Ex parte Pugh

Board of Patent Appeals and Interferences

Sep 25, 2001

08791098 (B.P.A.I. Sep. 25, 2001)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of
the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JERRY THOMAS PUGH
__________
Appeal No. 2000-1746
Application 08/791,098
___________
ON BRIEF
___________
Before CALVERT, ABRAMS, and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 14, all of the claims pending in
this application.
Appellant’s invention relates to a support for articles
having an elongated portion (e.g., cut flowers, writing
implements, etc.). As can be seen, for example, in Figures 1
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Application 08/791,098
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and 2, the support is formed of wire bent into a configuration
that includes a number of closed loops (24) surrounding a
central opening. Independent claim 1 is representative of the
subject matter on appeal and a copy of that claim can be found
in the Appendix to appellant’s brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Baldwin 603,754 May 10, 1898
Krumholz 1,775,203 Sep. 9, 1930
Lang (Great Britain) 233,075 May 7, 1925
Claims 1 through 6, 13 and 14 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Krumholz in view of
Baldwin.
Claims 7 through 12 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Krumholz in view of Baldwin
as applied to claim 1 above, and further in view of Lang (GB
233,075).

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Application 08/791,098
3
Rather than reiterate the examiner's full statement of
the above-noted rejections and the conflicting viewpoints
advanced by the examiner and appellant regarding those
rejections, we make reference to the final rejection (Paper
No. 14, mailed April 21, 1999) and the examiner's answer
(Paper No. 19, mailed December 1, 1999) for the reasoning in
support of the rejections, and to appellant’s brief (Paper No.
18, filed September 7, 1999) and reply brief (Paper No. 20,
filed January 27, 2000) for the arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant’s specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determinations
which follow.
In rejecting independent claim 1 under 35 U.S.C. § 103(a)
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on the basis of Krumholz in view of Baldwin, it is the
examiner’s position (final rejection, page 2), that Krumholz
discloses a device for restraining articles that have an
elongated portion, which device reads on appellant’s claim 1
except for the requirement of having a head formed as a series
of closed loops surrounding a central opening. To address this
difference, the examiner turns to Baldwin, urging that this
reference discloses (in Fig. 3) a restraining device including
an elongated portion having a head comprising a series of
elliptically-shaped loops (4) surrounding a central opening,
wherein the loops simulate the petals of a flower. From these
teachings, the examiner has concluded that it would have been
obvious to one of ordinary skill in the art to modify the head
of the device in Krumholz to comprise elliptically-shaped
loops surrounding a central opening as taught by Baldwin, so
as to achieve a desired aesthetic effect, i.e., to have the
head simulate the petals of a flower.
Having reviewed and evaluated the applied references, we
must agree with appellant that the examiner’s position
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regarding the purported obviousness of claim 1 on appeal
represents a classic case of the examiner using impermissible
hindsight in order to reconstruct appellant’s claimed subject
matter. In our opinion, there is no motivation or suggestion
in the applied patents to Krumholz and Baldwin which would
have reasonably led one of ordinary skill in the art to modify
the wire flower support of Krumholz in the particular manner
urged by the examiner. In the first place, Krumholz emphasizes
the need in his flower support for shallow indentations (3)
and deeper indentations (4) and (5) in the head that have
their mouths opening outwardly and which assist in the
arrangement of flowers into a bouquet so that the flowers have
proper spacing to provide an attractive and esthetic
appearance. This aspect of the flower support of Krumholz
would be essentially lost in the combination urged by the
examiner.
As a further point, we note that the wire flower supports
of Krumholz and Baldwin are substantially different one from
the other and that we see no reasonable suggestion as to why
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Application 08/791,098
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one of ordinary skill in the art would have been motivated to
modify one in light of the other as urged by the examiner. In
that regard, we observe that the flower support of Krumholz is
formed of a single wire that provides a centrally located
straight stem portion (1) and a head portion formed by bending
the wire at a right angle to the stem and then forming the
wire into a circular head with various indentations (3, 4, 5)
having mouths opening outwardly. By contrast, Baldwin (Fig. 3)
discloses a wire flower support having a first circular wire
member and a second wire member having a portion which is bent
around the first to form petal-like closed loops (4) situated
in a vertical plane and end portions that are then twisted
together to form a stem (1) in the same plane as the petal-
like loops. The examiner has provided no reasonable
explanation as to why one of ordinary skill in the art would
have utilized teachings from the multi-piece, vertically
oriented wire plant support in Baldwin to modify the single
wire, horizontally oriented head arrangement of the flower
support in Krumholz.
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We note that the mere fact that the prior art could be
modified in the manner urged by the examiner would not have
made such modification obvious unless the prior art suggested
the desirability of the modification. See In re Gordon, 773
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) and In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992). In this case, it is our opinion that the examiner
has impermissibly drawn from appellant’s own teaching and
fallen victim to what our reviewing Court has called “the
insidious effect of a hindsight syndrome wherein that which
only the inventor has taught is used against its teacher.”
W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 313 (Fed. Cir. 1983).
Since we have determined that the teachings and
suggestions that would have been fairly derived from Krumholz
and Baldwin
would not have made the subject matter as a whole of claim 1
on appeal obvious to one of ordinary skill in the art at the
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time of appellant’s invention, we must refuse to sustain the
examiner’s rejection of that claim under 35 U.S.C. § 103. It
follows that the examiner's rejection of dependent claims 2
through 6, 13 and 14 under 35 U.S.C. § 103(a) based on
Krumholz and Baldwin will also not be sustained.
We have also reviewed the British reference to Lang
applied along with Krumholz and Baldwin against dependent
claims 7 through 12 on appeal under 35 U.S.C. § 103(a).
However, we find nothing in Lang which overcomes the
deficiencies in the basic combination of Krumholz and Baldwin
noted above or otherwise renders obvious the device set forth
in claim 1 on appeal or in claims 7 through 12 which depend
therefrom. Thus, the examiner’s rejection of dependent claims
7 through 12 under 35 U.S.C. § 103(a) will likewise not
be sustained.
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In light of the foregoing, the decision of the examiner
to reject claims 1 through 14 under 35 U.S.C. § 103(a) is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 2000-1746
Application 08/791,098
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CEF:pgg
Jerry Thomas Pugh
435 Rhone Court
Mountain View, CA 94043