Ex parte ETAO HUANG

Board of Patent Appeals and Interferences

Sep 22, 1997

08217544 (B.P.A.I. Sep. 22, 1997)

Application for patent filed March 25, 1994.1
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(2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte E-TAO HUANG

_____________
Appeal No. 96-4017
Application 08/217,5441
______________
ON BRIEF
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Before COHEN, FRANKFORT and STAAB, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-4017
Application 08/217,544
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claim 1, which is the only claim remaining in the
application. Claim 2 has been canceled.
Appellant's invention relates to an antitheft device
for attachment to a vehicle steering wheel. A copy of
independent claim 1, the sole claim on appeal, is attached to
this decision.
The references of record relied upon by the examiner in
a rejection of appealed claim 1 under 35 U.S.C. § 103 are:
Wang 5,092,146 Mar. 3, 1992
Lien 5,097,685 Mar. 24, 1992
Wu 5,255,544 Oct. 26, 1993
Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Wu in view of Wang and Lien.
Rather than reiterate the examiner's explanation of the
above-noted rejection and the conflicting viewpoints advanced by
Appeal No. 96-4017
Application 08/217,544
3
the examiner and appellant regarding that rejection, we make
reference to the final rejection (Paper No. 6, mailed March 15,
1995), the examiner's answer (Paper No. 11, mailed November 14,
1995) and the supplemental examiner's answer (Paper No. 13,
mailed April 1, 1996) for the examiner's reasoning in support of
the rejection, and to appellant's brief (Paper No. 10, filed
August 15, 1995) and reply brief (Paper No. 12, filed January 16,
1996) for appellant's arguments thereagainst.
OPINION
Before addressing the examiner's rejection, we note
that the last clause of claim 1 on appeal appears to us to be
somewhat unclear. Accordingly, we turn to the specification and
drawings of the application in an effort to arrive at a proper
understanding of this claim recitation. The claim language in
question reads as follows
said body member being on the same surface of
a steering wheel, not bending upward when the
anti-theft device is attached to the steering
wheel, preventing a rider from colliding with
the elongated body member when entering the
vehicle[.]
Appeal No. 96-4017
Application 08/217,544
4
Viewing Figure 3 of the application drawings and the
statements on page 1 of the specification (lines 18-23), we
understand that a drawback of the prior art was that when the
hook member on the elongate body member (F) was engaged with the
steering wheel, the right-hand end of the body member, as seen in
Figure 3, was canted at an angle towards the space within the
vehicle to be occupied by a rider or passenger, thus making it
"liable to collide with a rider coming in the car." To overcome
this drawback, appellant provided the steering wheel antitheft
device of the application (e.g., Figure 8) with a hook member
(12) provided as an intermediate part of the body member (1)
and so oriented that the body member (1) essentially aligns with
the plane of the steering wheel (B) when the steering lock is
attached to the steering wheel, thus significantly reducing any
possibility that a rider or passenger entering the right side
of the vehicle might collide with the right-hand end of the
body member (1) and be injured. See appellant's specification,
page 5, lines 7-15.
Appeal No. 96-4017
Application 08/217,544
We, however, leave the exact wording of any clarifying2
amendment to the last clause of claim 1 to the examiner and
appellant during any further prosecution of the application.
5
We understand the recitation in the last clause of
claim 1 to be directed to this advantage of the claimed invention
and construe it accordingly. Thus, for purposes of this appeal,
the last clause of the claim is understood as --- said body
member being substantially aligned with the plane of the steering
wheel and not canted into the passenger carrying region when the
antitheft device is attached to the steering wheel, thus pre-
venting a rider from colliding with the elongated body member
when entering the vehicle ---.2
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of
this review, we have made the determination that the examiner's
rejection of appealed claim 1 under 35 U.S.C. § 103 cannot be
sustained. Our reasons follow.
Appeal No. 96-4017
Application 08/217,544
6
The proper test for obviousness is what the combined
teachings of the references would have suggested to those having
ordinary skill in the art. See Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-887 (Fed.
Cir. 1985); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983); In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). The law followed by our court of review,
and thus by this Board, is that "[a] prima facie case of
obviousness is established when the teachings from the prior art
itself would appear to have suggested the claimed subject matter
to a person of ordinary skill in the art." In re Rinehart, 531
F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). A rejection
based on § 103 must rest on a factual basis, with the facts being
interpreted without hindsight reconstruction of the invention
from the prior art. In making this evaluation, the examiner has
the initial duty of supplying the factual basis for the rejec-
tion he/she advances. The examiner may not, because he/she
doubts that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d
Appeal No. 96-4017
Application 08/217,544
7
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968).
In this case, essentially for the reasons stated by
appellant in the brief (pages 4-8) and reply brief, we find that
the examiner's rejection under 35 U.S.C. § 103 is not
sustainable. Like appellant, we are of the opinion that the
examiner has inappropriately relied upon hindsight and improperly
used appellant's own disclosure and teachings as a guide through
the
prior art references and the maze of individual features thereof
in attempting to combine selected ones of those features in a
modification of the Wu antitheft device so as to arrive at the
claimed subject matter.
Moreover, even if the references were combined as urged
by the examiner, we share appellant's view that the antitheft
device defined in claim 1 on appeal would not have been the
result, since the examiner's factual finding that Lien teaches or
discloses "a rod member 5 having annular grooves with vertical
Appeal No. 96-4017
Application 08/217,544
8
side walls 52 to receive a deadbolt," as urged in the final
rejection (page 3) and in the answer (page 5), is in error.
Appellant's claim 1 on appeal requires that the elongated rod
member (3), which telescopes in the passageway (10) of the
elongated body member (1), include a plurality of annular grooves
(31) formed in a substantial portion of the rod member and that
each of said annular grooves have opposite vertical side surfaces
spaced apart from one another to enable the dead bolt (21) of the
lock (2) to engage therein to hold the rod member immovable when
the pusher (20) of the lock is pressed down. See particularly
Figures 4, 6 and 7 of the application drawings. Like appellant
(brief, page 6), we find no teaching or disclosure in Lien of
annular grooves having the claimed configuration, and thus
consider that the examiner's assertions to the contrary are
without foundation and based on pure speculation. There is
simply no clear disclosure in Lien of the configuration of the
grooves (52) and no reasonable suggestion that the grooves (52)
have opposite vertical side surfaces spaced apart from one
another, as required in claim 1 on appeal.
Appeal No. 96-4017
Application 08/217,544
9
Based on the foregoing, the decision of the examiner
rejecting claim 1 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-4017
Application 08/217,544
10
Bacon & Thomas
625 Slaters Lane - 4th Floor
Alexandria, VA 22314
Appeal No. 96-4017
Application 08/217,544
- A1 -
APPENDED CLAIM
1. An antitheft device for attachment to a vehicle
steering wheel comprising;
an elongated body member having an inner end portion
and an outer end portion extending along a common control axis,
and provided with: a passageway in the inner [end] portion; a
lock housing fixed upright on the inner end portion and having
an interior chamber communicating with said passageway; a first
generally “U”-shaped hook having opposite leg portions, the leg
portions having ends forming an opening therebetween for hooking
a portion of a steering wheel whereby the inner end portion is
attached to one leg portion and the outer end portion is attached
to the opposite leg portion such that the opening extends
obliquely to the elongated body member;
a lock fixed in said lock housing and having a round
solid pusher to extend out of an upper end of the lock, a key
hole formed in said pusher to rotate it 90 degrees for locking
and unlocking, and a rod-shaped dead bolt extending down from a
bottom end of the lock connected to and moving with the pusher;
an elongate rod member provided to telescope in said
passageway having: a second U-shaped hook on an outer end for
hooking a portion of a steering wheel; and a plurality of annular
grooves formed in a substantial portion of the rod member, each
of said annular grooves having opposite vertical side surfaces
spaced apart from one another to enable said dead bolt to engage
therein to hold said rod member immovable when said pusher of the
lock is pressed down;
said body member being on the same surface of a
steering wheel, not bending upward when the anti-theft device is
attached to the steering wheel, preventing a rider from colliding
with the elongated body member when entering the vehicle; [sic]