Ex parte Poulson

Board of Patent Appeals and Interferences

Dec 21, 1998

08505853 (B.P.A.I. Dec. 21, 1998)

Application for patent filed July 24, 1995. According to appellant,1
this application was styled as a “SUB” for application 08/209,941, filed
March 11, 1994 (abandoned on December 23, 1994).
1
Paper No. 22
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte THOMAS C. POULSON
______________
Appeal No. 98-0683
Application 08/505,8531
_______________
ON BRIEF
_______________
Before COHEN, MEISTER and ABRAMS, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appeal No. 98-0683
Application 08/505,853
2
Thomas C. Poulson (the appellant) appeals from the final
rejection of claims 1-11, the only claims present in the
application.
We REVERSE.
The appellant's invention pertains to a motor vehicle having
a pair of sun visors, a rear view mirror and an auxiliary sun
visor that is attachable to the front surface of the rear view
mirror for the purpose of bridging the space between the pair of
sun visors. Independent claim 1 is further illustrative of the
appealed subject matter and a copy thereof may be found in the
appendix to the brief.
The references relied on by the examiner are:
Short 2,549,395 April 17, 1951
Viertel et al.
(Viertel) 4,477,116 Oct. 26, 1984
Lystad 4,570,991 Feb. 18, 1986
Gleason 5,477,629 Dec. 26, 1995
Hou 5,509,713 Apr. 23, 1996
Claims 1-8, 10 and 11 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Short in view of Lystad and either
Gleason or Hou.
Appeal No. 98-0683
Application 08/505,853
3
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Short in view of Lystad and either Gleason or
Hou as applied to claim 8 above, and further in view of Viertel.
The rejections are explained on pages 5 and 6 of the answer.
The arguments of the appellant and examiner in support of their
respective positions may be found on pages 3-12 of the brief and
page 7 of the answer.
OPINION
As a preliminary matter, we observe that the preamble of
independent claim 7 is inconsistent with the body of that claim.
That is, the preamble sets forth "[a]n auxiliary sun visor"
whereas the body of the claim, in addition to setting forth
details of the auxiliary sun visor, also sets forth details of a
motor vehicle (e.g., "complementary attaching means . . . covering
the entire
said front surface of said rear view mirror" (emphasis added).
Accordingly, we interpret independent claim 7 to be directed to
the combination of an auxiliary sun visor and a motor vehicle
which includes a rear view mirror.
Appeal No. 98-0683
Application 08/505,853
4
Both of the above-noted rejections are bottomed on the
examiner's view that:
It would have been obvious to provide in Short
Sr. attaching means as taught by Lystad for an
auxiliary visor in order to secure in position
and continuous attaching means as taught by
either Gleason or Goldstein [sic, Gleason or]
or Hou as stated above. Use of the front
surface of the rear view mirror is deemed to be
an obvious expedient to one of ordinary skill
in the art as the position disclosed in Short
Sr. has the auxiliary visor in close proximity
to the mirror as seen in figure 5, hence the
mirror is the most obvious location for
additional securement. [Answer, pages 5 and
6.]
We do not support the examiner's position. Short discloses
an auxiliary sun visor which is used to span the space between two
conventional sun visors in a motor vehicle. Short's auxiliary sun
visor is adapted to be suspended from the arm or stud which
supports the vehicle's rear view mirror 16 and, to this end, Short
provides the auxiliary sun visor with an insertion slot 11 having
apertures 12 spaced there along in order that the stud or arm may
slipped through the slot and frictionally engage a selected
aperture. While Lystad shows hook and loop means for securing a
sun visor, the sun visor (which is pivoted between operative and
non-operative positions) and interior trim of the vehicle are
Appeal No. 98-0683
Application 08/505,853
5
provided with relatively small "buttons" having hook and loop
attaching means thereon for the purpose of securing the sun visor
in a selected position. As to Gleason and Hou, the examiner has
relied on these references to show "continuous" attaching means.
Gleason, however, merely teaches that the entire outer surface of
a hat or cap (e.g., the cap 100 in Fig. 8), including the bill or
visor, may be provided with a hook or loop attachment means in
order that display items 22 (such as logos) may be releasably
secured thereto. Hou, while teaching that one face of a rubber
strip 2 may be entirely or "continuously" covered with a hook or
loop attaching means, the rubber strip is in turn secured to the
interior trim of a vehicle and is used to releasably secure a
sunshade to one of the vehicle's side windows.
There is simply nothing in the combined teachings of Short,
Lystad and either Gleason or Hou which would fairly suggest
providing "complementary attaching means substantially covering
one broad surface of said panel and substantially covering the
entire front surface of said rear view mirror" (emphasis added) as
independent claims 1 and 7 expressly require. In an apparent
attempt to overcome this deficiency, the examiner has taken the
position that providing substantially the entire front face of the
Appeal No. 98-0683
Application 08/505,853
6
rear view mirror with an attaching means is an "obvious
expedient," we must point out that obviousness under § 103 is a
legal conclusion based on factual evidence. In re Fine, 837 F.2d
1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). The mere fact
that Short attaches the auxiliary sun visor in "close proximity"
to the front face of the rear view mirror (i.e., on the supporting
arm or stud 15) does not serve as a sufficient factual basis for
establishing the obviousness of providing an attaching means that
substantially covers the entire front face of the rear view mirror
as claimed. See In re GPAC, Inc., 57 F.3d 1573, 1582, 35 USPQ2d
1116, 1123 (Fed. Cir. 1995) and In re Warner, 379 F.2d 1011, 1017,
154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
With respect to claim 9, we have carefully reviewed the
teachings of Viertel but find nothing therein which would overcome
the deficiencies of Short, Lystad, Gleason and Hou that we have
noted above.
The rejections of claims 1-11 under 35 U.S.C. § 103(a) are
reversed.
REVERSED
Appeal No. 98-0683
Application 08/505,853
7
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )

JMM/cam
Appeal No. 98-0683
Application 08/505,853
8
John E. Reilly
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