Ex Parte Hammond

Board of Patent Appeals and Interferences

Apr 28, 2005

09963734 (B.P.A.I. Apr. 28, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID A. HAMMOND
____________
Appeal No. 2005-1023
Application No. 09/963,734
____________
ON BRIEF
____________
Before FRANKFORT, NASE, and 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 10,
which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2005-1023
Application No. 09/963,734
Page 2
BACKGROUND
The appellant's invention relates in general to first aid kits and, in particular, to a
first aid kit which is adaptable to a plurality of first aid environments (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:
Campiglia 2,324,194 July 13, 1943
First Responder Kits #1 - #6 (First Responder)
National Safety Council ''First Aid Guide''
Claims 1 to 10 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Campiglia in view of First Responder and the ''First Aid Guide.''
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the answer
(mailed June 15, 2004) for the examiner's complete reasoning in support of the
rejection, and to the brief (filed March 26, 2004) for the appellant's arguments
thereagainst.
Appeal No. 2005-1023
Application No. 09/963,734
Page 3
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 10 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).
Appeal No. 2005-1023
Application No. 09/963,734
Page 4
1The use of such hindsight knowledge to support an 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).
The appellant argues that the applied prior art does not suggest the claimed
subject matter absent the use of hindsight knowledge derived from the appellant's own
disclosure.1 We agree.
All the claims under appeal require arranging a plurality of first aid packs in a
card catalogue/file cabinet-like array in particular order. Independent claims 1 and 10
require the packs to be arranged in the order of: a breathing first aid pack, a bleeding
first aid pack, a shock first aid pack, a head and spine first aid pack, a bone first aid
pack, a burn first aid pack, and then a bites and stings first aid pack. Independent claim
8 requires that the pack for the management of the most serious first aid situation be
placed in a front compartment of the first aid kit and arranging the remaining packs in an
order of descending seriousness in the first aid kit behind the pack for the management
of the most serious first aid situation. However, these limitations are not taught or
suggested by the applied prior art. To supply this omission in the teachings of the
applied prior art, the examiner made a determination (answer, pages 3-5) that these
differences would have been obvious to an artisan. However, this determination has
Appeal No. 2005-1023
Application No. 09/963,734
Page 5
2Evidence of a suggestion, teaching, or motivation to modify a reference may
flow from the prior art references themselves, the knowledge of one of ordinary skill in
the art, or, in some cases, from the nature of the problem to be solved, see Pro-Mold &
Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630
(Fed. Cir. 1996), Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73 F.3d 1085,
1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996),
although "the suggestion more often comes from the teachings of the pertinent
references," In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir.
1998). The range of sources available, however, does not diminish the requirement for
actual evidence. That is, the showing must be clear and particular. See, e.g., C.R.
Bard Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225, 1232 (Fed. Cir.
1998), cert. denied, 119 S. Ct. 1804 (1999). A broad conclusory statement regarding
the obviousness of modifying a reference, standing alone, is not "evidence." Thus,
when an examiner relies on general knowledge to negate patentability, that knowledge
must be articulated and placed on the record. See In re Lee, 277 F.3d 1338, 1342-45,
61 USPQ2d 1430, 1433-35 (Fed. Cir. 2002). See also In re Dembiczak, 175 F.3d 994,
999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
not been supported by any evidence2 that would have led an artisan to arrive at the
claimed invention. In our view, there is no suggestion in the applied prior art for
modifying Campiglia in the manner proposed by the examiner to meet the above-noted
limitations.
The examiner is correct that it would have been obvious to an artisan to take
emergency priorities into account when arranging the items being placed into
Compiglia's three large vertically disposed pockets formed by partitions 12 and 14.
However, this still does not suggest the claimed arrangement of first aid packs. To deal
Appeal No. 2005-1023
Application No. 09/963,734
Page 6
3We note that the prior art applied by the examiner does not teach or suggest
either a breathing first aid pack or a bites and stings first aid pack as recited in
independent claims 1 and 10.
with this shortfall in the rejection, the examiner dismisses the claimed arrangement of
first aid packs by stating that
A recitation of the intended use of the claimed invention must result in a
structural difference between the claimed invention and the prior art in order to
patentably distinguish the claimed invention from the prior art. If the prior art
structure is capable of performing the intended use, then it meets the claim. In a
claim drawn to a process of making, the intended use must result in a
manipulative difference as compared to the prior art. See In re Casey, 152 USPQ
235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
The claimed arrangement of first aid packs as set forth in independent claims 1,
8 and 10 is not a recitation of the intended use but a specific structural arrangement of
first aid packs. Thus, the mere fact that the prior art first aid packs are capable of being
arranged in the manner claimed is not sufficient to defeat patentability.3 The examiner
must supply evidence establishing the obviousness of the claimed arrangement of first
aid packs. Additionally, we do not agree with the position set forth by the examiner that
the cases of In re Casey, 370 F.2d 576, 152 USPQ 235 (CCPA 1967) and In re Otto,
312 F.2d 937, 136 USPQ 458 (CCPA 1963) support the proposition that in a claim
drawn to a process of making, the intended use must result in a manipulative difference
as compared to the prior art. Under 35 U.S.C. § 103 all words in a claim must be
Appeal No. 2005-1023
Application No. 09/963,734
Page 7
considered in judging the patentability of that claim against the prior art. In re Wilson,
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Furthermore, it is well
established that the materials on which a process is carried out must be accorded
weight in determining the obviousness of that process. See In re Pleuddemann, 910
F.2d 823, 825-28, 15 USPQ2d 1738, 1740-42 (Fed. Cir. 1990); In re Kuehl, 475 F.2d
658, 664-65, 177 USPQ 250, 255 (CCPA 1973); Ex parte Leonard, 187 USPQ 122, 124
(Bd. App. 1974). In our view, the case law clearly establishes that the position of the
examiner in this case is in error.
For the reasons set forth above, the decision of the examiner to reject
independent claims 1, 8 and 10, and claims 2 to 7 and 9 dependent thereon, under
35 U.S.C. § 103 is reversed.
Appeal No. 2005-1023
Application No. 09/963,734
Page 8
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 10 under
35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 2005-1023
Application No. 09/963,734
Page 9
GARDNER CARTON & DOUGLAS LLP
ATTN: PATENT DOCKET DEPT.
191 N. WACKER DRIVE, SUITE 3700
CHICAGO, IL 60606
JVN/jg