Ex Parte Frank

Board of Patent Appeals and Interferences

Jan 13, 2006

10286942 (B.P.A.I. Jan. 13, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RICHARD FRANK
____________

Appeal No. 2005-2198
Application No. 10/286,942
____________

ON BRIEF
____________

Before McQUADE, NASE, and BAHR, Administrative Patent Judges.
NASE, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection (mailed May 19,
2004) of claims 1 to 4, 8 to 15 and 19 to 22, which are all of the claims pending in this
application.

We REVERSE.
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Application No. 10/286,942

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BACKGROUND
The appellant's invention is in the field of ergonomic supports for seats,
especially automobile seats (specification, p. 1). A copy of the claims under appeal is
set forth in the appendix to the appellant's replacement brief (filed February 16, 2005).

The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
DeLisle et al. (DeLisle) 4,421,110 Dec. 20, 1983
Harrison et al. (Harrison) 5,217,278 June 8, 1993
Sessini 5,567,011 Oct. 22, 1996
Martin et al. (Martin) Des. 413,985 Sept. 14, 1999
Cosentino et al. (Cosentino) 6,296,308 Oct. 2, 2001

Claims 1 to 4, 8 to 11, 13 to 15 and 19 to 22 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over either Cosentino or Sessini in view of DeLisle and
Martin.

Claim 12 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Harrison in view of DeLisle and Martin.

Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
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Application No. 10/286,942

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rejection and the answer (mailed August 23, 2004) for the examiner's complete
reasoning in support of the rejections, and to the brief (filed June 25, 2004), reply brief
(filed September 29, 2004) and replacement brief for the appellant's arguments
thereagainst.

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. 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 with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 1 to 4, 8 to 15 and 19 to 22 under 35 U.S.C. § 103. Our reasoning for this
determination follows.

In rejecting claims under 35 U.S.C. § 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 would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention. See
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Application No. 10/286,942

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In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Rejections based
on 35 U.S.C. § 103 must rest on a factual basis with these facts being interpreted
without hindsight reconstruction of the invention from the prior art. The examiner may
not, because of doubt that the invention is patentable, resort to speculation, unfounded
assumption or hindsight reconstruction to supply deficiencies in the factual basis for the
rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Our reviewing court has repeatedly cautioned
against employing hindsight by using the appellant's disclosure as a blueprint to
reconstruct the claimed invention from the isolated teachings of the prior art. See, e.g.,
Grain Processing Corp. v. American Maize-Products Co., 840 F.2d 902, 907, 5
USPQ2d 1788, 1792 (Fed. Cir. 1988).

The appellant argues that the examiner failed to present a prima facie case of
obviousness since the applied prior art does not suggest the claimed subject matter.
We agree.

All the claims under appeal require that the pressure surface of the support have
integrally formed convexities. The examiner properly found that each of the primary
references (i.e., Cosentino, Sessini or Harrison) does not teach the pressure surface of
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Application No. 10/286,942

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the support having integrally formed convexities. While both DeLisle and Martin do
teach a mat or board having integrally formed convexities, they do not teach or suggest
providing the pressure surface of the support of any of the primary references with
integrally formed convexities. The integrally formed convexities of DeLisle and Martin
are designed to directly interact with the back of a user. The pressure surfaces of the
support of the primary references are mounted inside the back cushion of a chair or
seat (see for example Figures 5 and 11 of Sessini and Figure 1 of Harrison). As such,
the pressure surfaces of the primary references are not designed to directly interact with
the back of a user. It is our opinion that absent the use of hindsight knowledge derived
from the appellant's own disclosure there would be no reason why a person having
ordinary skill in the art would have modified the pressure surfaces of any of the primary
references so as to arrive at the claimed subject matter.

For the reasons set forth above, the decision of the examiner to reject claims 1 to
4, 8 to 15 and 19 to 22 under 35 U.S.C. § 103 is reversed.
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Application No. 10/286,942

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CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 4, 8 to 15 and
19 to 22 under 35 U.S.C. § 103 is reversed.
REVERSED

JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2005-2198
Application No. 10/286,942

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