Ex Parte Levi

Board of Patent Appeals and Interferences

Apr 30, 2003

09569539 (B.P.A.I. Apr. 30, 2003)

1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte Michael Levi
____________
Appeal No. 2003-0013
Application No. 09/569,539
____________
ON BRIEF
____________
Before ABRAMS, STAAB and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1-6, all the claims currently pending in the
application.
Appellant’s invention pertains to a swinging seat suspended
from a pair of suspension members each of which includes a coil
spring having two or more different zones providing two or more
different initial spring constants. As further explained in the
paragraph spanning pages 1-2 of the specification:
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Application No. 09/569,539
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A first zone of the spring provides a relatively low
initial spring constant so that the springs are
sufficiently stretched to provide the desired amount of
bounce or springiness to the seat when a person of
relatively low weight such as a child is sitting on the
seat. The second zone provides a relatively high initial
spring constant so that when a heavier person, or more
than one person, sits on the seat the total elongation of
the spring is significantly less than it would be if the
entire spring had the spring constant of the first zone.
Accordingly, the springs provide a desired amount of
stretch and springiness for a much wider range of weights
supported on the seat than a conventional spring having a
single spring constant.
A copy of the appealed claims appears in the appendix to
appellant’s main brief.
The references relied upon by the examiner as evidence of
obviousness are:
Boudreau 5,004,216 Apr. 2, 1991
Ayrolles 5,564,987 Oct. 15, 1996
Claims 1-6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Ayrolles in view of Boudreau.
Reference is made to appellant’s main and reply briefs (Paper
Nos. 13 and 15) and to the examiner’s answer (Paper No. 14) for the
respective positions of appellant and the examiner regarding the
merits of this rejection.
Discussion
Ayrolles, the examiner’s primary reference, discloses a
swinging seat with resilient suspension comprising a seat 6 for
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Application No. 09/569,539
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supporting one or more persons and a pair of suspension members 7
for suspending the seat therefrom, with each suspension member
including a coil spring 8 imparting resilience to the suspension
member. The examiner concedes that Ayrolles does not disclose the
specifics of the coil springs set forth in the last paragraph of
claim 1, the sole independent claim on appeal, which calls for each
coil spring to define first and second zones of differing initial
spring constant, with the first zone being formed of coils
providing a first initial spring constant when the coils are
initially stretched, and with the second zone being formed of coils
providing a second initial spring constant substantially greater
than the first initial spring constant when the coils are initially
stretched. The examiner turns to Boudreau for a teachings of this
claim limitation.
Boudreau pertains to children’s bouncers and similar spring-
mounted toys, and more particularly to a spring connection assembly
for such toys. As explained in the “Background” section of
Boudreau’s specification, prior art bouncers were found to be
deficient in that they exhibited somewhat uneven bouncing
characteristics due to the way the ends of the suspension springs
were connected to the toy and the toy support, and in that the ends
of the suspension springs could become detached from their
Appeal No. 2003-0013
Application No. 09/569,539
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corresponding mounting points so that the seating platform is no
longer suspended in a stable manner. In an effort to overcome
these deficiencies, Boudreau redesigned the mounting means for
connecting the inboard ends of the springs. With reference to
Figures 1-4, Boudreau explains that
[e]ach assembly includes a barrel-shaped coil spring [46]
whose outboard end is hooked in a conventional way to an
eye [52] mounted to the support. However, the hook at
the inboard end of each spring is hooked to a special
bracket [56] swivelingly engaged to the adjacent post
[32] projecting from the side of the horse. Each bracket
forms an eye [62] which lies in a plane parallel to the
post and, as noted above, the bracket can pivot or swivel
about the post axis so that the inboard end of the spring
connected thereto can swing freely about the post axis no
matter how the spring is hooked to the bracket or to the
support. Since the inboard ends of all of the springs
supporting the horse are permitted to swing to the same
extent relative to the projecting post to which they are
connected, the bouncing motion of the horse is much more
uniform than is the case with the conventional
spring-supported bouncing toys described at the outset.
Also included at the inboard end of each spring is a
special safety clip [72] which plugs into the end of the
spring coil. The clip includes a hook [72a] which
projects from the end of the coil which is arranged to
hook onto the bracket [56] in the opposite direction from
the hook formed at that end of the spring. In other
words, the spring hook and the clip hook together form a
closed ring which prevents the inboard end of that spring
from becoming detached from its bracket no matter how
vigorously the horse may be bounced by a child thereon.
[Boudreau, col. 2, lines 34-63].
The examiner finds that Boudreau teaches a spring connection
assembly “including a plurality of barrel shaped springs (46), each
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Application No. 09/569,539
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spring (46) [having] first and second zones of differing initial
spring constant due to its barrel shape[]. . . .” (answer, page 3).
The examiner concludes that “[t]herefore, it would have been
obvious to one of ordinary skill in the art to modify the springs
(8) of Ayrolles with the barrel shaped springs (46) of Boudreau for
the advantage of allowing the seat to support a wide range of
weights and swinging motions of the seat” (answer, page 3).
Like appellant, we consider that the examiner’s position is
not well founded. First, while it may be true that the Ayrolles
swing could be modified as proposed by the examiner to provide
barrel shaped springs therein, the examiner has identified no
cogent reason in the collective teachings of the applied references
that suggests the desirability, and thus the obviousness, of such a
modification. See In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430,
1432 (Fed Cir. 1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984) (“The mere fact that the prior art
could be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the
modification.”). In our view, the only suggestion for modifying
Ayrolles in the manner proposed by the examiner stems from
impermissible hindsight knowledge derived from appellant’s own
disclosure. This constitutes a first reason necessitating reversal
Appeal No. 2003-0013
Application No. 09/569,539
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of the examiner’s rejection of independent claim 1, as well as
claims 2-6 that depend therefrom.
Furthermore, we do not agree with the examiner’s position to
the effect that the barrel shaped springs of Boudreau would
necessarily have a first zone formed by coils providing a first
initial spring constant and a second zone formed by coils providing
a second initial spring constant that is substantially greater than
the first initial spring constant, as called for in the last
paragraph of claim 1, simply because of their barrel shape. In
that regard, it is well settled that inherency may not be
established by probabilities or possibilities, but must instead by
“the natural result flowing from the operation as taught.” See In
re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981). As
we see it, the examiner’s conclusion that Boudreau’s springs would
have the characteristics called for in the last paragraph of claim
1 “due to [their] barrel shape[]” (answer, page 3) is speculative.
Thus, even if we were to agree with the examiner that it would have
been obvious to provide barrel shaped spring in Ayrolles in view of
Boudreau, the subject matter of claim 1 would not result. This
constitutes an additional reason necessitating reversal of the
examiner’s rejection of the appealed claims.
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For the above reasons, the decision of the examiner is
reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS:svt
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Application No. 09/569,539
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