Ex parte Sauer

Board of Patent Appeals and Interferences

Jun 21, 2000

08147485 (B.P.A.I. Jun. 21, 2000)

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(2) is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GERD SAUER
_____________
Appeal No. 1996-2388
Application No. 08/147,485
______________
HEARD: JUNE 10, 1999
_______________
Before URYNOWICZ, FLEMING and RUGGIERO, Administrative Patent
Judges.
RUGGIERO, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellant requests that we reconsider our decision of
March 8, 2000 wherein we sustained the Examiner’s rejection of
claims 1-7 under 35 U.S.C. § 103.
In our previous decision, we determined that the Examiner
had established a prima facie case of obviousness based on
Appeal No. 1996-2388
Application No. 08/147,485
2
various combinations of Kropielnicki with the Roberts,
Altmayer, and Sato references, which had not been persuasively
rebutted by any convincing arguments of Appellant. In
particular, we found that the Examiner’s line of reasoning
established proper motivation to the skilled artisan to attach
a window pane to a vehicle frame, in the language of appealed
claim 1, “via a conductive adhesive layer.” Appellant now
argues (Request, page 1):
“[N]either the examiner nor the board has put
forward a credible motivation for the use of
such a layer in Kropielnicki et al, except
with the use of hindsight.”
We have reconsidered our decision of March 8, 2000 in
light of Appellant’s comments in the Request for Rehearing,
and we find no error therein. We, therefore, decline to make
any changes in our prior decision for the reasons which
follow.
Appellant’s primary point of contention is apparently
that because Kropielnicki suggests alternative ways of
attaching the glass pane to the vehicle frame, i.e., contact
or capacitive non-contact, a high quality contact connection,
if a contact connection is chosen, is not considered to be
Appeal No. 1996-2388
Application No. 08/147,485
3
important. In Appellant’s view, this alleged implied lack of
concern with establishing a quality ground connection on the
part of Kropielnicki cannot establish proper motivation to the
skilled artisan to use a conductive adhesive to establish
such high quality contact.

Appeal No. 1996-2388
Application No. 08/147,485
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We find no error, however, in our initial finding
(Decision, page 9) of the obviousness to the skilled artisan
of using an adhesive as part of a securing measure to attach a
window pane to a vehicle frame. An artisan must be presumed
to know something about the art apart from what the references
disclose (see In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317,
319 (CCPA 1962)) and the conclusion of obviousness may be made
from "common knowledge and common sense" of the person of
ordinary skill in the art (see In re Bozek, 416 F.2d 1385,
1390, 163 USPQ 545, 549 (CCPA 1969)). Moreover, skill is
presumed on the part of those practicing in the art. See In
re Sovish, 769 F.2d 738, 742, 226 USPQ 771,
774 (Fed. Cir. 1985).
Similarly, we find no error in our original finding that
the Examiner was correct in concluding that, once the skilled
artisan has chosen an adhesive securing measure to attach a
pane to a vehicle frame, it is only good engineering practice
to establish the soundest grounded connection, i.e., by using
a conductive adhesive. In considering the disclosure of a
reference, it is proper to take into account not only specific
teachings of the reference but also the inferences which one
Appeal No. 1996-2388
Application No. 08/147,485
5
skilled in the art would reasonably be expected to draw
therefrom. In re Preda,
401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
We remain convinced for the reasons expressed in our
original decision that the skilled artisan, having chosen a
contact connection contemplated by Kropielnicki, would
recognize the obviousness of using a conductive adhesive to
attach a window pane to a vehicle frame.
We have granted Appellant’s request to the extent that we
have reconsidered our decision of March 8, 2000, but we deny
the request with respect to making any changes therein.
Appeal No. 1996-2388
Application No. 08/147,485
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REHEARING/DENIED
)
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
JFR:hh
Appeal No. 1996-2388
Application No. 08/147,485
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