Ex parte Jeter

Board of Patent Appeals and Interferences

Oct 26, 1999

08405366 (B.P.A.I. Oct. 26, 1999)

Application for patent filed March 16, 1995. 1
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not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JACK W. JETER
____________
Appeal No. 1997-4250
Application No. 08/405,3661
____________
HEARD: October 6, 1999
____________
Before McCANDLISH, Senior Administrative Patent Judge, ABRAMS
and GONZALES, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-16, which constitute all of the
claims of record. Subsequently, the examiner has indicated
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that claims 5, 6, 12, 13, 15 and 16 contain allowable subject
matter (Answer, page 2), which leaves claims 1-4, 7-11 and 14
before us on appeal.
The appellant’s invention is directed to a file holder
for holding a plurality of files. The claims on appeal have
been reproduced in an appendix to the Brief.
THE REFERENCES
The following references were relied upon by the examiner
to support the final rejection:
Starkweather 4,331,335 May 25,
1982
Hicinbothem et al. 5,197,764 Mar. 30,
1993
(Hicinbothem)
THE REJECTION
Claims 1-4, 7-11 and 14 stand rejected under 35 U.S.C. §
103 as being unpatentable over Hicinbothem in view of
Starkweather.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejection and the
conflicting viewpoints advanced by the examiner and the
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appellant regarding the rejection, we make reference to the
Examiner’s Answers (Paper Nos. 7 and 10) for the reasoning in
support of the rejections, and to the appellant’s Briefs
(Paper Nos. 6 and 9), for the arguments thereagainst.
OPINION
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima
facie case of obviousness, it is incumbent upon the examiner
to provide a reason why one of ordinary skill in the art would
have been led to modify a prior art reference or to combine
reference teachings to arrive at the claimed invention. See
Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985).
To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. V. Rudkin-Wiley Corp., 837
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F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
In order to solve several problems associated with the
retrieval of files from a file holder containing a plurality
of files, the appellant’s invention establishes a plurality of
file receiving openings, each of which is defined by a slanted
support surface and a pair of parallel side panels that are
substantially perpendicular to the slanted support surface and
are themselves slanted with respect to the front face of the
file holder at an angle other than a right angle. Limitations
establishing these relationships are present in all of the
claims. The invention, as illustrated in the drawings,
comprises a plurality of parallel upright panels (38) which
are slanted to the side and a plurality of support surfaces
(11) which are slanted downwardly. A file placed in these
file receiving openings is slanted to one side and downwardly,
thus exposing its upper corner as viewed from the side and the
top.
The examiner cites Hicinbothem for its showing of a file
holder defined by (see Figure 6) a support surface (430) and a
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pair of parallel side surfaces (424), the latter being
perpendicular to the support surface and slanted at an angle
other than a right angle to the front face of the structure.
In the Hicinbothem system, however, the support surface is
horizontally oriented, and therefore is not slanted, as is
required by all of the appellant’s claims. The examiner
recognizes this deficiency, and takes the position that it
would have been obvious to one of ordinary skill in the art to
modify Hicinbothem by slanting the support surfaces, in view
of the teachings of Starkweather.
Starkweather discloses a storage dispenser for metallic
objects having magnetic properties. It comprises a plurality
of bins, each of which is defined by a pair of upstanding
parallel side panels which are perpendicular to the front face
of the dispenser and a downwardly slanted support surface that
has a strip of magnetic material at its lower edge. When
articles having magnetic properties are placed in the bins,
they flow downwardly toward the lower edge of the bin under
the influence of their own weight until acted upon by the
magnetic strip, which holds them at the edge until they are
removed by the user (see column 5).
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Of course, the mere fact that the prior art structure
could be modified does not make such a modification obvious
unless the prior art suggests the desirability of doing so.
See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). According to the examiner, one of ordinary skill
in the art would have found it obvious to slant the support
surfaces of the Hicinbothem file holder downwardly “in order
to cause articles positioned on the support surface to move
outwardly toward the open ends of the file folder, thereby
[to] facilitate removal” (Answer, page 4). However,
Hicinbothem already has provided for facilitated removal of
the files in the holder by slanting the upstanding walls, so
that problem has been solved. Moreover, Starkweather slants
the support surface so that the small articles that are stored
therein gravitate toward the front edges of the bins, where
they can easily be grasped and are then replaced by others
located behind them, a situation that does not exist in
Hicinbothem. We therefore fail to perceive any teaching,
suggestion or incentive in either reference which would have
led one of ordinary skill in the art to modify the
Hicinbothem file holder in the manner proposed by the
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examiner, that is, to slant the support surfaces downwardly.
From our perspective, the only suggestion for doing so is
found in the hindsight accorded one who first viewed the
appellant’s disclosure, which is not a proper basis for a
rejection. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992).
It is our conclusion that the teachings of the applied
references fail to establish a prima facie case of obviousness
with regard to any of the independent claims or, it follows,
of those claims depending therefrom. This being the case, we
will not sustain the rejection.
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The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
bae
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Ray L. Weber
Renner, Kenner, Greive, Bobak,
Taylor & Weber
1610 First National Tower
Akron, OH 44308