Ex parte Olsen

Board of Patent Appeals and Interferences

Sep 14, 2000

08778392 (B.P.A.I. Sep. 14, 2000)

1
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not written for publication and is not binding precedent of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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DANE R. OLSEN
_____________
Appeal No. 1999-1044
Application No. 08/778,392
______________
ON BRIEF
_______________
Before CALVERT, ABRAMS, and GONZALES, Administrative Patent
Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 12 and 14. Claims 2 through 11, 13 and
15 through 20 have been canceled.
We REVERSE.
Appeal No. 1999-1044
Application No. 08/778,392
2
The appellant's invention relates to a post-mounted sign
holder. An understanding of the invention can be derived from
a reading of exemplary claim 1, which appears in the appendix
to the appellant's brief (Paper No. 11).
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Neuendorf et al. 5,088,672 Feb. 18,
1992
(Neuendorf)
Schmanski et al. 5,189,822 Mar. 2,
1993
(Schmanski)
Claims 1, 12 and 14 stand rejected under 35 U.S.C. § 103
as being unpatentable over Neuendorf in view of Schmanski.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 12) for
the examiner's complete reasoning in support of the rejection,
and to the brief for the appellant's arguments thereagainst.
OPINION
Appeal No. 1999-1044
Application No. 08/778,392
3
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
not sustain the examiner's rejection of claims 1, 12 and 14
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,
Appeal No. 1999-1044
Application No. 08/778,392
The specific teachings of Neuendorf and Schmanski relied1
upon by the examiner are set forth on pages 3 and 4 of the
answer.
4
1016, 173 USPQ 560, 562
(CCPA 1972).
The rejection of claims 1, 12 and 14 is based on the
examiner's determination (answer, p. 3) that Neuendorf "shows
the basic structure of the claimed sign holder . . . , but
does not show sign portion 17 to comprise a hollow housing."
With regard to this difference, the examiner determined
(answer, p. 4) that it would have been obvious to one skilled
in the art to have substituted Schmanski's housing for the
sign 17 of Neuendorf in order to facilitate sign changing as
taught by Schmanski.1
The appellant argues that the prior art as applied does
not arrive at the claimed invention. Specifically, the
appellant argues (brief, pp. 3-6) that neither Schmanski nor
Neuendorf teaches or suggests a hollow sign housing having an
open end for sign insertion when the sign is fully assembled
and ready for use or a rotatable sign support as required by
independent claim 1.
Appeal No. 1999-1044
Application No. 08/778,392
5
We agree.
The examiner responded to these arguments (answer, pp. 4-
5) by stating that Schmanski's end caps (32, 34) are removable
and the sign holder is, thus, capable of assuming an open-
ended arrangement as claimed. As to the Neuendorf reference,
the examiner maintains that "each of Neuendorf's clamps 10 is
inherently pivotally mounted to the sign structure via pivot
pins 21, 56" (answer, p. 5).
With regard to the removal of the end caps, Schmanski
teaches that
[t]he fins 40 and projections 42 fit snugly against
the flanges 18 and back wall 12 to effectively form
frictional wedges that are held in place between the
flanges 18 and the back wall 12. A bonding agent is
preferably used to bond the fins 40 and projections
42 of the upper end cap 32 to the flanges 18 and
back wall 12 to lock the upper end cap 32 in place.
The lower end cap 34 is releasably locked in place
by a retaining fastener as will be described more
fully hereinafter.
Col. 4, ll. 60-68. Also, Schmanski teaches that
. . . the upper end cap 32 is preferably bonded
permanently in place by a bonding agent. It is not
advantageous to permanently bond the lower end cap
34 in place inasmuch as it is often necessary to
access the insert panel 30 in the sign to change or
add information shown thereon.
Appeal No. 1999-1044
Application No. 08/778,392
6
Col. 6, ll. 3-8. As evidenced by the text reproduced above,
it is clear that when Schmanski's sign is fully assembled and
ready for use, the upper end cap 32 permanently closes the top
edge (as viewed in Fig. 1) of the hollow sign housing and the
lower end cap closes the bottom edge. Thus, neither edge is
open as required by claim 1.
Moreover, we agree with the appellant's argument that
"said hollow sign housing being rotatable about said pivot pin
so that said hollow sign housing is positionable in a
plurality of preselected rotational positions of adjustment
relative to said flat base" as recited in claim 1 under appeal
is not suggested by the applied prior art. In that regard,
neither Neuendorf nor Schmanski teaches or suggests that the
sign housing is rotatable
about a pin so that the housing is capable of being
positionable in a plurality of preselected rotatable
positions.
The examiner maintains that "each of Neuendorf's clamps
10 is inherently pivotally mounted to the sign structure via
pivot pins 21, 56" (answer, p. 5). When an examiner relies
Appeal No. 1999-1044
Application No. 08/778,392
7
upon a theory of inherency, "the examiner must provide a basis
in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior
art." Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. &
Int. 1990). Inherency simply cannot be established based on
probabilities or possibilities. See In re Oelrich, 666 F.2d
578, 581, 212 USPQ 323, 326 (CCPA 1981).
In the present case, the examiner has not met the burden
of furnishing an adequate factual foundation and/or technical
reasoning to show that the structure taught in Neuendorf
necessarily results in the sign being rotatable about pin 21
or 56 so that the sign is positionable in a plurality of
preselected rotational positions as claimed in claim 1.
In our view, the only suggestion for modifying Neuendorf
in the manner proposed by the examiner to meet the rotatable
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,
Appeal No. 1999-1044
Application No. 08/778,392
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1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984). Since the prior art as combined by the
examiner in the rejection before us in this appeal fails to
arrive at the claimed invention for the reasons set forth
above, the decision of the examiner to reject claims 1, 12 and
14 under 35 U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
Appeal No. 1999-1044
Application No. 08/778,392
9
claims 1, 12 and 14 under 35 U.S.C. § 103 is reversed.
REVERSED
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN F. GONZALES )
Administrative Patent Judge )
JFG:lmb
Appeal No. 1999-1044
Application No. 08/778,392
10
RONALD E. SMITH
SMITH & HOPEN, P.A.
SUITE 220
15950 BAY VISTA DRIVE
CLEARWATER, FL 33760