute brief ("brief") for the appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The anticipation issues
Appeal No. 98-1922 Page 5
Application No. 08/253,721
We sustain the rejection of claims 10 and 16 under 35
U.S.C. § 102(b).
To support a rejection of a claim under 35 U.S.C. §
102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of
inherency, in a single prior art reference. See Kalman v.
Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789
(Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Claim 16
Claim 16 reads as follows:
A slide for placement between an object to be moved
and the flooring over which it is to be moved which
comprises:
a. an elongated sheet of flexible material having
opposing ends and side walls joining said opposing ends
when viewed in plan;
b. said sheet having opposing faces when viewed in
side with one of said faces for abutting support and
sliding contact with a floor surface and the other face
having a compressible material fixed thereon with an
abutting support contact surface for an object to be
moved, said contact surface being the uppermost surface
of said slide;
c. means formed on said elongate sheet of material
for applying force for movement of said slide.
Appeal No. 98-1922 Page 6
Application No. 08/253,721
Maeda discloses a slider device. As shown in Figures 2-
3, the slider device 3 incudes a bottom-surface component 5
that is made of fluroresin, a top-surface component 4 that is
made of synthetic rubber, and a pull string 10 to slide the
device over a floor surface. The top-surface component 4 has
a raised rim 6, thereby forming a dish shape, and has many
projections 7 inside the sunken surface.
The appellants argue (brief, p. 6) that Maeda shows the
furniture (i.e., object 11 shown in Figure 5) having contact
on the inner surface of the surface member 4, not on the upper
most surface 6. The appellants state that
claim 16 requires that its uppermost surface be the
contact surface for the body being moved which is a
surface not shown or suggested by Maeda.

The examiner responded to this argument (answer, pp. 6-7)
by (1) pointing out the furniture itself is not part of the
claimed combination; (2) noting that in the appellants Figures
14 and 17 the furniture shown is not in contact with the
Appeal No. 98-1922 Page 7
Application No. 08/253,721
The specie depicted in the appellants Figures 14 and 173
is recited in dependent claim 12.
The appellants did not reply to the examiner's response4
to the appellants' argument.
As set forth by the court in Kalman, it is only5
necessary for the claims to "'read on' something disclosed in
the reference, i.e., all limitations of the claim are found in
the reference, or 'fully met' by it."
uppermost surface of the slide ; and (3) submitting that the3
claim is met by Maeda's slide since it is capable of
performing the function, that is the claimed contact surface
is readable on Maeda's raised rim. We agree. In that4
regard, the slider device 3 of Maeda is fully capable of
receiving an object which overlies the raised rim 6. As such,
it is our determination that the claimed contact surface being
the uppermost surface of the slide reads on the raised rim 6. 5
Since all the limitations of claim 16 are found in Maeda,
the decision of the examiner to reject claim 16 under 35
U.S.C.
§ 102(b) is affirmed.
Appeal No. 98-1922 Page 8
Application No. 08/253,721
Claim 10
The decision of the examiner to reject claim 10 under
35 U.S.C. § 102(b) is also affirmed since the appellants have
not challenged this rejection with any reasonable specificity,
thereby allowing claim 10 to fall with claim 16 (see In re
Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir.
1987).
The obviousness issues
We sustain the rejection of claims 2-6, 8, 9, 11 and 12
under 35 U.S.C. § 103, but not the rejection of claim 7.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a case of obviousness.
See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). A case of obviousness is established by
presenting evidence that the reference teachings would appear
to be sufficient for one of ordinary skill in the relevant art
having the references before him to make the proposed
combination or other modification. See In re Lintner, 9 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the
Appeal No. 98-1922 Page 9
Application No. 08/253,721
conclusion that the claimed subject matter is prima facie
obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally
available to one of ordinary skill in the art that would have
led that individual 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).
Claim 2
Claim 2 reads as follows:
The slide according to Claim 16 which further
comprises said ends being substantially arcuate in
configuration from side wall to side wall.
The appellants argue (brief, p. 7) that the examiner has
not shown any prior art that discloses or even suggests the
requirements of claim 2 and therefore provides no basis that
limitations of claim 2 are "an obvious design choice."

