Ex parte PRETEL et al.

Board of Patent Appeals and Interferences

Aug 31, 1998

08510526 (B.P.A.I. Aug. 31, 1998)

Application for patent filed August 2, 1995.1
1
Paper No. 14
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(2) is not binding precedent of the Board.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 MARIA PRETEL,
CATHERINE E. HOOVER,
ELAINE P. KELLEY and
JUDITH M. LEON
______________
Appeal No. 97-4179
Application 08/510,5261
_______________
ON BRIEF
_______________
Before MCCANDLISH, Senior Administrative Patent Judge, and,
MEISTER and STAAB, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-14,
the only claims present in the application.
We REVERSE.
Appeal No. 97-4179
Application 08/510,526
2
The appellants' invention pertains to a method and
instrument for taking simultaneous measurements of torticollis
characteristics. Independent claims 1, 9 and 12 are further
illustrative of the appealed subject matter and copies thereof
may be found in the appendix to the brief.
The reference relied on by the examiner is:
Schatz, Howard, “An Instrument for Measuring Ocular Tortiollis
(Head Turn, Tilt, and Bend)”, 75 Amer. Acad. Ophthal & Otol.,
pages 650-653 (May-June 1971)
Claims 1-14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Schatz.
The examiner's rejection is explained on pages 3-5 of the
answer. The arguments of the appellants and examiner in support
of their respective positions may be found on pages 3-8 of the
brief, pages 1-4 of the reply brief and pages 5-7 of the answer.
OPINION
As a preliminary matter we base our understanding of the
appealed subject matter upon the following interpretation of
the terminology appearing in claims 1 and 2 (as they appear in
the appendix to the brief). In lines 2 and 3 of claim 1, we
interpret "head turn, head tilt and head bend" to be -- head turn
Appeal No. 97-4179
Application 08/510,526
3
and either head tilt or head bend -- since it is readily apparent
that all three torticollis characteristics are not measured
"simultaneously" as lines 1-3 now set forth. In lines 1-3 of
claim 2, we interpret "said horizontal protractor means includes
means, defining a cutout portion" to be -- said means for
enabling manual positioning includes means defining a cutout
portion -- since it is readily apparent that the latter mentioned
means is a necessary part of the means for enabling manual
positioning previously set forth in lines 14-17 of claim 1.
Having carefully considered the respective positions
advanced by the appellants in the brief and reply brief and the
examiner in the answer, it is our conclusion that the above-
noted rejection is not sustainable. In rejecting claims under
35 U.S.C. § 103 the examiner bears the initial burden of
presenting a prima facie case of obviousness. In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993) and
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). Only if that burden is met does the burden of coming
forward with evidence or argument shift to the applicant. Id.
If the examiner fails to establish a prima facie case, the
rejection is improper and will be overturned. In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
Appeal No. 97-4179
Application 08/510,526
4
According to the examiner:
Schatz et al. discloses a device for
measuring head turn, tilt, and bend, a
horizontal protractor (Fig. 2), and a
vertical protractor (Figs. 3,4). It would
have been obvious to one of ordinary skill in
the art to design a device combining both the
vertical and horizontal protractors since
this would reduce the time required to take
the measurements and since this would provide
for a more efficient device. It is noted by
the examiner that the horizontal protractor
is able to be positioned adjacent the
vertical protractor means and positioned in a
manner similar to that shown in Figs. 2-4 [of
the appellants' device]. This would position
the two protractor means at approximately
right angles. Also, it would have been
obvious to place the protractors in an
adjacent relationship at right angles in view
of Figs. 2-4. [Answer, page 3.]
We will not support the examiner's position. The mere fact
that designing a device combining both vertical and horizontal
protractors would reduce the time of making measurements and be
more efficient, does not serve as a proper motivation for the
proposed modifications as the examiner apparently believes.
Obviousness under § 103 is a legal conclusion based on factual
evidence (In re Fine, supra) and it is well settled that in order
to establish a prima facie case of obviousness the prior art
teachings must be sufficient to suggest to one of ordinary skill
in the art making the modification needed to arrive at the
Appeal No. 97-4179
Application 08/510,526
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claimed invention (see, e.g., In re Lalu, 747 F.2d 703, 705, 223
USPQ 1257, 1258 (Fed. Cir. 1984)). Here, Schatz discloses a
single instrument which may be used in three different positions
that are illustrated in Figs. 2-4. There
is absolutely nothing in Schatz which would suggest combining
vertical and horizontal protractors as the examiner suggests,
much less making simultaneous measurements of torticollis
characteristics in the manner claimed. “A rejection based on
section 103 must rest on a factual basis, and these facts must
be interpreted without hindsight reconstruction of the invention
from the prior art. . . . [The examiner] may not [,as has been
done here,] . . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in . . . [the] .
. . factual basis.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967).
Appeal No. 97-4179
Application 08/510,526
6
The decision of the examiner to reject claims 1-14 under
35 U.S.C. § 103 is reversed.
REVERSED
HARRISON E. MCCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )

Appeal No. 97-4179
Application 08/510,526
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