Ex parte Johnson et al.

Board of Patent Appeals and Interferences

Aug 26, 1998

08420480 (B.P.A.I. Aug. 26, 1998)

Application for patent filed April 12, 1995.1
1
Paper No. 11
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(2) is not binding precedent of the Board.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 J. EVAN JOHNSON,
KURT BAUMAN and DAVID L. SMITH
______________
Appeal No. 98-0409
Application 08/420,4801
_______________
ON BRIEF
_______________
Before CALVERT, MEISTER and STAAB, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
J. Evan Johnson, Kurt Bauman and David L. Smith (the
appellants) appeal from the final rejection of claims 1-5, 7,
9-11 and 14-19, the only claims remaining in the application.
Appeal No. 98-0409
Application 08/420,480
2
We AFFIRM-IN-PART.
The appellants' invention pertains to a cartridge holder
system and apparatus. Independent claims 1, 10 and 15 are
further illustrative of the appealed subject matter and copies
thereof may be found in the appendix to the brief.
The references relied on by the examiner are:
Goss 162,055 Apr. 13, 1875
Benwald 3,668,802 June 13, 1972
Peckels et al. (Peckels) 5,186,326 Feb. 16, 1993
Claims 1-3, 5, 7, 9-11 and 14 stand rejected under 35
U.S.C. § 103 as being unpatentable over Goss. According to
the examiner:
Goss discloses a holder system including a rack portion
(A and P), a plurality of rigid receivers (D), and a
cooperating sliding engagement member (B, i, i).
The belt portion A provides the flexible integral
border portion while the portion P provides the
centrally positioned segment. Goss does not
disclose the device as being made of plastic.
Official notice is given that plastic material is
widely used in place of leather and metal for
allowing molding of parts and cheaper costs and can
be made thin and flexible or thick and rigid. It
would have been obvious to make the device of Goss
from plastic for allowing molding of parts and
cheaper costs. The cartridge receiver is removable
and replaceable from the rack portion in the
opposite manner in which they are assembled.
Regarding claims 2, 20, and 11, the segments as
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claimed are formed by A and P as indicated on page 1
column 2 lines 8-11 in that the portion P may be
made of multiple parts as they are noted as being
located at convenient distances on the belt A. For
claim 3, it would have been obvious to reverse the
orientation of the tracks as a matter of design
choice achieving no new or unexpected results.
Regarding claim[s] 5 and 7 it would have been
obvious to replace some of the cartridge holders
with other well known holders such
as a closable case when it is desired to carry other
articles. Regarding claim 9, as the device of Goss
is used by a hunter, the belt will be attached to the
clothes of the hunter and thus attached to hunting
apparel. [Answer pages 3 and 4.]
Claims 4 and 15-19 stand rejected under 35 U.S.C. § 103
as being unpatentable over Goss in view of Benward and
Peckels. The examiner is further of the opinion that it would
have been obvious to provide the receiver of Goss with a tab
in view of the teachings of Benward and Peckels in order to
provide "for better retention of the article in the bore"
(answer, page 4).
The arguments of the appellants and examiner in support
of their respective positions may be found on pages 4-11 of
the brief and pages 4-7 of the answer.
OPINION
As a preliminary matter, we note that the brief contains
arguments concerning the propriety of the examiner entering a
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Application 08/420,480
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final rejection. Under 35 U.S.C. § 134 and 37 CFR § 1.191,
appeals to the Board of Patent Appeals and Interferences are
taken from the decision of the primary examiner to reject
claims. We exercise no general supervisory power over the
examining corps and the decision of a primary examiner to make
a particular Office action final is not subject to our review.
See Manual of Patent Examining Procedure (MPEP) §§ 706.07(c)
and 1002.02(c) (6th ed., Rev. 3, Jul. 1997); see Ex parte
Jackson, 1926 C.D. 102, 104 (Comr. 1924). Thus, the relief
sought by the appellants should have properly been presented
by a petition to the Commissioner under 37 CFR § 1.181.
We have carefully reviewed the appellants' invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellants in the brief and by the examiner in
the answer. As a consequence of this review, we will sustain
the rejections under 35 U.S.C. § 103 of claims 1-3, 5, 7 and 9
based on Goss and claims 4 and 15-19 based on the combined
teachings of Goss and Benward. We will not, however, sustain
the rejection under
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35 U.S.C. § 103 of claims 10, 11 and 14 based on Goss. Our
reasons for these determinations follow.
The appellants have not separately argued the
patentability of dependent claims 2-5, 7, 9, 11, 14 and 16-19
with an reason-able degree of specificity. Accordingly, these
claims will
stand or fall with the independent claim from which they
depend. See 37 CFR § 1.192(c)(7) and In re Nielson, 816 F.2d
1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987).
Considering first the rejection of claims 1-3, 5, 7 and 9
under 35 U.S.C. § 103 as being unpatentable over Goss, the
appellants argue that "Goss does not disclose a centrally
positioned segment with a integral border portion extending
outwardly from said segment" (brief, page 6). We do not
agree. As the examiner has noted, the clasps or slides P of
Goss, in conjunction with the portion of the "ordinary belt" A
(page 1, column 2, lines 4, 8 and 9) to which they are
attached, can be considered to form the "segments." Clearly,
the upper and lower portions of the belt A extend "outwardly"
from the slides or clasps P (see, Fig. 3). As to the
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limitation "integral," it is well settled that “‘integral’ is
sufficiently broad to embrace constructions united by such
means as fastening and welding,”
In re Hotte, 475 F.2d 644, 647, 177 USPQ 326, 329 (CCPA 1973).
See also Advanced Cardiovascular Sys., Inc. v. Scimed Life
Sys., Inc., 887 F.2d 1070, 1072, 12 USPQ2d 1539, 1541 (Fed.
Cir. 1989). Thus, the clasps or slides P of Goss, and the
portion of the belt A to which they are fastened together by
rivets (see Fig. 3), can be considered to be "integral" as
claimed.
The appellants also "take issue with [the] Examiner's
official notice that plastic material may be used in place of
leather and metal" (brief, page 6). We must point out,
however, that artisans must be presumed to know something
about the art apart from what the references disclose (see In
re Jacoby,
309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962)) and the
conclusion of obviousness may be made from "common knowledge
and common sense" of the person of ordinary skill in the art
(see
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In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
1969)). Moreover, skill is presumed on the part of those
practicing in the art. See In re Sovish, 769 F.2d 738, 743,
226 USPQ 771, 774 (Fed. Cir. 1985). Therefore, the respective
advantages and disadvantages of well-known materials used in
the belt and holder art such as plastic, metal and leather
would have been apparent to the artisan (note In re Heinrich,
268 F.2d 753, 756, 122 USPQ 388, 390 (CCPA 1959)) and,
accordingly, we perceive that the selection of well-known
materials having properties which are well-known in the belt
and holder art (such as plastic) would have been obvious (see
In re Leshin, 277 F.2d 197, 199, 125 USPQ 416, 418 (CCPA
1960).
It is also the appellants' contention that claim 1
requires that "each receiver of Appellants' invention is
removable and replaceable" (brief, page 7). This is not the
case. Independent claim 1 more broadly recites that "the
cartridge receiver may be slidably engaged with the rack
portion and is removable and replaceable therefrom." This
being the case, this limitation does not define over the
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arrangement of Goss wherein all of the cartridge receivers are
slidably engaged with the rack portion and are all removable
and replaceable together as a unit.
The appellants also contend that they "were able to solve
problems that were never addressed by Goss" (brief, page 9).
We must point out, however, that all the utilities or benefits
of the claimed invention need not be explicitly disclosed by
the prior art references to render the claim unpatentable
under section 103 (see In re Dillon, 919 F.2d 688, 692, 696,
16 USPQ2d 1897, 1901, 1904 (Fed. Cir. 1990) (in banc). See
also In re Kemps, 97 F.3d 1427, 40 USPQ2d 1309, 1311 (Fed.
Cir. 1996) (“all the benefits of the claimed invention need
not be explicitly disclosed to render the claim unpatentable
under section 103").
In view of the foregoing, we will sustain the rejection
of claims 1-3, 5, 7 and 9 under 35 U.S.C. § 103 as being
unpatent-able over Goss.
Turning to the rejection of claims 10, 11 and 14 under
35 U.S.C. § 103 as being unpatentable over Goss, independent
claim 10 (as the appellants have argued) requires that each of
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the receivers be removable and replaceable. Recognizing this,
the examiner has taken the position that the claimed segments
(formed by the slides or clasps P and the portion of the belt
A to which they are attached) "may be made of multiple parts"
since the slides or clasps P are disclosed as being located at
"convenient distances on the belt A" (answer, page 3).
However, the mere fact that the slides or clasps P are
disclosed as being located at spaced distances does not serve
as a sufficient factual basis for establishing that the
segments, which includes both the slides or clasps P and the
portion of the belt A to which they are attached, may be
formed of "multiple parts" as the examiner suggests. Indeed,
the main supporting structure for Goss' cartridge belt and
holder is the belt A and, if this belt was made of "multiple
parts" (as would be necessary if the "segments" were made of
multiple parts) as the examiner proposes, it does not appear
that the device of Goss would function in the manner intended
(see Ex parte Hartmann, 186 USPQ 366, 367 (Bd. App. 1974)).
Accordingly, we will not sustain the rejection of claims 10,
11 and 14 under 35 U.S.C. § 103 as being unpatentable over
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Goss.
Considering last the rejection of claims 4 and 15-19
under 35 U.S.C. § 103 as being unpatentable over Goss in view
of Benward and Peckels, the appellants argue that there is no
motivation to combine the teachings of the references in the
manner proposed by the examiner. This is particularly the
case, in the appellants' view, since:
The invention in Goss comprises a holder wherein the
bottom of the holder incorporates a "groove or
countersink . . . into which the head or rim of the
cartridge fits and is securely held." (Col. 2,
lines 27-29, emphasis added). Because, Goss already
addressed and provided a solution for the problem of
securely holding a cartridge, the addition of a tab
to further secure the cartridge would be absolutely
unnecessary. [Brief, page 10.]
We are unpersuaded by the appellants' arguments. While
there must be some teaching, reason, suggestion, or motivation
to combine existing elements to produce the claimed device
(see ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572,
1577,
221 USPQ 929, 933 (Fed. Cir. 1984)), it is not necessary that
the cited references or prior art specifically suggest making
the combination (B.F. Goodrich Co. V. Aircraft Braking Sys.
Appeal No. 98-0409
Application 08/420,480
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Corp.,
72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) and
In re Nilssen, 851 F.2d 1401, 1403, 7 USPQ2d 1500, 1502 (Fed.
Cir. 1988)). Rather the test for obviousness is what the
combined teachings of the references would have suggested to
one of ordinary skill in the art. In re Young, 927 F.2d 588,
591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) and In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
Goss clearly recognizes that it is of importance that the
cartridge be "firmly and securely held" (page 1, column 1,
line 22) in an upright position. Benward teaches an article
holder having a pair of inwardly extending tabs 45 in order to
insure that there is "no danger" of the article be held from
"falling out of the holder" (column 2, lines 34 and 35).
Peckels also teaches an article holder having an inwardly
extending tab 24,
36 for the purpose of retaining the article being held in the
holder. It is true, as the appellants have noted, that Goss
discloses a retention means in the form of a groove or
Appeal No. 98-0409
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countersink (a) for retaining cartridges in the holder.
Nevertheless, in view of the combined teachings of Goss,
Benward and Peckels the artisan would have found it obvious as
a matter of "common sense" (see In re Bozek, supra) to
additionally provide the holder of Goss with an inwardly
extending tab "for better retention" of the cartridge as the
examiner has proposed. This is especially the case, in our
view, since Goss expressly recognizes the need to firmly and
securely hold the cartridge in the holder and Benward teaches
a pair of retaining members (i.e.,
the inwardly extending tabs 45) should be provided in order to
ensure that there is "no danger" of the article being held
from "falling out of the holder." Accordingly, we will
sustain the rejection of claims 4 and 15-19 under 35 U.S.C. §
103 based on the combined teachings of Goss, Benward and
Peckels.
In summary:
Appeal No. 98-0409
Application 08/420,480
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The rejections of claims 1-5, 7, 9 and 15-19 are
affirmed.
The rejection of claims 10, 11 and 14 under 35 U.S.C. §
103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Ian A. Calvert )
Administrative Patent Judge )
)
)
)
James M. Meister ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Lawrence J. Staab )
Administrative Patent Judge )

Douglas J. Christensen
Palmatier, Sjoquist, Helget & Voigt, P.A.
6600 France Avenue, South Suite 501
Minneapolis, MN 55435
Appeal No. 98-0409
Application 08/420,480
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JMM/cam