Ex parte Kendrick

Board of Patent Appeals and Interferences

Oct 10, 2000

08619853 (B.P.A.I. Oct. 10, 2000)

Application filed March 20, 1996. According to the1
appellant, the application is a division of Application No.
07/817,894, filed January 8, 1992.
The decision being entered today was not written for publication
and is not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JIMMY R. KENDRICK
____________
Appeal No. 1999-2064
Application No. 08/619,8531
____________
ON BRIEF
____________
Before CALVERT, McQUADE, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 29 to 48, which are all of the claims
pending in this application.
We AFFIRM-IN-PART and REMAND.
Appeal No. 1999-2064 Page 2
Application No. 08/619,853
Appeal No. 1999-2064 Page 3
Application No. 08/619,853
Issued March 30, 1993 based upon Application No.2
07/729,363, filed July 12, 1991.
BACKGROUND
1. The file record of this application indicates that in
the final rejection (Paper No. 12, mailed November 9, 1998)
claims 29-48 were rejected under 35 U.S.C. § 103(a) as being
unpatentable over U.S. Patent No. 5,197,765 to Mowry, Jr. et2
al. (hereafter "Mowry"). This rejection was maintained in the
Examiner's Answer (Paper No. 15, mailed January 11, 1999).
2. The file record of this application indicates that on
pages 4-5 of the brief (Paper No. 14, filed November 30, 1998)
the appellant argued that
[i]t appears in making this rejection that the Mowry
reference was considered in its entirety as prior art,
when in fact [it] is not. Attention is directed to the
Declaration under 37 CFR 1.132 filed in the parent
application (a copy, with attachments, was enclosed in
this case).
The appellant then stated that only claim 12 of Mowry may be
considered prior art and that the application of the entire
Mowry reference as prior art is erroneous.
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Application No. 08/619,853
3. The file record of parent Application No. 07/817,894
indicates that a Declaration under 37 CFR § 1.132 of Jimmy Ray
Kendrick was executed on April 8, 1993 and filed on April 13,
1993 (Paper No. 13). This declaration avers that "[p]rior to
July 12, 1991, I actually reduced the invention of claim 1 of
the above-identified application to practice in the United
States, by making actual operable specimens thereof."
4. The file record of parent Application No. 07/817,894
indicates that in the Advisory Action of November 2, 1993
(Paper No. 18) the examiner stated that the declaration was
not effective for two reasons. First, the portion of 37 CFR
which controls swearing back of a reference is 37 CFR § 1.131,
not
37 CFR § 1.132. Second, the Mowry patent is clearly claiming
the same invention as the appellant is claiming. The examiner
then stated that "neither 37 CFR 1.131 or 37 CFR 1.132 are
available to the Applicant regarding this rejection."
5. The file record of parent Application No. 07/817,894
indicates that in the Office action of February 10, 1997
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Application No. 08/619,853
(Paper No. 29) the examiner stated that the declaration "is
considered irrelevant since applicant can not swear back of a
patent where the same invention is being claimed."
6. The file record of this application indicates that
this panel of the Board issued an order (Paper No. 18, mailed
December 6, 1999) requiring the appellant to clarify the
record by addressing the following issue:
Is the patent to Mowry available as prior art under
35 U.S.C. § 102(e) against claims 29-48 in Application
No. 08/619,853?
In that order the Board required the appellant to either
(1) provide an argument specifying in detail the reasons why
Mowry is not prior art under 35 U.S.C. § 102(e), or
(2) acknowledge that on the current record that Mowry is prior
art under 35 U.S.C. § 102(e) and thus the entire Mowry
reference is available as prior art.
7. The file record of this application indicates that in
the response to the Board's order (Paper No. 19, filed
February 4, 2000) the appellant provided an argument
specifying in detail the reasons why Mowry is not prior art
Appeal No. 1999-2064 Page 6
Application No. 08/619,853
under 35 U.S.C. § 102(e). Specifically, the appellant argues
that Mowry is not claiming "the same patentable invention" as
the claims under appeal.
8. The file record of this application indicates that
this panel of the Board issued a remand (Paper No. 20, mailed
March 7, 2000) requiring the examiner to specifically identify
each provision of 35 U.S.C. § 102 that the examiner is
applying Mowry as prior art. In addition, if the examiner was
relying on
35 U.S.C. § 102(e) as a basis for applying Mowry as prior art,
we required the examiner to set forth factual evidence
establishing that Mowry is claiming "the same patentable
invention" as the claims under appeal.
9. The file record of this application indicates that in
the answer (Paper No. 21, mailed April 13, 2000) responding to
the Board's remand the examiner states (p. 6) that Mowry is
prior art under 35 U.S.C. § 102(e) and 35 U.S.C. § 102(g). In
addition, the examiner asserts (p. 6) that the factual
evidence to establish that Mowry is claiming "the same
Appeal No. 1999-2064 Page 7
Application No. 08/619,853
The appellant has not disputed the examiner's reliance3
on claim 12 of Mowry being available as prior art under 35
U.S.C.
(continued...)
patentable invention" as the claims under appeal is set forth
in the rejection section of the answer.
10. The file record of this application indicates that
the appellant filed a reply brief (Paper No. 22, filed April
