Ex parte Irving

Board of Patent Appeals and Interferences

Feb 9, 1999

08615820 (B.P.A.I. Feb. 9, 1999)

Application for patent filed March 14, 1996. 1
Claims 17 and 18 were amended subsequent to the final2
rejection resulting in the sub silentio withdrawal of the
rejection of claims 17 and 18 under 35 U.S.C. § 112, second
paragraph, which was made in the final rejection.
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for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID C. IRVING
____________
Appeal No. 98-1460
Application No. 08/615,8201
____________
ON BRIEF
____________
Before MEISTER, STAAB, and NASE, 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 through 19, which are all of the claims
pending in this application.2
Appeal No. 98-1460
Application No. 08/615,820
We REVERSE.
Appeal No. 98-1460 Page 3
Application No. 08/615,820
BACKGROUND
The appellant's invention relates to a built-up I-beam
with laminated flange. An understanding of the invention can
be derived from a reading of exemplary claim 1, which appears
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:
Keller et al. (Keller) 4,074,498 Feb. 21, 1978
Brightwell 4,715,162 Dec. 29, 1987
Onysko et al. (Onysko) 4,974,389 Dec. 4, 1990
Scarlett 5,323,584 June 28, 1994
Claims 1 through 19 stand rejected under 35 U.S.C. § 103
as being unpatentable over any of Scarlett or Onysko or
Brightwell in view of Keller.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the examiner's answer (Paper
No. 11, mailed November 26, 1997) for the examiner's complete
reasoning in support of the rejection, and to the appellant's
Appeal No. 98-1460 Page 4
Application No. 08/615,820
brief (Paper No. 10, filed September 2, 1997) for the
appellant's arguments thereagainst.
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 through 19
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
Appeal No. 98-1460 Page 5
Application No. 08/615,820
obviousness is established by presenting evidence 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 necessary to arrive at the claimed invention.
See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA
1972). Furthermore, the conclusion that the claimed subject
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).
All the claims on appeal require each flange of the I-
beam to include or be made of or be formed of oriented strand
lumber.
The appellant argues (brief, pp. 8-10) that no
combination of the applied prior art (i.e., Scarlett, Onysko,
Appeal No. 98-1460 Page 6
Application No. 08/615,820
The meaning of oriented strand lumber and the3
differences between oriented strand lumber and other types of
engineered lumber are set forth on pages 3-4 of the
appellant's specification.
Brightwell and Keller) discloses or suggests the use of
oriented strand lumber (OSL) as an I-beam flange material. 3
We agree. In addition, we agree with the appellant's
rationale set forth on pages 10-13 of the brief and pages 4-6
of the specification as to why an artisan would not have used
oriented strand lumber (OSL) as the flange material in any of
the I-beams of Scarlett, Onysko, or Brightwell.
In response to this argument of the appellant the
examiner states (answer, p. 5) that
Scarlett, Brightwell, and Onysko et al. teach utilization
of "oriented strand lumber" as chord [flange] members as
at col. 4, lines 23-25 of Scarlett or col. 3, lines 31-34
of Brightwell or col. 6, lines 29-33 of Onysko et al.
We have reviewed the entire disclosures of Scarlett,
Brightwell and Onysko, especially those passages cited by the
examiner, and fail to find any disclosure or suggestion
therein to use oriented strand lumber (OSL) as an I-beam
Appeal No. 98-1460 Page 7
Application No. 08/615,820
flange material as recited in the claims under appeal. We
have also reviewed the entire disclosure of Keller and fail to
find any disclosure or suggestion therein to use oriented
strand lumber (OSL) as an I-beam flange material.
Since the applied prior art does not suggest the use of
oriented strand lumber (OSL) as an I-beam flange material as
recited in the claims under appeal, the decision of the
examiner to reject claims 1 through 19 under 35 U.S.C. § 103
is reversed.
Appeal No. 98-1460 Page 8
Application No. 08/615,820
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 19 under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 98-1460 Page 9
Application No. 08/615,820
JVN/gjh
Appeal No. 98-1460 Page 10
Application No. 08/615,820
KOLISCH, HARTWELL, DICKINSON,
McCORMACK & HEUSER
200 PACIFIC BUILDING
520 S.W. YAMHILL STREET
PORTLAND, OR 97204
APPEAL NO. 98-1460 - JUDGE NASE
APPLICATION NO. 08/615,820
APJ NASE
APJ MEISTER
APJ STAAB
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 04 Feb 99
FINAL TYPED: