Ex parte HO

Board of Patent Appeals and Interferences

Sep 12, 2000

08714249 (B.P.A.I. Sep. 12, 2000)

1
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not written for publication and is not binding precedent of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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte YAT-MING HO
_____________
Appeal No. 1999-2776
Application No. 08/714,249
______________
ON BRIEF
_______________
Before COHEN, FRANKFORT and JENNIFER D. BAHR, Administrative
Patent Judges
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 2, 7, 8 and 12, all of the claims
remaining in this application. Claims 3 through 6 and 9
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Application No. 08/714,249
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through 11 have been canceled.
Appellant’s invention relates to a toy, for example, a
flying disc or a toy golf club, having the ability to generate
bubbles in use. One embodiment of the invention (the flying
disc) is seen in Figures 1 through 3 of the application, while
the other embodiment (the golf club) is seen in Figures 5 and
6. Independent claims 1, 7 and 12 are representative of the
subject matter on appeal and a correct copy of those claims
can be found in the Appendix to appellant’s reply brief (Paper
No. 12, filed February 2, 1999).
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Knerr et al. (Knerr) 3,295,248 Jan. 3, 1967
Rogahn 4,184,284 Jan. 22, 1980
Sasse 4,541,631 Sept. 17, 1985
Danielak et al. (Danielak) 5,102,381 Apr. 7, 1992
As stated in the final rejection (Paper No. 7), claims 1,
2, 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
Appeal No. 1999-2776
Application No. 08/714,249
While the examiner has not expressly repeated all of the1
rejections applicable to the claims before us on appeal in the
examiner’s answer (Paper No. 11), it is clear from a review of
the final rejection, appellant’s brief (Paper No. 10) and the
totality of the examiner’s answer (particularly section 6)
that the rejections as stated above are those that are before
us for consideration on appeal. More specifically, we note
that the rejection of claims 1, 2, 7 and 8 based on the
judicially created doctrine of obviousness-type double
patenting is still a valid rejection and is before us in this
appeal. We are at a loss to understand why all of the
applicable rejections were not repeated in the examiner’s
answer. Normally, rejections of claims which are not repeated
in the examiner’s answer are considered to have been withdrawn
by the examiner. See, for example, Ex parte Emm, 118 USPQ 180
(Bd. App. 1957). In the present case, we note that
appellant’s statement of the issues on appeal as set forth on
page 3 of the brief, with particular regard to the double
patenting rejection, in no way relieves the examiner of the
obligation to expressly state in the examiner’s answer exactly
what rejections are before the Board for review.
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unpatentable over Rogahn in view of Danielak; claim 12 stands
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Knerr in view of Sasse; while claims 1, 2, 7 and 8
additionally stand rejected under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over claims 1 and 5 of U.S. Patent No.
5,620,351.1
Rather than attempt to reiterate the examiner's full
Appeal No. 1999-2776
Application No. 08/714,249
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commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellant
regarding the rejections, we make reference to the final
rejection (Paper No. 7, mailed January 23, 1998) and the
examiner's answer (Paper No. 11, mailed December 2, 1998) for
the reasoning in support of the rejections, and to appellant’s
brief (Paper No. 10, filed September 23, 1998) and reply brief
(Paper No. 12, filed February 2, 1999) for the arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
Looking at page 3 of the brief, we note that appellant
has indicated with regard to the rejection of claims 1, 2, 7
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Application No. 08/714,249
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and 8 based on obviousness-type double patenting that a
terminal disclaimer will be filed once all other grounds of
rejection have been resolved. Given that no such terminal
disclaimer has been filed by appellant and no argument made
with respect to this ground of rejection, we summarily sustain
the examiner’s rejection of claims 1, 2, 7 and 8 based on
obviousness-type double patenting.
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Application No. 08/714,249
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Regarding the examiner’s rejection of claims 1, 2, 7 and
8 under 35 U.S.C. § 103(a) based on the combined teachings of
Rogahn and Danielak, we note that Rogahn discloses a flying
toy of the saucer type having a flat or domed plate-like body
(10) with a plurality of apertures (19) extending
therethrough. A reservoir (e.g., 32) which holds bubble
forming solution (33) is positioned at the center of the body
(10) and is designed so that the bubble forming solution is
released from the reservoir during and as a result of flight,
with the solution then being spread quickly over the upper
surface (13) of body (10) and forming a film over the ends
(34) of apertures (19), thereby allowing the formation of
bubbles when air passes through the apertures and the film of
bubble producing solution. Danielak discloses a bubble
producing jump rope that includes reservoirs in the hollow
handles (17) and bubble producing diffusors (15) connected
adjacent thereto by flexible tubes (21). Each diffusor
consists of a pair of coaxial cylindrical tubes (27, 29)
having openings (31) provided therein. An annular space (30)
is defined between the tubes and receives the bubble producing
solution from the reservoir during use so that a film of the
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solution spreads across the openings (31) and allows the
formation of bubbles when air moves through the openings.
According to the examiner, it would have been obvious to one
of ordinary skill in the art to have provided a Rogahn disc
with dual apertured layers as taught by Danielak, “in order to
make the maximum use of the bubble fluid by causing most to be
used in bubbles with little being spun off or allowed to dry
before use” (answer, pages 3-4).
Like appellant (brief, pages 4-6), absent knowledge of
appellant’s invention, we see nothing in Rogahn and Danielak
which would have suggested their combination in the manner
urged by the examiner. In our opinion, the examiner has used
impermissible hindsight derived from appellant’s own teachings
to reconstruct the flying toy of Rogahn based on concepts
found in the jump rope of Danielak so as to result in a
structure which is responsive to that set forth in claims 1,
2, 7 and 8 on appeal. Moreover, the examiner has hypothesized
concerning certain advantages to be derived in the flying toy
of Rogahn by making the proposed modifications therein,
without any teaching or suggestion of any such advantages in
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Application No. 08/714,249
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the prior art relied upon. Since we have determined that the
teachings and suggestions found in Rogahn and Danielak would
not have made the subject matter as a whole of claims 1, 2, 7
and 8 on appeal obvious to one of ordinary skill in the art at
the time of appellant’s invention, we must refuse to sustain
the examiner’s rejection of those claims under 35 U.S.C. §
103(a).
Looking next to the examiner’s rejection of independent
claim 12 under 35 U.S.C. § 103 based on Knerr and Sasse, we
are in total agreement with the appellant’s position as set
forth in the brief (pages 3-4) and reply brief (pages 6-8)
regarding the hindsight nature of the examiner’s proposed
modification of the simple bubble paddle of Knerr in view of
the shiftable weight golf club of Sasse. Thus, the examiner’s
rejection of claim 12 under 35 U.S.C. § 103(a) will not be
sustained.
In view of the foregoing, the examiner's decision
rejecting claims 1, 2, 7, 8 and 12 of the present application
under
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35 U.S.C. § 103(a) is reversed. However, the decision to
reject claims 1, 2, 7 and 8 under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over claims 1 and 5 of U.S. Patent No. 5,620,351
is affirmed. Accordingly, the decision of the examiner is
affirmed-in-part.
No period For taking any subsequent action in connection
with this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
Appeal No. 1999-2776
Application No. 08/714,249
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)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
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Application No. 08/714,249
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BURNS, DOANE, SWECKER & MATHIS
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