Ex Parte Musacchia

Board of Patent Appeals and Interferences

Mar 11, 2004

09174868 (B.P.A.I. Mar. 11, 2004)

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for publication and is not binding precedent of the Board.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. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN MUSACCHIA
____________
Appeal No. 2004-0430
Application No. 09/174,868
____________
ON BRIEF
____________
Before COHEN, 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 and 3
to 18, which are all of the claims pending in this application.
We REVERSE and REMAND.
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BACKGROUND
The appellant's invention relates generally to a hunting device for calling game.
Particularly, the appellant's invention relates to an improved game call device of
unitary construction having a game call portion and a platform portion. The game call
portion is that portion of the appellant's invention that produces the calling sounds.
Further, the appellant's game call can be retained securely relative to a hunter's body,
and is elevated from the hunter's body by the platform portion. Thus, the hunter has
instant, ready access to the appellant's call when secured to the body while the field
performance of the appellant's invention, having percussive or friction-generated type
game call portions, is not compromised (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellant's brief.
The prior art reference of record relied upon by the examiner in rejecting the
appealed claims is:
Musacchia 5,607,091 Mar. 4, 1997
Claims 1 and 3 to 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Musacchia.
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Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the final
rejection (Paper No. 24, mailed September 24, 2002) and the answer (Paper No. 30,
mailed April 29, 2003) for the examiner's complete reasoning in support of the rejection,
and to the brief (Paper No. 27, filed March 24, 2003) 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 reference, 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 and 3 to 18 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
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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). Even when
obviousness is based on a single prior art reference, there must be a showing of a
suggestion or motivation to modify the teachings of that reference. See In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
In the rejection under 35 U.S.C. § 103 before us in this appeal (final rejection,
pp. 2-5), the examiner (1) set forth the pertinent teachings of Musacchia's hunting
device for producing sound; (2) ascertained that "Musacchia discloses the claimed
invention except for the game call device constructed as one piece as recited in claims
1, 10, 14 and 17" (the independent claims on appeal); and (3) concluded that:
It would have been obvious to one having ordinary skill in the art at the time the
invention was made to form the game call device as one piece, since it has been
held that forming in one piece an article which has been formed in two pieces
and put together involves only routine skill in the art. Howard v. Detroit Stove
Works, 150 U.S. 164 (1893).
The examiner has incorrectly drawn from the above-noted case law, which
turned on specific facts, a general obviousness rule: namely, that forming several
pieces integrally as a one-piece structure would have been obvious at the time the
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1 In Howard the Supreme Court stated (150 U.S. at 169-70) that
the Monumental grate, which was in public use five years before application was made for the
patent under consideration, contains all of the elements of the Beckwith grate, except that, being
adapted for burning coal, it is cast in two pieces, while the Beckwith grate is cast in one piece.
This does not involve patentable invention.
. . . As to the third patent, it is void because the claims in it were clearly anticipated, and
because it involves no invention to cast in one piece an article which has formerly been cast in two
pieces, and put together.
In Howard, prior art other the Monumental grate taught casting the grate in one piece. Thus, providing
evidence as to why it would have been obvious at the time Beckwith's invention was made to a person of
ordinary skill in the art to have cast the Monumental grate as one piece.
invention was made to a person of ordinary skill in the art. No such per se rule exists.1
See In re Hubbell, 164 F.2d 700, 702-04 76 USPQ 105, 107-09 (CCPA 1947); In re
Otto, 121 F.2d 553, 555, 50 USPQ 149, 150 (CCPA 1941). The examiner's citation of
Howard or any other case as a basis for rejecting claims that differ from the prior art by
reciting a one-piece structure is improper, if it sidesteps the fact-intensive inquiry
mandated by 35 U.S.C. § 103. Thus, in this case, one must determine if it would have
been obvious to one of ordinary skill in the art at the time the invention was made to
make Musacchia's separate call and platform as a one-piece structure.
In this case, we agree with the appellant that the examiner has failed to establish
a prima facie case of obviousness for the claims under appeal with respect to the one-
piece limitation as recited in claims 1, 10, 14 and 17. In that regard, it is our
determination that there is no evidence before us in this appeal that the one-piece
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2 Evidence of a suggestion, teaching, or motivation to modify a reference may flow from the prior
art references themselves, the knowledge of one of ordinary skill in the art, or, in some cases, from the
nature of the problem to be solved, see Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996), Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73
F.3d 1085, 1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996), although
"the suggestion more often comes from the teachings of the pertinent references," In re Rouffet, 149 F.3d
1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). The range of sources available, however, does not
diminish the requirement for actual evidence. A broad conclusory statement regarding the obviousness of
modifying a reference, standing alone, is not "evidence." Thus, when an examiner relies on general
knowledge to negate patentability (such as making plural elements into a single-piece assembly), that
knowledge must be articulated and placed on the record. See In re Lee, 277 F.3d 1338, 1342-45, 61
USPQ2d 1430, 1433-35 (Fed. Cir. 2002) and In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614,
1617 (Fed. Cir. 1999).
limitation would have been obvious to one of ordinary skill in the art at the time the
invention was made from the teachings of Musacchia.
For the reasons set forth above, we conclude that the examiner's determination
of the obviousness of the one-piece limitation has not been supported by any evidence2
that would have led an artisan to arrive at the claimed invention. In our view, the only
suggestion for modifying Musacchia in the manner proposed by the examiner in the
rejection before us in this appeal to meet the one piece 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 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).
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For the reasons set forth above, we are constrained to reverse the decision of
the examiner to reject independent claims 1, 10, 14 and 17, and claims 3 to 9, 11 to 13,
15, 16, 17 and 18 dependent thereon, under 35 U.S.C. § 103.
REMAND
We remand this application to the examiner for further consideration of the
patentability of claims 1 and 3 to 18. Specifically, we remand this application to the
examiner to ascertain if there is any prior art evidence establishing that it would have
been obvious at the time the invention was made to a person of ordinary skill in the art
to have modified Musacchia's hunting device to arrive at the claimed invention.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1 and 3 to 18 under
35 U.S.C. § 103 is reversed. In addition, we have remanded this application to the
examiner for further consideration.
This application, by virtue of its "special" status, requires immediate action, see
MPEP § 708.01.
REVERSED and REMANDED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2004-0430
Application No. 09/174,868
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