Ex Parte FrankDownload PDFBoard of Patent Appeals and InterferencesJan 13, 200610286942 (B.P.A.I. Jan. 13, 2006) Copy Citation The opinion in support of the decision being entered today was not written for publication and is not binding precedent of the Board.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. Appeal No. 2005-2198 Application No. 10/286,942 Παγε 2 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 Appeal No. 2005-2198 Application No. 10/286,942 Παγε 3 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 Appeal No. 2005-2198 Application No. 10/286,942 Παγε 4 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 Appeal No. 2005-2198 Application No. 10/286,942 Παγε 5 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. Appeal No. 2005-2198 Application No. 10/286,942 Παγε 6 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 Παγε 7 HUSCH & EPPENBERGER, LLC 190 CARONDELET PLAZA SUITE 600 ST. 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