Ex parte GISH

Board of Patent Appeals and Interferences

Sep 28, 1999

08772861 (B.P.A.I. Sep. 28, 1999)

Application for patent filed December 26, 1996. According to appellant, this1
application is a continuation of Application 08/450,015, filed May 25, 1995, now
abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION8
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publication in a law journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT GISH
_____________
Appeal No. 1999-0931
Application 08/772,8611
______________
ON BRIEF
_______________
Before CALVERT, COHEN and ABRAMS, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims 1, 3 through 11, and 13
through 20, all of the claims remaining in the application.
Appellant’s invention pertains to an apparatus for sizing
Appeal No. 1999-0931
Application 08/772,861
2
sandpaper from bulk sheets into sander sized-sheets and to a
method for sizing sandpaper from bulk sheets into sander-sized
sheets. An understanding of the invention can be derived from
a reading of exemplary claims 1 and 11, copies of which appear
in the Appendix to the supplemental appeal brief (Paper No.
19).
As evidence of obviousness, the examiner has applied the
documents listed below:
Freeman 3,172,587 Mar. 9, 1965
Fischer et al. 5,511,316 Apr. 30,
1996
(Fischer) (filed Sep. 22, 1994)
A reference of record in this application, relied upon by
this panel of the board in a new ground of rejection, infra,
is:
Schell, Jr. 2,642,674 Jun. 23, 1953
Appeal No. 1999-0931
Application 08/772,861
In our evaluation of the applied teachings, we have considered all of the2
disclosure of each teaching for what it would have fairly taught one of ordinary skill
3
The following rejection is before us for review.
Claims 1, 3 through 11, and 13 through 20 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Freeman in
view of Fischer.
The full text of the examiner's rejection and response to
the argument presented by appellant appears in the office
action dated May 8, 1998 and the answer (Paper Nos. 18 and
20), while the complete statement of appellant’s argument can
be found in the supplemental appeal brief (Paper No. 19).

OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claims, the applied
patents, and the respective viewpoints of appellant and the2
Appeal No. 1999-0931
Application 08/772,861
in the art. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not only the specific
teachings, but also the inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda 401 F.2d 825, 826, 159 USPQ
342, 344 (CCPA 1968).
4
examiner. As a consequence of our review, we make the
determination which follows.
We are constrained to reverse the rejection on appeal
since the evidence does not support a conclusion of
obviousness, as further explained, infra.
Claims 1 and 11 (apparatus and method for sizing
sandpaper from bulk sheets) each expressly require, inter
alia, a substantially flat planar member, and a plurality of
indicia formed across and on a surface of the substantially
flat planar member including a central portion thereof within
a periphery of the member, with the planar member being used
for tearing a bulk sheet of sandpaper.
The patent to Freeman addresses a sandpaper tearing guide
(Fig. 1) which requires two coacting members, i.e., a cutter
Appeal No. 1999-0931
Application 08/772,861
5
block 12 of wood (Fig. 4) slidably movable within a base
element 11 (Fig. 2) between two limits of movement determined
by the positioning of pins 32 on the cutter block that are
movable within slots 22 in the opposite end walls of the base
element.
In each of the two positions, sandpaper can be lifted and torn
against the serrated edge 25 of the cutter block to obtain a
selected size of sandpaper. On the other hand, the Fischer
patent teaches a stencil for cutting sandpaper. The stencil
10 (Figs. 1 through 4) is formed from a sheet of plastic
material having a planar top surface 12 and a planar bottom
surface 14, with corner lips 16, 18, 20, and 22 extending
downwardly from the bottom surface forming a recess within
which sandpaper sheets 80 to be cut are placed (Figs. 3 and
4). Complete cuts of the sandpaper can be made through slots
60 or 62. Further, primary cuts of the sandpaper can be
effected through the series of slots 64 and 66, followed by
use of the straight edge 28 placed adjacent these primary cuts
so that a cut can be made across the complete sheet of
sandpaper.
Appeal No. 1999-0931
Application 08/772,861
6
It is readily apparent to this panel of the board that
appellant and the aforementioned patentees share a common
objective, i.e., obtaining particularly sized sheets of
sandpaper from larger sheets. However, it is also quite clear
to us that appellant’s claimed structure to obtain the
objective differs from the respective teachings of the
applied prior art. Simply stated, we have determined that
neither the two component guide of Freeman nor the one piece
stencil of Fischer, each considered alone and in combination
with one another, teach or would have suggested the apparatus
and method now claimed by appellant. When what appellant
teaches in the present application is set aside, and the
reference teachings alone are collectively considered, it is
at once apparent that only reliance upon appellant’s own
teaching and impermissible hindsight would enable
one to achieve the now claimed invention. For these reasons,
we are constrained to reverse the examiner’s rejection.
NEW GROUND OF REJECTION
Appeal No. 1999-0931
Application 08/772,861
While we have been made aware by appellant (supplemental appeal brief, page 7)3
of a prolonged prosecution history (page 7), we nevertheless, but regrettably, have
found it necessary to enter new grounds of rejection.
7
Under the authority of 37 CFR 1.196(b), this panel of the
board introduces the following new grounds of rejection.3
Claim 1 is rejected under 35 U.S.C. 102(b) as being
anticipated by Schell, Jr.
Anticipation under 35 U.S.C. 102(b) is established only
when a single prior art reference discloses, either expressly
or under principles of inherency, each and every element of a
claimed invention. See In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997); In re Paulsen, 30 F.3d
1475, 1478-79, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994); In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990); and RCA Corp. v. Applied Digital Data Sys., Inc., 730
F.2d 1440, 1444, 221 USPQ
385, 388 (Fed. Cir. 1984). However, the law of anticipation
does not require that the reference teach specifically what an
Appeal No. 1999-0931
Application 08/772,861
8
appellant has disclosed and is claiming but only that the
claims on appeal "read on" something disclosed in the
reference, i.e., all limitations of the claim are found in the
reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760,
772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465
U.S. 1026 (1984).
A review of the overall teaching of Schell, Jr. reveals
to us that the apparatus broadly defined in appellant’s claim
1 fairly reads upon the implement disclosed therein. More
specifically, it is clear to this panel of the board that the
implement of Schell, Jr. may reasonably be said to comprise a
substantially flat planar member (plate 10), a handle on a top
surface of the planar member (handle 11), a plurality of
measuring indicia formed across and on a surface of the planar
member including a central portion thereof within the
periphery of the member (numerical indicia represented in
units of length legends), and at least one edge on the planar
member (edges A through F). In our opinion, the implement of
Schell, Jr. is capable of being used to size sandpaper from
bulk sheets into sander-sized sheets, with the edges of the
Appeal No. 1999-0931
Application 08/772,861
The test for obviousness is what the combined teachings of references would4
have suggested to one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591,
18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981).
9
planar member being capable of tearing a portion of a bulk
sheet held beneath the planar member into a sander-sized
sheet. Based upon this assessment of the Schell, Jr.
disclosure, claim 1 is determined to be anticipated thereby.
Claims 3 through 8 are rejected under 35 U.S.C. 103 as
being unpatentable over Schell, Jr. in view of Fishcher.
In applying the test for obviousness, we reach the4
conclusion that it would have been obvious to one having
ordinary skill in the art, from a combined consideration of
Schell, Jr. and Fischer to fabricate the plate 10 of Schell,
Jr. from a transparent plastic material. As we see it, the
incentive on the part of one having ordinary skill in the art
for making this modification would have simply been to obtain
the advantage of being able to see the underlying material
Appeal No. 1999-0931
Application 08/772,861
10
being worked on, a known advantage of transparent materials,
as recognized by Fischer (column 2, lines 40 through 43).
Thus, the content of claims 3 and 4 is seen to be fairly
suggested by the combined teachings of the applied references.
As to claims 5, 6, and 7, we are of the opinion that an
artisan would have found it obvious to selectively provide
indicia of some form (printed or integrally molded) on either
the top or bottom of a transparent plastic material member.
It is also our view that the selection of an appropriate
attachment means (adhesive or nuts and bolts, for example) for
the handle (claim 8) would have been an obvious matter of
ordinary design choice. As to the aforementioned selection
and positioning of indicia and the choice of attachment means,
and considering the present application (specification, pages
7 and 9), these matters are appropriately viewed as obvious
design choices since they have not been disclosed as, in and
of themselves, solving any particular problems or yielding any
unexpected results.
In summary, this panel of the board has reversed the
rejection of claims 1, 3 through 11, and 13 through 20 under
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Application 08/772,861
11
35 U.S.C. § 103 as being unpatentable over Freeman in view of
Fischer.
Additionally, we have introduced new grounds of rejection
for claims 1 and 3 through 8.
The decision of the examiner is reversed.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides that, “A new ground of rejection
shall not be considered final for purposes of judicial
review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
Appeal No. 1999-0931
Application 08/772,861
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reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR 1.196(b)
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 1999-0931
Application 08/772,861
13
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
NEAL E. ABRAMS )
Administrative Patent Judge )
ICC/kis
Robert Platt Bell
ROBERT P. BELL & ASSOCIATES
917 Duke Street
Alexandria, VA 22314
Appeal No. 1999-0931
Application 08/772,861
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