The examiner responded to this argument (answer, pp. 4
and 7) by citing and applying Figure 1 of Maeda which shows a
Appeal No. 98-1922 Page 10
Application No. 08/253,721
The appellants did not reply to the examiner's6
application of Figure 1 of Maeda.
furniture slide having arcuate ends. The examiner then
determined that it would have been obvious to a skilled
artisan to configure Maeda's slide (i.e., the slider device
shown in Figures 2-4) with arcuate ends.6
We agree with the examiner that the combined teachings of
Maeda's Figures 2-4 and Maeda's Figure 1 would have suggested
to one of ordinary skill in the art at the time the invention
was made to provide arcuate ends on the slider device 3 for
self-evident reasons as pointed out by the examiner. In that
regard, we observe that an artisan must be presumed to know
something about the art apart from what the references
disclose (see In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317,
319 (CCPA 1962)) and the conclusion of obviousness may be made
from "common knowledge and common sense" of the person of
ordinary skill in the art (see In re Bozek, 416 F.2d 1385,
1390, 163 USPQ 545, 549 (CCPA 1969)).
Appeal No. 98-1922 Page 11
Application No. 08/253,721
See page 5 of the brief.7
For the reasons stated above, the decision of the
examiner to reject claim 2 under 35 U.S.C. § 103 is affirmed.
Claims 3, 4 and 6
The appellants have grouped claims 2-4 and 6 as standing
or falling together. Thereby, in accordance with 37 CFR 7
§ 1.192(c)(7), claims 3, 4 and 6 fall with claim 2. Thus, it
follows that the decision of the examiner to reject claims 3,
4 and 6 under 35 U.S.C. § 103 is also affirmed.
Claim 7
Claim 7 reads as follows:
The slide according to Claim 16 in which said sheet
has a concave configuration toward said furniture to be
moved.
The appellants argue (brief, p. 8) that Maeda does not
teach or suggest the claimed sheet having "a concave
configuration toward said furniture to be moved."

Appeal No. 98-1922 Page 12
Application No. 08/253,721
The examiner responded to this argument (answer, pp. 4
and 7) by arguing that it is common to have some arc to the
lower surface and the leading edge and therefore an arcuate
cross-section would have been obvious to a skilled artisan.
It is our opinion that the examiner has not presented any
evidence that would have led a skilled artisan to arrive at
the claimed invention. Specifically, there is no evidence in
the rejection before us that would have suggested modifying
Maeda's sheet (i.e., bottom-surface component 5) to have a
concave configuration toward the furniture to be moved.
For the reasons stated above, the decision of the
examiner to reject claim 7 under 35 U.S.C. § 103 is reversed.
Claims 8 and 9
Claim 8 reads as follows:
The slide according to Claim 4 in which said rubber
material comprises a closed foam construction with a
hardness greater than 75 durometers on the shore 00
scale.
Appeal No. 98-1922 Page 13
Application No. 08/253,721
Claim 9 reads as follows:
The slide according to Claim 16 in which the
thickness of the compressible material is a minimum of ½
inch thick.
The examiner determined (answer, p. 5) that it would have
been obvious to make Maeda's synthetic rubber top-surface
component 5 of a closed foam construction, which is an
extremely common inexpensive compressible material, and
relatively hard, in order to avoid abrasion during use. The
examiner also determined (answer, pp. 4 and 5) that, the
hardness as well as the thickness of Maeda's synthetic rubber
top-surface component 5 were obvious matters of design choice.
The appellants argue (brief, pp. 8-9) that Maeda does not
teach or suggest the claimed limitations and that the examiner
has not provided any support as to why the claimed limitations
would have been obvious matters of design choice.
Appeal No. 98-1922 Page 14
Application No. 08/253,721
We agree with the examiner that the limitations set forth
in claims 8 and 9 would have been obvious to one of ordinary
skill in the art at the time the invention was made since
skill is presumed on the part of those practicing in the art.
See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed.
Cir. 1985). In this regard, we note that Maeda does not
disclose either the specific material and hardness of Maeda's
synthetic rubber top-surface component 5 or its thickness.
Thus, Maeda left it up to the artisan to select an appropriate
material, hardness and thickness. In our view, the selection
of a closed foam construction with a hardness greater than 75
durometers on the shore 00 scale as Maeda's synthetic rubber
top-surface component 5 would have been obvious to an artisan.
Likewise, the selection of the thickness of Maeda's synthetic
rubber top-surface component 5 to be a minimum of ½ inch thick
would have been obvious to an artisan.
This accords with the general rule that discovery of an
optimum value of a result effective variable (in this case,
the optimum material or thickness) is ordinarily within the
skill of the art. See In re Boesch, 617 F.2d 272, 276, 205
Appeal No. 98-1922 Page 15
Application No. 08/253,721
USPQ 215, 219 (CCPA 1980) and In re Aller, 220 F.2d 454, 456,
105 USPQ 233, 235 (CCPA 1955). As stated in In re Huang, 100
F.3d 135, 139, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996):
This court and its predecessors have long held,
however, that even though applicant's modification
results in great improvement and utility over the
prior art, it may still not be patentable if the
modification was within the capabilities of one
skilled in the art, unless the claimed ranges
"produce a new and unexpected result which is
different in kind and not merely in degree from the
results of the prior art."
Additionally, as stated in In re Woodruff, 919 F.2d 1575,
1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990):
The law is replete with cases in which the
difference between the claimed invention and the
prior art is some range or other variable within the
claims. . . . These cases have consistently held
that in such a situation, the applicant must show
that the particular range is critical, generally by
showing that the claimed range achieves unexpected
results relative to the prior art range [citations
omitted].
In the present case, however, the appellants have not
even alleged, must less established, that the claimed material
or thickness produces unexpected results. Accordingly, the
Appeal No. 98-1922 Page 16
Application No. 08/253,721
decision of the examiner to reject claims 8 and 9 under 35
U.S.C. § 103 is affirmed.
Claim 11
Claim 11 reads as follows:
The slide according to Claim 10 which further
comprises grommets reenforcing said perforations.
The examiner took (answer, p. 5) official notice that
it is old and well known to provide grommets in order to
protect the edges of sheet material at the holes.

