Ex parte Johnstone

Board of Patent Appeals and Interferences

Nov 30, 1999

08827544 (B.P.A.I. Nov. 30, 1999)

Application for patent filed March 28, 1997.1
A petition to make this application special (Paper No.2
3) was granted (Paper No. 4).
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journal and (2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DAVID R. JOHNSTONE
_____________
Appeal No. 1999-1764
Application No. 08/827,5441, 2
______________
ON BRIEF
_______________
Before CALVERT, COHEN, and BAHR, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
Appeal No. 1999-1764
Application No. 08/827,544
2
through 8, all of the claims remaining in the application.
Appellant’s invention pertains to a mounting assembly.
An understanding of the invention can be derived from a
reading of exemplary claim 1, a copy of which appears in the
APPENDIX to the brief (Paper No. 19).
As evidence of obviousness, the examiner has applied the
documents listed below:
Wilson 4,813,641 Mar. 21, 1989
Wolterstorff, Jr. 4,825,515 May 2,
1989
Irizarry 5,649,634 Jul. 22, 1997
(filed Nov. 13, 1995)
The following rejections are before us for review.
Claims 1 through 5 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Wilson in view of
Wolterstorff.
Claims 6 through 8 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Wilson in view of
Wolterstorff, as applied to claims 1 through 5, further in
view of Irizarry.
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Application No. 08/827,544
3
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Application No. 08/827,544
Receipt of the “NOTICE OF RECENT DECISION” (Paper No.3
21) is acknowledged.
In paragraph 6 of this declaration, declarant indicates4
attendance at “two (2) trade shows” in 1996 where “the
4
The full text of the examiner’s rejections and response
to the argument presented by appellant appears in the answer
(Paper No. 20), while the complete statement of appellant’s
argument can be found in the brief (Paper No. 19).3
In the brief (pages 2 and 3), appellant indicates that
claims 1 through 8 stand or fall together. Consistent with
this statement, we focus our attention, infra, exclusively
upon independent claims 1 and 6, with the remaining dependent
claims respectively standing or falling therewith.
OPINION
In reaching our conclusion on the obviousness issues
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claims 1 and 6, the
first declaration of David R. Johnstone executed February 2,
1998, 4
Appeal No. 1999-1764
Application No. 08/827,544
product” was displayed. Apart from the above information, we
are not informed of any specific details relative to these
trade shows; in particular, the dates thereof in 1996, of
relevance to the public use and on sale provision of 35 U.S.C.
§ 102(b).
In our evaluation of the applied references, we have5
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art.
See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA
1966). Additionally, this panel of the board has taken into
account not only the specific teachings, but also the
inferences which one skilled in the art would reasonably have
been expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
5
the second declaration of David R. Johnstone executed June 10,
1998, the applied patents, and the respective viewpoints of5
appellant and the examiner. As a consequence of our review,
we make the determination which follows.
We reverse each of the examiner’s rejections under 35
U.S.C. § 103.
Initially, we refer to appellant’s statement in the
specification (page 5) that an “important feature” of the toy,
doll or stuffed creature mounting assembly is the use of a
buckle part (buckle assembly), “like the buckle assembly in a
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Application No. 08/827,544
6
seat belt assembly in a vehicle.” As further expressed by
appellant (specification, page 5),
In this way, the safety habit of buckling
up with a seat belt is reinforced when
buckling up a toy, doll, or stuffed
creature in the mounting assembly 10.
Each of independent claims 1 and 6 is drawn to a mounting
assembly for mounting a toy, doll or stuffed creature
comprising, inter alia, a suction cup, a strap, and a buckle
assembly for buckling the strap about a toy, doll, or stuffed
creature.
We turn now to the evidence of obviousness. This panel
of the board fully appreciates not only the teaching of each
applied document, but also the manner in which they are
applied by the examiner. However, as explained more fully
below, the difficulty we have with the rejection of
appellant’s claims is that when we set aside in our minds
appellant’s own disclosure in the present application, we
readily discern that the collective teachings themselves would
not have been suggestive of the mounting assembly now claimed.
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7
The Wilson document addresses a device for attaching an
object to a surface (Fig. 1). However, the focus of patentee
Wilson (column 3) is upon a flexible resilient elongate member
(bungee cord or stretch cord) which is attached to suction cup
32 (Figs. 2 and 3). The Wolterstorff reference is certainly
representative of a safety buckle assembly. Nevertheless,
absent appellant’s own teaching and impermissible reliance
upon hindsight, it is apparent to us that one having ordinary
skill in the art would have had no reason to selectively
choose a buckle and strap assembly from among the myriad
available mechanical alternatives for attaching one member to
another. Only appellant provides the motivation to make the
specific selection of a buckle and strap assembly, i.e., to
reinforce the safety habit of buckling up with a seat belt, as
explained above. We also note that the patent to Irizarry
does not overcome the discussed deficiencies of the Wilson and
Wolterstorff references. Since the evidence before us does
not establish a prima facie case of obviousness, we need not
address appellant’s submitted evidence of nonobviousness
(secondary considerations), i.e., the respective Johnstone
declarations.
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Application No. 08/827,544
8

In summary, this panel of the board has:
reversed the rejection of claims 1 through 5 under 35
U.S.C. § 103(a) as being unpatentable over Wilson in view of
Wolterstorff; and
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reversed the rejection of claims 6 through 8 under 35 U.S.C.
§ 103(a) as being unpatentable over Wilson in view of
Wolterstorff and Irizarry.
The decision of the examiner is reversed.
REVERSED
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-1764
Application No. 08/827,544
10
Thomas R. Virgil
836 South Northwest Highway
Barrington, IL 60010