Ex parte KASA-DJUKIC

Board of Patent Appeals and Interferences

Aug 11, 1998

08584097 (B.P.A.I. Aug. 11, 1998)

Application for patent filed January 11, 1996. 1
According to appellant, this application is a continuation of
Application 08/146,057, filed November 8, 1993.
1
Paper No. 19
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(2) is not binding precedent of the Board.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 VLADIMIR KASA-DJUKIC
______________
Appeal No. 97-3070
Application 08/584,0971
_______________
ON BRIEF
_______________
Before MEISTER, ABRAMS and NASE, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Vladimir Kasa-Djukic (the appellant) appeals from the
final rejection of claims 12, 15 and 17-28, the only claims
Appeal No. 97-3070
Application 08/584,097
2
remaining in the application.
We AFFIRM.
The appellant's invention pertains to an easel for
holding
a stretched canvas or other painting surfaces. Independent
claim 12 is further illustrative of the appealed subject
matter and reads as follows:
12. An easel for a stretched canvas or other painting
ground, comprising:
a support element defining a substantially vertical axis;
a holding element fitted onto the support element and
moveable with relation to the support element along the axis
of the support element;
electrically operable means for moving the holding
element along the axis of the support element;
means for fastening the painting ground attached to the
holding element, said fastening means being rotatable about an
axis disposed at an angle of between about 45E and about 90E
to the axis of the support element; and
means for rotating said fastening means that includes an
electric motor.
The references relied on by the examiner are:
Drachman 2,309,578 Jan. 26, 1943
Akers 2,434,827 Jan. 20, 1948
Markle 2,599,269 June 3, 1952
Tolegian 3,006,107 Oct. 31, 1961
Appeal No. 97-3070
Application 08/584,097
An English language translation provided by the Patent2
and Trademark Office is attached with this decision.
3
Vincent 3,926,398 Dec. 16, 1975
Johnsen 4,836,494 June 6, 1989
Hatzinger
(German Patenschrift) 924,477 Mar. 3, 19552
The claims on appeal stand rejected under 35 U.S.C. § 103
in the following manner:
(1) Claims 12, 17-22, 24, 25 and 28 as being unpatentable
over Vincent in view of Tolegian and Akers;
(2) Claim 15 as being unpatentable over Vincent in view
of Tolegian, Akers and Markle;
(3) Claim 23 as being unpatentable over Vincent in view
of Tolegian, Akers and Drachman;
(4) Claim 26 as being unpatentable over Vincent in view
of Tolegian, Akers and Johnsen; and
(5) Claim 27 as being unpatentable over Vincent in view
of Tolegian, Akers and the German publication.
The examiner's rejections are explained on pages 4-7 of
the answer. The arguments of the appellant and examiner in
support of their respective positions may be found on pages 4-
14 of the brief and pages 7-11 of the answer. As evidence of
Appeal No. 97-3070
Application 08/584,097
As to claims 23, 26 and 27, the appellant has stated3
with respect to each of these claims that the limitations
thereof are "not relied on to show the nonobvious nature of
the claimed invention" (see brief, pages 12 and 13).
4
nonobviousness, the appellant has relied on two declarations
by Close and a declaration by Ross.
OPINION
Initially we note that the appellant has not separately
argued the patentability of dependent claims 15 and 17-27. 3
Accordingly, these claims will stand or fall with parent claim
12. 37 CFR § 1.192(c)(7).
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner, the respective positions advanced
by the appellant in the brief and by the examiner in the
answer, and the evidence of nonobviousness supplied by the
appellant. As a consequence of this review, we will sustain
all of the above-noted rejections.
Appeal No. 97-3070
Application 08/584,097
5
In argument the appellant broadly contends that there is
no suggestion to combine the teachings of the references in
the manner proposed by the examiner. It is also the
appellant's contention that Akers (Rejection (1)) and Markle
(Rejection (2)) are directed to nonanalogous art.
We are unpersuaded by the appellant's arguments. While
the obviousness of an invention cannot be established by
combining the teachings of the prior art absent some teaching,
suggestion or incentive supporting the combination (see ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
USPQ 929, 933 (Fed. Cir. 1984)), this does not mean that the
cited references or prior must specifically suggest making the
combination as the appellant appears to believe (B.F. Goodrich
Co. V. Aircraft Braking Sys. 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 those of ordinary skill in
the art. In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991) and
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Application 08/584,097
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In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). Moreover, 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
In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA
