Ex parte Keller et al.

Board of Patent Appeals and Interferences

Jan 4, 2000

08771018 (B.P.A.I. Jan. 4, 2000)

Application for patent filed December 20, 1996. 1
The appellants cancellation of claims 4 and 12 was set2
forth in the amendment filed October 14, 1997 (Paper No. 4).
We note that this cancellation of claims 4 and 12 has not been
(continued...)
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for publication in a law journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM KELLER and CHARLES BERGERON
____________
Appeal No. 1999-2368
Application No. 08/771,0181
____________
ON BRIEF
____________
Before FRANKFORT, NASE, and CRAWFORD, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 3 and 5 to 9. Claims 2, 10, 11 and 13
to 21 have been allowed. Claims 4 and 12 have been canceled.2
Appeal No. 1999-2368
Application No. 08/771,018
(...continued)2
clerically entered.
We REVERSE AND REMAND.
Appeal No. 1999-2368 Page 3
Application No. 08/771,018
BACKGROUND
The appellants' invention relates to a hidden
photographic storage and display device. An understanding of
the invention can be derived from a reading of exemplary claim
1, a copy of which appears in the opinion section below.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Colbow, Jr. 1,509,285 Sep. 23,
1924
(Colbow)
Clark 2,086,472 July 6,
1937
Spertus 2,649,799 Aug. 25,
1953
Donle 3,079,771 March 5,
1963
Newman 3,286,382 Nov. 22,
1966
Cornelius 3,589,049 June
29, 1971
Yang 4,794,713 Jan.
3, 1989
Curtis 5,368,378 Nov. 29,
1994
McClelland 1,054,666 May 15,
1979
(Canada)
Appeal No. 1999-2368 Page 4
Application No. 08/771,018
Claims 1, 3 and 5 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Clark in view of McClelland.
Claims 1, 3, 5 and 6 stand rejected under 35 U.S.C. § 103
as being unpatentable over Yang in view of Spertus, Donle and
Cornelius.
Claims 6 to 8 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Clark in view of McClelland as applied
to claim 1 above, and further in view of Spertus and
Cornelius.
Claim 9 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Clark in view of Colbow.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 8, mailed May 20, 1998) and the answer (Paper No. 12,
mailed April 12, 1999) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 11,
Appeal No. 1999-2368 Page 5
Application No. 08/771,018
filed January 11, 1999) for the appellants' arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
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 1 and 3 to 9
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
Appeal No. 1999-2368 Page 6
Application No. 08/771,018
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art 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) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
Claim 1 reads as follows:
A hidden photographic storage and display device
comprising:
a plurality of photographic storage panels, each of
said panels having a plurality of photographic insert
sleeve members disposed thereon, each of said
photographic sleeve members capable of storing at least
one photograph;
means for housing said photographic storage panels,
said means for housing including a cover member, said
means for housing concealing said plurality of
photographic storage panels and any photographs disposed
within an associated photographic insert sleeve member
when said cover member is in a closed position, said
means for housing attached to an outer surface of a wall
member;
said cover member having an outer appearance of a
decorative element;
wherein said device providing an outer appearance of
a decorative element as well as providing a hidden
storage area for the plurality of photographs when said
cover member is in a closed position.
Appeal No. 1999-2368 Page 7
Application No. 08/771,018
The rejections utilizing Clark as the primary reference
We will not sustain the following rejections under 35
U.S.C. § 103: (1) the rejection of claims 1, 3 and 5 as being
unpatentable over Clark in view of McClelland; (2) the
rejection of claims 6 to 8 as being unpatentable over Clark in
view of McClelland as applied to claim 1 above, and further in
view of Spertus and Cornelius; and (3) the rejection of claim
9 as being unpatentable over Clark in view of Colbow.
All of the above-noted rejections utilizing Clark as the
primary reference are based on the examiner's determination
(final rejection, p. 4) that the only difference between Clark
and claim 1 was that Clark "does not teach that the housing
means is attached to an outer surface of a wall member." The
appellants have contested this determination of the examiner.
Specifically, the appellants argue (brief, p. 5) that "the
spring clips 33 of Clark are not the same or equivalent of
Applicant's photographic insert sleeve members."
We find ourselves in agreement with the appellants'
position in this matter. In that regard, it is clear to us
Appeal No. 1999-2368 Page 8
Application No. 08/771,018
that the spring clips 33 are not readable on the claimed
"plurality of photographic insert sleeve members" capable of
storing at least one photograph disposed on a plurality of
photographic storage panels as recited in claim 1.
