Ex parte Hope

Board of Patent Appeals and Interferences

Aug 15, 2001

08938844 (B.P.A.I. Aug. 15, 2001)

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not written for publication and is not binding precedent of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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES KEITH HOPE
__________
Appeal No. 2000-1612
Application 08/938,844
___________
ON BRIEF
___________
Before CALVERT, FRANKFORT, and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals from the examiner's non-final Office
action mailed August 16, 1999 (Paper No. 10), the fourth set
of rejections entered by the examiner during the prosecution
of this application. Subsequent to the examiner’s rejections
in Paper No. 10, appellant filed his brief (Paper No. 11) and
an amendment (Paper No. 12) on September 20, 1999. Appellant
Appeal No. 2000-1612
Application 08/938,844
Although the examiner has approved the amendment filed1
on September 20, 1999 for entry and it appears on the face of
that paper to have been entered, it has NOT been properly
entered with regard to independent claim 7. Correction of
this oversight is necessary.
2
had previously filed his Notice of Appeal (Paper No. 6,
December 28, 1998) in response to an earlier final rejection.
Claims 2, 3, 5 and 7 remain in the application. Of those
claims, claims 2, 3 and 7 stand rejected on prior art and are
before us for consideration on appeal. Claim 5 has no prior
art rejection against it and is presumed to be allowable if
rewritten in independent form. The rejection of claims 2, 3
and 5 in Paper No. 10 under 35 U.S.C. § 112, second
paragraph, was apparently overcome by appellant’s amendment
filed September 20, 1999, since this rejection was not
repeated in the examiner’s answer. Claims 1, 4 and 6 have1
been canceled.
Appellant’s invention is directed to a combination chair
(15), support platform (1, 3) and computer mouse (19). As
noted more particularly on page 3 of the specification,
appellant indicates that the invention
Appeal No. 2000-1612
Application 08/938,844
3
relates to a removable support platform for a chair’s
armrest on which a mouse and its pad may be placed. To
attached [sic] the platform to the armrest, the platform
extension oriented parallel to the armrest has one or two
spaced straps that can encircle the chairs arm and be
fixed thereon. The strap or straps each may have hook
and loop (VELCO TM) ends or the like. Screws or other
strap retainers extend into the strap through the
platform’s extension member to fix the members together.
Independent claim 7 is representative of the subject
matter on appeal and a copy of that claim, as it appears in
the Appendix to appellant’s brief, is attached to this
decision.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Thompson et al. (Thompson) 5,474,272 Dec. 12,
1995
Bourassa 5,848,773 Dec.
15, 1998
(filed Apr. 17,
1997)
Claim 7 is said by the examiner to stand rejected under
35 U.S.C. § 102(e) as anticipated by or, in the alternative,
Appeal No. 2000-1612
Application 08/938,844
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under 35 U.S.C. § 103(a) as obvious over Bourassa in view of
Thompson.
Claims 2 and 3 also stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Bourassa in view of
Thompson.
Rather than attempt to reiterate the examiner's full
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 examiner's
answer (November 3, 1999) for the reasoning in support of the
rejections, and to appellant’s brief (September 20, 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
Appeal No. 2000-1612
Application 08/938,844
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consequence of our review, we have made the determinations
which follow.
With regard to the rejection of claim 7 relying on
Bourassa under 35 U.S.C. § 102(e), we have reviewed the
applied patent and, like appellant, find no teaching or
disclosure therein of a “removable strap fastener means” as
required in claim 7 on appeal. We share appellant’s view as
expressed in the brief (pages 6-7) that the examiner’s attempt
to read the “removable strap fastener means” of claim 7 on the
plate (21) of Bourassa is entirely untenable. One of ordinary
skill in the art would not reasonably view the plate (21) of
Bourassa as being a strap or “removable strap fastener means”
as that term would be understood from appellant’s
specification. Before the USPTO, when evaluating claim
language during examination of the application, the examiner
is required to give the terminology of the claims its broadest
reasonable interpretation consistent with the specification,
and to remember that the claim language cannot be read in a
vacuum, but instead must be read in light of the specification
Appeal No. 2000-1612
Application 08/938,844
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as it would be interpreted by one of ordinary skill in the
