Ex parte Rubin

Board of Patent Appeals and Interferences

Jan 14, 1998

08049408 (B.P.A.I. Jan. 14, 1998)

Application for patent filed April 20, 1993. 1
The rejection of claims 41 through 61 under 35 U.S.C. 2
§ 112, second paragraph, made in the final rejection was overcome
by the amendments filed on March 13, 1995 (Paper No. 10) and
April 3, 1995 (Paper No. 13). See the Advisory Actions of March
21, 1995 (Paper No. 11) and April 26, 1995 (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journal and (2) is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte BURTON S. RUBIN
____________
Appeal No. 96-2860
Application No. 08/049,4081
____________
ON BRIEF
____________
Before CALVERT, FRANKFORT, and NASE, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 41 through 61, which are all of the claims
pending in this application.2
Appeal No. 96-2860
Application No. 08/049,408
We REVERSE.
Appeal No. 96-2860 Page 3
Application No. 08/049,408
BACKGROUND
The appellant's invention relates to a hand-held implement.
Claims 41 is representative of the subject matter on appeal and a
copy of claim 41, as it appears in the appendix to the
appellant's brief, is attached to this decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Bernstein Des. 43,242 Nov. 12, 1912
Bingham Des. 292,297 Oct. 13, 1987
Johnson et al. 1,021,316 Mar. 26, 1912
(Johnson)
Döppel 1,497,363 June 10, 1924
Lipic, Jr. 2,318,171 May 4, 1943
(Lipic)
Wales 2,621,688 Dec. 16, 1952
Claims 41 through 61 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Döppel in view of Johnson, Wales, Lipic,
Bingham and Bernstein.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the § 103 rejection, we
make reference to the examiner's answer (Paper No. 17, mailed
September 12, 1995) for the examiner's complete reasoning in
Appeal No. 96-2860 Page 4
Application No. 08/049,408
support of the rejection, and to the appellant's brief (Paper No.
16, filed June 7, 1995) for the appellant's arguments
thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. Upon evaluation of all the evidence before us, it is
our conclusion that the evidence adduced by the examiner is not
sufficient to establish a prima facie case of obviousness with
respect to claims 41 through 61. Accordingly, we will not
sustain the examiner's rejection of claims 41 through 61 under
35 U.S.C. § 103. Our reasoning for this determination follows.
The test for obviousness is what the combined teachings of
the applied prior art would have suggested to one of ordinary
skill in the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d
1089, 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425,
208 USPQ 871, 881 (CCPA 1981). In rejecting claims under
Appeal No. 96-2860 Page 5
Application No. 08/049,408
35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re
Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). A prima facie case of obviousness is established by
presenting evidence that the reference teachings would appear to
be sufficient for one of ordinary skill in the relevant art to
make the modifications necessary to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988) and In re Lintner, 9 F.2d 1013, 1016, 173
USPQ 560, 562 (CCPA 1972).
With this as background, we turn to the examiner's rejection
of claim 41, the only independent claim on appeal.
Claim 41 recites a hand-held implement comprising, inter
alia, a first curved body panel, a second curved body panel and
an elongated snap-fit cartridge housing. Claim 41 further
recites (1) that the first curved body panel has an elongated
snap-fit post extending from an inner surface of the first panel,
(2) that the elongated snap-fit cartridge housing has a first
coaxial recessed groove, (3) that the elongated snap-fit post
resiliently extends into the first coaxial recessed groove, and
Appeal No. 96-2860 Page 6
Application No. 08/049,408
(4) that the cartridge housing is substantially perpendicular to
and non-coplanar with the elongated snap-fit post which extends
beside the cartridge housing.
The examiner's complete statement of the rejection is:
Doppel discloses substantially similar structure
including cartridge carrier (shank #11), plural grooves #24,
and cooperating detent means #7. Doppel lacks the snap post
detent means, plural panels and design shape. The use of a
snap post detent means is disclosed by element #23 of
Johnson, et al. It would have been obvious to a mechanic
with ordinary skill in the art to substitute such detent
means for the internal detent means of Doppel. The
motivation for such a substitution is provide [sic,
provided] by Wales which discloses both detent systems to be
equivalent, see Figure 2 and Figure 9. Lipic, Jr. discloses
