Ex parte Ellison

Board of Patent Appeals and Interferences

Sep 27, 2000

08699135 (B.P.A.I. Sep. 27, 2000)

Application for patent filed August 16, 1996. According1
to appellant, the application is a continuation of Application
08/420,025, filed April 11, 1995, abandoned.
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(2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte SANDRA K. ELLISON

_____________
Appeal No. 1998-0045
Application 08/699,1351
______________
HEARD: October 4, 1999
_______________
Before PATE, McQUADE and BAHR, Administrative Patent Judges.
Appeal No. 1998-0045
Application 08/699,135
2
PATE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 13. These are all of the claims in the application.
The claimed invention is directed to a greeting card
which includes a stained glass ornament. The card portion of
the combination includes an aperture through which the stem of
a suction cup projects. The ornament is affixed to the stem
of the suction cup and is thereby held on the card. When the
user receives the card, the user removes the ornament from the
suction cup, removes the suction cup from the card, and then
affixes the suction cup to a structure where the ornament is
to be displayed. The ornament is then reattached to the
suction cup. The claimed subject matter can be further
understood with reference to claims 1 through 13 appended to
appellant's brief.
Appeal No. 1998-0045
Application 08/699,135
3
The references of record relied upon by the examiner
as evidence of obviousness are:
Plante 1,922,900 Aug. 15,
1933
Transport 4,319,418 Mar. 16,
1982
Sy, Jr. 5,131,177 July 21,
1992
THE REJECTIONS
Claims 1 through 8 and 12 stand rejected under 35
U.S.C. § 103 as unpatentable over Transport in view of Sy, Jr.
The examiner states that Transport teaches a folded paper
greeting card with a collapsible ornament affixed therein by
staple 129. The examiner acknowledges that Transport does not
teach an affixing means which partly projects from an aperture
in the card. The examiner has cited Sy, Jr. for the teaching
of affixing a suction cup to a card via an aperture in the
card. The examiner concludes that it would have been obvious
to utilize the affixing means of Sy, Jr. in the card of
Transport to provide a means for affixing the ornament to a
Appeal No. 1998-0045
Application 08/699,135
4
variety of surfaces without the need for any other hanging
hardware (such as a hook or nail).
Claims 9 through 11 and 13 stand rejected under 35
U.S.C. § 103 as unpatentable over Transport and Sy, Jr. as
applied to claims 1 through 8 and 12 above, and further in
view of Plante. Plante has been cited to show a figure eight-
shaped wire to affix a card to a suction cup. The examiner
concludes that it would have been obvious to one of ordinary
skill to apply such a wire to the device of Transport to
securely retain the ornament on the suction cup.
OPINION
We have carefully reviewed the rejections on appeal
in light of the arguments of the appellant and the examiner.
As a result of this review, we have determined that the
applied prior art does not establish a prima facie case of
obviousness with respect to the claimed subject matter.
Consequently, we reverse the rejections on appeal. Our
reasons follow.
Appeal No. 1998-0045
Application 08/699,135
5
We are in agreement with appellant's argument that
the examiner has misinterpreted the teaching of Sy, Jr.
Appellant argues that the teaching of the Sy, Jr. reference is
to mount the card by a suction cup. There is no teaching in
the prior art taken as a whole of using the suction cup to
releasably connect the ornament to the card.
We further credit appellant's argument that
Transport's staple is not intended to do double duty by first
affixing the ornament to the card and then affixing the
ornament to the suction cup of Sy, Jr. when the teachings of
the patents are combined. We can only conclude that the
suggestion for using a releasable connection between the
ornament and the suction cup to temporarily mount the
ornament on the suction cup and card for mailing finds its
genesis in impermissible hindsight recon- struction of
appellant's claimed subject matter. As such, it cannot
provide a legitimate basis for a prima facie case of
Appeal No. 1998-0045
Application 08/699,135
6
obviousness. Therefore, we are constrained to reverse the
rejection of claims 1 through 8 and 12.
With respect to claims 9 through 11 and 13, the
reference patent to Plante does not alleviate the shortcomings
of the basic references discussed above. The rejection of
these claims is also reversed.
REVERSED
WILLIAM F. PATE, III )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )

Appeal No. 1998-0045
Application 08/699,135
7
WFP:psb
Appeal No. 1998-0045
Application 08/699,135
8
Stefan V. Stein
Dominik & Stein
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Suite 1000
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