Ex parte Kardy

Board of Patent Appeals and Interferences

Sep 26, 2001

09285787 (B.P.A.I. Sep. 26, 2001)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ELLEN KARDY
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Appeal No. 2001-1768
Application No. 09/285,787
____________
ON BRIEF
____________
Before COHEN, ABRAMS, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-8, 10, 11
and 14, which are all of the claims pending in this application.
We REVERSE.
Appeal No. 2001-1768 Page 2
Application No. 09/285,787
BACKGROUND
The appellant's invention relates to a storage cabinet. An understanding of the invention
can be derived from a reading of exemplary claim 1, which appears in the appendix to the
Brief.
The prior art references of record relied upon by the examiner in rejecting the appealed
claims are:
Pichowicz 3,390,702 Jan. 6, 1976
LeSage 4,324,446 Apr. 13, 1982
Ellingsworth et al. (Ellingsworth) 5,242,048 Sep. 7, 1993
Ball (Canadian Patent) 494,936 Jul. 28, 1953
Claims 1-4, 7, 8 and 10 stand rejected under 35 U.S.C. § 103 as being unpatentable
over LeSage in view of Ellingsworth and Ball.
Claims 5, 6, 11 and 14 stand rejected under 35 U.S.C. § 103 as being unpatentable
over LeSage in view of Ellingsworth, Ball and Pichowicz.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the Answer (Paper
No. 17) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 16) and Reply Brief (Paper No. 18) for the appellant's arguments thereagainst.
Appeal No. 2001-1768 Page 3
Application No. 09/285,787
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. As a consequence of
our review, we make the determinations which follow.
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 F.2d 1044, 1052, 5 USPQ2d
1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
It is the examiner’s view that LeSage discloses all of the subject matter set forth in
independent claim 1 except for the plurality of transverse members arranged in the frames
and having supporting means for supporting stored items, and the flexible sheet
Appeal No. 2001-1768 Page 4
Application No. 09/285,787
See, for example, Webster’s New Collegiate Dictionary, 1973, page 439. 1
separating means. However, it is the examiner’s opinion that it would have been obvious
to one of ordinary skill in the art to modify the LeSage cabinet by providing in each frame a
plurality of transverse members with supporting means for holding the stored items, in view
of the teachings of Ellingsworth, and to provide a flexible separation means in view of the
showing of Ball. The essence of the appellant’s arguments is that there would have been
no suggestion to combine the teachings of the references in the manner proposed by the
examiner and, even if such were proper, the result would not be the claimed structure.
Claim 1 requires that the separation means be “a flexible sheet for allowing the stored
items in one of the . . . frames to intrude into the other” (emphasis added). The common
definition of “flexible” is bendable, especially repeatedly. It is in this context in which the1
appellant has disclosed the sheet in the specification and set it out in the claims and, in
fact, has amplified it by explaining that it must be capable of functioning in such a manner
as to allow the stored items in one frame to intrude into the space of the other.
Nevertheless, the examiner has taken the position that the PLEXIGLAS door panel
disclosed by Ball is flexible (Answer, page 5) because this material is used as walls in
hockey arenas and therefore “obviously must have some flexibility/give” (Answer, page 7).
The examiner also notes that “the limitation directed to the intrusion of items . . . appears in
an intended use statement” and therefore has been given no weight (Answer, page 5).
Appeal No. 2001-1768 Page 5
Application No. 09/285,787
The examiner’s reasoning is untenable on its face. There simply is no evidence
supporting the examiner’s opinion that PLEXIGLAS is “flexible” and, from our perspective,
the analogy to the walls of a hockey arena undermines that opinion, rather than supporting
it. Moreover, as is pointed out by the appellant in the Reply Brief, it is a structural
requirement of the flexible sheet that it be flexible enough to allow the items in one frame to
intrude into the space of the other frame. Therefore, even if one were to accept at face
value the examiner’s statement that PLEXIGLAS is flexible enough to be used as the wall
in a hockey arena, it still would not meet the requirements of the claim that it allow the
stored items in one frame to intrude into the other. Moreover, as the appellant also has
argued in the Briefs, the examiner has provided no reason why one of ordinary skill in the
art would have been motivated to modify the LeSage cabinet in such a manner as to meet
the terms of the claim, that is, to replace the transparent panels (46) of LeSage with their
soft resilient material (84) for holding the jewelry articles separated from one another with
the claimed flexible sheet.
It is our conclusion that the combined teachings of LeSage, Ellingsworth and Ball fail to
establish a prima facie case of obviousness with regard to the subject matter recited in
claim 1, and we therefore will not sustain the rejection of claim 1 or, it follows, of dependent
claims 2-4, 7, 8 and 10, which stand rejected on the same basis.
Appeal No. 2001-1768 Page 6
Application No. 09/285,787
Dependent claims 5, 6, 11 and 14 are rejected on the basis of the references applied
against claim 1 et al. taken further in view of Pichowicz, which is cited for its teaching of
providing a decorative cover over a wall cabinet member. Be that as it may, this additional
reference does not cure the problems pointed out above with regard to the rejection of
claim 1. This being the case, we also will not sustain the rejection of claims 5, 6, 11 and
14.
Appeal No. 2001-1768 Page 7
Application No. 09/285,787
SUMMARY
Neither rejection is sustained.
The decision of the examiner is reversed.

REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
NA/RWK
Appeal No. 2001-1768 Page 8
Application No. 09/285,787
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