Ex parte Kim

Board of Patent Appeals and Interferences

Mar 4, 1999

08449069 (B.P.A.I. Mar. 4, 1999)

Application for patent filed May 24, 1995.1
Claims 5 and 22 have been amended subsequent to final 2
rejection.
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not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KOOKAN KIM
__________
Appeal No. 98-1042
Application 08/449,0691
___________
ON BRIEF
___________
Before COHEN, MEISTER, and McQUADE, Administrative Patent
Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Kookan Kim originally took this appeal from the final
rejection of claims 5 and 21 through 23, all of the claims
pending in the application. The examiner has since allowed2
Appeal No. 98-1042
Application 08/449,069
2
claim 22. Thus, the appeal as to claim 22 is hereby
dismissed, leaving for review the standing rejection of claims
5, 21 and 23. We reverse.
The invention relates to "a writing instrument which has
a sanitary moistener to facilitate turning sheets of paper,
such as pages of a book" (specification, page 1). A copy of
appealed claims 5, 21 and 23 appears in the appendix to the
appellant's brief (Paper No. 14).
The reference relied upon by the examiner as evidence of
obviousness is:
Sotos, British Patent Document 2,252,941 Aug. 26, 1992
Claims 5, 21 and 23 stand rejected under 35 U.S.C. § 103
as being unpatentable over the British reference.
Reference is made to the appellant's brief (Paper No. 14)
and to the examiner's answer (Paper No. 15) for the respective
positions of the appellant and the examiner with regard to the
merits of this rejection.
The British reference discloses a combined ball-point pen
and spray device 10. As described in the reference, the
device
comprises an elongated tubular body 12 having two
Appeal No. 98-1042
Application 08/449,069
3
chambers 14, 16 separated by a transverse discoidal
wall 18. The first chamber 14 houses a conventional
tubular ink supply 20 for a ball point 22 extending
through a pointed nozzle 24 of the chamber. The
nozzle 24 will usually be covered by a conventional
cap with clip (not shown).
The other chamber 16 has at its end remote from
the wall 18, in a screwed bush 19, a push button 26
which operates a reciprocating pump generally
designated 28. The push button 26 has a pathway 30
from the chamber 16 ending in an outlet 32. In use
the chamber 16 will contain perfume and the action
of depressing the push button is intended to release
a spray of perfume from the chamber 16 [page 2, line
26, through page 3, line 14].
According to the examiner, "[t]he claims appear to be
substantially readable on the British Patent. . . . Element
#26
is the outermost end" (answer, pages 2 and 3).
The appellant, on the other hand, submits that
[i]n the invention, as set forth in claim 5,
"the actuating means has a finger-engageable
outermost end, and means for conducting liquid to
said outermost end." The British patent discloses a
combination ball-point pen and spray device in which
the finger-engageable push-button 26 has an internal
pathway 30 ending in an outlet on the side of the
push-button [brief, page 4].
From this perspective, the appellant argues that
[t]he rejection nowhere makes out a prima facie
case of obviousness. Specifically, it does not show
where in the prior art there is a suggestion to
modify the reference by arranging the fluid passage
so that it conducts liquid to the outermost end of
Appeal No. 98-1042
Application 08/449,069
4
the push-button rather than to the side of the push-
button. Indeed, the modification would frustrate
the objective of the British patent, which is to
spray a liquid. Positioning the outlet at the
outermost end of the push-button would prevent
spraying from taking place because the user's finger
would get in the way [brief, page 6].
Independent claim 5 recites a writing instrument having a
sanitary moistener comprising, inter alia, "an elongated,
hollow body having first and second ends," a "pump-actuating
means . . . projecting axially beyond the second end of the
body," the actuating means "being manually depressible, toward
the first end of the hollow body" and having "a finger-
engageable outermost end," "means for conducting liquid to
said outermost end," and "means for allowing moistening liquid
to flow through said conducting means to the user's finger
while the user's finger is in engagement with the outermost
end of the actuating means and depressing said actuating
means."
The appellant's position that the British reference does
not meet these limitations, particularly those relating to the
means for conducting liquid to the outermost end of the
actuating means, is well taken. The push button 26 and
pathway 30 in the British device correspond, respectively, to
Appeal No. 98-1042
Application 08/449,069
5
the actuating means and conducting means recited in claim 5.
As correctly pointed out by the appellant, the pathway 30
conducts liquid to the side of the push button 26, rather than
to its outermost end as required by claim 5. The examiner has
not explained, nor is it apparent, why one of ordinary skill
in the art would have found it obvious to modify the British
pathway 30 so as to have it conduct liquid to the outermost
end of the push button 26. The examiner's apparent position
that the entire push button 26 constitutes the outermost end
of the British actuating means is inconsistent with any
reasonable attempt to read the claim limitations in question
on the structure disclosed by the reference.
Thus, the British reference does not teach and would not
have suggested the subject matter recited in claim 5, or in
claims 21 and 23 which depend therefrom. Accordingly, we
shall not sustain the standing 35 U.S.C. § 103 rejection of
these claims.
The decision of the examiner is reversed.
REVERSED
Appeal No. 98-1042
Application 08/449,069
6
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN P. McQUADE )
Administrative Patent Judge )
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