Ex parte Kawanabe

Board of Patent Appeals and Interferences

Jan 30, 2001

08518509 (B.P.A.I. Jan. 30, 2001)

Three such amendments filed subsequent to the final1
rejection have been submitted. The amendment filed October
10, 1997 (Paper No. 12) has not been entered. The amendment
filed January 30, 1998 (Paper No. 17½) canceling finally
rejected claim 1 and amending claims 3 and 5 has been entered.
The amendment filed April 10, 1998 (Paper No. 21) amending
claim 3 has also been entered.
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publication and is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte MASATOSHI KAWANABE
_____________
Appeal No. 1998-1937
Application No. 08/518,509
______________
HEARD: JANUARY 18, 2001
_______________
Before CALVERT, STAAB, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
refusal to allow claims 3 and 5 as amended by amendments filed
subsequent to the final rejection. Claims 2, 4, and 6, the1
only other claims remaining in the application, have been
Appeal No. 1998-1937
Application No. 08/518,509
In the copy of claim 3 found in the appendix to2
appellant’s main brief, line 7, “said one of the corresponding
stays” should read --said corresponding one of the stays--.
2
withdrawn from
further consideration under 37 CFR § 1.142(b) as not being
readable on the elected species.
Appellant’s invention pertains to “an overhead door
suspended from the top of an opening of a cabinet or the like
and capable of being lifted until it is placed on the roof
wall of the cabinet to keep the door open” (specification,
page 1). A further understanding of the invention can be
derived from a reading of exemplary claim 3, a substantially
correct copy of which appears in an appendix to appellant’s
main brief.2
The references relied upon by the examiner as evidence of
obviousness are:
Holmes 2,388,654 Nov. 6,
1945
Ferris 2,390,086 Dec. 4,
1945
Carson et al. (Carson) 5,524,979 Jun. 11,
1996
Appeal No. 1998-1937
Application No. 08/518,509
The rejection of claim 3 under 35 U.S.C. § 112, second3
paragraph, made in the examiner’s answer, has been withdrawn
in light of the amendment filed April 10, 1998 (Paper No. 21).
See the advisory letter mailed July 24, 2000 (Paper No. 23).
3
(filed Jun. 9,
1994)
The following rejections under 35 U.S.C. § 103 are before
us
for review:3
(A) claim 3, unpatentable over Carson in view of Holmes;
Appeal No. 1998-1937
Application No. 08/518,509
4
(B) claim 5, unpatentable over Carson in view of Holmes
and
further in view of Ferris.
Reference is made to appellant’s main and reply briefs
(Paper Nos. 17 and 20), and to the final rejection and
examiner’s answer (Paper Nos. 10 and 18) for the respective
positions of appellant and the examiner regarding the merits
of these rejections.
Discussion
Carson, the examiner’s primary reference, discloses an
overhead storage cabinet comprising a door mechanism in which
combination spring loaded hinge and slide mechanisms 26 mount
the cabinet door to the cabinet such that the door may be
moved to an open position (see Figure 4) over the cabinet top
surface. More specifically, each hinge and slide mechanism
includes a first track member 34 secured to a hinge plate 32
and a second track member 38 secured in a recess (not
numbered) in the back of the door. A plurality of ball
bearings 40 are carried on bearing races 36, which locate the
balls between the track members to permit sliding movement of
the track members relative to each other. See column 3, lines
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Application No. 08/518,509
5
6-26. Each hinge and slide mechanism also includes springs 44
to facilitate the opening of the door. Carson states that
springs 44 “may be attached between door 12
and cabinet 10, or door 12 and first plate 30, to perform the
necessary door assist function” (column 3, lines 39-41).
Carson’s door mechanism further includes lid stays 50,
respectively mounted to an inner lateral wall surface of the
cabinet and the door, to slow the movement of the door. To
this end, each lid stay includes an arm 56, a base end of
which is secured to a viscous damper mechanism (see,
generally, column 3, lines 51-64), and an extended end that is
pivotally connected to the door.
Given the above, it is apparent that Carson fails to meet
the requirement of claim 3 calling for “a pair of stay holding
tension springs, each spring being connected between a point
upwardly and forwardly displaced from the base end of a stay
on a corresponding one of the inner lateral wall surfaces of
the cabinet and a point in a middle portion of the stay.” The
examiner’s reliance on Holmes to cure this deficiency is not
well founded.
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Application No. 08/518,509
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Holmes relates to “overhead doors and more particularly
to the type of door which is substantially rigid and in closed
position is substantially vertical and which moves to [an]
overhead substantially horizontal position when open” (column
1, lines 1-5). As explained in column 1, counterbalance
springs are
typically used in such doors to facilitate the opening and
closing of the door. Of particular interest to Holmes is the
provision on a counterbalancing arrangement that does not
involve the movement of the counterbalance springs through an
overcenter position. In Holmes, overhead door 1 is guided for
movement relative to door frame by levers 6 and overhead
tracks 4. More particularly, outer ends 8 of levers 6 are
pivotally mounted to the lower ends of the door by brackets 9,
while inner ends of levers 6 are pivotally mounted to brackets
5 at locations 7 slightly inboard of the levers’ ends. The
inner ends of levers 6 are also provided with compensating
bars 12, as described at column 2, lines 11-21. The Holmes
device also includes counterbalance springs 11 having upper
ends connected to the door frame by brackets 10 and lower ends
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connected via links 25 to the compensating bars 12 at
locations 26. Compensating bars 12 carry adjustable stop
bolts 15 that engage the links 25 when the door is in the
closed position, as shown in Figure 3. The adjustable stop
bolts ensure that “the point of connection of the springs 11
with the compensating bars 12 is maintained at all times
inside of the pivot 7 so that it is impossible for the point
of connection of the spring 11 during movement of the door to
pass over the center provided by the pivot 7” (column 2, lines
31-36).
In proposing to combine Carson and Holmes to reject claim
3, the examiner finds that Holmes “has a door, stays, and
functions similar to Carson” (final rejection, page 3), and
concludes that it would have been obvious
to have provided [in Carson] tension springs
positioned between an upwardly and forwardly
displaced location from a base ends [sic] of the
stays and middle positions on the stays because
doing so would have provided the advantage of urging
the door toward the open position to provide easy
lifting of the door when opening. [Final rejection,
page 4.]
Initially, we note that the examiner has not specified
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8
what element or elements of Holmes correspond to Carson’s lid
stays 56. Presumably, the examiner equates the combination of
levers 6 and compensating bars 12 of Holmes to Carson’s stays
56, a proposition which we find to be, at best, strained. In
any event, we find nothing in Holmes that corresponds to
Carson’s viscous dampers 50. Further, we find nothing in
Holmes that corresponds to Carson’s combination spring loaded
hinge and slide mechanisms 26. In addition, in Holmes the
door is stored within the compartment in the open condition
rather than on top of the compartment as in Carson. Also,
there is nothing in Carson that reasonably corresponds to the
compensating bar 12 of Holmes, nor is there any apparent need
in Carson for such compensating bars in that the Carson device
relates to a relatively light door for
an overhead cabinet whereas the Holmes device relates to a
relatively heavy door for a garage or the like (column 2,
lines 2-7). For these reasons, we find the examiner’s
threshold determination that Holmes “functions similar to
Carson” applies only when these references are viewed in the
very general sense that both relate to an overhead door
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Application No. 08/518,509
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closure.
Concerning the examiner’s position that it would have
been obvious to have “provided” tension springs in Carson to
afford easy lifting of the door when opening, it is not clear
whether the examiner proposes to add counterbalance springs in
Carson to supplement the springs 44 of Carson’s hinge
mechanisms 26, or whether the examiner proposes to replace
springs 44 of Carson with counterbalance springs like those of
Holmes. In either case, we do not view the combined teachings
of the references as suggesting the incorporation of
counterbalance springs in Carson between the lid stays and the
inner lateral wall surfaces of the cabinet. In the first
place, given that Carson’s invention is directed to a
relatively lightweight application of an overhead door as
compared to that of Holmes, there is no apparent need for
a complex counterbalance arrangement like that of Holmes in
Carson. Further, assuming that the artisan would have been
motivated to incorporate the counterbalance teachings of
Holmes
in Carson, we consider that such incorporation would involve
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10
the addition of not only the tension springs of Holmes in
Carson, but
also the connecting link 25 and compensating bars 12, which,
in our view, would not result in the subject matter of claim 3
since the springs would be connected to the compensating bars
12 via connecting links 25 rather than to the middle portions
of the stays.
Where, as here, the prior art references require a
selective combination of reference teachings to render obvious
a claimed invention, there must be some reason for the
combination other than hindsight gleaned from the invention
disclosure, Interconnect Planning Corp. v. Feil, 774 F.2d
1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985). In the fact
situation before us, we are unable to agree with the examiner
that one of ordinary skill in the art would have been
motivated by the teachings of Holmes to incorporate the
counterbalance arrangement thereof into Carson in a manner
that would have resulted in the subject matter
of claim 3. We therefore shall not sustain the standing § 103
rejection of claim 3 as being unpatentable over Carson in view
of
Holmes.
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As to the standing § 103 rejection of claim 5, the
tertiary Ferris reference additionally applied in this
rejection does not render obvious what we have found to be
lacking in the combined teachings of Carson and Holmes.
Accordingly, we also shall not sustain the examiner’s
rejection of claim 5.
The decision of the examiner is reversed.
REVERSED
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS:hh
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JACOBSON, PRICE, HOLMAN & STERN
400 7TH STREET, N.W.
WASHINGTON, D.C. 20004