The examiner then determined that
it would have been obvious to a skilled artisan to
provide grommets at the holes of Maeda, as is old and
well known, in order to protect the material at the
holes, where the slide is subject to the greated [sic,
greater] stress from pulling.
The appellants argue (brief, p. 9) that the examiner
shows no relevant art that would have suggested providing
grommets as claimed. We do not agree. While the examiner has
not shown any art suggesting the use of grommets, the
appellants have not contested the examiner's use of official
notice that it is old and well known to provide grommets in
Appeal No. 98-1922 Page 17
Application No. 08/253,721
order to protect the edges of sheet material at the holes.
Since the appellants have not seasonably challenged the
examiner's reliance on official notice, it is appropriate for
the examiner to continue to rely on official notice. In our
view, the combined teachings of Maeda and the official notice
taken by the examiner would have suggested to one of ordinary
skill in the art at the time the invention was made to provide
grommets in the openings of the slider device 3 through which
the pull string 10 passes.
For the reasons stated above, the decision of the
examiner to reject claim 11 under 35 U.S.C. § 103 is affirmed.

Claim 12
Claim 12 reads as follows:
The slide according to Claim 9 which further
comprises a blind hole in said compressible material for
engagement with the furniture to be moved.
The appellants argue (brief, p. 9) that the examiner has
not cited any reference where a hole as recited in claim 12
Appeal No. 98-1922 Page 18
Application No. 08/253,721
The appellants did not reply to the examiner's response8
to the appellants' argument.
has been provided in equipment or structure similar to that of
the appellants.

The examiner responded to this argument (answer, pp. 5
and 9) by arguing that the claimed blind hole reads on the
recess formed by the raised rim 6 of Maeda. We agree. Thus,8
it is our view that Maeda teaches all the limitations of claim
12.
For the reasons stated above, the decision of the
examiner to reject claim 12 under 35 U.S.C. § 103 is affirmed.
Claim 5
Claim 5 reads as follows:
The slide according to Claim 3 in which said plastic
material comprises a high density polyethylene material.
The examiner found (answer, pp. 5 and 8) that Ewell
teaches a high density polyethylene sheet material 25 as an
Appeal No. 98-1922 Page 19
Application No. 08/253,721
inexpensive, low friction material between a moving slide and
the ground. The examiner then determined (answer, p. 6) that
[i]t would have been obvious to one of ordinary skill in
the art to form the Maeda low friction material out of a
high density polyethylene material, as taught by Ewell,
in order to provide an appropriate low friction surface.
The appellants state (brief, pp. 7-8) that they
do not understand how it would have been obvious to
select something out of the Ewell reference, which is
structure nowhere near or resembling that of the
Applicants and is unrelated, in order to combine it with
Maeda in such a way that it would anticipate or render
obvious the claim.
In applying the above-noted test for obviousness, we
reach the conclusion that it would have been obvious to one of
ordinary skill in the art at the time the invention was made
to have made Maeda's bottom-surface component 5 from a low
friction material such as high density polyethylene, as
suggested by Ewell. In that regard, while Maeda teaches the
use of fluroresin as the low friction material for the bottom-
surface component 5, Ewell would have taught (see column 5,
lines 20-32) one skill in the art that high density
polyethylene material is an inexpensive, durable low friction
material. Accordingly, it is our view that it would have been
Appeal No. 98-1922 Page 20
Application No. 08/253,721
obvious to an artisan to have replaced Maeda's fluroresin with
high density polyethylene material to provide an inexpensive,
durable low friction bottom-surface component.
For the reasons stated above, the decision of the
examiner to reject claim 5 under 35 U.S.C. § 103 is affirmed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 2 through 6, 8 through 12 and 16 is affirmed and the
decision of the examiner to reject claim 7 is reversed.
Appeal No. 98-1922 Page 21
Application No. 08/253,721
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
JVN/gjh
Appeal No. 98-1922 Page 22
Application No. 08/253,721
CAROTHERS AND CAROTHERS
445 FORT PITT BOULEVARD
SUITE 500
PITTSBURGH, PA 15219
APPEAL NO. 98-1922 - JUDGE NASE
APPLICATION NO. 08/253,721
APJ NASE
APJ GONZALES
APJ MEISTER
DECISION: AFFIRMED-IN-PART
Prepared By: Gloria Henderson
DRAFT TYPED: 16 Feb 99
FINAL TYPED: