Ex parte HOLMQUIST

Board of Patent Appeals and Interferences

Aug 15, 1997

08050318 (B.P.A.I. Aug. 15, 1997)

Application for patent filed May 10, 1993.1
1
Paper No. 24
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte ROLAND HOLMQUIST
______________
Appeal No. 95-3943
Application 08/050,3181
_______________
ON BRIEF
_______________
Before CALVERT, LYDDANE and ABRAMS, Administrative Patent Judges.
LYDDANE, Administrative Patent Judge.

Appeal No. 95-3943
Application 08/050,318
Amendments to claims 4 and 7 were requested in a separate paper2
accompanying the reply brief on January 30, 1995 (Paper No. 18) in response
to the examiner's new ground of rejection set forth in the examiner's answer
(Paper No. 17). Although entry of this amendment was not specifically
approved by the examiner in the subsequent responses, approval can be inferred
from the examiner's statement in the response dated March 1, 1995 (Paper No.
19) that the reply brief "has been entered and considered" since the reply
brief notes the amendment of the claims and directs the arguments to the
amended claims.
As amended January 30, 1995 (Paper No. 18)3
2
DECISION ON APPEAL
This is a decision on an appeal from the examiner's refusal
to allow claims 4, 5 and 7, which are all of the claims pending 2
in the application.
The subject matter on appeal is directed to a vertically
adjustable desk. Claim 4 is exemplary of the invention and reads
as follows :3
4. A vertically adjustable desk which comprises:
a support stand,
a desktop which includes an underbody,
first and second linkage means connected between said
support stand and said underbody for vertically adjustably
positioning said desktop in a generally horizontal orientation
above said lower stand, each of said first and second linkage
means comprising two parallel links, and
first and second gas spring means connected between
said first linkage means and said underbody and between said
second linkage means and said underbody, respectively, for
Appeal No. 95-3943
Application 08/050,318
Our understanding of this reference results from our reading of a4
translation of this reference which was prepared for the U.S. Patent and
Trademark Office. A copy of the translation has been appended to this
decision for the convenience of the appellant.
3
assisting in vertical lifting of said desktop above said support
stand and for locking said desktop in vertical position above
said support stand, each of said first and second gas spring
means including a handle for manual operation thereof.
The references of record relied upon by the examiner in a
rejection of the claims under 35 U.S.C. § 103 are:
Guglielmi 3,080,835 Mar. 12, 1963
Sema 4,703,700 Nov. 3, 1987
Pülz (German 25 39 713 Mar. 17, 1977
Offenlegungsschrift)4
Claims 4, 5 and 7 stand rejected under 35 U.S.C. § 103
as being unpatentable over Pülz in view of Guglielmi and Sema.
Rather than reiterate the examiner's statement of the
above rejections and the conflicting viewpoints advanced by the
examiner and the appellant, we refer to pages 4 and 5 of the
examiner's answer, to the supplemental answer (Paper No. 21),
to pages 2 through 4 of the appellant's brief and to the reply
brief for the full exposition thereof.
Appeal No. 95-3943
Application 08/050,318
4
OPINION
In arriving at our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art, and to the respective positions
advanced by the appellant and by 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 all claims on
appeal. 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); In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). A prima facie case of
obviousness is established by presenting evidence indicating that
the reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references before
him to make the proposed combination or other modification. See
In re Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA
1972). Furthermore, the conclusion that the claimed subject
Appeal No. 95-3943
Application 08/050,318
5
matter is prima facie obvious must be supported by evidence, as
shown by some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that
would have led that individual 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);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), and ACS Hosp. Sys.,
Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984); In re Lalu, 747 F.2d 703, 705, 223 USPQ 1257,
1258 (Fed. Cir. 1984).
Moreover, rejections based on § 103 must rest on a factual
basis with these facts being interpreted without hindsight recon-
struction of the invention from the prior art. The examiner
has the initial duty of supplying the factual basis for the
rejection. The examiner may not, because of doubt that the
invention is patentable, resort to speculation, unfounded
assumption or hindsight reconstruction to supply deficiencies
Appeal No. 95-3943
Application 08/050,318
6
in the factual basis. See In re Warner, 379 F.2d 1011, 1017,
154 USPQ 173, 177 (CCPA 1967). Our reviewing court has
repeatedly cautioned against employing hindsight by using the
applicant's disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings in the prior art. See,
e.g., Grain Processing Corp. v. American Maize-Prods. Co.,
840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
Having carefully reviewed the disclosures of each of the
references applied by the examiner in the rejection of the claims
on appeal in light of the comments of both the examiner and the
appellant, we find ourselves in agreement with the appellant's
position as expressed in pages 2 through 4 of the reply brief
that nothing in the teachings of the references would have
suggested or made "obvious" their combination in the manner
proposed by the examiner. In particular, it is apparent that
Pülz discloses a vertically adjustable surface 5 utilizing a pair
of linkage means each having two parallel links 11, 12. However,
the means for adjusting the height of the surface includes a
pair of slotted scissors linkages 14, 17 that are respectively
Appeal No. 95-3943
Application 08/050,318
7
connected to the surface 5 and to link 11 and frictionally held
in adjusted position via a "fixing device" (cam and spring
clamping arrangement) depicted in Figures 4 and 5 (note pages 5
and 6 of the translation).
Appealed claim 4 requires, in part,
first and second gas spring means . . . for
assisting in vertical lifting of said desktop
. . . and for locking said desktop in
vertical position,
and appealed claim 7 requires, inter alia,
first and second gas spring means for
assisting in vertical lifting of said desktop
. . . and for locking said desktop in a
vertical position above said support stand.
The scissors linkages and "fixing device" of Pülz certainly
provide a means for locking the surface 5 in vertical positions,
but they do not and cannot assist in vertical lifting thereof
as required by the claims on appeal.
Furthermore, although the patent to Guglielmi discloses an
hydraulic cylinder for vertical adjustment of a desk or table
and the patent to Sema discloses a gas spring 16 for driving
and retaining support elements of a table or desk in vertically
Appeal No. 95-3943
Application 08/050,318
8
adjusted position, neither of these references would have
suggested their application to the adjustable table or desk
structure of Pülz. There is simply no suggestion or motivation
from the combined teachings of these references for replacing
the frictionally held adjustment links 11, 12 of Pülz with means
for assisting vertical lifting, much less the particular gas (or
hydraulic) spring devices of Sema or Guglielmi.
As stated in W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d
1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983),
[t]o imbue one of ordinary skill in the art
with knowledge of the invention in suit, when
no prior art reference or references of
record convey or suggest that knowledge, is
to fall victim to the insidious effect of a
hindsight syndrome wherein that which only
the inventor taught is used against its
teacher.
It is our conclusion that the only reason to combine the
teachings of the applied references in the manner proposed by
the examiner results from a review of appellant's disclosure
and the application of impermissible hindsight. Thus, we cannot
sustain the examiner's rejections of appealed claims 4, 5, and 7
under 35 U.S.C. § 103.
Appeal No. 95-3943
Application 08/050,318
9
Accordingly, the decision of the examiner rejecting claims
4, 5 and 7 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
WILLIAM E. LYDDANE ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )

Appeal No. 95-3943
Application 08/050,318
10
Richard H. Tushin
Watson, Cole, Grindle & Watson
1400 K Street, N.W.
Washington, DC 20005-2477
WEL/cam