Ex parte Sanders

Board of Patent Appeals and Interferences

Jun 21, 1999

08365849 (B.P.A.I. Jun. 21, 1999)

Application for patent filed December 29, 1994.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte VERNARD W. SANDERS
_____________
Appeal No. 97-4082
Application 08/365,8491
______________
ON BRIEF
_______________
Before COHEN, McQUADE and GONZALES, Administrative Patent
Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 4
through 7, 13, 15 through 18, and 21 through 37, all of the
claims remaining in the application. Subsequent to the final
Appeal No. 97-4082
Application 08/365,849
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rejection, an amendment was entered, and as acknowledged by
the examiner in the communication dated May 7, 1998 (Paper No.
17), claim 37 is not under rejection but stands objected to.
Accordingly, the rejection of claims 1, 4 through 7, 13, 15
through 18, and 21 through 36 is before us.
Appellant’s invention pertains to an automatic door
bottom for a hinged door which is pivotable to be positioned
over a sill when closed. An understanding of the invention
can be derived from a reading of exemplary claim 1, a copy of
which appears in the APPENDIX OF CLAIMS at the end of the
AMENDED APPEAL BRIEF (Paper No. 18).
As evidence of obviousness, the examiner has applied the
documents listed below:
Goellner 1,948,108 Feb. 20,
1934
Balousek 2,344,278 Mar. 14,
1944
Rivers 3,703,788 Nov. 28,
1972
Wexler 4,947,584 Aug. 14,
1990
Appeal No. 97-4082
Application 08/365,849
A final rejection of claims 1, 4 through 7, 13, 15 through 18, and 21 through2
37 under 35 U.S.C. § 112, second paragraph, was overcome by an entered amendment, filed
after the final rejection (Paper No. 9).
3
The following rejections are before us for review.2
Claims 1, 4, 7, 13, 17, 18, 23 through 25, and 28 through
35 stand rejected under 35 U.S.C. § 103 as being unpatentable
over Goellner in view of Wexler.
Claim 36 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Goellner in view of Wexler, as applied to
claim 18, further in view of Balousek.
Claims 5, 6, 15, 16, 21, 22, 26, and 27 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Goellner in
view of Wexler, as applied to claims 1 and 18, further in view
of Rivers.
The full text of the examiner's rejections and response
Appeal No. 97-4082
Application 08/365,849
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to the argument presented by appellant appears in the main
answer and SUPPLEMENTAL EXAMINER’S ANSWER mailed August 28,
1998 (Paper Nos. 13 and 19), while the complete statement of
appellant’s argument can be found in the main brief, AMENDED
APPEAL BRIEF, and reply briefs (Paper Nos. 12, 14, 18 and 20).
On pages 3 and 4 of the AMENDED APPEAL BRIEF (hereafter,
“brief”), it is indicated that claims 1, 4, 7, 13, 17, 18, 23
through 25, and 28 through 35 stand or fall together (claims
1, 13, and 18 are the independent claims in the application),
that claim 36 stands of falls alone, and that claims 5, 6, 12,
15, 16, 21, 22, 26, and 27 stand or fall together. In light
of 37 CFR 1.192(c)(7), we select claims 1, 36, and 5 from the
specified groupings for review on appeal, with the remaining
claims of the respective groups standing of falling therewith.
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
Appeal No. 97-4082
Application 08/365,849
In our evaluation of the applied patents, we have considered all of the3
disclosure of each patent 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).
5
patents, and the respective viewpoints of appellant and the3
examiner. As a consequence of our review, we make the
determinations which follow.
The rejection of claim 1
We reverse the rejection of claim 1 under 35 U.S.C. §
103. It follows that the rejection of claims 4, 7, 13, 17, 18,
23 through 25, and 28 through 35 likewise is reversed since
these claims stand or fall with claim 1.
Consistent with the underlying disclosure in the present
application of at least two resilient members 30 and 32
interconnected by slide blocks 20, 22 (specification, page 8),
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Application 08/365,849
Akin to claim 1, independent claim 13 specifies a plurality of springs with4
different resistances to flexing, while claim 18 requires plural resilient members of
different spring stiffnesses.
6
the automatic door bottom of independent claim 1 comprises,
inter alia, a plurality of elongated resilient members spaced
along the width of a door bottom, with one of the resilient
members being closest to the hinge side of the door having a
lower resistance to bending than other resilient members.4
Appellant argues (brief, pages 6 through 9) that unlike
the teachings of Goellner and Wexler which employ a single
spring, appellant uses multiple springs.
A review of each of the Goellner and Wexler documents
reveals that a single member (elastic strip 7 of Goellner and
curved leaf spring 41 of Wexler) is taught, contrary to the
required plurality of elongated resilient members of claim 1.
An obviousness determination must be made upon the basis of
what “would have been obvious” (35 U.S.C. § 103) not what
“could have been” done (answer, page 10). Lacking any
evidence of obviousness suggestive of the claimed plurality
Appeal No. 97-4082
Application 08/365,849
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of elongated resilient members, we must reverse the rejection
of claim 1.
The respective rejections of claims 36 and 5
We reverse the respective rejections of claims 36 and 5
under 35 U.S.C. § 103. It follows that the rejection of
claims 6, 12, 15, 16, 21, 22, 26, and 27 is also reversed
since these claims stand or fall with claim 5.
In the respective rejections of claims 36 and 5, the
examiner additionally relies upon the Balousek patent and the
Rivers patent. We find that these documents do not overcome
the abovementioned deficiency of the Goellner and Wexler
documents. It is notable that, like the Goellner and Wexler
references, the Balousek and Rivers patents teach a single
elongated spring 19
and a single curved leaf spring 41, respectively. Thus, every
reference applied by the examiner fails to disclose or suggest
an
automatic door bottom with a plurality of elongated resilient
Appeal No. 97-4082
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members (claim 1).
In summary, this panel of the board has:
reversed the rejection of claims 1, 4, 7, 13, 17, 18, 23
through 25, and 28 through 35 under 35 U.S.C. § 103 as being
unpatentable over Goellner in view of Wexler;
reversed the rejection of claim 36 under 35 U.S.C. § 103
as being unpatentable over Goellner in view of Wexler and
Balousek; and
reversed the rejection of claims 5, 6, 15, 16, 21, 22,
26, and 27 under 35 U.S.C. § 103 as being unpatentable over
Goellner in view of Wexler and Rivers.
The decision of the examiner is reversed.
Appeal No. 97-4082
Application 08/365,849
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REVERSED
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN F. GONZALES )
Administrative Patent Judge )
ICC/kis
Appeal No. 97-4082
Application 08/365,849
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MICHAELSON & WALLACE
1001 Partridge Drive
Suite 330
Ventura, CA 93003
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Application 08/365,849
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