Ex parte Perry

Board of Patent Appeals and Interferences

Apr 21, 1999

08213933 (B.P.A.I. Apr. 21, 1999)

Application for patent filed March 16, 1994. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT C. PERRY
____________
Appeal No. 1998-1962
Application No. 08/213,9331
____________
ON BRIEF
____________
Before FRANKFORT, McQUADE, 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 through 10 and 12 through 22. Claims 23
through 25 have been objected to as depending from a
nonallowed claim. Claim 11 has been canceled.
Appeal No. 1998-1962
Application No. 08/213,933
We REVERSE.
Appeal No. 1998-1962 Page 3
Application No. 08/213,933
We note that the examiner set forth two rejections on2
pages 3-4 of the examiner's answer (Paper No. 15, mailed
September 19, 1997). However, in the examiner's response to
argument section of the answer (pp. 4-5) the examiner states
that the first rejection "is moot" and that Perry is "being
used singularly." Accordingly, we will treat the rejection of
the claims under appeal as being based on 35 U.S.C. § 103 as
being unpatentable over Perry alone.
BACKGROUND
The appellant's invention relates to a security anchor.
An understanding of the invention can be derived from a
reading of exemplary claims 1, 7 and 13, which appear 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:
Perry 4,979,382 Dec. 25,
1990
Claims 1 through 10 and 12 through 22 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Perry.2
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
Appeal No. 1998-1962 Page 4
Application No. 08/213,933
In the answer (p. 6), the examiner refers to prior art3
references to Geesaman and Challis '904. We have not
considered these references since prior art evidence that is
relied upon must be positively set forth in the statement of
the rejection. See In re Hoch, 428 F.2d 1341, 1342, 166 USPQ
406, 407 (CCPA 1970).
rejection, we make reference to the examiner's answer for the
examiner's complete reasoning in support of the rejection, and
to the appellant's brief (Paper No. 12, filed August 29, 1996)
and reply brief (Paper No. 16, filed October 14, 1997) 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 the3
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 through 10
Appeal No. 1998-1962 Page 5
Application No. 08/213,933
and 12 through 22 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 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). Rejections based
on
Appeal No. 1998-1962 Page 6
Application No. 08/213,933
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
Perry discloses a security apparatus to attach components
of a personal computer together to deter their unauthorized
removal. As shown in Figures 1-4, the security apparatus
includes a central anchor 2 and several (up to five in the
case of the illustrated embodiment) peripheral anchors 4.
Perry's central anchor 2 comprises first and second
plates 8 and 10. Plate 8 is formed with five cylindrical
holes 12, and plate 10 is formed with five cylindrical holes
20. Hexagonal-headed bolts 22 are fitted in holes 12, the
heads of the bolts being received in the recesses 14 and being
held
Appeal No. 1998-1962 Page 7
Application No. 08/213,933
therein against rotation relative to plate 8. Plates 8 and 10
can be secured firmly together by fitting plate 10 so that
bolts 22 extend through holes 20 and applying nuts to the
bolts, the nuts being received in recesses 18. At their
confronting surfaces, plates 8 and 10 are each formed with
five grooves 40. Each groove is substantially horseshoe-shaped
when viewed in plan, and is semi-circular in cross-section.
The grooves in plate 10 register with the grooves in plate 8
when the two plates are secured together, so that passages 42
of circular cross-section are thereby formed.
Perry's peripheral anchor 4 comprises a flexible steel
cable 44 having a neoprene jacket. Cable 44 is formed with a
loop 46 at one end, a ferrule 48 being used to secure the
loop. The loop 46 is sized to fit in one of the passages 42.
At its opposite end, cable 44 is attached to a disc or plate
54. The disc 54 has a flat attachment surface. A hole is
drilled in disc 54 from its periphery. The neoprene jacket is
removed from the end of the cable so as to expose the twisted
strands of steel. Epoxy adhesive material is introduced into
Appeal No. 1998-1962 Page 8
Application No. 08/213,933
the hole in the peripheral surface of disc 54, and while the
adhesive material remains
liquid, the end of cable 44 is inserted into the hole. Liquid
adhesive material penetrates among the strands of the cable
and when the adhesive material is cured, the cable 44 is
securely attached to disc 54.
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Appeal No. 1998-1962 Page 9
Application No. 08/213,933
Claim 1
Based on our analysis and review of Perry and independent
claim 1, it is our opinion that the only difference is the
limitation
an adhesive means securing said first end segment of the
flexible cable in the channel by bonding to the cable and
the attachment plate.
With regard to this difference, the examiner determined
(answer, pp. 4 and 5) that the use of adhesive as a securing
means is conventional and that it would have been an obvious
mechanical expedient to adhesively bond Perry's cable 44
