Ex parte Mazzarelli

Board of Patent Appeals and Interferences

Jul 29, 1999

08324927 (B.P.A.I. Jul. 29, 1999)

Application for patent filed October 18, 1994. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SAMUEL G. MAZZARELLI
____________
Appeal No. 1997-1765
Application No. 08/324,9271
____________
HEARD: July 14, 1999
____________
Before McCANDLISH, Senior Administrative Patent Judge, COHEN and
NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 3, 6 to 9, 11 to 13, 15, 18 to 20 and
24. Claims 4, 5, 10, 14, 16, 21 and 22 have been objected to
as depending from a non-allowed claim. Claims 7, 17 and 23
have been canceled.
Appeal No. 1997-1765
Application No. 08/324,927
We REVERSE.
Appeal No. 1997-1765 Page 3
Application No. 08/324,927
In determining the teachings of Robert, we will rely on2
the translation provided by the appellant attached to the
amendment filed on August 22, 1995 (Paper No. 5).
The examiner mistakenly included canceled claims 17 and3
23 in the statement of the rejection (answer, p. 4).
BACKGROUND
The appellant's invention relates to a protective cover
secured by differential pressure. An understanding of the
invention can be derived from a reading of exemplary claims 1,
13 and 19 (the independent claims on appeal), which appear in
the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Herron et al. (Herron) 4,938,522 July 3,
1990
Robert 2,543,891 Oct. 12,2
1984
(France)
Claims 1 to 3, 6 to 9, 11 to 13, 15, 18 to 20 and 24
stand rejected under 35 U.S.C. § 103 as being unpatentable
over Herron in view of Robert.3
Appeal No. 1997-1765 Page 4
Application No. 08/324,927
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 12,
mailed November 12, 1996) for the examiner's complete
reasoning in support of the rejection, and to the brief (Paper
No. 11, filed July 25, 1996) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it
is our conclusion that the evidence adduced by the examiner is
insufficient to establish a prima facie case of obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1 to 3, 6 to 9,
11 to 13, 15, 18 to 20 and 24 under 35 U.S.C. § 103. Our
reasoning for this determination follows.
Appeal No. 1997-1765 Page 5
Application No. 08/324,927
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).
The appellant argues (brief, pp. 9-11) that the applied
prior art does not suggest the claimed subject matter.
Specifically, the appellant asserts that nowhere is there any
basis (i.e., suggestion) for applying the vents of Robert to
the cover of Herron. We agree.
All the claims under appeal require (1) a unitary
flexible cover member of material substantially impermeable to
air; (2) at least one exhaust aperture in the cover member;
and (3) a venting member disposed over the exhaust aperture.
Appeal No. 1997-1765 Page 6
Application No. 08/324,927
We are aware of Herron's disclosure (column 5, lines 11-4
-36) that a vehicle having his protective cover can be moved
within a waiting area prior to pickup by a customer. However,
this disclosure is insufficient in our view to suggest the a
vehicle with Herron's cover thereon would have been driven at
a speed sufficient to warrant the addition of Robert's vents 8
and semi-cone 9.
However, these limitations are not suggested by the applied
prior art. In that regard, while Robert does teach a venting
member disposed over an exhaust aperture in a cover member, it
is our opinion that Robert does not teach or suggest using
such a venting member over the cover member of Herron since
the cover member of Herron is not intended to cover a vehicle
being driven at speed. 4
In our view, the only suggestion for modifying Herron in
the manner proposed by the examiner (answer, pp. 4-5) to meet
the above-noted limitations stems from hindsight knowledge
derived from the appellant's 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 Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
Appeal No. 1997-1765 Page 7
Application No. 08/324,927
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
For the reasons stated above, the decision of the
examiner to reject claims 1 to 3, 6 to 9, 11 to 13, 15, 18 to
20 and 24 under 35 U.S.C. § 103 is reversed.
Appeal No. 1997-1765 Page 8
Application No. 08/324,927
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 3, 6 to 9, 11 to 13, 15, 18 to 20 and 24 under 35
U.S.C.
§ 103 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1997-1765 Page 9
Application No. 08/324,927
PETER L. COSTAS
PEPE AND HAZARD
225 ASYLUM STREET
HARTFORD, CT 06103
APPEAL NO. 1997-1765 - JUDGE NASE
APPLICATION NO. 08/324,927
APJ NASE
APJ COHEN
SAPJ McCANDLISH
DECISION: REVERSED
Prepared By: Gloria
Henderson
DRAFT TYPED: 19 Jul 99
FINAL TYPED:
HEARD: July 14, 1999