Ex parte PICKLE

Board of Patent Appeals and Interferences

Mar 27, 1998

08566120 (B.P.A.I. Mar. 27, 1998)

Application for patent filed December 1, 1995.1
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(2) is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THOMAS L. PICKLE

_____________
Appeal No. 97-2145
Application 08/566,1201
______________
ON BRIEF
_______________
Before COHEN, ABRAMS and PATE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 97-2145
Application 08/566,120
No reference was set forth in section 9 of the answer2
(page 2). However, the listed Colbert patent is the only
document of that name in the record (NOTICE OF REFERENCES CITED;
attachment to Paper No. 2).
A final rejection of claim 1 under 35 U.S.C. § 112, second3
paragraph, was overcome, as indicated by the examiner (answer,
page 3).
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
and 4. These claims constitute all of the claims remaining in
the application.
Appellant’s invention pertains to a sun catcher. An
understanding of the invention can be derived from a reading of
claims 1 and 4, copies of which appear in the “APPENDIX” to
appellant’s brief (Paper No. 8).
As evidence of obviousness, the examiner has applied
the single document specified below:2
Colbert et al. (Colbert) 1,802,170 Apr. 21, 1931
The following rejections are before us for review.3
Appeal No. 97-2145
Application 08/566,120
3
Claim 1 stands rejected under 35 U.S.C. § 102(b) as
being anticipated by Colbert.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Colbert.
The full text of the examiner's rejections and response
to the argument presented by appellant appears in the answer
(Paper No. 9), while the complete statement of appellant’s
argument can be found in the brief (Paper No. 8).
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
Appeal No. 97-2145
Application 08/566,120
We understand the term “etching-like” design in claim 1,4
in light of appellant’s specification (page 3), as reflecting,
for example, typical silk-screened pictorial displays.
In our evaluation of the applied patent, we have5
considered all of the disclosure thereof for what it would have
fairly taught one of ordinary skill in the art. See In re Boe,
355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966). Additionally,
this panel of the board has taken into account not only the
specific teachings, but also the inferences which one skilled in
the art would reasonably have been expected to draw from the
disclosure. See In re Preda, 401 F.2d 825, 826, 159 USPQ 342,
344 (CCPA 1968).
4
appellant’s specification and claims, the applied patent, and4 5
the
respective viewpoints of appellant and the examiner. As a
consequence of our review, we make the determinations which
follow.
We reverse each of the respective rejections of
appellant’s claims 1 and 4.
At the outset, we note that, at the time of appellant’s
invention, sun catchers formed of translucent panels with
integral designs or pictures imprinted thereon were known in the
art (specification, page 1).
Appeal No. 97-2145
Application 08/566,120
5
The sun catcher of claim 1 (kit) requires, inter alia,
a light transmitting panel with an opaque outline of a design
extending from a first planar surface of the panel and a detailed
etching-like design on an opposed second planar surface of the
panel in superposed registry with the design on the first planar
surface. The sun catcher of claim 4 (formed by specified method
steps) requires, inter alia, forming a light transmitting panel
with a raised outline of a pictorial display on and extending
outwardly from a first planar surface of the panel and with a
detailed pictorial display on a second planar surface of the
panel in registry with the outline on the first flat planar
surface, and applying a light transmitting colored medium within
the raised outline of the pictorial display on the first planar
surface.
At this point, we particularly note that each of
claims 1 and 4 requires the design on the second planar surface
to be in “registry” with the specified outline on the first
planar surface.
Appeal No. 97-2145
Application 08/566,120
Webster’s New Collegiate Dictionary, G. & C. Merriam6
Company, Springfield, Massachusetts, 1979.
6
A review of the Colbert patent reveals to us that the
ornamental composite plate disclosed therein does not anticipate
and would not have rendered obvious the now claimed sun catcher,
as asserted by the examiner in the respective rejections on
appeal.
The examiner considers the opaque outline 3 on a first
surface of the panel (glass sheet) 1 of Colbert (Figures 2 and 4)
to be in registry with the etching 9 on a second surface (answer,
pages 3 and 4). We simply cannot agree with this assessment.
The word “registry,” in the context used in the
claims, and consistent with appellant’s underlying disclosure
(specification, pages 3 and 4 and Figures 1 and 2), may fairly be
defined as corresponding exactly.6
With the above understanding of the claimed term
“registry” in mind, we readily perceive that the disclosed spaced
Appeal No. 97-2145
Application 08/566,120
7
rela- tionship between the opaque outline 3 and the etching 9 of
Col- bert would clearly not be understood by one of ordinary
skill in this art as denoting designs in “registry” with one
another, as claimed. On this basis, we conclude that the only
document relied upon by the examiner for establishing
anticipation and obviousness fails to teach and would not have
been suggestive of the invention now claimed.
In summary, this panel of the board has:
reversed the rejection of claim 1 under 35 U.S.C.
§ 102(b) as being anticipated by Colbert, and
reversed the rejection of claim 4 under 35 U.S.C. § 103
as being unpatentable over Colbert.
The decision of the examiner is reversed.
REVERSED
Appeal No. 97-2145
Application 08/566,120
8
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
WILLIAM F. PATE, III )
Administrative Patent Judge )
Appeal No. 97-2145
Application 08/566,120
9
Donald R. Fraser
Law Office of Donald R. Fraser
132C West Second Street
Perrysburg, OH 43551-1401