08294958 (B.P.A.I. Feb. 2, 1999)

Ex parte Franchak

Board of Patent Appeals and InterferencesFeb 2, 1999

08294958 (B.P.A.I. Feb. 2, 1999)

Application for patent filed August 24, 1994. 1 While the examiner has approved entry of the amendment2 after final rejection filed on September 8, 1997, we note that this amendment has not been clerically entered. 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opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is not binding precedent of the Board.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 LYNN FRANCHAK ____________ Appeal No. 98-1456 Application No. 08/294,9581 ____________ ON BRIEF ____________ Before CALVERT, McQUADE, and NASE, Administrative Patent Judges. NASE, Administrative Patent Judge. DECISION ON APPEAL This is an appeal from the refusal of the examiner to allow claims 1, 3, 6 and 8 through 11, as amended subsequent to the final rejection. These claims constitute all of the claims pending in this application.2 Appeal No. 98-1456 Application No. 08/294,958 We REVERSE. Appeal No. 98-1456 Page 3 Application No. 08/294,958 We note that this reference is not available as prior3 art since its publication date is subsequent to this application's filing date. BACKGROUND The appellant's invention relates to a baby safety seat. The prior art references of record relied upon by the examiner in rejecting the appealed claims are: Dustin 2,667,917 Feb. 2, 1954 Sckolnik 4,568,125 Feb. 4, 1986 Dukatz et al. (Dukatz) 5,224,756 July 6, 1993 Allum 5,354,121 Oct. 11, 1994 (filed Feb. 18, 1993) Guieu-Gambino 2,707,568 Jan. 20, 19953 (France) Rather than reiterate the rejections and the conflicting viewpoints advanced by the examiner and the appellant regarding the rejections made by the examiner, we make reference to the examiner's answer (Paper No. 9, mailed May 3, 1996) and the two supplemental examiner's answers (Paper Nos. 12 and 15, mailed July 10, 1997 and December 9, 1997) for the examiner's complete reasoning in support of the rejections, Appeal No. 98-1456 Page 4 Application No. 08/294,958 and to the appellant's brief (Paper No. 11, filed June 10, 1997) and reply brief (Paper No. 13, filed September 8, 1997) for the appellant's arguments thereagainst. Appeal No. 98-1456 Page 5 Application No. 08/294,958 OPINION In reaching our decision in this appeal, we have given careful consideration to the appellant's specification and claims, to the applied prior art references, and to the respective positions articulated by the appellant and the examiner. As a consequence of our review, we make the determinations which follow. The indefiniteness rejections The examiner rejected claim 9 (Paper No. 9) under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the appellant regards as the invention. Later, the examiner rejected claim 1 (Paper No. 12) under 35 U.S.C. Â§ 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the appellant regards as the invention. The appellant submitted an amendment to claims 1 and 9 on September 8, 1997 to overcome the above-noted rejections. While the examiner noted that this amendment has been entered Appeal No. 98-1456 Page 6 Application No. 08/294,958 (see Paper No. 15), the examiner did not specifically withdraw the above-noted rejections. Accordingly, those rejections are still before us on this appeal. We will not sustain the examiner's rejection of claims 1 and 9 under 35 U.S.C. Â§ 112, second paragraph. Clearly the language presently used in claims 1 and 9 is definite, as required by the second paragraph of 35 U.S.C. Â§ 112 (see In re Venezia, 530 F.2d 956, 958, 189 USPQ 149, 151 (CCPA 1976)), since the metes and bounds of the claimed invention are defined with a reasonable degree of precision and particularity. The obviousness rejections We will not sustain any of the examiner's rejections of claims 1, 3, 6 and 8 through 11 under 35 U.S.C. Â§ 103. Upon evaluation of all the evidence before us, it is our conclusion that the evidence adduced by the examiner is insufficient to establish a prima facie case of obviousness Appeal No. 98-1456 Page 7 Application No. 08/294,958 with respect to the claims under appeal. In rejecting claims under 35 U.S.C. Â§ 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie 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 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). Appeal No. 98-1456 Page 8 Application No. 08/294,958 The appellant argues that the applied prior art does not suggest the claimed subject matter. We agree. All the claims under appeal require a child safety seat to include a lower seating panel/section having separate integral leg support elements that are spaced apart from one another to define an opening. However, it is our opinion that these limitations are not suggested by the applied prior art. In that regard, while both Sckolnik and Allum teach child safety seats, neither Sckolnik or Allum teach or suggest using a lower seating panel/section having separate integral leg support elements that are spaced apart from one another to define an opening. To supply these omissions in the teachings of Sckolnik and Allum, the examiner made a determination (answer, pages 5-6) that these differences would have been obvious to an artisan based upon the teachings of Dukatz. However, it is our view Appeal No. 98-1456 Page 9 Application No. 08/294,958 We have also reviewed the Dustin reference additionally4 applied in the rejection of claim 8 but find nothing therein which makes up for the deficiency discussed above. that this determination of the examiner has not been supported by any evidence that would have led an artisan to arrive at the claimed invention. In our view, the only suggestion for modifying Sckolnik and Allum in the manner proposed by the examiner to meet the above-noted limitations stems from hindsight knowledge derived from the appellant's own disclosure. The use of such hindsight knowledge to support an obviousness rejection under 35 U.S.C. Â§ 103 is, of course, impermissible. See, for example, W. L. Gore and Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). It follows that we cannot sustain the examiner's rejections of claims 1, 3, 6 and 8 through 11. 4 Appeal No. 98-1456 Page 10 Application No. 08/294,958 CONCLUSION To summarize, the decision of the examiner to reject claims 1, 3, 6 and 8 through 11 is reversed. REVERSED IAN A. CALVERT ) Administrative Patent Judge ) ) ) ) ) BOARD OF PATENT JOHN P. McQUADE ) APPEALS Administrative Patent Judge ) AND ) INTERFERENCES ) ) ) JEFFREY V. NASE ) Administrative Patent Judge ) JVN/gjh Appeal No. 98-1456 Page 11 Application No. 08/294,958 HEDMAN, GIBSON & COSTIGAN 1185 AVENUE OF THE AMERICAS NEW YORK, NY 10036 APPEAL NO. 98-1456 - JUDGE NASE APPLICATION NO. 08/294,958 APJ NASE APJ McQUADE APJ CALVERT DECISION: REVERSED Prepared By: Gloria Henderson DRAFT TYPED: 01 Feb 99 FINAL TYPED: