Ex parte MECK

Board of Patent Appeals and Interferences

Jul 23, 1999

08827841 (B.P.A.I. Jul. 23, 1999)

Application for patent filed April 11, 1997. According1
to the appellant, the application is entitled to benefit under
35 U.S.C. § 120 of an earlier filing date of August 4, 1993.
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for publication in a law journal and (2) is not binding precedent of the Board.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. 43
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte LESLIE A. MECK
____________
Appeal No. 1999-1746
Application No. 08/827,8411
____________
ON BRIEF
____________
Before NASE, CRAWFORD, and GONZALES, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
Appeal No. 1999-1746
Application No. 08/827,841
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claim 1, as amended subsequent to the final rejection.
Claim 1 constitutes the only claim pending in this
application.
We REVERSE.
Appeal No. 1999-1746 Page 3
Application No. 08/827,841
BACKGROUND
The appellant's invention relates to a wall fixture. A
copy of claim 1 appears 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:
Hoegger 1,636,364 July 19,
1927
(Hoegger '364)
Koering 1,773,586 Aug. 19,
1930
Pudliner 1,897,913 Feb. 14,
1933
Hoegger 1,962,739 June 12,
1934
(Hoegger '739)
Shea et al. 2,146,654 Feb. 7,
1939
(Shea)
Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Pudliner in view of Hoegger '364, Shea and
Koering.
Appeal No. 1999-1746 Page 4
Application No. 08/827,841
Claim 1 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Hoegger '739 in view of Hoegger '364 and
Shea.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the examiner's answer (Paper
No. 42, mailed February 17, 1999) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 41, filed December 15, 1998) 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
claim, 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 claim 1. Accordingly, we will not sustain the
Appeal No. 1999-1746 Page 5
Application No. 08/827,841
examiner's rejections of claim 1 under 35 U.S.C. § 103. Our
reasoning for this determination follows.
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. 5 and 7) generally that
the applied prior art does not suggest the claimed subject
matter. We agree.
The claim under appeal requires "an anti-rotation pad
between the room wall and the front wall of said bracket
portion." However, this limitation is not suggested by the
Appeal No. 1999-1746 Page 6
Application No. 08/827,841
applied prior art. In that regard, while Shea does teach a
resilient ring 13 formed of insulating material as rubber
positioned between the cowl 2 and the knob 12, it is our
opinion that Shea would not have suggested modifying either
Pudliner's bracket or the fixture attachment of Hoegger '739
to include an anti-rotation pad between the room wall and the
front wall of said bracket portion.
In our view, the only suggestion for modifying either
Pudliner's bracket or the fixture attachment of Hoegger '739
in the manner proposed by the examiner to meet the above-noted
limitation 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,
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 claim 1.
CONCLUSION
Appeal No. 1999-1746 Page 7
Application No. 08/827,841
To summarize, the decision of the examiner to reject
claim 1 under 35 U.S.C. § 103 is reversed.
REVERSED
JEFFREY V. NASE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
Appeal No. 1999-1746 Page 8
Application No. 08/827,841
MYRON B. KAPUSTIJ
MASCO CORPORATION
21001 VAN BORN ROAD
TAYLOR, MI 48180
APPEAL NO. 1999-1746 - JUDGE NASE
APPLICATION NO. 08/827,841
APJ NASE
APJ CRAWFORD
APJ GONZALES
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 19 Jul 99
FINAL TYPED: