Ex parte Mccrane

Board of Patent Appeals and Interferences

May 27, 1999

08651991 (B.P.A.I. May. 27, 1999)

Application for patent filed May 21, 1996. 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not written for publication in a law journal and (2) is not binding
precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID P. McCRANE
____________
Appeal No. 98-2149
Application No. 08/651,9911
____________
ON BRIEF
____________
Before MEISTER, FRANKFORT, and BAHR, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-2149 Page 2
Application No. 08/651,991
David P. McCrane (the appellant) appeals from the final
rejection of claims 1-18, the only claims present in the
application.
We REVERSE.
The appellant's invention pertains to a protective device
for use in active sports of the type having a cushioning pad
with a replaceable wear cap and to a method of unfastening the
wear cap from the cushioning pad. Independent claims 1 and 17
are further illustrative of the appealed subject matter and
copies thereof may be found in the appendix to the brief.
The reference relied on by the examiner is:
Robinson 4,599,747 Jul. 15,
1986
Claims 1-8 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Robinson. The examiner notes that Robinson
teaches the attachment of a replaceable wear cap 40 to a
cushioning pad 38 by means of hook and loop-type fasteners.
Thereafter, the examiner concludes that:
The placement of the fasteners in any pattern or
direction could readily be determined through routine
experimentation based on the direction of applied
forces and magnitude of adhesion desired. Note that
it has been held that rearranging parts of an
Appeal No. 98-2149 Page 3
Application No. 08/651,991
invention involves only routine skill in the art. In
re Japikse, [181 F.2d 1019] 86 USPQ 70 [CCPA 1950].
In the instant case, the modification of the pattern
in which the VELCRO[®] fasteners are applied between
the cushioning pad (38) and replaceable wear cap (40)
is considered an obvious expedient readily determined
based on routine experimentation of the desired
adhesion level. Any such
Appeal No. 98-2149 Page 4
Application No. 08/651,991
pattern, including plural strips with the hooks
placed at an angle with respect to each other is
considered obvious if a different adhesion level is
desired.
* * *
With regard to claims 17-18, the use of a[n]
edged object such as a screwdriver or other blade-
like tool to unfasten the cap is considered an
obvious expedient with the proposed modification of
the Robinson Patent. Blade-like tools such as
screwdrivers are commonly used to pry open a variety
of objects. [Answer, pages 4 and 5.]
We will not support the examiner's position. In rejecting
claims under 35 U.S.C. § 103 the examiner bears the initial
burden of presenting a prima facie case of obviousness. In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). Only if that burden is met does the burden
of coming forward with evidence or argument shift to the
applicant. Id. If the examiner fails to establish a prima
facie case, the rejection is improper and will be overturned.
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988).
According to the specification, hook and loop-type
fastening devices for attaching a replaceable wear cap to a
Appeal No. 98-2149 Page 5
Application No. 08/651,991
cushioning pad wherein the hook ends are randomly oriented are
known, but that such fastening devices are not strong enough to
securely hold the wear caps in place when subjected to certain
forces (see, generally, pages 2 and 3). In order to overcome
the deficiencies of the prior art:
A replaceable wear cap is provided together with a
fastening structure which is releasably carried
between the inner surface of the wear cap and the
outer surface of the cushioning pad. The fastening
structure comprises a cooperating pair of first and
second layers. The first layer is comprised of a
material having a plurality of loops. The second
layer is formed into segments each of which is
comprised of a material having a plurality of hooks.
The hooks of each segment have distal ends which
point substantially unidirectionally so that when the
hooks interengage with the loops the segment has a
maximum resistance to force components vectored
opposite the direction that the hook ends point. The
hooks are released by the method of moving the blade-
like portion of a thin flat tool in the direction the
hook ends point along the length of the interface
between the hooks and loops. [Specification, pages 4
and 5; emphasis added.]
Independent claims 1 and 17, each expressly require at
least first and second segments having unidirectionally
oriented hook ends wherein the hook ends on one segment point
in a direction which diverges from the direction the hook ends
point on the other segment. In order to satisfy these
limitations, the examiner relies on Robinson and states that
Appeal No. 98-2149 Page 6
Application No. 08/651,991
the orientation of the hook ends and the placement of the
segments "could readily be" determined by routine
experimentation based on the direction of applied forces and
magnitude of adhesion desired. We must point out, however,
that obviousness under § 103 is a legal conclusion based on
factual evidence (see In re Fine, supra,) and the mere fact
that the prior art could be modified would not have made the
modifications obvious unless the prior art suggested the
desirability of the modification (see, e.g., In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). Robinson
shows nothing more than what the appellant on pages 2 and 3 of
the specification has admitted to be old in the art. That is,
Robinson simply shows a replaceable wear cap that is attached
to a cushioning pad by means of a hook and loop-type fastener
42. There is no disclosure therein of unidirectionally
oriented hook ends, much less unidirectionally oriented hook
ends that are mounted on first and second segments in such a
manner that the direction of orientation of the hook ends of
the respective segments diverge at a predetermined angle
relative to one another as claimed. Thus, Robinson does not
Appeal No. 98-2149 Page 7
Application No. 08/651,991
provide a factual basis for concluding that unidirectionally
oriented hook ends mounted on first and second segments in the
claimed manner would have been obvious.
The examiner's reliance upon the decision in In re
Japikse, supra, is misplaced inasmuch as, in the facts of that
particular case, the court found that the mere shifting of a
part to a different position did not result in a device which
operated any differently than the prior art. Here, however,
not only is more than mere "shifting" involved, but the
appellant's device clearly overcomes the described deficiencies
of the prior art.
With respect to claims 17 and 18, the examiner has
additionally noted that blade-like tools such as screwdrivers
are commonly used to pry open a variety of objects. However,
the mere fact that this might generally speaking be the case,
does not provide a sufficient factual basis for concluding that
the claimed method (which requires unfastening the above-noted
first and second segments with unidirectionally oriented hook
ends) would have been obvious within the meaning of 35 U.S.C. §
103. See In re GPAC Inc, 57 F.3d 1573, 1582, 35 USPQ2d 1116,
Appeal No. 98-2149 Page 8
Application No. 08/651,991
1123 (Fed. Cir. 1995) and In re Warner, 379 F.2d 1011, 1017,
154 USPQ 173, 178 (CCPA 1967).
Appeal No. 98-2149 Page 9
Application No. 08/651,991
The decision of the examiner to rejection claims 1-18
under 35 U.S.C. § 103 based on the reference to Robinson is
reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER BAHR )
Administrative Patent Judge )
JMM/jlb
Appeal No. 98-2149 Page 10
Application No. 08/651,991
Flehr Hohbach Test Albritton & Herbert
Suite 3400 Four Embarcadero Center
San Francisco, CA 94111