Ex parte PELL et al.

Board of Patent Appeals and Interferences

Jan 13, 2000

08388741 (B.P.A.I. Jan. 13, 2000)

Application for patent filed February 15, 1995. 1
According to appellants, this application is a continuation-
in-part of Application 08/016,167, filed February 10, 1993,
now abandoned.
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(2) is not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CHARLES A. PELL
and STEPHEN A. WAINWRIGHT
__________
Appeal No. 1999-0069
Application 08/388,7411
__________
ON BRIEF
__________
Before CALVERT, ABRAMS, and MCQUADE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
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Application No. 08/388,741
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finally rejecting claims 1-18, which constitute all of the
claims of record in the application.
The appellants’ invention is directed to a swimming
creature simulator. The claims before us on appeal have been
reproduced in an appendix to the Appeal Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
King 1,661,758 Mar. 6, 1928
Eastep 3,165,086 Jan. 12, 1965
Wood 3,874,320 Apr. 1, 1975
Kindred 4,172,427 Oct. 30, 1979
Glover (UK) 582,928 Dec. 2, 1946
THE REJECTIONS
Claims 1-8 and 12-18 stand rejected under 35 U.S.C. § 103
as being unpatentable over Glover in view of Eastep and Wood
or Kindred.
Claims 9-11 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Glover in view of Eastep and Wood or
Kindred, taken further in view of King.
Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
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Application No. 08/388,741
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appellants regarding the rejections, we make reference to the
Examiner’s Answer (Paper No. 14) and the Appellants’ Brief
(Paper No. 13).
OPINION
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima
facie case of obviousness, it is incumbent upon the examiner
to provide a reason why one of ordinary skill in the art would
have been led to modify a prior art reference or to combine
reference teachings to arrive at the claimed invention. See
Ex parte Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985).
To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole
or from the knowledge generally available to one of ordinary
skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837
F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
Appeal No. 1999-0069
Application No. 08/388,741
In view of the common definition, and considered in the2
context of the appellants’ disclosure, we interpret “mass” to
mean the weight of the material of which the body is formed.
See, for example, Merriam Webster’s Collegiate Dictionary,
Tenth Edition, 1996, page 715.
4
It is our view that a prima facie case of obviousness has
not been established with regard to the subject matter recited
in any of the claims, and we therefore will not sustain either
of the rejections. Our reasoning follows.
Basic to the appellants’ invention is that the undulating
movement provided to the swimming creature to which the
invention is directed causes the creature to propel itself
through the water in a manner that simulates the movement of a
live fish. As manifested in independent claim 1, the
invention comprises a unitary elongate body of elastomeric
material having a center of mass, a rearward portion rearward2
of the center of mass and a forward portion forward of the
center of mass, with the rearward portion being tapered
rearwardly so that it has a greater cross-sectional thickness
toward the center of mass, and means for imparting oscillating
rotational motion at a point forward of the center of mass
about an axis perpendicular to the frontal plane of the body
and lying in the median plane thereof. With regard to the
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subject matter recited in claim 1, it is the examiner’s
position that Glover teaches all except for being “silent as
to the shape of the rubber body,” a feature which, in the
examiner’s view, “would have been obvious to the ordinary
skilled person in the art, since the Glover device is to
simulate a fish,” as would the elasticity of the material from
which the body is made, “through routine experimentations”
(Answer, page 4). Notwithstanding this line of reasoning, the
examiner combines with Glover the Eastep reference for its
disclosure of a fish-shaped rubber body and, alternatively,
with Wood or Kindred for their teachings of utilizing unitary
body structures in a propelling device.
Glover is directed to a submersible toy that is in the
shape of a fish. The toy is illustrated and described as
being a “flat body” (Figure 2; page 2, lines 63-64)), although
it is stated in the Glover specification that it can also be a
“hollow flexible body of rubber or other waterproof material”
(page 2, lines 65-67). Even if one considers, arguendo, that
the body of the Glover device is made of elastomeric material,
with regard to the requirements of claim 1, it is our view
that this reference has several deficiencies. First, there is
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no teaching of making the body of the device “approximately as
dense as water,” as required by claim 1, and no reason to do
so inasmuch as control of the device is entirely dependent
upon the actions of the user (page 1, line 19 et seq.).
Second, there is no mention of the center of mass nor, it
follows, does the reference teach locating the elements of the
device in terms of their relationship to the center of mass,
as is set forth in the claim. From our perspective, it thus
is speculative to conclude that these relationships exist in
the reference. Third, the device shown in the Glover drawings
is essentially flat and therefore does not have a rearward
tail portion that is “tapered rearwardly in a frontal plane,”
and the specification of the reference fails to describe such
a configuration as an alternative thereto. Finally, while the
Glover device is equipped with means attached near the front
which is capable of imparting oscillating motion (page 2, line
55), it does not propel itself through the water, but is
caused to move through the water “manipulated by hand control
to cause it to perform swimming, diving, floating and other
motions . . . in water” (page 1, lines 35-37 and 77-80).
Therefore, it is clear that the oscillation does not produce
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“rearward traveling undulating movements . . . which propel
said elastomeric body though the water,” as is recited in
claim 1.
All three of the secondary references are directed to
devices that utilize the oscillating motion of a member for
propulsion. In the Eastep arrangement, an oscillating
propeller is comprised of a plurality of longitudinally
connected rigid elements that are biased at their hinge points
so that they move back and forth as is shown in Figure 6.
Wood and Kindred disclose flexible propelling members
comprising a single elongated flexible element. However, the
mere fact that the prior art structure could be modified does
not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Because
the Glover device is not intended to propel itself through the
water, we fail to perceive any teaching, suggestion or
incentive which would have led one of ordinary skill in the
art to modify the toy disclosed therein by providing it with a
propelling mechanism, other than the hindsight accorded one
who first viewed the appellants’ disclosure. This, of course,
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is not a proper basis upon which to base a conclusion of
obviousness. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992).
Furthermore, even if the required suggestion were
present, there clearly is no teaching in any of the references
of making the Glover toy “approximately as dense as water,”
and there is no reason why this would even be desirable.
Further in this regard, the references are not concerned with
the center of mass of the device and do not explicitly locate
it or teach the required relationships between the center of
mass and the various elements, nor does there appear to be any
reason to do so.
In view of the preceding, the rejection of independent
claim 1 and dependent claims 2-8, 12 and 13 cannot be
sustained.
Independent claim 14 contains all of the limitations
missing from the Glover reference, except for the density
requirement. This claim also stands rejected on the basis of
Glover in view of Eastep and either Wood or Kindred. For the
same reasons set forth above with regard to independent claim
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1, we find ourselves unable to sustain the rejection of claim
14 and claims 15-18, which depend therefrom.
Inasmuch as the teachings of King do not alleviate the
problem discussed above with regard to Glover, Eastep, Wood
and Kindred, we also will not sustain the rejection of claims
9-12, which depend from claim 1.
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SUMMARY
Neither rejection is sustained.
The decision of the examiner is reversed.
REVERSED
Ian A. Calvert )
Administrative Patent Judge )
)
)
)
Neal E. Abrams ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
John P. McQuade )
Administrative Patent Judge )
tdl
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Application No. 08/388,741
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BELL, SELTZER, PARK & GIBSON, P.C.
P.O. Drawer 34009
Charlotte, NC 28234