Ex parte Lipps

Board of Patent Appeals and Interferences

Dec 3, 1999

08320585 (B.P.A.I. Dec. 3, 1999)

Application for patent filed October 11, 1994. 1
According to appellant, the application is a continuation of
Application No. 08/095,619, filed July 21, 1993, now
abandoned.
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journal and (2) is not binding precedent of the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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RANDALL A. LIPPS
____________
Appeal No. 1997-2273
Application No. 08/320,5851
____________
HEARD: November 18, 1999
____________
Before THOMAS, HAIRSTON, and DIXON, Administrative Patent
Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 1997-2273
Application No. 08/320,585
2
This is an appeal from the final rejection of claims 31
through 53.
The disclosed invention relates to horizontally spaced-
apart item switches located on at least some of the shelves of
a cabinet.
Claim 31 is illustrative of the claimed invention, and it
reads as follows:
31. A unit for dispensing items, said unit comprising:
a cabinet:
a plurality of shelves vertically spaced-apart in
the cabinet;
a plurality of item switches horizontally spaced-
apart on at least some of the shelves; and
a plurality of movable storage locations on at least
some of the shelves, wherein at least one item switch is
located adjacent to each storage location.
The references relied on by the examiner are:
Kimbrow 4,737,910 Apr. 12,
1988
McLaughlin et al. (McLaughlin) 5,014,875 May 14,
1991
Colson et al. (Colson) 5,346,297 Sept. 13,
1994
(filed Jan. 4,
1993)
Appeal No. 1997-2273
Application No. 08/320,585
Although McLaughlin is mentioned in the grounds of the2
rejection, the examiner never addresses this reference in the
statement of the rejection. As a result thereof, we will not
address this reference in our opinion.
3
Claims 31 through 53 stand rejected under 35 U.S.C. § 103
as being unpatentable over Colson (which incorporates
McLaughlin by reference) in view of Kimbrow.2
Reference is made to the briefs and the answer for the
respective positions of the appellant and the examiner.
OPINION
The obviousness rejection of claims 31 through 53 is
reversed.
According to the examiner (Answer, pages 3 and 4), Colson
was cited to show vertically spaced-apart shelves in a cabinet
(Figure 1), and removable storage locations on some of the
shelves (Figure 8). The examiner acknowledges (Answer, page
4) that “Colson does not disclose the appellant’s limitation
of a plurality of item switches horizontally spaced apart on
some of the shelves.”
Kimbrow discloses that it is known to mount a
mechanically switch activated apparatus that keeps an
inventory of items in stock “proximate to a shelf containing a
Appeal No. 1997-2273
Application No. 08/320,585
4
specified inventory of items” (column 1, lines 56 through 64).
As with Colson, the examiner acknowledges (Answer, page 4)
that “Kimbrow does not specifically disclose the appellant’s
placement of the switches horizontally as disclosed by the
appellant.” The examiner concludes (Answer, page 4), however,
that “it is well known in the art to place switches in an
optimal location,” and that “[i]t would have been obvious to
one of ordinary skill in the art at the time of the invention
to employ switches horizontally because this allows for easy
eye hand coordination in inventory control.”
Although the examiner does address the employment of
“switches horizontally,” he never presents any rationale for
mounting such “switches horizontally” in shelves of a cabinet.
Accordingly, we agree with the appellant (Brief, page 8) that:
[N]one of the art cited by the Examiner discloses
the incorporation of switches into shelves, much
less that the switches and associated storage
locations be laid out in a way where one switch lies
adjacent each storage location. Moreover, appellant
believes that there would be no incentive in either
Colson ‘297, Kimbrow ‘910, or generally in the art,
which would suggest the claimed combination. Colson
‘297 specifically teaches that a stand-alone
keyboard which is not associated with any particular
storage location be used for inputting all required
inventory data. While Kimbrow suggests that
separate inventory devices may be distributed in a
Appeal No. 1997-2273
Application No. 08/320,585
The declaration submitted by John Higham was not3
considered because a declaration submitted "after the case has
been appealed will not be admitted without a showing of good
and sufficient reasons why they were not earlier presented."
See 37 CFR § 1.195. A mere statement by the appellant (Brief,
page 11) that "the Declaration was not made earlier because
all supporting materials were not available" can not take the
place of such a showing.
5
warehouse or other large facility, there is no
suggestion that single switches be somehow removed
from these devices and incorporated into shelves on
particular dispensing units.
In summary, the obviousness rejection is reversed because the3
examiner “is using hindsight to judge the obviousness of the
present invention” (Brief, page 11).
DECISION
The decision of the examiner rejecting claims 31 through
53 under 35 U.S.C. § 103 is reversed.
REVERSED
JAMES D. THOMAS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
KENNETH W. HAIRSTON ) APPEALS
Administrative Patent Judge ) AND
Appeal No. 1997-2273
Application No. 08/320,585
6
) INTERFERENCES
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )
lp
Appeal No. 1997-2273
Application No. 08/320,585
7
JAMES M HESLIN
TOWNSEND AND TOWNSEND AND CREW LLP
TWO EMBARCADERO CENTER, 8TH FLOOR
SAN FRANCISCO CA 94111-3834
Leticia
Appeal No. 97-2273
Application No. 08/320,585
APJ HAIRSTON
APJ DIXON
APJ THOMAS
DECISION: REVERSED
Send Reference(s): Yes No
or Translation (s)
Panel Change: Yes No
Index Sheet-2901 Rejection(s): _____
Prepared: June 17, 2002
Draft Final
3 MEM. CONF. Y N
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PALM / ACTS 2 / BOOK
DISK (FOIA) / REPORT