17, 2000) responding to the examiner's answer of April 13,
2000.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied reference, and to the respective
positions articulated by the appellant and the examiner. As
a consequence of our review, we make the determinations which
follow.
35 U.S.C. § 103 Rejection based upon Mowry being prior art
under 35 U.S.C. § 102(g)3
Appeal No. 1999-2064 Page 8
Application No. 08/619,853
(...continued)3
§ 102(g). We note that in parent Application No. 07/817,894
the appellant did not copy claim 12 of Mowry for purposes of
interference as suggested by the examiner. On these facts,
the appellant's refusal to make the suggested claim
constitutes a concession that the subject matter of that claim
is prior art as to the appellant within the meaning of 35
U.S.C. § 102(g) and 35 U.S.C. § 103. Otherwise stated, the
appellant's refusal to make the suggested claim constitutes a
disclaimer of the invention covered by that claim and the
appellant is not entitled to claims which do not define
patentably over claim 12 of Mowry. See In re Ogiue, 517 F.2d
1382, 1391, 186 USPQ 227, 235 (CCPA 1975) and
37 CFR § 1.605(a).
We sustain the rejection of claims 29, 37 and 39 under
35 U.S.C. § 103, but not the rejection of claims 30 to 36, 38
and 40 to 48.
Claims 30 and 40 to 45
We agree with the appellant's argument (brief, pp. 7-10)
that the claimed linear bands positioned as set forth in
independent claim 30 would not have been obvious at the time
the invention was made to a person having ordinary skill in
the art from the subject matter of Mowry's claim 12. In that
regard, we note that Mowry's claim 12 fails to teach each band
having "first and second substantially parallel substantially
linear edges" and each of the bands engaging others of the
Appeal No. 1999-2064 Page 9
Application No. 08/619,853
Evidence of a suggestion, teaching, or motivation to4
modify a reference may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or, in some cases, from the nature of the problem to be
solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc.,
75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert.
denied, 117 S. Ct. 80 (1996), although "the suggestion more
often comes from the teachings of the pertinent references,"
In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed.
Cir. 1998). The range of sources available, however, does not
diminish the requirement for actual evidence. That is, the
showing must be clear and particular. See, e.g., C.R. Bard
Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225,
1232 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 1804 (1999).
A broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence." See
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999).
bands "only along one or both of said substantially linear
first and second edges thereof." The examiner has not cited
any evidence that would have established the obviousness of4
these limitations.
Claims 31 to 36 and 46 to 48
We agree with the appellant's argument (brief, pp. 10-11)
that the claimed sizes for the geometric elements as set forth
in independent claim 31 and dependent claim 32 would not have
been obvious at the time the invention was made to a person
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Application No. 08/619,853
having ordinary skill in the art from the subject matter of
Mowry's claim 12. The examiner has not cited any evidence
that would have established the obviousness of these sizes.
Claim 38
We agree with the appellant's argument (brief, p. 12)
that the subject matter of dependent claim 38 would not have
been obvious at the time the invention was made to a person
having ordinary skill in the art from the subject matter of
Mowry's claim 12. The examiner has not cited any evidence
that would have established the obviousness of the limitations
of claim 38 (e.g., some of the geometric elements are of a
color other than black, the claimed thickness of the geometric
elements).
Claim 29
We agree with the examiner that the subject matter of
independent claim 29 would have been obvious at the time the
invention was made to a person having ordinary skill in the
art from the subject matter of Mowry's claim 12.
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Application No. 08/619,853
The appellant argues (brief, pp. 5-6) only that the
limitation that the substrate surface is "devoid of a
camouflage pattern" is not obvious from Mowry's claim 12 since
parent claim 11 of Mowry specifically recites "a camouflage
pattern." We do not agree. In our view, it would have been
obvious at the time the invention was made to a person having
ordinary skill in the art to omit Mowry's camouflage pattern
and its associated function for the self evident advantages
thereof (e.g., cheaper to manufacture). We reach this
conclusion of obviousness based upon the basic principle that
the question under 35 U.S.C. § 103 is not merely what the
references expressly teach but what they would have suggested
to one of ordinary skill in the art at the time the invention
was made. See Merck & Co., Inc. v. Biocraft Laboratories,
Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir.),
cert. denied, 493 U.S. 975 (1989) and In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). That is, the
question of obviousness in this instance cannot be approached
on the basis than an artisan having ordinary skill would have
known only the subject matter of Mowry's claim 12, because
such artisan is presumed to know something about the art apart
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Application No. 08/619,853