the use of writing implement with reversible positions.
Bingham discloses the use of a symmetrical panels and the
design shape. Bernstein #43, 242 discloses the design
shape. [answer, p. 3]
The appellant argues (brief, pp. 8-9) that a prima facie
basis for the rejection of claim 41 was not presented since the
applied prior art is "devoid of any evidence which would suggest
any motivation for one of ordinary skill to modify the reference
disclosures in the manner necessary to obtain the present
invention." We agree. It is our opinion that when Döppel's
detent means (ball 8 and spring 9) has been modified be a spring
arm detent means as taught by Johnson's detent means (spring arm
Appeal No. 96-2860 Page 7
Application No. 08/049,408
While the examiner set forth the teachings of Bingham and3
Bernstein, this by itself, is not a determination of obviousness.
22 and detent 23) that claim 41 is not readable on the resulting
device. In that regard, the resulting device would not have an
elongated snap-fit post which (1) extends from an inner surface
of a panel, and (2) is substantially perpendicular to and
non-coplanar with the cartridge housing. This is due to the fact
that the resulting device would have been provided with a spring
arm (similar to Johnson's spring arm 22) which would have
extended parallel to the cartridge housing, not substantially
perpendicular to the cartridge housing as recited in claim 41.
We note that the spring arm of the resulting device must be
considered to be part of the recited snap-fit post since the
claim requires the snap-fit post to extend from the inner surface
of the body panel.
The examiner's rejection set forth three differences between
the claimed subject matter and Döppel (i.e., the snap post detent
means, plural panels and design shape). The examiner's rejection
then determined the obviousness of the snap post detent means.
However, the examiner never determined the obviousness of the
plural panels and the design shape. Thus, the examiner did not3
Appeal No. 96-2860 Page 8
Application No. 08/049,408
Note In re Rijckaert, supra; In re Lintner, supra; and In4
re Fine, supra.
establish the obviousness of defining Döppel's cap 1 from plural
panels. Additionally, Döppel's depressions 24 are not readable
on the coaxial recessed groove as recited in claim 41. The
examiner never determined that it would have been obvious to one
of ordinary skill to modify Döppel's depressions 24 to be a
coaxial recessed groove.
In summary, we see no motivation in the applied prior art of
why one skilled in the art would have modified the device of
Döppel to make the modifications necessary to arrive at the
claimed invention. Thus, the examiner has failed to meet the
initial burden of presenting a prima facie case of obviousness. 4
Thus, we cannot sustain the examiner's rejection of appealed
independent claim 41, or claims 42 through 61 which depend
therefrom, under 35 U.S.C. § 103.
Appeal No. 96-2860 Page 9
Application No. 08/049,408
CONCLUSION
To summarize, the decision of the examiner to reject claims
41 through 61 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-2860 Page 10
Application No. 08/049,408
ATTN: DOUGLAS MUELLER
MERCHANT, GOULD, SMITH, EDELL,
WELTER & SCHMIDT, P.A.
3100 NORWEST CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402
Appeal No. 96-2860
Application No. 08/049,408
Page 1
APPENDIX
41. A hand-held implement comprising:
a first curved body panel having an inner surface and an
outer surface;
an elongated snap-fit post extending from said inner surface
of said first panel, having a first end attached to said inner
surface of said first curved body panel and having a free second
end;
a second curved body panel, having an inner surface and an
outer surface, attached to said first body panel so as to define
a receptacle for an elongated snap-fit cartridge housing; and
an elongated snap-fit cartridge housing having a first
coaxial recessed groove, said cartridge housing being removably
located within said elongated snap-fit cartridge housing
receptacle by said elongated snap-fit post resiliently extending
into said first coaxial recessed groove, said cartridge housing
being substantially perpendicular to and non-coplanar with said
elongated snap-fit post, said elongated snap-fit post extending
beside said cartridge housing,
wherein said elongated snap-fit post is enclosed within an
assembled body of the hand-held implement, said assembled body
being defined by said first curved body panel and said second
curved body panel.
APPEAL NO. 96-2860 - JUDGE NASE
APPLICATION NO. 08/049,408
APJ NASE
APJ CALVERT
APJ FRANKFORT
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 07 Jan 98
FINAL TYPED: