Ex Parte Scott

Board of Patent Appeals and Interferences

Feb 23, 2005

10197012 (B.P.A.I. Feb. 23, 2005)

1 Claims 1 and 6 were amended after the final rejection. Claims 4 and 5 were
canceled subsequent to the final rejection.
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MICHAEL SCOTT
____________
Appeal No. 2005-0254
Application No. 10/197,012
____________
ON BRIEF
____________
Before COHEN, 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 1 to 3
and 6, which are all of the claims pending in this application.1
We REVERSE.
Appeal No. 2005-0254
Application No. 10/197,012
Page 2
2 Issued December 20, 1994.
BACKGROUND
The appellant's invention relates to a ribbon supply spool for an apparatus for
feeding ribbon to a print station and is directed to features which enable the ribbon
supply spool and ribbon take-up spool to be simpler to make and use, and to contain an
increased length of ribbon (specification, p. 1). A copy of the claims under appeal is set
forth in the appendix to the appellant's brief.
Claims 1 to 3 and 6 stand rejected under 35 U.S.C. § 103 as being unpatentable
over U.S. Patent No. 5,374,0072 to Murison.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the answer
(mailed May 18, 2004) for the examiner's complete reasoning in support of the rejection,
and to the brief (filed March 18, 2004) and reply brief (filed July 13, 2004) for the
appellant's arguments thereagainst.
Appeal No. 2005-0254
Application No. 10/197,012
Page 3
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant's specification and claims, to the applied patent to Murison, 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 insufficient to establish a prima facie case of obviousness with respect to
the claims under appeal. Accordingly, we will not sustain the examiner's rejection of
claims 1 to 3 and 6 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 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 would have led one of ordinary skill in the art to
combine the relevant teachings of the applied prior art 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, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Even when
obviousness is based on a single prior art reference, there must be a showing of a
suggestion or motivation to modify the teachings of that reference. See In re Kotzab,
217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
Appeal No. 2005-0254
Application No. 10/197,012
Page 4
3 In Howard the Supreme Court stated (150 U.S. at 169-70) that
the Monumental grate, which was in public use five years before application was
made for the patent under consideration, contains all of the elements of the
Beckwith grate, except that, being adapted for burning coal, it is cast in two
pieces, while the Beckwith grate is cast in one piece. This does not involve
patentable invention.
. . . As to the third patent, it is void because the claims in it were clearly
anticipated, and because it involves no invention to cast in one piece an article
which has formerly been cast in two pieces, and put together.
In Howard, prior art other than the Monumental grate taught casting the grate in one
piece; thus, providing evidence as to why it would have been obvious at the time
(continued...)
In the rejection under 35 U.S.C. § 103 before us in this appeal (answer, pp. 3-4),
the examiner (1) set forth the pertinent teachings of Murison; (2) ascertained that
"Murison discloses the claimed invention except for having an additional tubular core
member 54 on the cylindrical member 56; and (3) concluded that:
It would have been obvious to one having ordinary skill in the art at the time the
invention was made to make the tubular core member 54 integral with the
cylindrical member 56, thus resulting in an "integral, one-piece spool'', to simplify
the spool and have fewer parts, since it has been held that forming in one piece
an article which has formerly been formed in two pieces and put together
involves only routine skill in the art. Howard v. Detroit Stove Works,
150 U.S. 164 (1893).
The examiner has incorrectly drawn from the above-noted case law, which
turned on specific facts, a general obviousness rule: namely, that forming several
pieces integrally as a one-piece structure would have been obvious at the time the
invention was made to a person of ordinary skill in the art. No such per se rule exists.3
Appeal No. 2005-0254
Application No. 10/197,012
Page 5
3(...continued)
Beckwith's invention was made to a person of ordinary skill in the art to have cast the
Monumental grate as one piece.
4 Murison's ribbon spool 22 includes the cylindrical member 56 on which the
tubular core member 54 is mounted.
5 The one-piece printer ribbon spool limitation as recited in claim 1 requires, inter
alia, that the one-piece printer ribbon spool comprises an elongate cylindrical ribbon
support shaft of substantially uniform diameter, having directly wound thereon a length
of a printing ribbon.
See In re Hubbell, 164 F.2d 700, 702-04 76 USPQ 105, 107-09 (CCPA 1947); In re
Otto, 121 F.2d 553, 555, 50 USPQ 149, 150 (CCPA 1941). The examiner's citation of
Howard or any other case as a basis for rejecting claims that differ from the prior art by
reciting a one-piece structure is improper, if it sidesteps the fact-intensive inquiry
mandated by 35 U.S.C. § 103. Thus, in this case, one must determine if it would have
been obvious to one of ordinary skill in the art at the time the invention was made to
make Murison's tubular core member 54 and ribbon spool 224 as a one-piece structure.
In this case, we agree with the appellant that the examiner has failed to establish
a prima facie case of obviousness for the claims under appeal with respect to the one-
piece printer ribbon spool limitation as recited in claim 1.5 In that regard, it is our
determination that there is no evidence before us in the rejection under appeal that the
one-piece printer ribbon spool limitation as recited in claim 1 would have been obvious
Appeal No. 2005-0254
Application No. 10/197,012
Page 6
6 Evidence of a suggestion, teaching, or motivation to modify a reference may
flow from the prior art references themselves, the knowledge of one of ordinary skill in
the art, or, in some cases, from the nature of the problem to be solved, see Pro-Mold &
Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630
(Fed. Cir. 1996), Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73 F.3d 1085,
1088, 37 USPQ2d 1237, 1240 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996),
although "the suggestion more often comes from the teachings of the pertinent
references," In re Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir.
1998). The range of sources available, however, does not diminish the requirement for
actual evidence. A broad conclusory statement regarding the obviousness of modifying
a reference, standing alone, is not "evidence." Thus, when an examiner relies on
general knowledge to negate patentability (such as making plural elements into a single-
piece assembly), that knowledge must be articulated and placed on the record. See In
re Lee, 277 F.3d 1338, 1342-45, 61 USPQ2d 1430, 1433-35 (Fed. Cir. 2002) and In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
to one of ordinary skill in the art at the time the invention was made from the teachings
of Murison.
For the reasons set forth above, we conclude that the examiner's determination
of the obviousness of the one-piece printer ribbon spool limitation has not been
supported by any evidence6 that would have led an artisan to arrive at the claimed
invention. In our view, the only suggestion for modifying Murison in the manner
proposed by the examiner in the rejection before us in this appeal to meet the one piece
printer ribbon spool limitation stems from hindsight knowledge derived from the
appellant's own disclosure. The use of such hindsight knowledge to support an
obviousness rejection under 35 U.S.C. § 103 is, of course, impermissible. See, for
Appeal No. 2005-0254
Application No. 10/197,012
Page 7
example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For the reasons set forth above, we are constrained to reverse the decision of
the examiner to reject independent claim 1, and claims 2, 3 and 6 dependent thereon,
under 35 U.S.C. § 103.
CONCLUSION
Appeal No. 2005-0254
Application No. 10/197,012
Page 8
To summarize, the decision of the examiner to reject claims 1 to 3 and 6 under
35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2005-0254
Application No. 10/197,012
Page 9
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