from what the reference discloses. See In re Jacoby, 309 F.2d
513, 516, 135 USPQ 317, 319 (CCPA 1962). A conclusion of
obviousness may be made from common knowledge and common sense
of the person of ordinary skill in the art without any
specific hint or suggestion in a particular reference. See In
re Bozek, 416 F.2d 1385, 163 USPQ 545 (CCPA 1969). Further,
in an obviousness assessment, skill is presumed on the part of
the artisan, rather than the lack thereof. In re Sovish, 769
F.2d 738, 226 USPQ 771 (Fed. Cir. 1985).
Claims 37 and 39
We agree with the examiner that the subject matter of
dependent claims 37 and 39 would have been obvious at the time
the invention was made to a person having ordinary skill in
the art from the subject matter of Mowry's claim 12.
The appellant argues (brief, p. 12) only that the
examiner failed to establish the obviousness of the claimed
features (i.e., the claimed densities). We find this argument
to be unpersuasive since we find ourselves in agreement with
the examiner's position (final rejection, pp. 3-4) that the
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Application No. 08/619,853
claimed densities would have been an obvious matter of design
choice.
Synopsis
In view of the above-noted decisions with respect to
claims 29 to 48, it is our determination that claims 29, 37
and 39 define the "same patentable invention" as claim 12 of
Mowry and that claims 30 to 36, 38 and 40 to 48 define a
"separate patentable invention" with respect to claim 12 of
Mowry. 37 CFR § 1.601(n).
35 U.S.C. § 103 Rejection based upon Mowry being prior art
under 35 U.S.C. § 102(e)
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). In addition, the initial
burden of making a prima facie case of prior invention is also
on the examiner. See In re Bass, 474 F.2d 1276, 1287, 177
USPQ 178, 186 (CCPA 1973).
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Application No. 08/619,853
The record is unclear whether or not the examiner5
considered the facts and evidence set forth in the Kendrick
Declaration sufficient to overcome Mowry if Mowry was
considered to not claim the "same patentable invention" as set
forth in 37 CFR § 1.601(n).
In view of our determination above that claims 30 to 36,
38 and 40 to 48 define a "separate patentable invention" with
respect to claim 12 of Mowry and not the "same patentable
invention" as claim 12 of Mowry, 37 CFR § 1.131 requires that
the merits of the Kendrick Declaration be evaluated by the
examiner to determine if it is sufficient to overcome Mowry. 5
Since the examiner has not provided any acceptable reason for
not giving effect to the Kendrick Declaration, we are
constrained to reverse the rejection of claims 30 to 36, 38
and 40 to 48 and remand this application to the examiner to
consider on the record whether or not the Kendrick Declaration
is sufficient to overcome Mowry and if not, whether these
claims are patentable under 35 U.S.C. § 103 taking into
consideration the views we expressed above. With respect to
claims 29, 37 and 39, the examiner has established that Mowry
is claiming the "same patentable invention" for the reasons
set forth above. Thus, with respect to claims 29, 37 and 39,
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Application No. 08/619,853
the examiner's treatment of the Kendrick Declaration was
appropriate.
For the reasons set forth above, the decision of the
examiner to reject claims 29 to 48 under 35 U.S.C. § 103 is
affirmed with respect to claims 29, 37 and 39 and reversed
with respect to claims 30 to 36, 38 and 40 to 48.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 29 to 48 under 35 U.S.C. § 103 is affirmed with respect
to claims 29, 37 and 39 and reversed with respect to claims 30
to 36, 38 and 40 to 48. In addition, the application has been
remanded to the examiner to determine whether or not the
Kendrick Declaration is sufficient to overcome Mowry and if
not, whether claims 30 to 36, 38 and 40 to 48 are patentable
under 35 U.S.C. § 103.
In addition to affirming the examiner's rejection of one
or more claims, this decision contains a remand. 37 CFR
§ 1.196(e) provides that
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Application No. 08/619,853
[w]henever a decision of the Board of Patent Appeals
and Interferences includes or allows a remand, that
decision shall not be considered a final decision. When
appropriate, upon conclusion of proceedings on remand
before the examiner, the Board of Patent Appeals and
Interferences may enter an order otherwise making its
decision final.

Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date of the
original decision . . . .
The effective date of the affirmance is deferred until
conclusion of the proceedings before the examiner unless, as a
mere incident to the limited proceedings, the affirmed
rejection is overcome. If the proceedings before the examiner
does not result in allowance of the application, abandonment
or a second appeal, this case should be returned to the Board
of Patent Appeals and Interferences for final action on the
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Application No. 08/619,853
affirmed rejections, including any timely request for
rehearing thereof.
AFFIRMED-IN-PART; REMANDED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
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Application No. 08/619,853
NIXON & VANDERHYE
1100 NORTH GLEBE ROAD
8TH FLOOR
ARLINGTON, VA 22201
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Application No. 08/619,853
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