Ex parte Gonsalves

Board of Patent Appeals and Interferences

Oct 31, 2001

09231677 (B.P.A.I. Oct. 31, 2001)

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for publication and is not binding precedent of the Board.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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte C. J. GONSALVES
____________
Appeal No. 2001-1076
Application No. 09/231,677
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, 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 1 to 4, which are all of the claims
pending in this application.
We REVERSE.
Appeal No. 2001-1076 Page 2
Application No. 09/231,677
BACKGROUND
The appellant's invention relates to horseshoes which
attenuate vibration energy from the horseshoes to the leg of
the animal (specification, p. 1). A copy of the claims under
appeal is set forth 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:
Coleman 28,656 June 12,
1860
Phreaner 2,705,536 April 5,
1955
Claims 1 to 4 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Phreaner in view of Coleman.
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. 9,
mailed November 24, 2000) for the examiner's complete
reasoning in support of the rejection, and to the brief (Paper
Appeal No. 2001-1076 Page 3
Application No. 09/231,677
No. 8, filed September 22, 2000) for the appellant's arguments
thereagainst.
Appeal No. 2001-1076 Page 4
Application No. 09/231,677
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
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 4 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
Appeal No. 2001-1076 Page 5
Application No. 09/231,677
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
The appellant argues that the applied prior art does not
suggest the claimed subject matter. We agree.
Claim 1, the sole independent claim on appeal reads as
follows:
In a U-shaped horseshoe having a central bight, an
arm extending from each end of said bight, and a tip on
the other end of each arm, said horseshoe including a
metal shoe having a wear surface for contact with the
ground and an oppositely facing flat surface, a flat
resilient pad having a first surface facing and
overlaying said flat surface of the shoe and a second
flat surface on its opposite side to lay directly against
the hoof, the improvement comprising: a recess in the
flat surface of the metal shoe in each of said arms,
spaced from each respective tip and located in the region
near the tip where a nail cannot effectively be driven
into the hoof when the horseshoe is nailed to the hoof,
said recess having a wall, and a stud on said first
surface of said pad, said stud being so proportioned as
to fit closely in said recess in contiguity with the wall
of the recess, and a layer of cement between and joining
the flat surface of the metal shoe to the first surface
of the pad, and the stud to the wall of the recess.
Thus, all the claims under appeal require a stud on the
first surface of the pad with the stud being proportioned to
Appeal No. 2001-1076 Page 6
Application No. 09/231,677
The use of such hindsight knowledge to support an1
obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Assocs., Inc.
v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
fit closely in the recess formed in the flat surface of the
metal shoe located in the region near the tip where a nail
cannot effectively be driven into the hoof when the horseshoe
is nailed to the hoof and a layer of cement between and
joining the stud to the wall of the recess. In our view, the
only suggestion for modifying the applied prior art to meet
the above-noted limitations stems from hindsight knowledge
derived from the appellant's own disclosure. 1
Coleman teaches a horseshoe in which the upper plate A,
the lower plate B and the intervening elastic strip C are
permanently connected together by any convenient number of
plain or screwed rivets e. Thus, at best, it is our view that
Coleman would have made it obvious at the time the invention
was made to a person of ordinary skill in the art to have
modified the horseshoe of Phreaner to include any convenient
number of plain or screwed rivets to permanently connect
Phreaner's metal body 10 and laminated pad 11 together.
Appeal No. 2001-1076 Page 7
Application No. 09/231,677
A rivet passing through Phreaner's metal body 10 and2
laminated pad 11 is not readable on being a stud on the first
surface of the pad.
The examiner's position that Phreaner's cement A3
provided between the metal body 10 and the laminated pad 11
would seep into the recess (i.e., the hole provided in the
metal body to accommodate the rivet) as well as the nail holes
14 is sheer speculation unsupported by any evidence. Phreaner
teaches (column 3, lines 23-48) that the metal body 10 and the
laminated pad 11 with cement A therebetween are firmly pressed
together and heated in an oven to cure the cement to form an
integrated horseshoe. Thus, any rivets suggested by Coleman
may have either (1) replaced Phreaner's cement A provided
between the metal body 10 and the laminated pad 11, or (2)
been applied after the curing of the cement so that there
would not be a layer of cement between and joining the rivet
to a wall of a recess formed in the flat surface of the metal
shoe.
There is no teaching or suggestion in Coleman of4
locating a rivet in the region near the tip of the horseshoe
(continued...)
However, this modification of Phreaner would not result in the
claimed subject matter. In that regard, there is no teaching
or suggestion in the applied prior art of (1) a stud on the
first surface of the pad ; (2) a layer of cement between and2
joining the stud to a wall of a recess formed in the flat
surface of the metal shoe ; and (3) the recess being located3
in the region near the tip where a nail cannot effectively be
driven into the hoof when the horseshoe is nailed to the
hoof .4
Appeal No. 2001-1076 Page 8
Application No. 09/231,677
(...continued)4
where a nail cannot effectively be driven into the hoof when
the horseshoe is nailed to the hoof. In that regard, while
Figure 2 of Coleman shows two rivets e closer to the tips of
the horseshoe than the location of the nail holes a, it is our
opinion that if a rivet can be driven through the layers
forming the horseshoe then that location is a location where a
nail can effectively be driven into the hoof when the
horseshoe is nailed to the hoof.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 4 under 35 U.S.C. § 103 is
reversed.
CONCLUSION
Appeal No. 2001-1076 Page 9
Application No. 09/231,677
To summarize, the decision of the examiner to reject
claims 1 to 4 under 35 U.S.C. § 103 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-1076 Page 10
Application No. 09/231,677
DONALD D. MON
750 EAST GREEN STREET
SUITE 303
PASADENA, CA 91101
Appeal No. 2001-1076 Page 11
Application No. 09/231,677
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