Ex Parte Kintzele et al

Board of Patent Appeals and Interferences

Oct 27, 2006

10670623 (B.P.A.I. Oct. 27, 2006)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GREGORY KINTZELE and LISEN KINTZELE
____________

Appeal No. 2006-2182
Application No. 10/670,623
Technology Center 3600
____________

ON BRIEF
____________

Before FRANKFORT, OWENS and HORNER, Administrative Patent Judges.
HORNER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the examiner's
final rejection of claims 1-10, 12-16, and 20, all of the claims pending in the
application. Claims 11 and 17-19 have been canceled.
We reverse.
Appeal No. 2006-2182 Page 2
Application No. 10/670,623

BACKGROUND
The appellants' invention relates to an article suspension device for infants.
Claims 1 and 12 are representative of the subject matter on appeal, and a copy of
these claims can be found in the appendix to the appellants’ brief.
The examiner relies upon the following as evidence of unpatentability:
Anderson 2,819,923 Jan. 14, 1958
Gabriel 4,095,316 Jun. 20, 1978
Dalmaso 4,253,544 Mar. 03, 1981
Giacona, III (Giacona) 6,029,870 Feb. 29, 2000

The following rejections are before us for review.
1. Claims 1, 2, 5-7, 10, 12, 13, 15, and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Anderson in view of Dalmaso.
2. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over
Anderson in view of Dalmaso and further in view of Gabriel.
3. Claims 3, 8, 9, 14, and 16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Anderson in view of Dalmaso and further in view of
Giacona.
Rather than reiterate in detail the conflicting viewpoints advanced by the
examiner and the appellants regarding this appeal, we make reference to the
examiner's answer (mailed February 15, 2006) for the examiner's complete
reasoning in support of the rejections and to the appellants’ brief (filed November
7, 2005) and reply brief (filed April 20, 2006) for the appellants’ arguments.

Appeal No. 2006-2182 Page 3
Application No. 10/670,623

OPINION
In reaching our decision in this appeal, we have carefully considered the
appellants’ specification and claims, the applied prior art, and the respective
positions articulated by the appellants and the examiner. As a consequence of our
review, we make the determinations that follow.
Rejection of Claims 1, 2, 5-7, 10, 12, 13, 15, and 20
In the rejection of independent claims 1 and 12, the examiner determined
that Anderson discloses all of the elements of these claims except for the limitation
of the cord being elastic (claim 12) and the limitation of a cover extending between
the first end and the second end of the cord (claims 1 and 12). Answer, pp. 3-4.
The examiner found that it would have been obvious to one having ordinary skill
in the art at the time of the invention, in view of Anderson’s teaching of making a
cord of flexible material such as steel wire cable, to have modified the cord to
make it of an elastic material “for the purpose of providing an alternative, flexible,
mechanically equivalent material for the cord based on the materials [sic]
suitability for the intended use and since such a modification would not have
produced any unexpected results.” Answer, pp. 3-4. The examiner relied on
Dalmaso for the teaching of a cover and found that it would have been obvious to
one having ordinary skill in the art at the time of the invention to modify the sling
of Anderson to add a cover over the cord “for the purpose of providing a means for
providing shock absorption to the device to dissipate the shock forces generated by
the rapidly decelerating object.” Answer, p. 4.
We agree with the appellants that the examiner has failed to make a prima
facie showing of a motivation, teaching, or suggestion to modify the Anderson
Appeal No. 2006-2182 Page 4
Application No. 10/670,623

sling to make the cord of an elastic or stretchable material. We further agree with
the appellants that the examiner has failed to make a prima facie showing of a
motivation, teaching, or suggestion to modify the cord of Anderson to add a cover
as shown in Dalmaso.1
To make a prima facie showing of obviousness, the examiner must articulate
a “teaching, suggestion, or motivation” to modify or combine the prior art
teachings. As recently described in In re Kahn, 441 F.3d 977, 988, 78 USPQ2d
1329, 1337 (Fed. Cir. 2006),
[T]he “motivation-suggestion-teaching” test asks not
merely what the references disclose, but whether a person
of ordinary skill in the art, possessed with the
understandings and knowledge reflected in the prior art,
and motivated by the general problem facing the
inventor, would have been led to make the combination
recited in the claims. From this it may be determined
whether the overall disclosures, teachings, and
suggestions of the prior art, and the level of skill in the
art – i.e., the understandings and knowledge of persons
having ordinary skill in the art at the time of the
invention-support the legal conclusion of obviousness.
(internal citations omitted).

