Ex parte Gardner

Board of Patent Appeals and Interferences

Jul 13, 1999

08866014 (B.P.A.I. Jul. 13, 1999)

Application for patent filed May 30, 1997. According to appellants, the1
application is a continuation of Application 08/676,682, filed July 10, 1996, now
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publication in a law journal and (2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte DONALD DEE GARDNER
and PATSY JOYCE GARDNER
__________
Appeal No. 98-3306
Application 08/866,0141
___________
ON BRIEF
___________
Before MEISTER, FRANKFORT and McQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 5 and 9, all the claims remaining in
the application. Claims 2 through 4 and 6 through 8 have been
canceled.
Appeal No. 98-3306
Application 08/866,014
As indicated by the examiner (answer, page 2), in line 14 of claim 1 as it2
appears in the Appendix the word ---the--- should be inserted before the phrase “at
least three tip portions.”
Both of the applied references are published British provisional applications.3
2
Appellants’ invention relates to an athletic souvenir
display rack having athletic ball supporting structures in the
form of alphabetic characters arranged to provide the
alphabetic acronym initials of a particular institution.
Independent claim 1 is representative of the subject matter on
appeal and a substantially correct copy of that claim may be
found in the Appendix to appellants’ brief.2
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:3
Grave 270,549 May 12, 1927
(British)
Holland 593,934 Oct. 29, 1947
(British)
Claims 1, 5 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Grave in view of Holland.
Appeal No. 98-3306
Application 08/866,014
3
Rather than reiterate the examiner's full statement of
the above-noted rejection and the conflicting viewpoints
advanced by the examiner and appellants regarding the
rejection, we make reference to the examiner's answer (Paper
No. 23, mailed
May 20, 1998) for the examiner's reasoning in support of the
rejection, and to appellants’ brief (Paper No. 21, filed
February 2, 1998) for appellants’ arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants’ specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellants and the examiner. As a
consequence of our review, we have made the determination that
the examiner’s rejection will not be sustained. Our reasons
follow.
Even if, as has been urged by the examiner, it would have
been obvious to one of ordinary skill in the art to modify the
Appeal No. 98-3306
Application 08/866,014
4
ball supporting posts (b) of Grave to be in the form of flat,
planar metal strips or panels as seen in Figure 5 of Holland,
we fail to see any teaching, suggestion or incentive in the
applied references that would have further motivated such an
artisan to shape and arrange the planar strips or panels of
the golf ball holder of Grave (as modified) so as to provide
alphabetic characters arranged to depict the alphabetic
acronym initials of a particular institution, as required in
appellants’ claims on appeal. The examiner’s position
(answer, pages 4-5) that
“It would have been obvious to one of ordinary
skill in the art at the time the invention was made
to have shaped and arranged the panels in such a
manner in order to increase the aesthetic appearance
of the rack. Moreover, it would have been obvious
as a matter of design choice to have shaped the
planar panels in the shapes mentioned above (e.g.,
two alphabetic characters), since the applicant has
not disclosed that having this feature solves any
stated problems or is for any particular purpose and
it appears that the planar panels would perform
equally well with shapes other than that claimed by
the appellant”
is, in our opinion, based on impermissible hindsight gained
only from appellants’ disclosure.
Appeal No. 98-3306
Application 08/866,014
5
Moreover, the examiner’s position as stated above is also
directly contrary to appellants’ specification, e.g., at page
1, wherein it is indicted that an objective of the invention
is to provide improved trophy ball displays
“wherein the balls are accompanied by specific
visible decorative background display configurations
related to the historical and sentimental history of
a displayed ball by identification of a team or
institution,”
which clearly belies the examiner’s determination that
applicants have not disclosed that this feature “solves any
stated problem or is for any particular purpose” (answer, page
5). This portion of appellants’ specification also refutes
the examiner’s position that the shaping of the support
members as alphabetic characters in the form of an alphabetic
acronym initial identifying a preselected institution, has no
mechanical function, but merely increases the aesthetic
appearance of the rack (answer, pages 9-10). In this regard,
it is clear that, in addition to being ornamental, the
alphabetic characters in the form of an alphabetic acronym
initial of a particular institution have the function of 1)
identifying the institution, 2) providing a specialized form
of support for the souvenir ball, and 3) triggering memories
Appeal No. 98-3306
Application 08/866,014
6
of sentimental history specifically related to the displayed
souvenir ball and institution.
Based on the foregoing, the examiner’s rejection of
claims 1, 5 and 9 under 35 U.S.C. § 103 relying on the
combined
teachings of Grave and Holland will not be sustained and the
decision of the examiner is, accordingly, reversed.
REVERSED
Appeal No. 98-3306
Application 08/866,014
7
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
CEF/kis
Laurence R. Brown
LAURENCE BROWN & ASSOCIATES
2001 Jefferson Davis Highway
Suite 408
Arlington, VA 22202