Ex parte Keeler

Board of Patent Appeals and Interferences

May 18, 1999

08575125 (B.P.A.I. May. 18, 1999)

Application for patent filed December 19, 1995.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL E. KEELER
__________
Appeal No. 98-1971
Application 08/575,1251
___________
ON BRIEF
___________
Before CALVERT, FRANKFORT and GONZALES, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 24, all of the claims pending in
the application.
Appellant's invention is directed to a dolly device for
lifting and transporting an object, such as a snowmobile.
Appeal No. 98-1971
Application 08/575,125
2
Claims 1, 10, 19 and 21 are representative of the subject
matter on appeal and copies of those claims appear in the
Appendix of appellant's brief.
The prior art references relied upon by the examiner in
rejecting the appealed claims are:
Garelick 3,667,728 Jun. 6, 1972
Moisan 4,978,103 Dec. 18, 1990
Imbeault et al. (Imbeault) 5,299,659 Apr. 5, 1994
Vasilev 1,710,419 Feb. 7, 1992
(Russian Patent)
Claims 1, 2, 5 through 7, 10 through 15 and 19 through 24
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Garelick in view of Moisan.
Claims 4, 8, 9, 16 and 17 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Garelick in view of Moisan as
applied above and further in view of Imbeault.
Claims 3 and 18 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Garelick in view of Moisan as applied
above and further in view of Vasilev.
Appeal No. 98-1971
Application 08/575,125
3
Reference is made to the examiner’s answer (Paper No. 13,
mailed January 7, 1998) for the examiner's reasoning in
support of the above-noted rejections and to the appeal brief
(Paper No. 12, filed November 17, 1997) for appellant's
arguments thereagainst.
OPINION
Our evaluation of the obviousness issues raised in this
appeal has included a careful assessment of appellant's
specification and claims, the applied prior art references,
and the respective positions advanced by appellant and the
examiner. As a consequence of our review, we have come to the
conclusion, for the reasons which follow, that the examiner's
rejections of the appealed claims under 35 U.S.C. § 103 are
not well founded and, therefore, will not be sustained.
However, we have also entered a new ground of rejection
against certain of the appealed claims pursuant to our
authority under 37 CFR § 1.196(b).
Turning first to the examiner's rejection of claims 1, 2,
5 through 7, 10 through 15 and 19 through 24 under 35 U.S.C. §
Appeal No. 98-1971
Application 08/575,125
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103 as being unpatentable over Garelick in view of Moisan, we
note that the examiner has concluded that it would have been
obvious to one of ordinary skill in the art to modify the
apparatus of Garelick so as to include a first member, as
claimed, in view of the teachings in Moisan (i.e., elements 59
and 61-64 of Moisan) as such modification would have merely
involved the usage of an old and well known arrangement of
mounting the wheels. After reviewing the teachings of
Garelick and Moisan from the perspective of one of ordinary
skill in the art, we are in full agreement with appellant that
the examiner has improperly relied upon the disclosure of the
present application and appellant's own teachings in
attempting to import the member (59) and wheels from Moisan
into the device of Garelick and in concluding that one of
ordinary skill in the art would have found it obvious to
modify the apparatus of Garelick in the manner urged above.
Moreover, we share appellant’s view that if the apparatus
of Garelick were modified in the manner posited by the
examiner such modification would destroy the apparatus of
Garelick for its intended purpose and preclude its functioning
Appeal No. 98-1971
Application 08/575,125
5
in the manner set forth in the Garelick patent. Like
appellant, we consider that the absence of any connecting rod
structure between the wheels of Garelick’s apparatus is
essential in order for the dolly of Garelick to be properly
positioned around the snowmobile therein and to function in
the manner envisioned by the patentee. Simply stated, we see
nothing in the disclosure of Garelick and Moisan which would
have fairly led a worker of ordinary skill in the art to the
particular modifications of Garelick urged by the examiner.
As is well settled, a rejection based on §103 must rest
on a factual basis, with the facts being interpreted without
hindsight reconstruction of the invention from the prior art.
In making this evaluation, the examiner has the initial duty
of supplying the factual basis for the rejection he advances.
He may not, because he doubts that the invention is
patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual
basis. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert denied, 389 U.S. 1057 (1968).
Appeal No. 98-1971
Application 08/575,125
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Based on the above determinations, we are compelled to
reverse the examiner's rejection of claims 1, 2, 5 through 7,
10 through 15 and 19 through 24 under 35 U.S.C. § 103 as being
unpatentable over Garelick in view of Moisan.
We have also reviewed the patents to Imbeault and Vasilev
applied by the examiner in the other § 103 rejections on
appeal. However, we find nothing in these references or in the
examiner’s additional comments regarding such references which
would supply that which we have noted above to be lacking in
the basic combination of Garelick and Moisan. Accordingly,
the examiner's rejections of claims 3, 4, 8, 9 and 16 through
18 on appeal under 35 U.S.C. § 103 will likewise not be
sustained.
As should be apparent from the foregoing, the decision of
the examiner rejecting claims 1 through 24 of the present
application is reversed.
Pursuant to 37 CFR § 1.196(b), we enter the following new
ground of rejection against claims 21 through 24 on appeal.
Appeal No. 98-1971
Application 08/575,125
7
Claims 21 through 24 are rejected under 35 U.S.C. §
102(b) as being clearly anticipated by Garelick. In this
regard, we observe that Garelick discloses (in the language of
claim 21 on appeal) a device for lifting and transporting an
object, wherein said device comprises a first member (11,
11a); a second member (D) removably connectable to said first
member; a handle assembly or lever means (B) operatively
connectable to said first and second members for rotating said
members between a first position where said members are in a
bottom position beneath a first portion of the object to be
lifted and transported, and a second position where said
members are in a raised position having said first portion of
said object resting on a top surface of said second member;
and means (C) in the form of a bolt and chain assembly for
maintaining a second portion of said object above the ground
so that said object is substantially balanced on said second
member to facilitate transporting said object. With respect
to claims 22 and 23 on appeal, the device of Garelick
additionally includes one or more wheels (12, 12a) connected
to said first member and an arrangement wherein said lever
means or handle assembly (B) includes an elongated third
Appeal No. 98-1971
Application 08/575,125
8
member (2 or 3) having a first end which is removably engaged
with said first member. As for claim 24 on appeal, Garelick’s
maintaining means (C) includes a movable member (6, 7) which
selectively engages along a predetermined portion of said
object and with a second end of said third member (2 or 3) as
can be seen in Figure 3 of the patent, and wherein said
predetermined portion is proximal said second portion of said
object and distal said first portion of said object.
As is apparent from the above determinations, the
examiner’s decision rejecting claims 1 through 24 under 35
U.S.C. § 103 has been reversed and a new rejection of claims
21 through 24 on appeal has been entered by this panel of the
Board pursuant to
37 CFR § 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
Appeal No. 98-1971
Application 08/575,125
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§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 98-1971
Application 08/575,125
10- -
REVERSED, 37 CFR § 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge )
) APPEALS AND
)
) INTERFERENCES
)
JOHN F. GONZALES )
Administrative Patent Judge )
CEF/kis
WEINER, CARRIER & BURT, P.C.
24101 Novi Road
Suite 100
Novi, MI 48375-3248
Appeal No. 98-1971
Application 08/575,125
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