1969)). Additionally, 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). With these authorities in
mind, we now turn to the specific rejections before us for
consideration.
Considering first Rejections (1), (3), (4) and (5),
Vincent discloses an easel "for supporting a canvas or other
blank on which a painting is to be made" (column 1, lines 7-
9), a supporting element 10 which can be considered to be
substantially vertical (see Fig. 2), a holding element (the
friction plate, of the "pair" of friction plates which forms
the swivel connection 32, which is fastened to the supporting
Appeal No. 97-3070
Application 08/584,097
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element by screws 34 - see column 2, lines 43-51) that is
"fitted" onto the support element and moveable along the axis
thereof, means (crossbar 30 and the "other" of the pair of
plates which form the swivel connection 32, as well as the
interface between the pair of plates) for fastening the canvas
or other blank to the holding element in such a manner that it
is rotatable (see column 2, lines 53-58). Vincent does not
disclose an electrical means for moving the holding element
along the axis of the holding element or an electric motor for
rotating the fastening means.
Tolegian teaches that, in order to overcome the
difficulty of a handicapped to adjust an artists' easel, an
electrically actuated means should be provided (see column 1,
lines 8-29). Tolegian's easel includes support elements 16
which define a vertical axis (see Fig. 2), holding elements
31, 32, electrically operable means for moving the holding
element along the axis of the support elements (motor 46 and
spindle 44 in the case of the embodiment of Fig. 4, and a rack
35 and motor 37 in the case of the embodiment of Fig. 1) and
means 33, 34 for fastening a canvas or painting surface.
Tolegian does not provide a rotatable adjustment but,
Appeal No. 97-3070
Application 08/584,097
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nevertheless, at the broadest level, fairly suggests that,
where adjustments to easels are made, such adjustments should
be actuated electrically for the purpose of allowing a
handicapped person to easily make them.
In view of the fact that the easel of Vincent provides
for both longitudinal and rotatable adjustments, the artisan
would have found it obvious as a matter of "common sense" (see
In re Bozek, supra) in light of the combined teachings of
Vincent and Tolegian to make both of Vincent's adjustments
electrically actuatable in order to achieve Tolegian's
expressly stated goal of allowing a handicapped person to
easily make adjustments. In this regard, the artisan would
have been well aware of various well-known rotatable mounting
structures which would readily lend themselves to electric
actuation. Indeed, Akers is evidence of such a well-known
structure (see elements 63, 66 and 68).
To the extent that it might be necessary to rely on the
teachings of Akers, we are also unpersuaded by the appellant's
contention that Akers is nonanalogous art. The test of
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Application 08/584,097
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whether
a reference is from a nonanalogous art is first, whether it is
within the field of the inventor's endeavor, and second, if it
is not, whether it is reasonably pertinent to the particular
problem with which the inventor was involved. In re Wood, 599
F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979). A reference
is reasonably pertinent if, even though it may be in a
different field of endeavor, it is one which because of the
matter with which it deals, logically would have commended
itself to an inventor's attention in considering his problem.
In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir.
1992).
It is true that Akers is not in the appellant's field of
endeavor. That is, Akers provides for the ease of adjustment
(see, e.g., column 7, lines 9-12) of a holder for a specific
article (i.e., an X-ray apparatus). Nevertheless, inasmuch as
both the appellant and Akers are concerned with providing
article holders that are easily adjustable, Akers is
reasonably pertinent to the appellant's problem of providing
for the ease of adjust-ment of an easel (which is likewise a
Appeal No. 97-3070
Application 08/584,097
10
holder for an article,
i.e., stretched canvas or other painting surface). This being
the case, the second prong of the test set forth in Wood is
satisfied and therefore Akers is analogous art.
As to claim 15, the appellant states that the limitations
of claim 15 are "not relied on to show the nonobvious nature
of the claimed invention" (brief, page 11), but then
inconsistently argues that Markle is nonanalogous art. In any
event, we are of the opinion that Markle (which is directed to
a holder for photographic apparatus) is analogous art under
the second prong of the test in Wood for essentially the same
reasons we have set forth above with respect to Akers. More
importantly, we see no need to resort to the teachings of
Markle for establishing the obviousness of the subject defined
by claim 15 since Tolegian (in the embodiment of Fig. 1)
clearly teaches a rack 36, a pinion or gear wheel 38 and a
motor 37 as an alternative mechanism for adjusting the easel
(see column 2, lines 52-56).
In view of the above, we are satisfied that the prior art
Appeal No. 97-3070
Application 08/584,097
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relied on by the examiner establishes a prima facie case of
obviousness with respect to the subject matter defined by
independent claims 12 and 28 and "argued" dependent claim 15.
Having arrived at this conclusion, we recognize that the
evidence of nonobviousness submitted by the appellant must be
considered en route to a determination of obviousness/
nonobviousness under 35 U.S.C. 103. See Stratoflex, Inc. v.
Aeroquip Corp., 713 F.2d 1530, 1538, 218 USPQ 871, 879 (Fed.
Cir. 1983). Accordingly, we consider anew the issue of
obviousness under 35 U.S.C. § 103, carefully evaluating
therewith the objective evidence of nonobviousness and
argument supplied by the appellant. See In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
As evidence of nonobviousness the appellant has relied on
two declarations by Close and a declaration by Ross. The
first declaration by Close (executed April 28, 1995; Paper No.
9) merely states that the easel described in the instant
application "makes possible the movement and positioning of
the canvas in any direction to the ideal position" and that
these unique features are "found in no other easel ever
Appeal No. 97-3070
Application 08/584,097
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produced." The second declaration by Close (executed December
18, 1995; Paper No. 13) further states that the declarant
works from a wheel chair and that the "Kasa-Djukic easel" may
be adjusted without disrupting work via a push button control
unit in such a manner that the "far corners of very large
canvases" are reachable. The declaration by Ross (executed
December 19, 1995; Paper No. 13)
states that the "Kasa-Djukic easel" is very easy to adjust and
allows an artist to reach the "far corners of very large
canvases." Thus, according to the declarant, there is no need
to call studio assistants in order to move a painting. The
declarant further states that "I will install a Kasa-Djukic
easel in my studio immediately."
It is apparently the appellant's position that these
declarations establish satisfaction of a long-felt need. Even
if it is assumed that the "Kasa-Djukic easel" is the easel
which is disclosed and claimed in the instant application, we
must point out that, in general, in order to establish long-
felt need evidence must be presented which demonstrates the
existence of a problem which was of concern in the industry
Appeal No. 97-3070
Application 08/584,097
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and has remained unsolved over a long period of time. See,
e.g., Vandenberg v. Dairy Equipment Co., 740 F.2d 1560, 1567,
224 USPQ 195, 199 (Fed. Cir. 1984). This can be accomplished,
for example, by the testimony of experts in the industry, or
publications or the like, which speak to the duration and
extent of the problem, and of the substantial effort and
resources which had been expended during that time in attempts
to solve the problem. Railroad Dynamics, Inc. v. Stuki Co.
579 F. Supp. 353, 218 USPQ 618, 628 (E.D. Pa. 1983), aff'd,
727 F.2d 1506, 220 USPQ 929 (Fed. Cir. 1984), cert. denied,
105 U.S. 220 (1984). Once the long-felt need has been
established, it must further be shown that the invention
satisfied that need. See, e.g., In re Cavanagh,
436 F.2d 491, 496, 168 USPQ 466, 471 (CCPA 1971). This can be
demonstrated, for example, by evidence establishing commercial
success and that the industry purchased the claimed invention
because it satisfied the long-felt need. See, e.g., W. L.
Gore
& Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1555, 220
USPQ 303, 315 (Fed. Cir. 1983). When viewed in this context,
Appeal No. 97-3070
Application 08/584,097
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we are satisfied that the above-noted declarations fall far
short of establishing long-felt need.
When all the evidence and argument are considered anew it
is our conclusion that, on balance, the evidence and argument
presented by the appellant, taken as a whole, fails to out-
weigh he evidence of obviousness established by the prior art.
See, Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768, 9
USPQ2d 1417, 1426 (Fed. Cir. 1988) and In re Beattie, 974 F.2d
1309, 1313,
24 USPQ2d 1040, 1043 (Fed. Cir. 1992).
All of the examiner's rejections under 35 U.S.C. § 103
are affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)
AFFIRMED
Appeal No. 97-3070
Application 08/584,097
15
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
NEAL E. ABRAMS ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )

Appeal No. 97-3070
Application 08/584,097
16
Connolly & Hutz
P. O. Box 2207
1220 Market Street
Wilmington, DE 19899
Appeal No. 97-3070
Application 08/584,097
17
JMM/cam