Ex parte Neushul

Board of Patent Appeals and Interferences

Jul 5, 2000

08089311 (B.P.A.I. Jul. 5, 2000)

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(2) is not binding precedent of the Board.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. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte STEPHEN NEUSHUL
_____________
Appeal No. 1997-2293
Application No. 08/089,311
______________
ON BRIEF
_______________
Before KRASS, RUGGIERO and GROSS, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal from the final rejection
of claims 5 and 8 to 23. Claims 1 to 4, 6 and 7 have been
canceled. The claimed invention relates to a light box
scanner in which a scanner is coupled to the light box and
Appeal No. 1997-2293
Application No. 08/089,311
2
disposed within the light box housing to form a single
integral unit. A transport mechanism moves a media image
underneath a vertically mounted light source during scanning
and returns the media image to a position where it can be
viewed on the light box. Appellant asserts at page 1 of the
specification that the vertical mounting of the light box
scanner provides for viewing and scanning in the vertical
plane providing only minimal contact between the media image
and the light box scanner unit.
Claim 5 is illustrative of the invention and reads as
follows:
5. A light box scanner to scan a media image stored on
a media and to allow viewing the media image, said light
box scanner comprising:
a scanner to scan the media image; and
an x-ray viewing light box coupled to the scanner,
and arranged so that said scanner is disposed within a
housing of said light box, said light box and said scanner
forming a single, integral unit which allows viewing of
the media image without touching or removing the media.
The Examiner relies on the following prior art
references:
Koshiyouji 4,879,604 Nov. 07,
1989
Johnston et al. (Johnston) 5,241,406 Aug. 31,
1993
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Application No. 08/089,311
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(Filed Jan. 18, 1990)
Appeal No. 1997-2293
Application No. 08/089,311
This is a new ground of rejection set forth in the1
Examiner’s Answer. In addition, in response to the
Appellant’s arguments in the Reply Brief, the Examiner
withdrew a 35 U.S.C.
§ 112, first paragraph, rejection of the appealed claims.
The original Appeal Brief was filed May 21, 1996. In2
response to the Examiner’s Answer dated August 13, 1996 a
Reply Brief was filed October 21, 1996 to which the Examiner
responded with a Supplemental Examiner’s Answer dated January
23, 1997.
4
Claims 5 and 8 to 23 stand rejected under 35 U.S.C. § 103
as being unpatentable over either one of Johnston or
Koshiyouji in view of the asserted well known prior art.1
Rather than reiterate the arguments of the Appellant and
the Examiner, reference is made to the Briefs and Answers for2
the respective details.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the Examiner and the
evidence of obviousness relied upon by the Examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, Appellant’s arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth
Appeal No. 1997-2293
Application No. 08/089,311
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in the Examiner’s Answers.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 5 and 8 to 23. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the Examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
In so doing, the Examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1,
17, 148 USPQ 459, 467 (1966), and to provide a reason why one
having ordinary skill in the pertinent art would have been led
to
modify the prior art or to combine prior art references to
arrive
at the claimed invention. Such reason must stem from some
teaching, suggestion or implication in the prior art as a
whole
Appeal No. 1997-2293
Application No. 08/089,311
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or knowledge generally available to one having ordinary skill
in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc.,776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the Examiner are an essential
part
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of complying with the burden of presenting a prima facie case
of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
1443, 1444 (Fed. Cir. 1992).
Appellant’s primary argument in the Briefs centers on the
contention that neither of the Johnston and Koshiyouji
references discloses a light box structure, let alone any
teaching or suggestion of the formation of a light box and
scanner into a single integral unit as claimed. After careful
review of the applied prior art in light of the arguments of
record, we are in agreement with Appellant’s position as
stated in the Briefs. We note that the relevant portion of
each of the independent appealed claims 5, 13, and 18 recites:
an x-ray viewing light box coupled to the
scanner, and arranged so that said scanner
is disposed within a housing of said light
box, said light box and said scanner forming
a single, integral unit . . .
Our interpretation of the disclosures of Johnston and
Koshiyouji coincides with that of the Appellant, i.e. these
references, at most, suggest only a scanner light source and
scanner mechanism mounted inside a housing. We are at a loss
Appeal No. 1997-2293
Application No. 08/089,311
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as to what structure of Johnston or Koshiyouji could be
construed to correspond to the claimed light box structure and
we find no enlightenment on this issue from the Examiner’s
reasoning in the Answers.
Further, it is our view that, notwithstanding the merits
of the Examiner’s generalized assertion (Answer, page 5) that
vertically mounted light boxes for viewing x-rays are well
known in the art, such assertion does not address the issue of
obviousness with respect to the specific limitations of the
appealed claims. As discussed supra, we find no disclosure of
any light box structure in Johnston or Koshiyouji. The
Examiner has provided no indication as to how and where the
skilled artisan might have found it obvious to modify either
of Johnston or Koshiyouji to arrive at the particular light
box and scanner arrangement of the claimed invention. The
mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992). Since all of the
claim limitations are not taught or suggested by the applied
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Application No. 08/089,311
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prior art, it is our opinion that the Examiner has not
established a prima facie case of obviousness with respect to
the claims on appeal. Accordingly, we do not sustain the
Examiner’s 35 U.S.C. § 103 rejection of independent
claims 5, 13, and 18, nor of claims 8 to 12, 14 to 17, and 19
to
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23 dependent thereon. Therefore, the Examiner’s decision
rejecting claims 5 and 8 to 23 is reversed.
REVERSED
)
ERROL A. KRASS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOSEPH F. RUGGIERO )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
JFR:hh

Appeal No. 1997-2293
Application No. 08/089,311
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