In this case, the examiner’s reasoning that one of ordinary skill in the art at
the time the invention was made would have been motivated to modify the steel
wire of Anderson to make it of an elastic material so as to provide an alternative,
flexible, mechanically equivalent material for the cord based on the material’s
suitability for the intended use does not make sense in view of the purpose and

1 The appellants further argue that Anderson is non-analogous art. We find no need to reach a
decision on this issue in view of our holding of a lack of a teaching, suggestion, or motivation to
Appeal No. 2006-2182 Page 5
Application No. 10/670,623

intended use of the Anderson sling. We find persuasive the appellants’ argument
on page 9 of the Brief that there is no motivation from Anderson’s description of
the cord as “flexible” that would have led a person of ordinary skill in the art to
have modified the cord to make it of an elastic material. The purpose of the
suspension sling of Anderson is to hang deer or other game from a tree to facilitate
cleaning and dressing. Anderson, col. 1, lines 15-18. Substitution of an elastic
cord would allow the game to move up and down as the user processes the game
and would make it more difficult to safely dress the game. As such, an elastic cord
would not be an equivalent material to the steel wire, nor would it be suitable for
the intended use of the Anderson sling. Rather, we find a distinct disadvantage to
substituting an elastic cord for the steel wire disclosed in Anderson, such that there
would have been no motivation for one of ordinary skill in the art to have made
such a modification.
Similarly, the examiner’s reasoning that one of ordinary skill in the art at the
time the invention was made would have modified the suspension sling of
Anderson to add a cover as taught in Dalmaso for the purpose of providing shock
absorption to the device misinterprets the teaching of Dalmaso. The examiner
found that the jacket (18) of Dalmaso provided shock absorption to the device to
dissipate the shock forces generated by a rapidly decelerating object. (Answer, p.
4) We disagree and find that the jacket (18) of Dalmaso does not provide shock
absorption for the lanyard. Specifically, Dalmaso teaches that the core (14), made
from a synthetic semi-drawn high tensile load bearing or bulked continuous
filament material, having predetermined tensile yield strength, provides the shock

combine the teachings of Anderson and Dalmaso.
Appeal No. 2006-2182 Page 6
Application No. 10/670,623

absorption. Dalmaso, col. 3, lines 1-13. The purpose of the jacket (18) of Dalmaso
is to allow for the flag to be freed once the core (14) has elongated a predetermined
amount. Dalmaso, col. 3, lines 27-33.
The examiner has offered no further articulation of a teaching, suggestion, or
motivation in the prior art itself, the nature of the problem solved by the claimed
invention, or the knowledge of one of ordinary skill in the art that would have led
one of ordinary skill in the art to add a cover to the cord of Anderson. Finding no
such teaching, suggestion, or motivation, we do not sustain the examiner’s
rejection of claims 1, 2, 5-7, 10, 12, 13, 15, and 20.
Rejection of claims 3, 4, 8, 9, 14, and 16
The examiner’s rejections of claims 3, 4, 8, 9, 14, and 16 rely on the
underlying combination of Anderson and Dalmaso in view of Gabriel or Giacona.
The teachings of Gabriel and Giacona fail to cure the deficiencies of Anderson and
Dalmaso. Specifically, neither reference provides a teaching, suggestion, or
motivation to modify the cord of the Anderson sling to make it of an elastic
material or to add a cover over the cord as claimed. For the same reasons provided
above, we do not sustain the examiner’s rejection of these claims.
Appeal No. 2006-2182 Page 7
Application No. 10/670,623

CONCLUSION
To summarize, the decision of the examiner to reject claims 1-10, 12-16, and
20 is reversed.
REVERSED

)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
TERRY J. OWENS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA E. HORNER )
Administrative Patent Judge )
Appeal No. 2006-2182 Page 8
Application No. 10/670,623

JOHN E. REILLY
1554 EMERSON STREET
DENVER, CO 80218

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