Ex parte Miller

Board of Patent Appeals and Interferences

Feb 17, 1999

08529187 (B.P.A.I. Feb. 17, 1999)

Application for patent filed September 15, 1995. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DANNY L. MILLER
____________
Appeal No. 98-1451
Application No. 08/529,1871
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge,
STAAB 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 through 17 and 19, which are all of the
claims pending in this application.
We REVERSE and REMAND.
Appeal No. 98-1451 Page 2
Application No. 08/529,187
BACKGROUND
The appellant's invention relates to an armature assembly
support pallet. An understanding of the invention can be
derived from a reading of exemplary claims 1, 15 and 17, 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:
Wilger et al. (Wilger) 3,830,488 Aug. 20, 1974
Egigian 5,529,371 June 25, 1996
(filed April 14, 1995)
Claims 1 through 17 and 19 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Wilger in view of Egigian.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the examiner's answer (Paper
No. 15, mailed October 27, 1997) for the examiner's complete
reasoning in support of the rejection, and to the appellant's
Appeal No. 98-1451 Page 3
Application No. 08/529,187
brief (Paper No. 12, filed July 7, 1997) for the appellant's
arguments thereagainst.
Appeal No. 98-1451 Page 4
Application No. 08/529,187
In rejecting claims under 35 U.S.C. § 103, the examiner2
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).
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 obviousness2
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejection of claims 1 through 17
and 19 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
We now turn to the examiner's rejection of claims 1
through 17 and 19.
Wilger discloses a propeller manipulating and work stand.
As shown in Figure 1, the propeller manipulating and work
Appeal No. 98-1451 Page 5
Application No. 08/529,187
stand 10 includes a base 12, a post 14, an A-frame 30,
bearings 24 and 40, a tubular bearing 20 and a saddle 36. As
shown in Figures 4-6, a mandrel shaft 6 and propeller 8 can be
accommodated in the tubular bearing 20 and the saddle 36 of
the stand 10.
Egigian discloses a rail saver pad. As shown in Figures
1-2, a protective pad 10 is disposed on the top of the rails
14-16 of a pick-up truck 10. Thereafter, a camper shell 12
can be mounted thereon with the pad maintaining a good water
seal. As shown in Figure 3, the pad 100 includes a strip 105
of magnetic material to hold the pad on the rails 14-16.
The examiner found (answer, pp. 3-4) that Wilger
"discloses the claimed invention except for the magnetic
material attached to the support member." Thereafter the
examiner determined (answer, p. 4) that
[i]t would have been obvious to one having ordinary skill
in the art at the time the invention was made to have
modified the Wilger et al. support device to include a
magnetic material as taught by Egigian for the purpose of
joining two components magnetically to prevent their
relative movement to each other.
Appeal No. 98-1451 Page 6
Application No. 08/529,187
The appellant argues (brief, pp. 8-13) that (1) there is
no suggestion in the applied prior art to modify Wilger in the
manner proposed by the examiner, and (2) Egigian is non-
analogous art. We agree.
Obviousness is tested by "what the combined teachings of
the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). But it "cannot be established by combining
the teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting the
combination." ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). And
"teachings of references can be combined only if there is some
suggestion or incentive to do so." Id. Here, the prior art
contains none. In fact, the advantages of utilizing a
magnetic support surface as set forth in the claims under
appeal are not appreciated by the prior art applied by the
examiner.
Appeal No. 98-1451 Page 7
Application No. 08/529,187
Instead, it appears to us that the examiner relied on
hindsight in reaching his obviousness determination. However,
our reviewing court has said, "To imbue one of ordinary skill
in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest
that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught
is used against its teacher." W. L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984). It is essential
that "the decisionmaker forget what he or she has been taught
at trial about the claimed invention and cast the mind back to
the time the invention was made . . . to occupy the mind of
one skilled in the art who is presented only with the
references, and who is normally guided by the then-accepted
wisdom in the art." Id. Since the limitation regarding the
magnetic support surface as set forth in the claims under
appeal is not taught or suggested by the applied prior art, we
will not sustain the 35 U.S.C. § 103 rejection.
Appeal No. 98-1451 Page 8
Application No. 08/529,187
In addition, we find that Egigian is non-analogous art.
The test for non-analogous art is first whether the art is
within the field of the inventor's endeavor and, if not,
whether it is reasonably pertinent to the problem with which
the inventor was involved. In re Wood, 599 F.2d 1032, 1036,
202 USPQ 171, 174 (CCPA 1979). A reference is reasonably
pertinent if, even though it may be in a different field of
endeavor, it logically would have commended itself to an
inventor's attention in considering his problem because of the
matter with which it deals. In re Clay, 966 F.2d 656, 659, 23
USPQ2d 1058, 1061 (Fed. Cir. 1992). First, we agree with the
appellant (brief, p. 8) that Egigian is clearly not within
the field of the inventor's endeavor, i.e., armature assembly
support pallets. Second, we agree with the appellant (brief,
pp. 8-10) that Egigian is not reasonably pertinent to the
problem with which the inventor was involved, i.e., the need
to maintain an armature assembly carried by a support pallet
in a uniform axial position while on the support pallet.
Thus, we conclude that Egigian is non-analogous art.
Appeal No. 98-1451 Page 9
Application No. 08/529,187
For the reasons set forth above, the decision of the
examiner to reject claims 1 through 17 and 19 under 35 U.S.C.
§ 103 is reversed.
Remand for Appropriate Search
This application is remanded to the examiner for
consideration of a further search of the claimed subject
matter.
The claimed subject matter is directed to an armature
assembly support pallet (claims 1-16) and a support assembly
for use in an armature assembly support pallet (claims 17 and
19). However, the disclosure (specification, p. 1) sets
forth that this invention relates to an armature assembly
support pallet used for conveying a partly constructed
electric motor armature assembly during manufacture. Thus, a
search should be considered in Class 198, Conveyors: Power-
Driven. Specifically, subclasses 803.5 and 867.04 appear to
be pertinent to the claimed subject matter.
Appeal No. 98-1451 Page 10
Application No. 08/529,187
Accordingly, we remand this application to the examiner
to consider a search of Class 198 and any other pertinent
field of search.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 17 and 19 under 35 U.S.C. § 103 is reversed.
In addition, this application has been remanded to the
examiner to consider a further search.
REVERSED; REMANDED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 98-1451 Page 11
Application No. 08/529,187
JVN/gjh
Appeal No. 98-1451 Page 12
Application No. 08/529,187
ROGER S. DYBVIG
22 GREEN STREET
DAYTON, OH 45402
APPEAL NO. 98-1451 - JUDGE NASE
APPLICATION NO. 08/529,187
APJ NASE
APJ STAAB
SAPJ McCANDLISH
DECISION: REVERSED; REMANDED
Prepared By: Gloria Henderson
DRAFT TYPED: 25 Jan 99
FINAL TYPED: