Ex parte Schmidt

Board of Patent Appeals and Interferences

Dec 7, 1998

08352513 (B.P.A.I. Dec. 7, 1998)

Application for patent filed December 9, 1994. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte CHARLES J. SCHMIDT
____________
Appeal No. 98-1183
Application No. 08/352,5131
____________
ON BRIEF
____________
Before ABRAMS, STAAB, 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 1 through 13, which are all of the claims
pending in this application.
We AFFIRM-IN-PART.
Appeal No. 98-1183 Page 2
Application No. 08/352,513
BACKGROUND
The appellant's invention relates to a method and
apparatus for cleaning tilt-in, double hung windows. An
understanding of the invention can be derived from a reading
of exemplary claims 1 and 8, which are reproduced infra.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Reynolds 4,027,802 June 7, 1977
Prete et al. (Prete) 5,251,401 Oct. 12, 1993
Purves 642,299 Aug. 30, 1950
(British)
Claims 1 through 13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Prete in view of Purves and
Reynolds.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the examiner's answer (Paper
No. 12, mailed September 24, 1997) for the examiner's complete
reasoning in support of the rejection, and to the appellant's
Appeal No. 98-1183 Page 3
Application No. 08/352,513
brief (Paper No. 11, filed June 23, 1997) for the appellant's
arguments thereagainst.
Appeal No. 98-1183 Page 4
Application No. 08/352,513
OPINION
Initially we note that the appellant on page 4 of the
brief has grouped the claims as standing or falling together
in the following manner: Group I, claims 1 through 7 and 9,
and Group II, claims 8 and 10 through 13. However, the
appellant has provided a separate argument on page 9 of the
brief for the patentability of claim 13. Accordingly, we will
not treat claim 13 as being within the second grouping of
claims. Instead claim 13 will be treated separately. In
accordance with 37 CFR
§ 1.192(c)(7), we have selected claim 1 as the representative
claim from Group I and claim 8 as the representative claim
from Group II. Thus, we will review claims 1, 8 and 13 to
decide the appeal on the rejection under 35 U.S.C. § 103.
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
Appeal No. 98-1183 Page 5
Application No. 08/352,513
sufficient to establish obviousness with respect to claim 8
but not with respect to claims 1 and 13. Accordingly, we will
sustain the examiner's rejection of claim 8, and claims 10
through 12 which fall with claim 8, under 35 U.S.C. § 103. We
will not sustain the examiner's rejection of claims 1 through
7, 9 and 13 under 35 U.S.C. § 103. Our reasoning for this
determination follows.
In rejecting claims under 35 U.S.C. § 103, the examiner
bears the initial burden of presenting a case of obviousness.
See In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956
(Fed. Cir. 1993). Obviousness is established by presenting
evidence that the reference teachings would appear to be
sufficient for one of ordinary skill in the relevant art
having the references before him to make the proposed
combination or other modification. See In re Lintner, 9 F.2d
1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the
conclusion that the claimed subject matter is obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
Appeal No. 98-1183 Page 6
Application No. 08/352,513
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on § 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
With this as background, we analyze the prior art applied
by the examiner in the rejection of the claims on appeal.
Prete discloses a double-hung window assembly having
tilt-in sashes.
Purves discloses a collapsible trestle. As shown in
Figures 1-3, the trestle includes a vertical member (i.e.,
main body 7), a stand (i.e., bars 12, bars 14, rod 10 ), atb
Appeal No. 98-1183 Page 7
Application No. 08/352,513
least one pivotable cross-member (i.e., arms 8) and padding
(i.e., strips 8 ).e
Reynolds discloses a building board positioner. As shown
in Figures 1 and 2, the positioner includes a vertical member
having adjustment means disposed thereon for selectively
adjusting the length thereof (i.e., sections 20, 24, 28 and 32
and vertical adjustment means 65), a stand (i.e., base 12), at
least one cross-member (i.e., arms 38, 40, 42 and 44) and at
least element extending from a top surface of one cross-member
(i.e., stop member 46 to prevent lateral movement of a board
or panel during use of the positioner).
Claim 1
Claim 1 recites:
A method of positioning a sash of a tilt-in window in a
position suitable for washing, comprising the steps of:
providing a free standing support;
positioning said free standing support proximate the
tilt-in window;
adjusting said free standing support to a desired
height; and
tilting a sash from said tilt-in window to a point
where the sash rests upon and is supported by said free
standing support.
Appeal No. 98-1183 Page 8
Application No. 08/352,513
The examiner determined (answer, p. 3) that "it would
have been obvious to have provided a free standing support in
lieu of using one's hand or the window sill in order to free
both hands to clean the window [of Prete]." Thereafter, the
examiner determined (answer, p. 4) that
[t]o have used the trestle of the British patent [Purves]
to prop open the window of Prete et al. when cleaning
would have been obvious to one having ordinary skill in
the art, since the trestle is a general support and it is
generally recognized that windows would be propped when
applying a downward cleaning force on them.
The appellant argues (brief, pp. 7, 8 and 10) that the
method steps set forth in claim 1 are not suggested by the
applied prior art. We agree. In that regard, the examiner
has not cited any evidence that would have led an artisan to
have tilted a sash from a tilt-in window to a point where the
sash rests upon and is supported by a free standing support in
the manner recited by claim 1. It is our view that the
examiner's determination of obviousness is based on
speculation, unfounded assumption and/or impermissible
hindsight reconstruction to supply the deficiencies in the
factual basis for the rejection.
Appeal No. 98-1183 Page 9
Application No. 08/352,513
For the reasons set forth above, the decision of the
examiner to reject claim 1, and claims 2 through 7 and 9
dependent thereon, under 35 U.S.C. § 103 is reversed.
Claim 8
Claim 8 recites:
A static support for supporting the sash of a tilt-in
window, comprising:
a vertical member having an adjustment means
disposed thereon for selectively adjusting the length
thereof;
a stand coupled to said vertical member, wherein
said stand holds said vertical member in a generally
vertical orientation;
at least one cross-member pivotably coupled to said
vertical member, wherein said at least one cross member
can be selectively pivoted into a position generally
perpendicular to said vertical member;
padding disposed on a top surface of said at least
one cross member; and
at least one element extending from said at least
one cross member beyond said top surface that engages an
edge of the sash thereby retaining the sash in a
predetermined orientation relative to said static
support.
After the scope and content of the prior art are
determined, the differences between the prior art and the
Appeal No. 98-1183 Page 10
Application No. 08/352,513
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Purves and claim 8,
it is our opinion that the only differences are the
limitations that (1) the vertical member has an adjustment
means disposed thereon for selectively adjusting the length
thereof, and (2) the at least one cross member has at least
one element extending beyond its top surface.
With regard to these differences, the examiner determined
(answer, p. 4) that
[i]t would have been obvious at the time of the invention
for one having an ordinary level of skill in the art to
have provided the vertical support member of the British
patent's [Purves] trestle with a height adjusting means
and to also have provided the cross member [of Purves]
with extending elements as taught by Reynolds in order to
better support the article on the British patent's
trestle and subsequently position it at a selected
height.
We agree.
We find the appellant's argument (brief, pp. 8-10) with
respect to claim 8 unpersuasive for the following reasons.
Appeal No. 98-1183 Page 11
Application No. 08/352,513
First, the appellant argues the deficiencies of each
reference on an individual basis. However, nonobviousness
cannot be established by attacking the references individually
when the rejection is predicated upon a combination of prior
art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091,
1097, 231 USPQ 375, 380 (Fed. Cir. 1986).
Next, the appellant argues that subject matter recited in
claim 8 is not suggested by the applied prior art. We do not
agree. As set forth above, we agree with the examiner that
the teachings of Reynolds would have suggested modifying the
trestle of Purves by (1) making the length of the vertical
member adjustable, and (2) providing stop members on the cross
members. The suggestion and motivation for such modifications
come from the teachings of Reynolds, not impermissible
hindsight. In that regard, Reynolds clearly teaches that (1)
the length of his vertical member is adjustable to raise or
lower the height of his cross members, and (2) stop members
are provided on the cross members to prevent lateral movement
of the board or panel supported by the cross members.
Appeal No. 98-1183 Page 12
Application No. 08/352,513
Lastly, the appellant argues that the applied prior art
does not suggest that the at least one element (i.e.,
Reynolds' stop members 46) engage an edge of a sash thereby
retaining the sash in a predetermined orientation relative to
the static support. While this is true, it is our opinion
that claim 8 does not recite the combination of the static
support and sash. Instead, claim 8 is directed to the static
support, per se, intended for use with the sash of a tilt-in
window as recited in the preamble of claim 8. All that the
functional recitations of the last clause of claim 8 require
is at least one element extending from the at least one cross
member beyond the top surface that is capable of engaging an
edge of a sash and thereby retaining the sash in a
predetermined orientation relative to the static support. It
seems the appellant is endeavoring to predicate patentability
upon the method of using the static support. However, the
manner or method in which a machine is to be utilized is not
germane to the issue of patentability of the machine itself.
See In re Casey, 370 F.2d 576, 580, 152 USPQ 235, 238 (CCPA
1967); In re Yanush, 477 F.2d, 958, 959, 177 USPQ 705, 706
(CCPA 1973). Furthermore, it is our opinion that Purves'
Appeal No. 98-1183 Page 13
Application No. 08/352,513
Claim 12 reads as follows: "The static support according2
to Claim 8, wherein the sash has a peripheral frame of a
predetermined width that extends in between two side edges and
said at least one element engages at least one of the two side
edges of the peripheral frame, thereby preventing said free
standing support from inadvertently moving independently from
the peripheral frame."
trestle provided with the stop members in accordance with the
teachings of Reynolds would be capable of engaging an edge of
a sash thereby retaining the sash in a predetermined
orientation relative to the trestle (i.e., the static
support).
For the reasons set forth above, the decision of the
examiner to reject claim 8, and claims 10 through 12 dependent
thereon, under 35 U.S.C. § 103 is affirmed.
Claim 13
Claim 13 adds to parent claims 8 and 12 the limitation2
that the static support has "at least two elements that extend
from said at least one cross member, wherein said at least two
elements engage the two side edges of the peripheral frame at
points generally opposite each another."
Appeal No. 98-1183 Page 14
Application No. 08/352,513
The appellant argues (brief, p. 9) that
none of the references cited by the Examiner disclose two
elements, such as those claimed, that engage the two side
edges of a sash's peripheral frame at points generally
opposite to each other.
We agree.
The examiner did not respond to this argument in the
answer. While Reynolds would have suggested providing
multiple stop members on the cross members of Purves, there is
no suggestion in the applied prior art to space two of the
stop members apart so that they would have been capable of
engaging two side edges of the peripheral frame of a sash at
points generally opposite each another. Since all the
limitations of claim 13 are not suggested by the applied prior
art, the decision of the examiner to reject claim 13 under 35
U.S.C. § 103 is reversed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 13 under 35 U.S.C. § 103 is affirmed with
Appeal No. 98-1183 Page 15
Application No. 08/352,513
respect to claims 8 and 10 through 12 but is reversed with
respect to claims 1 through 7, 9 and 13.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 98-1183 Page 16
Application No. 08/352,513
ERIC A. LAMORTE
985 READING AVENUE
YARDLEY, PA 19067-1626
APPEAL NO. 98-1183 - JUDGE NASE
APPLICATION NO. 08/352,513
APJ NASE
APJ ABRAMS
APJ STAAB
DECISION: AFFIRMED-IN-PART
Prepared By: Gloria Henderson
DRAFT TYPED: 1 Dec 98
FINAL TYPED: