Ex parte Keenan

Board of Patent Appeals and Interferences

May 31, 2000

08526942 (B.P.A.I. May. 31, 2000)

The opinion in support of the decision being entered today was not written for
publication in a law journal and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANDREW J. KEENAN
____________
Appeal No. 1998-1716
Application No. 08/526,942
____________
ON BRIEF
____________
Before CALVERT, NASE, and GONZALES, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 16, 17 and 21-26, as amended subsequent to the
final rejection. These claims constitute all of the claims
pending in this application.
We REVERSE.
BACKGROUND
Appeal No. 1998-1716 Page 2
Application No. 08/526,942
A minor error in claim 26 is set forth on page 3 of the1
examiner's answer.
The appellant's invention relates to a noise abatement
wall (specification, p. 1). A substantially correct copy of
the claims under appeal is set forth in the appendix to the
appellant's brief. 1
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Atterbury 828,833 Aug.
14, 1906
Wolfe 1,389,803 Sept. 6,
1921
Ham 1,598,131 Aug. 31,
1926
Stout 3,307,822 March 7,
1967
Williams 3,584,088 June 8,
1971
Vaughan 3,743,232 July 3,
1973
Scholz et al. 3,954,377 May 4,
1976
(Scholz)
Myers et al. 5,202,132 Apr. 13,
1993
(Myers)
Bryant 5,246,640 Sep. 21,
1993
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Application No. 08/526,942
Claims 16, 17 and 21-26 stand rejected under 35 U.S.C. §
103 as being unpatentable over Myers in view of any one of
Scholz, Stout, Williams, Vaughan, Wolfe, Ham, Bryant or
Atterbury, or vice versa, any one of Scholz, Stout, Williams,
Vaughan, Wolfe, Ham, Bryant or Atterbury, each in view of
Myers.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 15,
mailed December 11, 1997) for the examiner's complete
reasoning in support of the rejection, and to the brief (Paper
No. 13, filed September 4, 1997) and reply brief (Paper No.
17, filed February 9, 1998) for the appellant's arguments
thereagainst.
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
Appeal No. 1998-1716 Page 4
Application No. 08/526,942
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 16, 17 and 21-
26 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the
reference teachings would appear to be sufficient for one of
ordinary skill
Appeal No. 1998-1716 Page 5
Application No. 08/526,942
in the relevant art having the references before him to make
the proposed combination or other modification. See In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported by evidence, as shown by
some objective teaching in the prior art or by knowledge
generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant
teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). Rejections based on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Our reviewing court has
repeatedly cautioned against employing hindsight by using the
appellant's disclosure as a blueprint to reconstruct the
Appeal No. 1998-1716 Page 6
Application No. 08/526,942
claimed invention from the isolated teachings of the prior
art. See, e.g., Grain Processing Corp. v. American
Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792
(Fed. Cir. 1988).
With this as background, we analyze the prior art applied
by the examiner in the rejection of the claims on appeal.
Myers discloses production line equipment which is
utilized in producing many large concrete panels, in an
initial horizontal position with these panels preferably being
later installed vertically with other like panels to form a
sound barrier alongside a vehicle way. As shown in Figure 3-
6, the preferred concrete panel 42 has integral pilasters 126,
128 formed at each side of an integral central planar body
130. The community view side 160 of the concrete panel 42 is
illustrated in Figure 3. The vehicle way view side 162 of the
concrete panel 42 is shown in Figure 4. A tongue edge 164 and
a groove edge 166 of each concrete panel 42 is observable in
Figures 5 and 6. As shown in
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Application No. 08/526,942
Figures 11 and 15, the poured concrete panel 42 includes wire
mesh reinforcing 132, reinforcing bars 134 and rods 138, and
tension bars 146.
Scholz, Stout, Williams, Vaughan, Wolfe, Ham, Bryant and
Atterbury each teach a method of making a wall section by
vertically casting the wall section.
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Application No. 08/526,942
The examiner ascertained (answer, p. 5) that Myers taught
the claimed invention "except for it being formed in a
vertical mold assembly." The examiner then determined
(answer, p. 5) that it would have been obvious at the time the
invention was made to a person having ordinary skill in the
art to form the wall section (i.e., panel 42) of Myers "by
casting it within a vertical mold assembly in the shape of the
wall section" as taught by any one of the secondary references
(i.e., Scholz, Stout, Williams, Vaughan, Wolfe, Ham, Bryant or
Atterbury), or to use the process of each of the secondary
references to shape the wall section of Myers.
While we agree with the examiner that it would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to form the wall section (i.e.,
panel 42) of Myers "by casting it within a vertical mold
assembly in the shape of the wall section" as taught by any
one of the secondary references, the combined teachings of the
applied prior art are not suggestive of the claimed invention.
In that regard, it is our view that secondary references would
have suggested vertically casting Myers' wall section in an
Appeal No. 1998-1716 Page 9
Application No. 08/526,942
orientation wherein the pilasters 126, 128 which are formed at
each side of the planar body 130 are located at the sides of
the vertical mold assembly. Absent the use of impermissible
hindsight, the secondary references would not have suggested
vertically casting Myers' wall section in an orientation
wherein the pilasters 126, 128 are located at the top and
bottom of the vertical mold assembly. All the claims under
appeal require the vertical mold assembly to have a lower
first section and an enlarged top section. It is our
determination that the claimed enlarged top section of the
vertical mold assembly is not suggested by the applied prior
art. Accordingly, the decision of the examiner to reject
claims 16, 17 and 21-26 under 35 U.S.C. § 103 is reversed.
`
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Application No. 08/526,942
CONCLUSION
To summarize, the decision of the examiner to reject
claims 16, 17 and 21-26 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
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Application No. 08/526,942
MATHEW R. P. PERRONE, JR.
210 SOUTH MAIN STREET
ALGONQUIN, IL 60102
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Application No. 08/526,942
JVN/dl