Ex parte Mathison et al.

Board of Patent Appeals and Interferences

Oct 24, 2001

09458052 (B.P.A.I. Oct. 24, 2001)

Application filed December 9, 1999, for reissue of U.S.1
Patent No. 5,971,234 (Application No. 09/143,337, filed August
28, 1998) which issued on October 26, 1999.
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for publication and is not binding precedent of the Board.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 TOM BERNARD MATHISON and JOSEPH B. BUDZ
____________
Appeal No. 2001-2625
Application No. 09/458,0521
____________
ON BRIEF
____________
Before STONER, Chief Administrative Patent Judge, FRANKFORT and
NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection (Paper No. 11, mailed December 4, 2000) of claims 1
Appeal No. 2001-2625
Application No. 09/458,052
Claims 5 and 13 were amended subsequent to the final2
rejection.
to 20, which are all of the claims pending in this
application.2
We REVERSE.
Appeal No. 2001-2625 Page 3
Application No. 09/458,052
In the answer (p. 5), it appears to us that the examiner3
combined the two rejections under 35 U.S.C. § 103 together in
(continued...)
BACKGROUND
The appellants' invention relates to dust/air pick-up
systems for squeeze-type dust dispensers (specification, p.
1). A copy of the claims under appeal is set forth in the
appendix to the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Chester 3,241,726 Mar. 22,
1966
Shay 4,007,858 Feb.
15, 1977
McRoskey et al. 4,356,941 Nov. 2,
1982
The following rejections set forth in the final rejection
are before us for review:
(1) Claims 1 to 20 stand rejected under 35 U.S.C. § 251 as
being based upon a defective reissue declaration;
(2) Claims 5 to 10 and 13 to 18 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Shay and Chester; and
(3) Claims 5 to 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Shay and Chester as applied in the
above rejection, and further in view of McRoskey.3
Appeal No. 2001-2625 Page 4
Application No. 09/458,052
(...continued)3
view of the appellants grouping of claims set forth on page 6
of the brief. Accordingly, we believe that the rejections of
the claims under appeal before us in this appeal are the
rejections set forth in the final rejection.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the final rejection and the
answer (Paper No. 17, mailed May 2, 2001) for the examiner's
complete reasoning in support of the rejections, and to the
brief (Paper No. 16, filed March 26, 2001) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 2001-2625 Page 5
Application No. 09/458,052
The appellants have filed two reissue declarations. The4
first reissue declaration was filed December 9, 1999 with the
reissue application. The second reissue declaration was filed
February 26, 2001 and apparently was entered by the examiner
since the Advisory Action (Paper No. 13, mailed March 9, 2001)
states "Declaration filed February 26, 2001 sufficient to
address claims 13-20." Accordingly, both reissue declarations
are before us in this appeal.
The 35 U.S.C. § 251 rejection
We will not sustain the rejection of claims 1 to 20 under
35 U.S.C. § 251.
The examiner's basis for this rejection as set forth in
the final rejection (p. 2) and the answer (p. 5) is that the
reissue declaration filed with this application is defective4
because the error which is relied upon to support the reissue
application is not an error upon which a reissue can be based.
In support thereof the examiner cites 37 CFR § 1.175(a)(1) and
MPEP § 1414 (final rejection, p. 2). In this rejection, the
examiner determined that the appellants were not entitled to
claims 5 to 20 as presented in this application (due to the 35
U.S.C. § 103 rejections set forth above) and therefore, the
stated error in the reissue declaration can not exist.
Appeal No. 2001-2625 Page 6
Application No. 09/458,052
We find no authority for this rejection in 35 U.S.C. §
251, 37 CFR § 1.175(a)(1) or MPEP § 1414. In our view, a
prior art rejection of all claims sought to be added to the
patent does not, ipso facto, give rise to a rejection under 35
U.S.C. § 251 as set forth by the examiner in this case.
Additionally, we note that from our review of the two reissue
declarations, both reissue declarations comply with the
requirement of 37 CFR
§ 1.175(a)(1) since the appellants have stated that they
believe the original patent to be wholly or partly inoperative
or invalid by reason of the patentee claiming more or less
than the patentee had the right to claim in the patent and
stating at least one error being relied upon as the basis for
reissue. Moreover, given our disposition of the examiner's
rejections under 35 U.S.C. § 103, as noted infra, the
examiner's entire premise for this rejection is without
foundation.
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 20 under 35 U.S.C. § 251 is
reversed.
Appeal No. 2001-2625 Page 7
Application No. 09/458,052
The 35 U.S.C. § 103 rejections
We will not sustain the rejection of claims 5 to 10 and
13 to 18 under 35 U.S.C. § 103 as being unpatentable over Shay
and Chester. Likewise, we will not sustain the rejection of
claims 5 to 20 under 35 U.S.C. § 103 as being unpatentable
over Shay, Chester and McRoskey.
Appeal No. 2001-2625 Page 8
Application No. 09/458,052
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a prima facie case of
obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that would
have led one of ordinary skill in the art to combine the
relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972).
In both of the rejections under 35 U.S.C. § 103 before us
in this appeal, the examiner determined (answer, p. 5) that
Figures 7 to 13 of Shay disclose the following subject matter:
a dispensing device comprising: a container 12; a plug
18' including a bore 22'; an outlet tube 30' having an
open top end (receiving 28) and a "closed" (by 37')
bottom end; a dip tube 32' having an open top end (at 29)
and a "closed" (by 34') bottom end; and vent holes (37a,
at 29, 40).
The examiner ascertained (answer, p. 5) that Shay teaches all
the claimed subject matter of claims 5 and 13 (the only
independent claims rejected under 35 U.S.C. § 103) "except for
Appeal No. 2001-2625 Page 9
Application No. 09/458,052
the dip tube being 'seatingly held by said plug.'" Next, the
examiner concluded (answer, p. 6) that in view of the
teachings of Chester, "it would have been obvious to one of
ordinary skill in the art to associate a plug seat (and vent
hole 40) with the Shay dip tube as being an art recognized
equivalent method of providing an air flow passage in a dip
tube."
The appellants argue (brief, pp. 13-14) that the applied
prior art does not suggest the claimed subject matter. We
agree.
Claims 5 to 20 under appeal require the dip tube (i.e.,
Shay's down tube element 32') to be seatingly held by the plug
(i.e., Shay's dispensing head 18'). In our view, the
teachings of Chester would not have been suggestive to a
person of ordinary skill in the art to have modified Shay's
down tube element 32' to be seatingly held by his dispensing
head 18' since Shay teaches that air flows (as indicated in
Figure 8 of Shay) into the open upper end of down tube element
32' and then up dip tube 30' and out discharge nozzle 24'.
Chester would not have suggested any modification to the way
Appeal No. 2001-2625 Page 10
Application No. 09/458,052
We have also reviewed the reference to McRoskey but find5
nothing therein which makes up for the deficiencies of Shay
and Chester discussed above.
air flows into Shay's down tube element 32' (i.e., air flowing
through vent holes in the down tube which is seatingly held by
the plug) since Chester does not teach or suggest air flowing
down a down tube and then up a dip tube to a discharge nozzle.
Thus, it appears that the only suggestion for modifying Shay
in the manner proposed by the examiner to meet the above-noted
limitation stems from hindsight knowledge derived from the
appellants' own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C.
§ 103 is, of course, impermissible. See, for example, W. L.
Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984). It follows that we cannot sustain the examiner's
rejections of claims 5 to 20. 5
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 20 under 35 U.S.C. § 251 is reversed and the
Appeal No. 2001-2625 Page 11
Application No. 09/458,052
decision of the examiner to reject claims 5 to 20 under 35
U.S.C. § 103 is reversed.
REVERSED
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-2625 Page 12
Application No. 09/458,052
KLEHR, HARRISON, HARVEY, BRANZBURG & ELL
260 SOUTH BROAD STREET
PHILADELPHIA, PA 19102
Appeal No. 2001-2625 Page 13
Application No. 09/458,052
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