within a passage 42 as a substitute for Perry's ferrule 48.
The appellants argue (brief, pp. 6-7, and reply brief,
pp. 1-2) that the claimed adhesive means is not suggested by
Perry. We agree. The examiner's determination of obviousness
has not been supported by any evidence that would have led an
artisan to arrive at the claimed invention. In that regard,
while Perry does disclose the use of liquid epoxy adhesive
material in a hole in the peripheral surface of the disc 54,
it is our view that this would not have provided any
Appeal No. 1998-1962 Page 10
Application No. 08/213,933
suggestion to have provided "adhesive means" within the
grooves 40 of plates 8 and 10 since Perry's plates 8 and 10 of
the central anchor 2 were designed to permit the cable 44 to
be removed therefrom. Furthermore, we note that Perry's
peripheral anchor 4 which includes the epoxy adhesive material
within the hole in the peripheral surface of the disc 54 is
clearly not readable on the claimed invention.
In our view, the only suggestion for modifying Perry in
the manner proposed by the examiner to meet the above-noted
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,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984). It follows that we cannot sustain the
examiner's rejection of independent claim 1, and claims 2 to 6
and 15 to 18 dependent thereon.
Claim 7
Appeal No. 1998-1962 Page 11
Application No. 08/213,933
Based on our analysis and review of Perry and independent
claim 7, it is our opinion that one difference is the
limitation
the channels being of first and second different widths
respectively, for receiving end segments of the first and
second cables respectively.
With regard to this difference, the examiner determined
(answer, p. 6) that to provide different size channels and
cables, depending on the desired use of Perry's device, is
within the scope of a skilled mechanic in the art, and
providing same would have been obvious.
The appellants argue (brief, p. 11) that the above-noted
limitation of claim 7 is not suggested by Perry. We agree.
The examiner's determination of obviousness has not been
supported by any evidence that would have led an artisan to
arrive at the claimed invention. Once again, it is our
opinion that the only suggestion for modifying Perry in the
manner proposed by the examiner to meet the above-noted
limitation stems from hindsight knowledge derived from the
appellant's own disclosure. It follows that we cannot sustain
Appeal No. 1998-1962 Page 12
Application No. 08/213,933
the examiner's rejection of independent claim 7, and claims 8
to 10, 12 and 19 to 21 dependent thereon.
Claim 13
Based on our analysis and review of Perry and independent
claim 13, it is our opinion that two differences are the
limitations concerning (1) the width of the first channel
being slightly greater than the thickness of the first cable
and the width of the second channel being slightly greater
than the thickness of the second cable (the second cable is
recited to have a thickness greater than the thickness of the
first cable), and (2) adhesively bonding the first end segment
of the selected cable to the attachment plate.
With regard to these differences, the examiner determined
(answer, pp. 4 and 7) that these limitations would have been
obvious for reasons previously set forth with respect to
claims 1 and 7.
The appellants argue (brief, pp. 12-13) that the above-
noted limitations of claim 13 are not suggested by Perry. We
Appeal No. 1998-1962 Page 13
Application No. 08/213,933
agree. As with the examiner's determinations with respect to
claims 1 and 7, the examiner's determination of obviousness
with respect to claim 13 has not been supported by any
evidence that would have led an artisan to arrive at the
claimed invention. As with claims 1 and 7, it is our belief
that the only suggestion for modifying Perry in the manner
proposed by the examiner to meet the above-noted limitations
stems from hindsight knowledge derived from the appellant's
own disclosure. It follows that we cannot sustain the
examiner's rejection of independent claim 13, and claims 14
and 22 dependent thereon.
Appeal No. 1998-1962 Page 14
Application No. 08/213,933
U.S. Patent No. 5,076,079 issued December 31, 1991.4
The examiner applied both Perry and Monoson in the two5
rejections set forth on pages 3-4 of the answer. However, as
noted in footnote 2 above, stated that Perry is "being used
singularly." Accordingly, we treated the rejection of the
claims under appeal as being based on 35 U.S.C. § 103 as being
unpatentable over Perry alone.
The reference to Monoson
We have also reviewed the Monoson reference cited by the4
examiner but find nothing therein which makes up for the5
deficiencies of Perry discussed above regarding claims 1, 7
and 13.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 10 and 12 through 22 under 35 U.S.C. § 103 is
reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Appeal No. 1998-1962 Page 15
Application No. 08/213,933
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1998-1962 Page 16
Application No. 08/213,933
SMITH-HILL AND BEDELL
12670 N W BARNES ROAD
SUITE 104
PORTLAND, OR 97229
APPEAL NO. 1998-1962 - JUDGE NASE
APPLICATION NO. 08/213,933
APJ NASE
APJ FRANKFORT
APJ McQUADE
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 15 Apr 99
FINAL TYPED: