Ex Parte Scott

Board of Patent Appeals and Interferences

Apr 21, 2004

09764743 (B.P.A.I. Apr. 21, 2004)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte RAYMOND M. SCOTT
_____________
Appeal No. 2004-0415
Application No. 09/764,743
______________
ON BRIEF
_______________
Before KIMLIN, PAK, and KRATZ, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from
the examiner’s refusal to allow claims 1 through 4, which are all
of the claims pending in the above-identified application.
According to the appellant (Brief, page 5):
Claims 1, 2 and 4 form a first group of claims, and
claim 3 forms a second group of claims that stand or
fall separate.
Appeal No. 2004-0415
Application No. 09/764,743
2
Therefore, for purposes of this appeal, we select claims 1 and
3 and determine the propriety of the examiner’s rejections based
on these claims alone consistent with 37 CFR § 1.192(c)(7)(2002).
Claims 1 and 3, which are representative of the subject matter on
appeal, are reproduced below:
1. In a shopping cart having a basket having a front
opposite a rear and forming an upper opening circumscribed
by an upper peripheral rim, a handle supported at the rear,
and said cart rolled and supported on a pair of laterally
rotatable, front castor wheels opposite a pair of non-
pivoting rear wheels, wherein the improvement comprises:
a spring urged brake mechanism capable of selectively
impinging against said rear wheels in order to provide a
breaking force; and
means for releasing said impinging when two respective
shopping carts are nested together.
3. The improvement of Claim 2, wherein said spring urged
brake mechanism comprises:
an actuation lever mounted in an articulated manner
near or to the handle and in mechanical communication with
the spring urged brake mechanism by an actuation cable; and
actuation guide means for allowing the mechanical
communication of a brake release force from a location
remove from the spring urged brake mechanism in a manner
that avoids obstruction of or access to the nesting access
area.
The prior art references relied upon by the examiner are:
Trimble et al. (Trimble) 5,499,697 Mar. 19, 1996
Nolting, Jr. et al. (Nolting) 6,123,343 Sep. 26, 2000
Appeal No. 2004-0415
Application No. 09/764,743
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The appealed claims stand rejected as follows:
1) Claims 1, 2 and 4 under 35 U.S.C. § 103 as unpatentable
over the disclosure of Trimble; and
2) Claim 3 under 35 U.S.C. § 103 as unpatentable over the
combined disclosures of Trimble and Nolting.
We have carefully considered the appellant’s arguments in
the Brief, but we are not persuaded of reversible error in any of
the examiner’s Section 103 rejections. Accordingly, we affirm
the examiner’s decision rejecting claims 1 through 4 under
35 U.S.C. § 103 for the findings of fact and conclusions set
forth in the Answer and below.
Under 35 U.S.C. § 103, to establish a prima facie case of
obviousness, there must be some objective teachings or
suggestions in the applied prior art and/or knowledge generally
available to a person having ordinary skill in the art that would
have led such person to arrive at the claimed subject matter.
See, generally, In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d
1438, 1446-47 (Fed. Cir. 1992)(Nies, J., concurring); In re
Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
The knowledge generally available to one of ordinary skill in the
art includes the appellant’s admission regarding what was known
Appeal No. 2004-0415
Application No. 09/764,743
4
in the art at the time of the appellant’s invention. See In re
Nomiya, 509 F.2d 566, 570-71, 184 USPQ 607, 611-12 (CCPA 1975)(an
applicant’s admitted prior art may be used in determining the
patentability of a claimed invention); see also In re Davis, 305
F.2d 501, 503, 134 USPQ 256, 258 (CCPA 1962).
Here, we observe that claim 1 on appeal is written in Jepson
format. Ex parte Jepson, 243 Off. Gaz. Pat. Off. 525 (Comm’r
Pats. 1917). Thus, the subject matter recited in the preamble of
appealed claim 1 is impliedly admitted to be old in the art. In
re Ehrreich, 590 F.2d 902, 909, 200 USPQ 504, 510 (CCPA 1979); In
re Aldrich, 398 F.2d 855, 857, 158 USPQ 311, 312 (CCPA 1968).
Specifically, the appellants impliedly admit that it was known at
the time of the invention
a shopping cart having a basket having a front opposite
a rear and forming an upper opening circumscribed by an
upper peripheral rim, a handle supported at the rear,
and said cart rolled and supported on a pair of
laterally rotatable, front castor wheels opposite a
pair of non-pivoting rear wheels . . . .
The appellants also have not challenged the examiner’s official
notice that such shopping cart is well known. Compare the
Answer, pages 3 and 4 with the Brief in its entirety. Allegedly,
the appellants’ invention involves an improvement in the
Appeal No. 2004-0415
Application No. 09/764,743
1 Compare the Answer, page 3, with the Brief in its
entirety.
5
admittedly old shopping cart, wherein improvement is said to
include the implementation of:
[A] spring urged brake mechanism capable of
selectively impinging against said rear wheels in order
to provide a braking force; and
[M]eans for releasing said impinging when two
respective shopping carts are nested together.
The dispositive question is, therefore, whether one of
ordinary skill in the art would have been led to employ the above
improvement in the old shopping cart. On this record, we answer
