Ex parte LYNCH

Board of Patent Appeals and Interferences

Sep 11, 1998

08183066 (B.P.A.I. Sep. 11, 1998)

Application for patent filed January 18, 1994.1
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not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES P. LYNCH
__________
Appeal No. 97-4241
Application No. 08/183,0661
__________
ON BRIEF
__________
Before COHEN, ABRAMS and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-6, 8-29 and 36-39. Claim 7 has
been cancelled, and claims 30-35 withdrawn as directed to a
nonelected invention.
The appellant's invention is directed to a canopy
structure adapted to be erected in custom configurations, and
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Application No. 08/183,066
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to a method of providing a sheltered space. The subject
matter before us on appeal is illustrated by reference to
claims 1 and 36, which have been reproduced in an appendix to
the Appeal Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
McCarthy 2,873,750 Feb. 17,
1959
Lundblade 4,285,355 Aug.
25, 1981
Pandell 4,642,868 Feb. 17,
1987
Cannon et al. (Cannon) 4,677,999 Jul. 7,
1987
Balicki et al. (Balicki) 4,914,767 Apr.
10, 1990
Jamieson 5,161,561 Nov, 10,
1992
Samson et al. (Samson) 5,198,287 Mar. 30,
1993
British application 918,136 Feb.
13, 1963
THE REJECTIONS
The following rejections stand under 35 U.S.C. § 103:
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(1) Claims 1-6, 8-10, 17, 18, 22-27 and 36-39 on the
basis of the British reference in view of Cannon
and Balicki.
(2) Claims 14 and 29 on the basis of the British
reference in view of Cannon, Balicki and
Lundblade.
(3) Claims 11-13, 20, 21 and 28 on the basis of the
British reference in view of Cannon, Balicki,
Jamieson and McCarthy.
(4) Claims 15 and 16 on the basis of the British
reference in view of Cannon, Balicki and Samson.
(5) Claim 19 on the basis of the British reference in
view of Cannon, Balicki and Pandell.
The rejections are explained in Paper No. 7 (the final
rejection).
The opposing viewpoints of the appellant are set forth in
the Brief and the Reply Brief.
OPINION
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness under 35 USC § 103, it is incumbent upon the
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examiner to provide a reason why one of ordinary skill in the
art would have been led to modify a prior art reference or to
combine reference teachings to arrive at the claimed
invention. See Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat.
App. & Int. 1985). To this end, the requisite motivation must
stem from some teaching, suggestion or inference in the prior
art as a whole or from the knowledge generally available to
one of ordinary skill in the art and not from the appellant's
disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988).
Independent claims 1 and 23 are directed to a structure
comprising a flexible sheet of material that is elastic in at
least one direction and that will, when deformed into a
stretched state by support poles placed beneath it, exert a
restoring force that applies a compression force to the poles.
They also require a plurality of anchors that grip the edge
margin of the sheet. Independent claim 36 contains like
requirements, expressed in terms of a method. All three of
these claims stand rejected as being unpatentable over the
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British reference in view of Cannon and Balicki. It is the
examiner’s position that the British reference teaches all of
the structure required by claims 1 and 23 except for elastic
sheet and the releasable edge clamps, but that the addition of
these features to the primary reference would have been
obvious in view of the teachings of the two secondary
references. We do not agree. Our rationale for arriving at
this conclusion follows.
The British reference is directed to providing an
improvement in awnings and tent roofs in which drainage is
provided for rainwater that ordinarily would collect thereon.
It discloses a sheet (1) that is provided with a plurality of
openings (5). The sheet is made of canvas so that it shows “a
considerable rigidity and, therefore, resistance to
collapsing, fluttering and oscillating under the action of
wind” (page 2, lines 6-11). Attached to the sheet at each
opening is a downwardly oriented pipe made of material that is
“highly elastic” (page 1, line 60). The sheet is supported at
its edge by a plurality of poles (2, 4). Once the awning is
erected, the elastic pipes are tensioned to the extent that a
funnel-like depression (b) is formed in the sheet at each
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opening (page 2, line 28 et seq.). Rainwater runs into these
depressions, and then is carried off through the elastic
pipes.
It is the objective of the Cannon reference to provide a
canopy in which the support poles need not be closely spaced
in order to prevent excessive sagging. This is accomplished
by using as a canopy sheets of stretch material having
inelastic or low stretch tendons such as that used in
automobile seat belts fastened to its edges (column 3, lines
14 and 15). Each panel is described as being “very resilient”
(column 4, lines 28 and 29). The canopy formed according to
this invention comprises a “basic rectangular array of four
panels (column 4, lines 20 and 21). The canopy is supported
by edge posts and center posts having guy wires which are
anchored in the ground.
It is axiomatic that the mere fact that the prior art
structure could be modified does not make such a modification
obvious unless the prior art suggests the desirability of
doing so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). It is our primary conclusion that one
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of ordinary skill would not have been motivated to replace the
inelastic canvas used in the British reference by the elastic
sheet disclosed by Cannon, because to do so would eliminate
the rigidity expressly required in order for the British
invention to function in the desired manner.
An additional basis also exists for arriving at this
conclusion. All three of the appellant’s independent claims
require that there be supporting poles so positioned as to
stretch the sheet, and that the restoring force of the
stretched sheet apply a compression force on each of these
poles. In the British reference, the absence of elasticity
means that there is no such restoring force to be applied by
the sheet. In the Cannon system, it does not appear that any
of the poles deform the sheet so as to create a restoring
force which applies a compression load to them, since all are
located at the edges of the sheets and appear to engage the
inelastic edge bindings. Thus, the combined teachings of
these two references would not, in our view, have rendered
this feature of the claims obvious to one of ordinary skill in
the art.
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Balicki has been applied by the examiner for its
disclosure of clamps (5) that grip the edges of a beach
blanket to keep it from blowing away. Only claim 1 requires
such structure, but we fail to perceive any teaching or
suggestion which would have led one of ordinary skill in the
art to utilize such a clamp on the edges of the canopies of
the British reference and Cannon, in view of the fact that
neither requires such a releasable attachment means.
From our perspective, the only suggestion to combine the
teachings of the references in the manner proposed by the
examiner is found in the hindsight accorded one who first
viewed the appellant’s disclosure. This, of course, is an
improper basis for a rejection. See In re Fritch, 972 F.2d
1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
For the reasons set forth above, it is our conclusion
that the teachings of the three references cited against the
appellant’s independent claims fail to establish a prima facie
case of obviousness with regard to the subject matter recited
therein. Moreover, the deficiencies present in these
references are not overcome by taking into consideration the
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other applied references. We therefore will not sustain any
of the rejections.
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The decision of the examiner is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge)
)
)
)
NEAL E. ABRAMS ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge)
Appeal No. 97-4241
Application No. 08/183,066
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Timothy J. Martin
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