Additionally, it is our view that this limitation is not
taught or suggested by any of the applied prior art.
Furthermore, we agree with the appellants' argument
(brief, p. 5) that there is no teaching or suggestion for
modifying Clark by McClelland so that Clark's housing means is
attached to an outer surface of a wall member. In that
regard, we note that McClelland fails to teach or suggest
attaching his housing means to an outer surface of a wall
member (i.e., hung on the wall as in the first embodiment of
the appellants' invention (see Figures 1-3), not disposed
within an opening in the wall as in the second embodiment of
the appellants' invention (see Figure 4)) since in our view
McClelland only teaches and suggests attaching his housing
means to a wall by disposing the housing means within an
opening in the wall. Moreover, there is no apparent
motivation, absent the use of impermissible hindsight, for one
Appeal No. 1999-2368 Page 9
Application No. 08/771,018
skilled in the art to have mounted the filing cabinet of Clark
to an outer surface of a wall member.
The rejection utilizing Yang as the primary reference
We will not sustain the rejection of claims 1, 3, 5 and 6
under 35 U.S.C. § 103 as being unpatentable over Yang in view
of Spertus, Donle and Cornelius.
This rejection utilizing Yang as the primary reference is
based on the examiner's determination (final rejection, p. 4)
that the only differences between Yang and claim 1 were that
Yang "does not teach a plurality of photographic insert sleeve
members disposed on the panels and that the device is attached
to a wall." The appellants have contested this determination
of the examiner. Specifically, the appellants argue (brief,
p. 7) that "Yang fails to conceal the picture storage area and
displays the top picture being stored."
We find ourselves in agreement with the appellants'
position in this matter. In that regard, it is clear to us
that Yang's leaves 2 (including the top leave) would be
Appeal No. 1999-2368 Page 10
Application No. 08/771,018
considered to be the recited "plurality of photographic
storage panels." Thus, Yang's cover 1 including front wall 11
with window 111 and rear wall 12 is not readable on the
claimed "means for housing said photographic storage panels,
said means for housing including a cover member, said means
for housing concealing said plurality of photographic storage
panels and any photographs disposed within an associated
photographic insert sleeve member when said cover member is in
a closed position," since the window 111 permits the pictures
to be seen when the front wall 11 of the cover 1 is closed
(see column 1, lines 54-60 of Yang). Accordingly, the
examiner has failed to establish the obviousness of the
claimed invention.
Furthermore, we note that the claimed "plurality of
photographic insert sleeve members" capable of storing at
least one photograph disposed on a plurality of photographic
storage panels as recited in claim 1 is not suggested by any
of the applied prior art.
REMAND
Appeal No. 1999-2368 Page 11
Application No. 08/771,018
We remand this application to the examiner for further
consideration of the patentability of the appealed claims
under
35 U.S.C. § 103. With regard to claim 1, the examiner should
assess available evidence in the photographic storage art to
determine if it is known in that art to store photographs in a
plurality of photographic storage panels wherein each of the
panels has disposed thereon a plurality of photographic insert
sleeve members each capable of storing at least one
photograph. If this item is known in the photographic storage
art, the examiner should cite that evidence (e.g., prior art)
and then consider whether or not such evidence can be combined
with the above-noted applied prior art (e.g., Spertus) to
render any of the appealed claims unpatentable under 35 U.S.C.
§ 103.
We additionally remand this application to the examiner
for consideration of the patentability of claims 7 and 8 under
35 U.S.C. § 112, second paragraph. In claim 7, the phrase
"said means for pivoting" lacks proper antecedent basis. The
examiner should determine if this lack of antecedent basis
Appeal No. 1999-2368 Page 12
Application No. 08/771,018
renders claims 7 and 8 indefinite under 35 U.S.C. § 112,
second paragraph.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 3 and 5 to 9 under 35 U.S.C. § 103 is reversed. In
addition, the application has been remanded to the examiner
for further consideration of the pending claims.
This application, by virtue of its "special" status,
requires immediate action, see MPEP § 708.01 (Seventh Edition,
July 1998).
Appeal No. 1999-2368 Page 13
Application No. 08/771,018
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; REMANDED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 1999-2368 Page 14
Application No. 08/771,018
DANIEL S. POLLEY
MALIN HALEY DIMAGGIO & CROSBY
ONE EAST BROWARD BOULEVARD
SUITE 1609
FORT LAUDERDALE, FL 33301
APPEAL NO. 1999-2368 - JUDGE NASE
APPLICATION NO. 08/771,018
APJ NASE
APJ FRANKFORT
APJ CRAWFORD
DECISION: REVERSED; REMANDED
Prepared By: Gloria Henderson
DRAFT TYPED: 20 Dec 99
FINAL TYPED:
Gloria: Note change in panel order