Ex Parte Jones

Board of Patent Appeals and Interferences

Nov 19, 2008

10932184 (B.P.A.I. Nov. 19, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KEVIN B. JONES
____________

Appeal 2008-3738
Application 10/932,184
Technology Center 3700
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Decided: November 19, 2008
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Before JENNIFER D. BAHR, LINDA E. HORNER and
STEPHEN D.A. MCCARTHY, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE

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STATEMENT OF THE CASE
Kevin B. Jones (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner's final rejection of claims 1, 3, 6, and 7.1 We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.
THE INVENTION
The Appellant’s claimed invention is to a method for adding a wick to
a candle (Spec. 2:22-24). Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A process for adding a candle wick to a
candle including the steps of:
selecting a wick cavity forming tool having
an electrically heatable, elongated tip and having a
marked position to indicate the depth of the bore
for a candle wick;
electrically heating said elongated tip;
removing an existing wick from a candle;
inserting said heated elongated tip into a wax
candle to form a bore thereinto having softened
wax therearound;
inserting a wick into the wax candle bore
having softened wax therearound created by said
heated wick cavity forming tool;

1 No other claims are pending.
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cutting said added wick; and
removing excess wax from said candle with
said electrically heated elongated tip;
whereby a wick is formed into a candle.

THE REJECTIONS
The Examiner relies upon the following as evidence of unpatentability:
Slack US 2,454,576 Nov. 23, 1948
Lundbom US 3,983,677 Oct. 5, 1976
Warren US 1,883,726 Oct. 18, 1932
Milbrandt US 3,438,363 Apr. 15, 1969
Gazzola US Des. 412,368 Jul. 27, 1999
Carli Laklan, The Candle Book, 6-7 & 22-27 (Avenel Books, 1956)
(“Laklan”).
The Appellant seeks our review of the following rejections:
1. The Examiner rejected claims 1 and 3 under 35 U.S.C. § 103(a) as
unpatentable over Laklan, Slack, Lundbom, and Warren.
2. The Examiner alternatively rejected claim 3 under 35 U.S.C. § 103(a)
as unpatentable over Laklan, Slack, Lundbom, Warren, and
Milbrandt.
3. The Examiner rejected claims 6 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Laklan, Slack, Warren, and Gazzola.

ISSUE
The Appellant contends the combined teachings of the references do
not teach a special wick cavity forming tool having a bore depth marking
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ledge as recited in independent claims 1 and 6 (App. Br. 7). The Examiner
found that in the Laklan reference, "the end of the ice-pick would represent
the marked position” as claimed (Ans. 4).
The issue before us is:
Has the Appellant shown the Examiner erred in finding that the ice-
pick of Laklan has a "marked position to indicate the depth of the bore for a
candle wick "?

FINDINGS OF FACT
We find that the following enumerated facts are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
1. Independent claims 1 and 6 include the limitation that the cavity
forming tool has a "marked position to indicate the depth of the
bore for a candle wick."
2. Laklan teaches a method of inserting a wick into a candle by
inserting a heated ice pick "through the candle" to form a wick-
hole "through the candle" and then threading the wick "through"
the wick hole as follows:
WICKS. To insert the wick, cut a length from your
prepared string or wicking, leaving it a little longer
than you seem to need. Heat an ice pick, and press
it gently but firmly through the candle, reheating the
pick in boiling water as often as necessary. After
you have made the wick-hole through the candle,
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thread the prepared wick through it, the simplest
method of inserting a candlewick (Laklan 27).
3. We cannot discern from the disclosure provided in Laklan where
the end of the ice pick will be located when the ice pick is passed
through the candle. As such, Laklan does not teach inserting the
ice pick through the candle to the end of the ice pick. Thus, the
end of Laklan’s ice pick will not serve as an indicator of the depth
of the bore for a candle wick.
4. Laklan also does not teach any markings on the ice pick (Laklan 6-
7 and 22-27).

PRINCIPLES OF LAW
The Examiner has the initial burden of showing a prima facie case of
obviousness, and the Appellant has the burden on appeal to the Board to
demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) (“[t]o reject claims in an application under section
103, an examiner must show an unrebutted prima facie case of
obviousness…. On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).

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ANALYSIS
Independent claims 1 and 6 include the limitation that the cavity
forming tool has a "marked position to indicate the depth of the bore for a
candle wick" (Fact 1). The Examiner found that Laklan teaches, "the end of
the ice-pick would represent the marked position as recited in the claim.".
Appellant contends that Laklan does not teach the step of selecting a wick
cavity forming tool having a marked position (App. Br. 7 and 10).
Laklan discloses a method of inserting a wick into a candle by passing a
heated ice pick through the candle (Fact 2). The end of Laklan’s ice pick
will not serve as an indicator of the depth of the bore for a candle wick (Fact
3). Laklan does not teach any marking on the ice pick (Fact 4).
Appellant is correct that Laklan does not teach the step of selecting a
wick cavity tool having a marked position to indicate the depth of the bore
for a candle wick. The Examiner has failed to show where any of the other
references relied upon teach this step. The Examiner also has failed to show
why one having ordinary skill in the art would have had a reason to modify
the teachings of the prior art to include this step. The Examiner did not
make a prima facie case of obviousness.
Claims 3 and 7 also include the step of selecting a tool having a marked
position to indicate the depth of the bore for a candle wick, by virtue of their
dependency on claims 1 and 6, respectively. Thus, the Examiner's prima
facie case of obviousness fails for these claims as well.

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CONCLUSION
We conclude Appellant has shown the Examiner erred in rejecting
claims 1, 3, 6, and 7 as unpatentable because Laklan does not teach the step
of selecting a wick cavity forming tool that includes a marked position to
indicate the depth of bore for a candle wick as required by the claims.

DECISION
We reverse the Examiner's rejection of claims 1, 3, 6, and 7.

REVERSED

vsh

WILLIAM M. HOBBY, III
157 E. NEW ENGLAND AVENUE, #375
WINTER PARK, FL 32789