Ex parte Lindley et al.

Board of Patent Appeals and Interferences

Sep 18, 1998

08740389 (B.P.A.I. Sep. 18, 1998)

Application for patent filed October 29, 1996. According to appellant, the1
application is a continuation of Application 08/440,096, filed May 12, 1995, now
abandoned, which is a continuation-in-part of Application 08/407,334, filed March 20,
1995, now abandoned.
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publication in a law journal and (2) is not binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JACK R. LINDLEY, JR.
__________
Appeal No. 98-0363
Application 08/740,3891
___________
ON BRIEF
___________
Before MEISTER, FRANKFORT, and CRAWFORD, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Jack R. Lindley, Jr. (the appellant) appeals from the
final rejection of claims 1, 2, 4-7 and 9-23, the only claims
remaining in the application.
Appeal No. 98-0363
Application 08/740,389
2
We REVERSE.
The appellant's invention pertains to a window sash and
screen combination. Independent claims 1, 12, 20 and 21 are
further illustrative of the appealed subject matter and copies
thereof may be found in the appendix to the brief.
The references relied on by the examiner are:
Carman 277,111 May 8, 1883
Golkowski 2,406,761 Sep. 3, 1946
Marbach 2,462,520 Feb. 22, 1949
Wootten 3,173,474 Mar. 16, 1965
The claims on appeal stand rejected under 35 U.S.C. § 103
in the following manner:
(1) Claims 1, 2, 4, 6, 7, 12-17 and 20-23 as being
unpatentable over Golkowski in view of Carman;
(2) Claims 5, 9-11 and 19 as being unpatentable over
Golkowski in view of Carman and Wootten; and
(3) Claims 12-15, 17 and 18 as being unpatentable over
Marbach in view of Carman.
The examiner's rejections are explained on pages 2 and 3
of the final rejection. The arguments of the appellant and
examiner in support of their respective positions may be found
Appeal No. 98-0363
Application 08/740,389
3
on pages 3-15 of the brief, pages 1-3 of the reply brief and
pages 4 and 5 of the answer.
OPINION
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions
advanced by the appellant in the brief and reply brief and by
the examiner in the answer. As a consequence of this review,
we will not sustain any of the above-noted rejections.
Rejections (1) and (2)
Both of these rejections are bottomed on the examiner's
view that it would have been obvious to modify the device of
Golkowski "so that only one point of attachment is used"
(final rejection, page 2) in view of the teachings of Carman.
In support of this position the answer states that:
Carman is only used to teach that providing
Appeal No. 98-0363
Application 08/740,389
4
a single, centrally located attachment
means instead of two is known. This
clearly cuts down on material and
installation costs. Based on this
teaching, it would have been well within
the purview of one of ordinary skill in the
art in which both of these references
reside to modify Golkowski to have one,
centrally located attachment. Once this
combination is made, the aforementioned
rotating would clearly occur. . . . To
summarize this point, Carman is not
combined to provide a teaching of a
rotating screen bar but only to teach the
use of a single attachment means and
Golkowski, as so modified, provides for the
rotatability of the bar. [Answer, pages 4
and 5.]
As the examiner apparently recognizes, Golkowski provides
a fastening means in the form of two laterally spaced apart
tongues 58 having apertures 70 therein which cooperate with
two slidable plungers 60 having pin portions 64 on the sash to
fasten the free end of the screen to the sash. In order to
overcome this deficiency, it appears that the examiner is
proposing to single out the "concept" of single point
attachment from the teachings of Carman and incorporate this
"concept" into Golkowski by providing only a single strap with
a single pin portion at the midpoint of the sash and, thus,
arrive at a structure which will provide pivoting movement as
Appeal No. 98-0363
Application 08/740,389
5
claimed.
We will not support the examiner's position. Neither,
Golkowski nor Carman is in any way concerned with providing
pivotal movement of the free end of the screen. In fact both
Golkowski and Carman appear to go to great lengths to avoid
it. More specifically, Golkowski provides a rigid, laterally
extending reinforcement bar 45 at the free end of the screen
which has a T-head 48 on each end thereof with upwardly and
downwardly extending legs 46, 47. One of these legs on each
end of the bar extends for a distance along a lateral edge of
the screen and is supported in a guide channel formed by
spaced apart guide elements 50,51 for the purpose of guiding
the lateral edges of the screen (see column 3, line 62,
through column 4, line 29). With respect to this guiding
action, Golkowski states that:
It should be noted that the amplitude
of [the] guiding surface between the T-
heads of the bar 45 and the associated
guiding channels 51 is sufficient so that
should the operator release only one of the
plungers, the other plunger will cause the
screen to be lowered without danger of
distorting or damaging the guide, T-heads
or screen. Such release of only one
Appeal No. 98-0363
Application 08/740,389
6
plunger would only happen accidently.
[Column 5, lines 36-44.]
From the above, the artisan would reasonably infer that the T-
heads and guides cooperate to prevent pivoting or tilting of
the screen. While the examiner speculates that (from the
illustration in Fig. 8) the "T-head 48 is spaced far enough
away from the bottom of the U-shaped channel [assemblies] 50
so as to permit rotation of bar 45" (answer, page 5), we must
point out that a "rejection based on section 103 must clearly
rest on a factual basis, and these facts must be interpreted
without hindsight reconstruction of the invention from the
prior art. . . . [The examiner] may not . . . resort to
speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in . . . [the] . . . factual basis."
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967). In any event, regardless of whether the tolerances in
the guiding structure of Golkowski are sufficient to allow an
incidental amount of pivoting or tilting of the screen, there
is absolutely nothing in Golkowski which either teaches or
suggests the desirability of providing for a "means for
Appeal No. 98-0363
Application 08/740,389
7
pivotally attaching . . ." as expressed by the claims under
consideration.
As to Carman, while this reference teaches a single point
attachment of the free end of the screen to the window casing
or sash, it is not done so in the context of providing for
pivoting or tilting movement of the free end of the screen.
Instead, the single point contact of Carman is in the context
of providing for a latching structure. To this end, Carman
provides a catch F that is rigidly attached to a U-shaped
screen guard E which in turn is attached to the free end of
the screen. The catch F cooperates with a spring I having a
rod-shaped portion and, when the catch is engaged with the
rod-shaped portion of the spring in the latched condition, the
screen guard is held tightly against the window sill or sash,
thus preventing pivoting or tilting of the free end of the
screen in the manner claimed. Absent the appellant's own
teachings, we can think of no cogent reason why one of
ordinary skill in this art would have singled out the concept
of a single point contact from the latch of Carman and
incorporated it into the structure of Golkowski in such a
manner so as to arrive at the claimed invention. The examiner
Appeal No. 98-0363
Application 08/740,389
8
may not pick and choose from any one reference only so much of
it as will support a given position (i.e., that a single point
contact is provided between the free end of the screen and the
sash), to the exclusion of other parts necessary to the full
appreciation of what such reference fairly suggests to one of
ordinary skill in the art. See Bausch & Lomb, Inc., v.
Barnes-Hind/Hydrocurve Inc., 796 F.2d 443, 448, 230 USPQ 416,
419 (Fed. Cir. 1986) and In re Kamm, 452 F.2d 1052, 1057, 172
USPQ 298, 301-02 (CCPA 1972).
The examiner has stated that the proposed combination of
Golkowski and Carman would cut down on material and
installation costs; however, the mere fact that this might be
the case does not serve as a proper motivation or suggestion
to combine the teachings of Golkowski and Carman. Instead, it
is the teachings of the prior art which must provide the
motivation or suggestion to combine the references. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992). Here, we find no such suggestion.
As to rejection (2), we have carefully reviewed the
teachings of Wootten, but find nothing therein which would
Appeal No. 98-0363
Application 08/740,389
9
overcome the deficiencies of Golkowski and Carman that we have
noted above.
In view of the foregoing, we will not sustain the
rejections under 35 U.S.C. § 103 of claims 1, 2, 4, 6, 7, 12-
17 and 20-23 as being unpatentable over Golkowski in view of
Carman and claims 5, 9-11 and 19 as being unpatentable over
Golkowski in view of Carman and Wootten.
Rejection (3)
The examiner's explanation of this rejection appears on
page 3 of the final rejection wherein it is stated that
"Carman is applied here to Marbach as it was applied above to
Golkowski." Marbach, however, appears even more remote from
the concept of providing for a means for pivotally attaching
the free end of the screen at the midpoint thereof than
Golkowski. That is, Marbach attaches the free end of the
screen along the entire lateral extent thereof by a plurality
of securing elements 14, obviously preventing any pivoting
movement whatsoever. Carman does not overcome this deficiency
Appeal No. 98-0363
Application 08/740,389
10
for the reasons stated above in Rejections (1) and (2). It
therefore follows that we will not sustain the rejection of
claims 12-15, 17 and 18 under 35 U.S.C. § 103 based on the
combined teachings of Marbach and Carman.
The examiner's rejections are all reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
CHARLES F. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS
) AND
) INTERFERENCES
)
MURRIEL E. CRAWFORD )
Administrative Patent )
)
)
Appeal No. 98-0363
Application 08/740,389
11
JMM:kis
Walter L. Beavers
326 South Eugene Street
Greensboro, NC 27401