Ex parte Gates

Board of Patent Appeals and Interferences

Oct 23, 2000

08760303 (B.P.A.I. Oct. 23, 2000)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MAXWELL GATES
____________
Appeal No. 2000-0863
Application No. 08/760,303
____________
ON BRIEF
____________
Before COHEN, NASE, and JENNIFER D. BAHR, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 22, which are all of the claims
pending in this application.
We REVERSE.
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Application No. 08/760,303
In claim 22, line 4; "an other" should be --another--1
and in line 5, "outer" should be --one--.
In determining the teachings of Mino, we will rely on2
the translation provided by the USPTO. A copy of the
translation is attached for the appellant's convenience.
In determining the teachings of Osaki, we will rely on3
the translation provided by the USPTO. A copy of the
translation is attached for the appellant's convenience.
BACKGROUND
The appellant's invention relates to a clothes hanger pad
and a method of making clothes hanger pads. A substantially
correct copy of the claims under appeal is set forth in the
appendix to the appellant's brief. 1
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Mino JP 5-293029 Nov. 9,2
1993
Osaki et al. (Osaki) JP 6-205724 July 26, 19943
In addition, the examiner also relied upon Official Notice
that foams are well known to be covered with "dimensionally
stable" materials to protect the foam from damage on the
exposed surfaces (Official Notice).
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Application No. 08/760,303
Procedurally, when a reference is relied on to support a4
rejection even in a "minor capacity," ordinarily that
reference should be positively included in the statement of
rejection. In re Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406,
407 n.3 (CCPA 1970). The examiner relies on Official Notice
in the body of the rejection, and accordingly, Official Notice
should have been positively included in the statement of
rejection.
Claims 1 to 22 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Osaki in view of Mino and Official
Notice.4
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 12,
mailed October 14, 1998) for the examiner's complete reasoning
in support of the rejection, and to the brief (Paper No. 11,
filed July 7, 1998) and reply brief (Paper No. 13, filed
December 31, 1998) 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
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Application No. 08/760,303
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 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 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). Obviousness is tested by
"what the combined teachings of the references would have
suggested to those of ordinary skill in the art." In re
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Application No. 08/760,303
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). But
it "cannot be established by combining the teachings of the
prior art to produce the claimed invention, absent some
teaching or suggestion supporting the combination." ACS Hosp.
Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ
929, 933 (Fed. Cir. 1984). And "teachings of references can
be combined only if there is some suggestion or incentive to
do so." Id.
We are constrained to reverse the decision of the
examiner to reject claims 1 to 22 under 35 U.S.C. § 103 since
there is no evidence in the applied prior art that would have
made it obvious at the time the invention was made to a person
having ordinary skill in the art to have laminated a layer of
a dimensionally stable material to the foam hanger pad of
Osaki. While foams are well known to be covered with
dimensionally stable materials to protect the foam from damage
on the exposed surfaces, we fail to find any suggestion
therein for an artisan to have modified the foam hanger pad of
Osaki for the reasons set forth in the brief (pp. 7-9) and the
reply brief (pp. 2-4). In fact, the advantages of utilizing a
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Application No. 08/760,303
The examples provided on pages 9-10 of the answer5
supporting the examiner's taking of Official Notice have not
been considered by this panel of the Board since they were not
included in the rejection. See In re Hoch, supra. Moreover,
it appears to us that the appellant is correct as
characterizing these examples as non-analogous art (reply
brief, p. 2).
foam hanger pad having a layer of a dimensionally stable
material laminated thereto (see pages 1-2 of the
specification) are not appreciated by the prior art applied by
the examiner.5
Instead, it appears to us that the examiner relied on
hindsight in reaching his obviousness determination. However,
our reviewing court has said, "To imbue one of ordinary skill
in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught
is used against its teacher." W. L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). It is essential
that "the decisionmaker forget what he or she has been taught
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Application No. 08/760,303
. . . about the claimed invention and cast the mind back to
the time the invention was made . . . to occupy the mind of
one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted
wisdom in the art." Id.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 22 under 35 U.S.C. § 103 is
reversed.
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Application No. 08/760,303
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 22 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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Application No. 08/760,303
DAVID WOLF
WOLF GREENFIELD AND SACKS
FEDERAL RESERVE PLAZA
600 ATLANTIC AVENUE
BOSTON, MA 02210-2211
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JVN/dl