Ex parte Goetz

Board of Patent Appeals and Interferences

Jan 30, 1998

08308711 (B.P.A.I. Jan. 30, 1998)

Application for patent filed September 19, 1994. 1
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(2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LAWRENCE GOETZ
__________
Appeal No. 97-0149
Application 08/308,7111
__________
ON BRIEF
__________
Before MEISTER, McQUADE and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Lawrence Goetz (the appellant) appeals from the final
Appeal No. 97-0149
Application 08/308,711
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rejection of claims 1-5, the only claims present in the
application. We affirm-in-part.
The appellant’s invention pertains to a ballpoint pen which is
designed to be received in a credit card receiving pocket of a
pocket book. Independent claim 1 is further illustrative of
the appealed subject matter and reads as follows:
I. A ballpoint pen comprising an elongate, onepiece
plastic body containing an elongate writing
cartridge extending along a substantially central
location thereof and, a plastic cap, the body being
thin, and substantially rigid, having front, writing
and rear longitudinal ends joined by respective,
rearward diverging opposite side edges which diverge
for a majority of an entire length of the body so as
to provide a broad, flat, blade-like, hand engaging
rear portion and the body tapering in thickness as
it extends outward to opposite side and rear edges
forming a narrow, peripheral insertion edge, the pen
having an overall length, with the cap assembled,
which is substantially equal to a conventional
credit card, enabling the pen to fit snugly in a
credit card receiving pocket of a pocket book.
The references relied on by the examiner are:
Perlmutter Des. 195,924 Aug. 06, 1963
McKnight 3,994,605 Nov. 30, 1976
Mori Des. 276,479 Nov. 27, 1984
Vinck Des. 302,985 Aug. 22, 1989
Ellis Des. 329,458 Sep. 15, 1992
Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as
Appeal No. 97-0149
Application 08/308,711
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being unpatentable over Ellis in view of Mori, Perlmutter and
Vinck.
Claims 3-5 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Ellis in view of Mori, Perlmutter, Vinck and
McKnight.
The examiner’s rejections are explained on pages 2 and 3
of the answer. The arguments of the appellant and examiner in
support of their respective positions may be found on pages 4-
8 of the brief, page 1 of the reply brief and pages 3-5 of the
answer.
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellant in the brief and reply brief and by
the examiner in the answer. This review leads us to conclude
that the prior art relied on by the examiner establishes the
obviousness of the subject matter defined by claims 1 and 2
within the meaning of 35 U.S.C. § 103 and, accordingly, we
will sustain the examiner’s rejection of these claims. We
will not, however, sustain the rejection of claims 3-5 under
Appeal No. 97-0149
Application 08/308,711
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35 U.S.C. § 103.
Considering first the rejection of claims 1 and 2 under
35 U.S.C. § 103 as being unpatentable over Ellis in view of
Mori, Perlmutter and Vinck, the appellant in argument notes
the deficiencies of the references individually and urges
there is no suggestion to combine the teachings of the
references in the manner proposed by the examiner. According
to the appellant, the examiner has selected isolated teachings
from the various references and has impermissibly relied upon
the appellant’s own teachings for a suggestion to combine.
We are unpersuaded by the appellant's arguments. While
there must be some teaching, reason, suggestion, or motivation
to combine existing elements to produce the claimed device
(see ACS Hospital Systems, Inc. v. Montefiore Hospital, 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984)), it not
necessary that the cited references or prior art specifically
suggest making the combination (B.F. Goodrich Co. V. Aircraft
Braking Systems Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314,
1318 (Fed. Cir. 1996) and In re Nilssen, 851 F.2d 1401, 1403,
Appeal No. 97-0149
Application 08/308,711
The test for obviousness is not whether the features of2
a secondary reference may be bodily incorporated into the
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7 USPQ2d 1500, 1502 (Fed. Cir. 1988)). Rather the test for
obviousness is what the combined teachings of the references
would 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).
Here, both Ellis and Mori depict ballpoint pens having
elongated bodies (which can be considered to be “broad, flat
and blade-like”), caps, thin bodies and generally diverging
side edges. With respect to claim 2, Mori additionally
teaches a rear end which is straight and a rectangular cap.
On the other hand, Perlmutter teaches that it is well known in
the ballpoint pen art to taper a flat, blade-like plastic body
in thickness while Vinck
teaches that it is well known in the ballpoint pen art to size
the pen and cap such that it is “substantially equal to a
conventional credit card.” Applying the test for obviousness2
Appeal No. 97-0149
Application 08/308,711
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings
of the references would have suggested to those of ordinary
skill in the art.
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as set forth in In re Keller at 642 F.2d 425, 208 USPQ 881, we
are of the opinion that a combined consideration of the relied
on references would have fairly suggested to one of ordinary
skill in this art to provide the pen of either Ellis or Mori
with (1) bodies which taper in thickness in view of the
teachings of Perlmutter and (2) bodies and caps which are
sized “substantially equal to a conventional credit card” in
view of the teachings Vinck. As to the appellant’s criticisms
of the references individually, nonobviousness cannot be
established by attacking the references individually when the
rejection is predicated upon a combination of prior art
disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097,
231 USPQ 375, 380 (Fed. Cir. 1986).
In view of the foregoing, we will sustain the rejection
of
Appeal No. 97-0149
Application 08/308,711
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claims 1 and 2 under 35 U.S.C. § 103 based on the combined
teachings of Ellis, Mori, Perlmutter and Vinck.
Turning to the rejection of claims 3-5 under 35 U.S.C. §
103 as being unpatentable over Ellis in view of Mori,
Perlmutter, Vinck and McKnight, the examiner has relied upon
the teachings of McKnight for a “lobe.” We must point out,
however, a “lobe” is not what is being claimed. Rather, what
is being claimed is that “rearward diverging opposite side
edges” are further required to be “straight for a majority of
their lengths” (emphasis ours) and have “one side edge having
a greater divergence than the other side edge.” We find
nothing in McKnight which would fairly suggest such an
arrangement. This being the case, we will not sustain the
rejection of claims 3-5 under 35 U.S.C. § 103 based on the
combined teachings of Ellis, Mori, Perlmutter, Vinck and
McKnight.
In summary:
The rejection of claims 1 and 2 under 35 U.S.C. § 103
based on the combined teachings of Ellis, Mori, Perlmutter and
Vinck is affirmed.
The rejection of claims 3-5 under 35 U.S.C. § 103 based
Appeal No. 97-0149
Application 08/308,711
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on the combined teachings of Ellis, Mori, Perlmutter, Vinck
and McKnight is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-0149
Application 08/308,711
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