pertinent art. See In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983); In re Bond, 910 F.2d 831, 833, 15
USPQ2d 1566, 1567 (Fed. Cir. 1990) and In re Morris, 127 F.3d
1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997).
In light of the foregoing, we will not sustain the
examiner’s rejection of claim 7 under 35 U.S.C. § 102(e) as
being anticipated by Bourassa.
As for the examiner’s rejection of claims 2, 3 and 7
under 35 U.S.C. § 103(a) as being unpatentable over Bourassa
in view of Thompson, we find ourselves in agreement with the
examiner’s position that it would have been obvious to one of
ordinary skill in the art at the time of appellant’s invention
to substitute a known alternative form of fastening means,
like the strap arrangement in Thompson (2, 26, 28, 29), for
the clamping arrangement (21-25) of Bourassa.
In response to appellant’s arguments concerning the
Appeal No. 2000-1612
Application 08/938,844
7
combination of the references relied upon by the examiner, we
observe that where the issue is one of obviousness under
35 U.S.C. § 103, the proper inquiry should not be limited to
the specific structure shown by a reference, but should be
into the concepts fairly contained therein, with the
overriding question to be determined being whether those
concepts would have suggested to one skilled in the art the
modification called for by the claims. See In re Bascom, 230
F.2d 612, 614, 109 USPQ 98, 100 (CCPA 1956). Furthermore,
under 35 U.S.C. § 103, a reference must be considered not only
for what it expressly teaches, but also for what it fairly
suggests (In re Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70
(CCPA 1979); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278,
280 (CCPA 1976)), as well as the reasonable inferences which
the artisan would logically draw from the reference. See In
re Shepard, 219 F.2d 194, 197, 138 USPQ 148, 150 (CCPA 1963).
As stated by the Court in In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981)
The test for obviousness is not whether the features
of a secondary reference may be bodily incorporated into
Appeal No. 2000-1612
Application 08/938,844
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the structure of the primary reference, nor is it that
the claimed invention must be expressly suggested in any
one or all of the references. Rather, the test is what
the combined teachings of the references would have
suggested to those of ordinary skill in the art.
In addition, while there clearly must be some teaching or
suggestion to combine existing elements in the prior art to
arrive at the claimed invention, we note that it is not
necessary that such teaching or suggestion be found only
within the four corners of the applied references themselves;
a conclusion of obviousness may be made from common knowledge
and common sense of the person of ordinary skill in the art
without any specific hint or suggestion in a particular
reference. See In re Boezk, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969). This is because we presume skill on the
part of the artisan, rather than the converse. See In re
Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir 1985).
For the above reasons, we will sustain the examiner’s
rejection of independent claim 7 under 35 U.S.C. § 103(a) as
being obvious over Bourassa in view of Thompson. Since
appellant indicated on page 5 of the brief that claims 2, 3
Appeal No. 2000-1612
Application 08/938,844
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and 7 “stand or fall together,” it follows that the examiner’s
rejection of claims 2 and 3 under 35 U.S.C. § 103(a) will also
be sustained.
To summarize, we have refused to sustain the examiner’s
rejection of claim 7 under 35 U.S.C. § 102(e) based on
Bourassa, but have sustained the rejection of claims 2, 3 and
7 under 35 U.S.C. § 103(a) based on the collective
teachings of Bourassa and Thompson. Since one rejection of
each of the claims before us on appeal has been sustained, the
examiner’s decision is affirmed.
Appeal No. 2000-1612
Application 08/938,844
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-1612
Application 08/938,844
11
CEF:pgg
Joseph H. McGlynn
6111 Saddle Horn Drive
Fairfax, VA 22030
Appeal No. 2000-1612
Application 08/938,844
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APPENDIX
7. A combined chair, support platform and computer mouse
comprising:
a chair having a right side armrest and an opposite left
side armrest;
a substantially flat support platform removably attached
to one of said chair’s armrests, said platform having a main
portion and an arm extension portion extending from the main
portion;
removable strap fastener means mounted on the arm
extension portion of said platform for fastening the platform
to one of the chair’s armrests; and
a computer mouse mounted on the platform’s main portion
and adapted to be connected to a computer.