Ex Parte Marcus

Board of Patent Appeals and Interferences

Apr 23, 2004

09658278 (B.P.A.I. Apr. 23, 2004)

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not written for publication and is not binding precedent of the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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte GEORGE L. MARCUS
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Appeal No. 2004-1098
Application No. 09/658,278
___________
ON BRIEF
___________
Before COHEN, FRANKFORT, and MCQUADE, Administrative Patent
Judges.
MCQUADE, Administrative Patent Judge.
DECISION ON APPEAL
George L. Marcus appeals from the final rejection of claims
16 through 21, all of the claims pending in the application.
THE INVENTION
The invention relates to “a mobile cart for use in the
transport of large stringed instruments, such as basses and
cellos” (specification, page 2). Representative claim 16 reads
as follows:
16. An instrument hand cart for a bass or viol comprising:
a base plate, three caster wheels, and two end structures,
said base plate comprising a top surface, a bottom surface, four
sides, and four corners, said base plate defining a longitudinal
channel proximate each of said four corners;
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said caster wheels secured to said bottom surface of said
base plate, extending from said base plate in spaced apart
relationship to each other;
said end structures being secured to said base plate, one
near each end thereof and projecting from said top surface of
said base plate in divergent relationship to each other;
each of said end structures having a first portion secured
at one end to said base plate and a bail pivotally secured at its
open end to said first portion at the other end of said first
portion;
each of said bails comprising two substantially parallel
bail legs, each of said bail legs having upper and lower bail leg
ends, said upper bail leg ends of each of said bails being
connected by a tubular padded connecting rod;
each of said first portions comprising two substantially
parallel standards, each of said standards having upper and lower
standard ends, said upper standard ends being pivotally and
adjustably secured to said lower bail leg ends by means of a bolt
having a tubular pad disposed thereon;
each of said lower standard ends having a foot portion
substantially perpendicular thereto, each said foot portion
having an aperture disposed therethrough for receiving a screw
for connecting to said base plate, each of said standard ends
being positionable along each said channel, wherein said channel
is dimensioned to receive said screw for adjustably mounting said
standard along the length of said channel at selective positions
so that said standards are arranged immediately adjacent to the
sides of a bass or viol securing the bass or viol to said cart;
and,
a compression spring mounted on said base plate at the
center of said top surface of said base plate, and a socket
carried by said spring in spaced relationship to said base plate,
said socket being adapted to receive the bottom end boss of a
bass viol, said bails being adapted to hook into the bow recesses
thereof.
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THE PRIOR ART
The references relied on by the examiner to support the
final rejection are:
Marcus 2,736,225 Feb. 28, 1956
Legler et al. (Legler) 6,155,524 Dec. 5, 2000
THE REJECTIONS
Claims 16, 17 and 19 through 21 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Marcus.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Marcus in view of Legler.
Attention is directed to the brief (Paper No. 14) and answer
(Paper No. 15) for the respective positions of the appellant and
examiner regarding the merits of these rejections.
DISCUSSION
According to the examiner (see page 3 in the answer), Marcus
discloses an instrument hand cart which meets all of the
limitations in independent claim 16 except for those requiring
(1) the base plate to define a longitudinal channel proximate
each of its four corners and (2) each of the lower standard ends
to be positionable along a channel wherein the channel is
dimensioned to receive a screw for adjustably mounting the
standard along the length of the channel at selective positions
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so that the standards can be arranged immediately adjacent the
sides of a bass or viol for securing it to the cart. To deal
with Marcus’ failure to meet these limitations, the examiner
offers the following analysis:
It is old and well known in the art to make
instrument stands and carts adjustable so that they can
accommodate various sizes and shapes of instrument.
Making a known product adjustable is not a patentable
improvement. In re Stevens, 101 USPQ 284 (1954). The
most straight forward manner to make the Bass Viol
stand of [Marcus] adjustable would be to provide slots
that allow the standard members (29) to be moved
longitudinally of the cart and tightened in the desired
position. Such a structure is taught by [Marcus] in
regard to the adjustable bails 24 and 30. The bails
are provided with longitudinal channels dimensioned to
receive a screw for adjustably mounting the bails.
Also a total of four channels are provided, each at the
extremities of the bails.
From this channel teaching provided by [Marcus],
providing channels as defined by [claim 16] in the base
plate for adjustably mounting the standards would have
been obvious to one of ordinary skill in the art at the
time the invention was made. This modification would
provide an effective structure for making the known
arrangement of the standards adjustable and would allow
the cart to be adjusted to accommodate a variety of
sized instruments [answer, pages 3 and 4].
The finding by the examiner that the Marcus hand cart
responds to all of the limitations in claim 16 except for those
relating to the adjustable mounting of the standards is well
taken. The manner in which the examiner deals with this
deficiency, however, is unsound.
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Rejections based on 35 U.S.C. § 103(a) must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
177-78 (CCPA 1967). In making such a rejection, an examiner has
the initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id. In this vein,
the examiner may not rely on so-called mechanical or per se rules
of obviousness to sidestep the fact specific analysis of claims
and prior art required by 35 U.S.C. § 103(a). In re Ochiai, 71
F.3d 1565, 1570-71, 37 USPQ2d 1127, 1132-33 (Fed. Cir. 1995); In
re Wright, 343 F.2d 761, 769-70, 145 USPQ 182, 190 (CCPA 1965).
In the present case, the examiner’s conclusion that the
subject matter recited in claim 16 would have been obvious within
the meaning of § 103(a) rests on the combination of a legally
improper per se rule of obviousness culled without foundation
from In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954), and a
series of unsubstantiated assertions concerning the scope of the
prior art in general and the Marcus reference in particular. The
mere fact that prior art may be modified in a manner proposed by
an examiner does not make the modification obvious absent a
suggestion in the prior art of the desirability of the
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modification. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783-84 (Fed. Cir. 1992). Marcus, the only evidence proffered by
the examiner to support the rejection of claim 16, is completely
devoid of any suggestion to provide the instrument hand cart
disclosed therein with adjustably mounted standards of the sort
recited in this claim.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103(a) rejection of independent claim 16, and dependent claims
17 and 19 through 21, as being unpatentable over Marcus.
Since Legler’s disclosure of a general purpose quick release
locking system does not cure the shortcomings of the Marcus
reference relative to the subject matter recited in parent claim
16, we shall not sustain the standing 35 U.S.C. § 103(a)
rejection of dependent claim 18 as being unpatentable over Marcus
in view of Legler.
SUMMARY
The decision of the examiner to reject claims 16 through 21
is reversed.
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REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
) BOARD OF PATENT
)
) APPEALS AND
CHARLES E. FRANKFORT )
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
)
JOHN P. MCQUADE )
Administrative Patent Judge )
JPM/kis
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