this question in the affirmative.
As is apparent from this record, the appellants do not
dispute the examiner’s finding1 that:
Trimble teaches a conventional shopping cart comprising
front and rear wheels, a basket with an upper rim (Figure 1)
and a spring (60) urged brake mechanism capable of
selectively impinging against the rear wheels (Figure 1) in
order to provide a braking force, and
means for releasing said impinging when two respective
shopping carts are nested (lines 18-21 of column 6).
In other words, the appellants do not dispute that Trimble
teaches the claimed improvement, i.e., the claimed spring urged
brake mechanism and releasing means. See also Trimble, column 5,
lines 10-62 and column 6, lines 7-25. According to Trimble
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Application No. 09/764,743
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(column 6, lines 26-31), such brake mechanism and releasing means
can be applied to almost any shopping cart in any
retail environment. It is easy to use, and does not
alter the function of the cart in any way. It simply
allows the cart to be rendered immobile in a parking
lot. With this advantage, the present invention makes
a practical addition to any cart.
Under these circumstances, we determine that it would have
been prima facie obvious to implement the claimed brake mechanism
and releasing means in the admittedly old shopping cart. One of
ordinary skill in the art would have been led to employ the
claimed brake mechanism and releasing means in the admittedly old
shopping cart in the manner taught by Trimble, motivated by a
reasonable expectation of successfully obtaining the advantages
indicated above.
The appellant argues that Trimble’s brake cable 74 “spans
the rear nesting opening of the cart, and would therefore cause
interference in the nesting of successive carts with such a
design.” See the Brief, page 6. This argument fails from the
outset since it is not based on limitations appearing in claim
1 on appeal. In re Self, 671 F.2d 1344, 1348, 213 USPQ 1,
5 (CCPA 1982).
Even if we were to determine that such limitations are
present in claim 1, our conclusion would not be altered. As
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Application No. 09/764,743
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indicated supra, Trimble teaches that the claimed brake mechanism
and releasing means should be employed in a manner that would not
alter the operation of a shopping cart. As also found by the
examiner (pages 4 and 5):
Trimble teaches actuation lever (12 on Figure 1)
mounted near a handle in mechanical communication (14) with
the spring urged brake mechanism and actuation guide means
(Figured 3 and 6) that avoids obstruction or access to the
nesting access area (Figure 1 and lines 18-21 of column 6).
Thus, from our perspective, one of ordinary skill in the art
armed with such knowledge would have been led to place the brake
cable described in Trimble at a location that would not interfere
with the operation of the rear nesting opening of the admittedly
old shopping cart as taught by Trimble.
With respect to claim 3 on appeal, the examiner acknowledges
that Trimble illustrates what appears to be a rigid bar, rather
than a cable, as a means for connecting its actuation means and
brake mechanism in Figure 1. To remedy this deficiency, the
examiner further relies on the disclosure of Nolting. The
examiner finds (Answer, page 5), and the appellants do not
dispute (Brief, pages 6-9), that:
Nolting Jr. teaches a shopping cart braking mechanism
where the actuation means is mechanically connected to the
brake mechanism by a cable (54). Utilizing a flexible cable
for a mechanical communication between a brake actuation
means and a wheel brake mechanism is advantageous over a
Appeal No. 2004-0415
Application No. 09/764,743
8
rigid bar in that the cable is lighter, cable conforms to
the geometry of the cart more easily, which makes for better
appearance and lessens the possibility of inadvertent
movement of the mechanical communication by being bumped.
Thus, we concur with the examiner (Answer page 5) that:
it would have been obvious to one of ordinary skill in the
art at the time the invention was made to utilize a cable
for the mechanical communication between the actuation lever
and brake mechanism of Trimble, as taught by Nolting, Jr.
The appellant only argues that Nolting does not teach the
features recited in claim 1. See the Brief, page 6. In so
arguing, the appellant ignores that the obviousness test under
Section 103 is not what the prior art references individually
teach, but what their combined teachings would have fairly
suggested to a person having ordinary skill in the art. In re
Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991);
In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
When the teachings of Trimble and Nolting are collectively
considered, we determine that there is ample suggestion to arrive
at the subject matter recited in claim 3 as indicated supra.
In view of the foregoing, we affirm the examiner’s decision
rejecting claims 1 through 4 under 35 U.S.C. § 103.
Appeal No. 2004-0415
Application No. 09/764,743
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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).
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
CKP/hh
Appeal No. 2004-0415
Application No. 09/764,743
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