Ex parte Hoganson

Board of Patent Appeals and Interferences

Apr 17, 2002

09272989 (B.P.A.I. Apr. 17, 2002)

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and is not binding precedent of the Board.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. 9
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte TED F. HOGANSON
____________
Appeal No. 2000-1963
Application No. 09/272,989
____________
ON BRIEF
____________
Before ABRAMS, STAAB and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Ted F. Hoganson appeals from the final rejection of claim
1, the only claim pending in the application.
THE INVENTION
The invention relates to “an adjustable anti-glare device
for use on devices having subjective lenses, i.e., a variety
of telescopes[,] spotting scopes, binoculars, cameras, and
Appeal No. 2000-1963
Application No. 09/272,989
2
video cameras” (specification, page 1). Claim 1 reads as
follows:
1. An anti-glare device for use with objective lenses
mounted in a housing, said device comprising:
an elongated strip of flexible, soft material having a
length between ends to wrap around a housing containing
objective lenses and to overlap on itself, a width to project
from said housing and sufficient rigidity to maintain an
encircling formation projecting from said housing;
connector means fixed to one face of one of said ends of
said elongate strip of flexible soft material; and
co-operating connector means fixed to at least an
opposite end of said elongate strip of flexible, soft
material, said connector means interlocking when one of said
ends overlaps the other of said ends when said elongate strip
is wrapped around and projects from an end of said housing.
THE PRIOR ART
The references relied on by the examiner as evidence of
obviousness are:
Villarreal 4,089,117 May 16,
1978
Bock 4,751,950 June
21, 1988
THE REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 112, second
paragraph, as failing to particularly point out and distinctly
Appeal No. 2000-1963
Application No. 09/272,989
3
claim the subject matter the appellant regards as the
invention.
Claim 1 also stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Villarreal in view of Bock.
Attention is directed to the appellant’s brief (Paper No.
7) and to the examiner’s answer (Paper No. 8) for the
respective positions of the appellant and the examiner with
regard to these rejections.
DISCUSSION
I. The 35 U.S.C. § 112, second paragraph, rejection
The appellant’s assertion that “[t]here is no rejection
under 35 U.S,C. [sic] 112, second paragraph” (brief, page 2)
is technically correct as neither the final rejection (Paper
No. 5) nor the examiner’s answer contains a formal statement
of such a rejection. The remarks in these papers clearly
show, however, that the examiner considers claim 1 to be
indefinite and that the failure to formally state a
corresponding rejection was inadvertent. In order to expedite
the proceedings in this appeal, we have assumed that such a
rejection was properly entered and shall review the merits of
the examiner’s position. As should be apparent from the
Appeal No. 2000-1963
Application No. 09/272,989
4
following comments, our decision to do so does not prejudice
the appellant in any way. The examiner’s
determination that claim 1 is indefinite rests on an alleged
lack of antecedent basis in the claim for the term “the other”
(see page 3 in the answer). As indicated above, this term
appears within the recitation defining the connector means as
“interlocking when one of said ends overlaps the other of said
ends when said elongate strip is wrapped around and projects
from an end of said housing.” Because claim 1 earlier sets
forth the elongate strip as having “a length between ends,”
the reference to one and “the other” of the ends does have a
proper and clear antecedent basis.
Accordingly, we shall not sustain the 35 U.S.C. § 112,
second paragraph, rejection of claim 1.
II. The 35 U.S.C. § 103(a) rejection
Villarreal, the examiner’s primary reference, discloses a
sunshade constructed to be rotatably mounted on a rifle scope
to reduce the deleterious effects of glare and reflected
light. The sunshade 10, made of a flexible and resilient
material, comprises an elongated body 13 having a scope-
grasping collar 14 at one end 17 and a viewing slot 19
Appeal No. 2000-1963
Application No. 09/272,989
5
extending from the collar to a leading arc 20 at the other end
18. As shown in Figures 2 and 4, the collar 14 can be
deformed to fit over and resiliently grasp the scope.
As conceded by the examiner (see page 4 in the answer),
Villarreal does not respond to the limitations in claim 1
requiring (1) the elongated strip of material to have “a
length between ends to wrap around a housing containing
objective lenses and to overlap on itself,” and (2) “connector
means” fixed to one of the ends of the strip and “co-operating
connector means” fixed to the opposite end of the strip, with
these “connector means interlocking when one of said ends
overlaps the other of said ends.” The examiner’s reliance on
Bock to overcome these deficiencies is unsound.
Bock discloses a cover for protecting camera equipment
from inclement weather during use. The cover 12, made of a
flexible, moisture-resistant, specially configured sheet 28,
includes a rear wall 30, a top wall 32, a pair of sidewalls
34, 36, a connection strip 42 depending from the rear wall 30,
and an underflap 38 extending from the lower edge of sidewall
34. The cover also includes a Velcro strip 40 on the forward
inner surfaces of walls 32, 34, 36 for engaging a
Appeal No. 2000-1963
Application No. 09/272,989
6
complementary Velcro strip 56 on the forward end of the camera
lens, a Velcro strip 46 on one face of the connection strip 42
for engaging a complementary Velcro strip on the underside of
the camera, and complementary Velcro strips 44 and 52 on the
other face of the connection strip 42 and on the underflap 38,
respectively, to secure these elements around the rear of the
camera.
In proposing to combine Villarreal and Bock to reject
claim 1, the examiner concludes that
it would have been obvious to one of ordinary skill
in the art at the time the invention was made to use
connector means 52 and co-operating connector means
44 on said elongate strip of flexible material 28 to
overlap and interlock the device as disclosed by
Bock . . . in the anti-glare device of Villarreal .
. . to achieve an anti-glare device as claimed,
because the use of such connector means and co-
operating connector means would provide easier and
better attachment of the elongate strip [answer,
page 5].
Villarreal and Bock, however, provide no factual support
for the examiner’s contention that the proposed modification
of the Villarreal sunshade in view of Bock would result in
easier and better attachment of the sunshade. Indeed, given
the resiliently grasping nature of Villarreal’s mounting
collar 14, this modification would not appear to improve the
Appeal No. 2000-1963
Application No. 09/272,989
7
attachment and arguably would make it more difficult. In this
light, and given the markedly disparate natures of the devices
respectively disclosed by Villarreal and Bock, it is evident
that the only suggestion for combining these references in the
manner advanced by the examiner stems from hindsight knowledge
impermissibly derived from the appellant’s own disclosure.
Consequently, we shall not sustain the 35 U.S.C. § 103(a)
rejection of claim 1 as being unpatentable over Villarreal in
view of Bock.
SUMMARY
The decision of the examiner to reject claim 1 is
reversed.
REVERSED
Appeal No. 2000-1963
Application No. 09/272,989
8
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
JPM/gjh
Appeal No. 2000-1963
Application No. 09/272,989
9
TED F. HOGANSON
2875 W 2900 S
WEST HAVEN, UT 84401
GJH
Appeal No. 2000-1963
Application No. 09/272,989
APJ McQUADE
APJ STAAB
APJ ABRAMS
REVERSED
November 18, 2002