Ex parte Pohle

Board of Patent Appeals and Interferences

Mar 15, 1999

08490203 (B.P.A.I. Mar. 15, 1999)

Application for patent filed June 14, 1995. According to appellant, the1
application is a continuation-in-part of Application 08/027,886, filed March 8, 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publication in a law journal and (2) is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RICHARD H. POHLE
_____________
Appeal No. 98-0609
Application 08/490,2031
______________
ON BRIEF
_______________
Before CALVERT, COHEN, and NASE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 8 and 10 through 16. These claims constitute all of
the claims remaining in the application.
Appellant’s invention pertains to a non-alpha-numeric
Appeal No. 98-0609
Application 08/490,203
2
coded item. An understanding of the invention can be derived
from a
reading of exemplary claim 1, a copy of which appears in the
APPENDIX to the brief (Paper No. 7).
As evidence of obviousness, the examiner has applied the
documents listed below:
Pond 14,451 Nov. 27,
1883
Dolan et al. (Dolan) 802,800 Oct. 24, 1905
Wilbourn 2,809,458 Oct. 15, 1957
Finley 4,383,555 May 17, 1983
The following rejections are before us for review.
Claims 1, 2, 5 through 8, and 10 stand rejected under
35 U.S.C. § 103 as being unpatentable over Finley.
Claim 3 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Finley in view of Pond.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Finley in view of Wilbourn.
Claims 11 through 16 stand rejected under 35 U.S.C. § 103
Appeal No. 98-0609
Application 08/490,203
In our evaluation of each of the applied patents, we have considered all of the2
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).
3
as being unpatentable over Finley in view of Dolan.
The full text of the examiner's rejections and response
to the argument presented by appellant appears in the answer
(Paper
No. 8), while the complete statement of appellant’s argument
can be found in the main and reply brief (Paper Nos. 7 and 9).

OPINION
In reaching our conclusion on the obviousness issues
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claims, the applied
patents, and the respective viewpoints of appellant and the2
examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 98-0609
Application 08/490,203
4
We reverse each of the examiner’s rejections of
appellant’s claims.
Claim 1, the sole independent claim in the application,
is drawn to a non-alpha-numeric coded item comprising, inter
alia, a
long flexible substantially circular cross-sectional shaped
member that is subject to tangling, and visible, non-alpha-
numeric, code extending along the length of the member for
uniquely identifying position at substantially every point
along the length of the member to facilitate untangling of the
member.
The examiner has concluded that the invention of claim 1
would have been obvious based upon the teaching of Finley. We
disagree for the reasons set forth below.
Finley discloses (column 8, lines 28 through 43) a
flexible hose with one portion that may be colored differently
Appeal No. 98-0609
Application 08/490,203
5
from other portions, primarily for aesthetic purposes (Figure
10). Further, the patentee contemplates that different colors
may also be utilized for additional laminae (Figures 7 through
9). It is also indicated that any of the rib components and
webs of Figures 1 through 10 may be colored differently, e.g.,
for aesthetic and/or coding purposes, or where color may
enhance the environmental use of the hose, such as from heat
or ultra-violet considerations.
Clearly, Finley envisions color being added to the
flexible hose for the specified purposes. However, it is
quite apparent to us from a consideration of the Finley
document, as a whole, that one having ordinary skill in the
art would not have derived any suggestion therefrom for the
long flexible member of claim 1 with the required code along
its length that substantially continuously changes non-
repetitively for uniquely identifying position at
substantially every point along the length of the member to
facilitate untangling of the member. As we see it, only
reliance upon appellant’s own teaching and the application of
Appeal No. 98-0609
Application 08/490,203
We share appellant’s point of view (main brief, page 8) that Dolan does not3
address a long flexible member that is subject to tangling.
6
impermissible hindsight would have enabled one of ordinary
skill to achieve the claimed invention based upon the Finley
disclosure. Since the evidence before us would not have
rendered obvious the claimed invention, we are constrained to
reverse the rejection of claim 1.
As to the respective rejections of dependent claims 3, 4,
and 11 through 16, which rely upon the Finley document in
combination with other applied prior art, we determine that
the additional art does not overcome the deficiency of the
Finley reference. More specifically, this panel of the board
concludes that the electrical conductor of Pond with sectional
bands or zones of different shades of color, the color guide
for fishing lures of Wilbourn (lengths of cord successively of
different colors), and the ornamental metal tubing of Dolan
(ornamentation that is variable and never twice alike) would3
likewise not have been suggestive to one having ordinary skill
in the art of a long flexible member, subject to tangling,
with the required code along its length that substantially
Appeal No. 98-0609
Application 08/490,203
7
continuously changes non-repetitively for uniquely identifying
position at substantially every point along the length of the
member to facilitate untangling of the member.
In summary, this panel of the board has:
reversed the rejection of claims 1, 2, 5 through 8, and
10 under 35 U.S.C. § 103 as being unpatentable over Finley;
reversed the rejection of claim 3 under 35 U.S.C. § 103
as being unpatentable over Finley in view of Pond;
reversed the rejection of claim 4 under 35 U.S.C. § 103
as being unpatentable over Finley in view of Wilbourn; and
reversed the rejection of claims 11 through 16 under
35 U.S.C. § 103 as being unpatentable over Finley in view of
Dolan.
The decision of the examiner is reversed.
REVERSED
Appeal No. 98-0609
Application 08/490,203
8
)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
ICC/kis
Victor R. Beckman
10311 Cherry Tree Lane
Cupertino, CA 95014
Appeal No. 98-0609
Application 08/490,203
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