Ex parte Mirza

Board of Patent Appeals and Interferences

Jul 19, 2001

08640160 (B.P.A.I. Jul. 19, 2001)

1 Claims 4, 16 and 18 were amended subsequent to the final
rejection.
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for publication and is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MUHAMMAD Z. MIRZA
____________
Appeal No. 2000-0951
Application No. 08/640,160
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, McQUADE
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, 4 to 6, 11, 14 to 16, 18 to 21, 25 and
28 to 33, which are all of the claims pending in this
application.1
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Application No. 08/640,160
Page 2
We REVERSE.
BACKGROUND
The appellant's invention relates to a transportable sign
or message holder for supporting and displaying replaceable
signs or messages. A copy of the claims under appeal is set
forth 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:
Griggs 3,237,327 March 1,
1966
Romaine 4,953,315 Sept. 4,
1990
Blanchard 5,056,248 Oct.
15, 1991
Claims 1, 4, 14 to 16, 18, 21 and 28 to 33 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Griggs in
view of Romaine.
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Application No. 08/640,160
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Claims 5, 6, 11, 19, 20 and 25 stand rejected under 35
U.S.C. § 103 as being unpatentable over Griggs in view of
Romaine and Blanchard.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the answer (Paper No. 23,
mailed January 18, 2000) for the examiner's complete reasoning
in support of the rejections, and to the brief (Paper No. 22,
filed November 1, 1999) and reply brief (Paper No. 24, filed
April 3, 2000) 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
Appeal No. 2000-0951
Application No. 08/640,160
Page 4
not sustain the examiner's rejection of claims 1, 4 to 6, 11,
14 to 16, 18 to 21, 25 and 28 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).
Griggs discloses an automobile certificate holder. As
shown in Figures 1-5, the holder includes a single transparent
sheet 12 folded to create a bottom edge 14 and a foldable flap
element 22; edges 28 and 30 of sheet 12 are compressed
together under heat conditions and sealed at points 32 to form
an inner compartment for an automobile certificate; and a
plurality of flexible magnets 34, 36 and 38 secured to face 18
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Application No. 08/640,160
Page 5
of the holder by staples 40 which penetrate from the inside of
the compartment 33 towards the outside. Griggs teaches that
the magnets are secured to the sheet 12 prior to formation of
the sealing points 32 and that the magnets are used to secure
the holder to metallic surfaces of a vehicle dashboard.
Romaine discloses a display device for automobiles and
other vehicles which alternately displays two different
messages in an interesting manner calculated to attract
attention. The display device comprises an outer case 14
having a plurality of spaced windows 22 and, mounted within
the case, a slide 16 having a plurality of spaced indicia
spelling out the two messages. The windows and indicia are
positioned in such a manner that upon relative movement of the
slide and case, produced by inertial, centrifugal or
gravitational forces generated by the vehicle movement, the
slide alternates between two positions within the case,
thereby alternately spelling out the two messages. In the
illustrated form of Romaine's invention the mounting means
employed for mounting the display device on the vehicle
comprises, a plurality of suction cups 30. As shown in
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Application No. 08/640,160
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Figures 4 and 5, the suction cups are mounted on threaded
posts 32 which penetrate transversely the ends of the case and
are of sufficient length to span the distance between the
front and back faces of the case. Nuts 34 releasably secure
the suction cups to the assembly. Romaine teaches that the
posts 32 serve the dual functions of mounting the suction cups
and also of providing stops which limit the reciprocating
motion of slide 16 between the two positions in which the
device spells out its respective messages.
In our view, while the combined teachings of Griggs and
Romaine would have made it obvious at the time the invention
was made to a person of ordinary skill in the art to have
replaced Griggs' magnets with suction cups, such a
modification of Griggs does not arrive at the claimed
invention. In that regard, such a modification of Griggs does
arrive at either (1) "mounting means for detachably mounting
the panels on a supporting structure, said mounting means
including a pair of suction cup holders having rear ends and
passing through and connecting side edge portions of said
panels to hold the side portions of the front and rear panels
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Application No. 08/640,160
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together and also limiting lateral movement of a sign or
message received between the two panels, and a pair of suction
cups attached to the rear ends of said suction cup holders" as
recited in claim 1, or (2) "fastening means for detachably
fastening the panels to a solid surface behind the rear panel,
said fastening means including a pair of suction cup holders
having rear ends and passing through and connecting side edge
portions of said panels to hold the side portions of the front
and rear panels together and also limiting lateral movement of
a sign or message received between the two panels, and a pair
of suction cups attached to the rear ends of said suction cup
holders" as recited in claim 16. That is, the combined
teachings of Griggs and Romaine would have suggested stapling
suction cups to Griggs' face 18 so that the staples would
penetrate from the inside of the compartment towards the
outside so as to not interfere with the placing of the
automobile certificate within the comportment of the holder.
In our view, the only suggestion for modifying Griggs to
meet the above-noted limitations stems from hindsight
knowledge derived from the appellant's own disclosure. The
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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 1 and 16,
and claims 4, 14, 15, 18, 21 and 28 to 33 dependent thereon.
We have also reviewed the Blanchard reference
additionally applied in the rejection of dependent claims 5,
6, 11, 19, 20 and 25 but find nothing therein which makes up
for the deficiencies of Griggs and Romaine discussed above
regarding claims 1 and 16. Accordingly, we cannot sustain the
examiner's rejection of appealed claims 5, 6, 11, 19, 20 and
25 under 35 U.S.C. § 103.
CONCLUSION
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Application No. 08/640,160
Page 9
To summarize, the decision of the examiner to reject
claims 1, 4 to 6, 11, 14 to 16, 18 to 21, 25 and 28 under 35
U.S.C. § 103 is reversed.
REVERSED
HARRISON D. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-0951
Application No. 08/640,160
Page 10
STEPHEN G. RUDISILL
JENKENS & GILCHRIST
1445 ROSS AVE STE 3200
DALLAS, TX 75202-2799
Appeal No. 2000-0951
Application No. 08/640,160
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