Ex parte Osterberg et al.

Board of Patent Appeals and Interferences

Sep 21, 2001

09153951 (B.P.A.I. Sep. 21, 2001)

While the examiner has approved entry of the amendment1
after final rejection (Paper No. 6, filed May 19, 2000), we
note that this amendment has not been clerically entered.
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for publication and is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DAVID A. OSTERBERG, TOREN S. DAVIS and CONOR D. JOHNSON
____________
Appeal No. 2001-0472
Application No. 09/153,951
____________
ON BRIEF
____________
Before CALVERT, STAAB, and NASE, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 19 to 24, as amended subsequent to the final
rejection. These claims constitute all of the claims pending1
in this application.
Appeal No. 2001-0472 Page 2
Application No. 09/153,951
We AFFIRM-IN-PART.
BACKGROUND
The appellants' invention relates to tuned mass damping
devices (specification, p. 1). A copy of the claims under
appeal is set forth in the appendix to the appellants' brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Sarazin 2,225,929 Dec. 24,
1940
Claim 22 stands rejected under 35 U.S.C. § 112, first
paragraph, as containing subject matter which was not
described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the appellants,
at the time the application was filed, had possession of the
claimed invention.
Claims 19 to 24 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Sarazin.
Appeal No. 2001-0472 Page 3
Application No. 09/153,951
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
rejections, we make reference to the answer (Paper No. 10,
mailed September 25, 2000) for the examiner's complete
reasoning in support of the rejections, and to the brief
(Paper No. 9, filed September 18, 2000) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art reference, and to the
respective positions articulated by the appellants and the
examiner. As a consequence of our review, we make the
determinations which follow.
The written description rejection
We sustain the rejection of claim 22 under 35 U.S.C. §
112, first paragraph.
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Application No. 09/153,951
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the
artisan that the inventor had possession at that time of the
later claimed subject matter, rather than the presence or
absence of literal support in the specification for the claim
language. See Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555,
1563-64, 19 USPQ2d 1111, 1116-17 (Fed. Cir. 1991) and In re
Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir.
1983).
The examiner determined (answer, pp. 3-4) that the phrase
"being at least one half of the predetermined length and less
than the first length" recited in lines 5-6 and 9-10 of claim
22 did not find written description support in the original
disclosure. The appellants argue (brief, pp. 9-11) that the
above-noted phrase is inherent from the description on page 4,
line 20 to page 5, line 9 taken together with Figure 2. The
examiner responded (answer, pp. 7-8) to the appellants'
argument by explaining why the above-noted phrase was not
inherent from the original disclosure.
Appeal No. 2001-0472 Page 5
Application No. 09/153,951
We find ourselves in agreement with the position of the
examiner that the above-noted phrase is not inherent from the
original disclosure. While the claimed grooves are inherently
"less than the first length" for the reasons set forth by the
appellants, the claimed grooves are not inherently "at least
one half of the predetermined length" for the reasons set
forth by the examiner. In that regard, it is our
determination that Figure 2 shows that the relative movement
between the moveable mass 110 and the cylindrical surface 112
is not limited to the distance the mass can move when the
balls move from one end of their respective groove to the
other end of their respective groove. That is, the mass can
still move after the balls have reached either end of their
respective grooves. Thus, we find that the claimed grooves
are not inherently "at least one half of the predetermined
length."
For the reasons set forth above, the decision of the
examiner to reject claim 22 under 35 U.S.C. § 112, first
paragraph, is affirmed.
Appeal No. 2001-0472 Page 6
Application No. 09/153,951
The obviousness rejection
We will not sustain the rejection of claims 19 to 24
under 35 U.S.C. § 103.
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 the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 458 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that
the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
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). To establish
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Application No. 09/153,951
obviousness based on a combination of the elements disclosed
in the prior art, there must be some motivation, suggestion or
teaching of the desirability of making the specific
combination that was made by the appellants. See In re Dance,
160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984). 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).
The motivation, suggestion or teaching may come
explicitly from statements in the prior art, the knowledge of
one of ordinary skill in the art, or, in some cases the nature
of the problem to be solved. See In re Dembiczak, 175 F.3d
994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). In addition,
the teaching, motivation or suggestion may be implicit from
the prior art as a whole, rather than expressly stated in the
references. See WMS Gaming, Inc. v. International Game Tech.,
184 F.3d 1339, 1355, 51 USPQ2d 1385, 1397 (Fed. Cir. 1999).
Appeal No. 2001-0472 Page 8
Application No. 09/153,951
The teachings of Sarazin are set forth on pages 4-6 of2
the answer and pages 11-13 of the brief.
The test for an implicit showing is what the combined
teachings, knowledge of one of ordinary skill in the art, and
the nature of the problem to be solved as a whole would have
suggested to those of ordinary skill in the art. See In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981) (and
cases cited therein). Whether the examiner relies on an
express or an implicit showing, the examiner must provide
particular findings related thereto. See Dembiczak, 175 F.3d
at 999, 50 USPQ2d at 1617. Broad conclusory statements
standing alone are not "evidence." Id.
In this case, the examiner ascertained (answer, p. 5)
that the one difference between claims under appeal and
Sarazin is that "Sarazin does not teach the use of only one2
ball being located in each trough." We agree. In that
regard, it is our determination that the claimed limitation of
"a single ball" in each trough/groove means that only one ball
can be located in each trough/groove.
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Application No. 09/153,951
With regard to this difference, the examiner determined
(answer, pp. 5-6) that
it would have been obvious to one of ordinary skill in
the art at the time the invention was made to have
eliminated the cylinder of Sarazin in favor of providing
only one ball in separate troughs of the system in order
to reduce the overall number of parts in the system for
simplicity of design.

We do not agree.
We agree with the appellants' argument (brief, pp. 13-14)
that the claimed subject matter would not have been obvious at
the time the invention was made to a person of ordinary skill
in the art from the teachings of Sarazin. In that regard, we
note that in the rejection under 35 U.S.C. § 103 before us in
this appeal the examiner has not provided the necessary
evidence to support the examiner's above-noted obviousness
determination. That is, the applied prior art of Sarazin does
not suggest eliminating his cylinder 22 in favor of providing
only one ball in separate troughs of the system. In our view,
the only suggestion for modifying Sarazin in the manner
proposed by the examiner to arrive at the claimed subject
matter stems from hindsight knowledge derived from the
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Application No. 09/153,951
appellants' 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).
For the reasons set forth above, the decision of the
examiner to reject claims 19 to 24 under 35 U.S.C. § 103 is
reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claim 22 under 35 U.S.C. § 112, first paragraph, is affirmed
and the
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Application No. 09/153,951
decision of the examiner to reject claims 19 to 24 under
35 U.S.C. § 103 is reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2001-0472 Page 12
Application No. 09/153,951
CHARLES J. UNGEMACH
OFFICE OF GENERAL COUNSEL MN12-8251
HONEYWELL INC
HONEYWELL PLAZA
MINNEAPOLIS, MN 55408
Appeal No. 2001-0472 Page 13
Application No. 09/153,951
JVN/jg