Ex parte Gesse

Board of Patent Appeals and Interferences

May 27, 1999

08681857 (B.P.A.I. May. 27, 1999)

Application for patent filed July 29, 1996. According1
to the request for filing a patent application under 37 CFR §
1.60 (Paper No. 2, filed July 29, 1996), the application is a
continuation of Application No. 08/394,498, filed February 27,
1995, now U.S. Patent No. 5,539,939.
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for publication in a law journal and (2) is not binding precedent of the Board.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 THERESA C. GESSE
____________
Appeal No. 1998-3296
Application No. 08/681,8571
____________
ON BRIEF
____________
Before MEISTER, FRANKFORT, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 2, 5 through 8, 11 and 12. Claim 13 has
been withdrawn from consideration under 37 CFR § 1.142(b) as
Appeal No. 1998-3296
Application No. 08/681,857
being drawn to a nonelected invention. Claims 1, 3, 4, 9 and
10 have been canceled.
We REVERSE.
Appeal No. 1998-3296 Page 3
Application No. 08/681,857
In determining the teachings of Eder, we will rely on2
the translation provided by the PTO. A copy of the
translation is attached for the appellant's convenience.
BACKGROUND
The appellant's invention relates to a bath chair. An
understanding of the invention can be derived from a reading
of exemplary claim 8, which appears in the appendix to the
appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Raeder 3,364,504 Jan. 23,
1968
Harmony, III 4,074,370 Feb. 21, 1978
Stevens Des. 330,461 Oct. 27, 1992
Eder 4,113,105 Oct. 29,2
1992
(Germany)
The claims on appeal stand rejected under 35 U.S.C. § 103
on the following grounds:
(1) Claims 5 through 8, 11 and 12 as being unpatentable over
Raeder in view of Harmony;
Appeal No. 1998-3296 Page 4
Application No. 08/681,857
Since the other ground of rejection (i.e., the rejection3
of claim 11 under 35 U.S.C. § 112, second paragraph) set forth
in the final rejection (Paper No. 9, mailed October 20, 1997)
was not set forth in the examiner's answer we assume that this
other ground of rejection has been withdrawn by the examiner.
See Ex parte Emm, 118 USPQ 180, 181 (Bd. App. 1957).
(2) Claim 2 as being unpatentable over Raeder in view of
Harmony and Eder; and
(3) Claims 2, 5 through 8, 11 and 12 as being unpatentable
over Stevens in view of Raeder.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 15, mailed May 28, 1998) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 14, filed April 27, 1998) for the appellant's
arguments thereagainst.3
OPINION
Initially we note that the issues (G), (H) and (I) as set
forth and argued on pages 5 and 8-10 of the appellant's brief
relate to petitionable matters and not to appealable matters.
Appeal No. 1998-3296 Page 5
Application No. 08/681,857
See Manual of Patent Examining Procedure (MPEP) §§ 1002 and
1201. Accordingly, we will not review these issues.
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 2, 5 through 8,
11 and 12 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
Appeal No. 1998-3296 Page 6
Application No. 08/681,857
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).
Rejections (1) and (2)
We will not sustain the rejection of claims 5 through 8,
11 and 12 under 35 U.S.C. § 103 as being unpatentable over
Raeder in view of Harmony. Likewise, we will not sustain the
rejection of claim 2 under 35 U.S.C. § 103 as being
unpatentable over Raeder in view of Harmony and Eder.
It is our opinion that even if the bathtub of Raeder were
provided with a backrest as taught by Harmony's backrest 60
and ridges as taught by Eder's ridges 24, one would not have
arrived at the claimed invention. In that regard, we agree
with the appellant's argument (brief, pp. 6-7) that the
claimed broad, planar, unobstructed platform portion capable
of comfortably supporting the buttocks of the bather when
seated thereon as recited in independent claims 8 and 11 is
not readable on terminal portion 11 of Raeder's bathtub 3.
Appeal No. 1998-3296 Page 7
Application No. 08/681,857
Additionally, the modified device of Raeder would still be a
bathtub and thus would not be readable on being "a bath chair"
as recited in the claims under appeal.
Since all the limitations of the claims under appeal are
not suggested by the applied prior art for the reasons set
forth above, the decision of the examiner to reject claims 2,
5 through 8, 11 and 12 under 35 U.S.C. § 103 is reversed.
Appeal No. 1998-3296 Page 8
Application No. 08/681,857
The use of such hindsight knowledge to support an4
obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Associates,
(continued...)
Rejection (3)
We will not sustain the rejection of claims 2, 5 through
8, 11 and 12 under 35 U.S.C. § 103 as being unpatentable over
Stevens in view of Raeder.
It is our opinion that even if the bathing chair of
Stevens were provided with a forward terminal portion as
suggested by Raeder's forward terminal portion 11, one would
not have arrived at the claimed invention. In that regard, we
agree with the appellant's argument (brief, p. 8) that the
claimed broad, planar, unobstructed platform portion capable
of comfortably supporting the buttocks of the bather when
seated thereon as recited in independent claims 8 and 11 is
not readable on terminal portion 11 of Raeder's bathtub 3.
Additionally, we fail to see any motivation, absent
impermissible hindsight, to have provided the bathing chair of
Stevens with a forward terminal portion as taught by Raeder's
forward terminal portion 11.4
Appeal No. 1998-3296 Page 9
Application No. 08/681,857
(...continued)4
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-
13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Since all the limitations of the claims under appeal are
not suggested by the applied prior art for the reasons set
forth above, the decision of the examiner to reject claims 2,
5 through 8, 11 and 12 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 2, 5 through 8, 11 and 12 under 35 U.S.C. § 103 is
reversed.
Appeal No. 1998-3296 Page 10
Application No. 08/681,857
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1998-3296 Page 11
Application No. 08/681,857
ALVIN S. BLUM
2350 DEL MAR PLACE
FORT LAUDERDALE, FL 33301
APPEAL NO. 1998-3296 - JUDGE NASE
APPLICATION NO. 08/681,857
APJ NASE
APJ MEISTER
APJ FRANKFORT
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 26 May 99
FINAL TYPED: