Ex Parte Sheppard et al

Board of Patent Appeals and Interferences

Apr 15, 2003

08877711 (B.P.A.I. Apr. 15, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte CLINTON S. SHEPPARD and DONALD R. MCCOMBES

Appeal No. 2001-0678
Application No. 08/877,711

ON BRIEF

Before KRASS, BARRETT and SAADAT, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
ON REQUEST FOR REHEARING
Appellants request that we reconsider that part of our
decision of January 17, 2003 wherein we sustained the examiner’s
rejection of claims 1-4, 10-29 and 31 under 35 U.S.C. 103.
Presumably, appellants do not request reconsideration of our
decision to reverse the examiner’s rejection of claims 5-8, 30
and 32-42 under 35 U.S.C. 103.
Appeal No. 2001-0678
Application No. 08/877,711
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In particular, appellants do not contend that our broad
interpretation of the instant claim language is erroneous.
Rather, appellants request that we permit amendments to be made
to the independent claims in order to clarify that the “operator”
and the “person” are not the same individual.
We decline the invitation to order the examiner to permit
this amendment at this time because while such an amendment would
appear to distinguish the instant claims over our specific
reasoning in sustaining the rejection of the claims, the
requested amendment might, conceivably, raise new issues. We
would prefer that any such amendment be presented to the examiner
for review, either through a request for amendment after decision
on appeal or through refiling the application. In this way, the
examiner can make a thorough review of such amended claims,
having our decision as a guide, and can make the determination as
to whether a new search of the prior art may be necessary and/or
whether there is some new rationale which might be applied
against such newly amended claims.
While we regret the delay attendant in such a review by the
examiner, especially in view of the already extended prosecution,
it is our view that this procedure would result in a much more
thorough consideration of any new issues presented by the newly
Appeal No. 2001-0678
Application No. 08/877,711
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amended claims and, if the case is eventually passed to issue, a
stronger patent will result. If, after full and deliberate
consideration, the examiner agrees that the amendment does,
indeed, place the claims in condition for allowance, the examiner
can readily allow the claims. On the other hand, if the examiner
decides otherwise, and the case returns to this Board on appeal,
we will have a complete record, with the full reasoning of both
appellants and the examiner before us, and a more reasoned
decision can be made based on such reasoning.
Appellants also request that if we should decline the
admission of the proposed amendment, then “further clarification
concerning the motivation needed to justify the suggested
modifications or combinations of references necessary to maintain
the rejections” [Request for Rehearing-page 2] is sought.
Since, in our view, we provided sufficient “motivation
needed to justify the suggested modifications” in our decision,
it is not clear to us what “further clarification” appellants
seek. For example, the rejection of claim 1 was sustained based
on Sharrard, alone, after concluding that the claim did not
preclude the operator and the person from being the same
individual. Accordingly, no modification of the reference, or
motivation to combine, was necessary. For other claims, e.g.,
Appeal No. 2001-0678
Application No. 08/877,711
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the “strip tease act” of claim 3, the “motivation” given was our
view that it would have been obvious to apply the Sharrard
teachings to many activities where age appropriateness is an
issue, whether it be for admission to movies or strip-tease acts
or for permission to purchase alcohol, tobacco or firearms, etc.
Appellants specifically point only to page 7, lines 3-17, of
our decision as an example of our failure to justify
modifications or motivation. However, reference to that portion
of our decision is very explicit as to how alarms and warning
devices were well known and why it would have been obvious to
incorporate such a device in the system of Sharrard. In
addition, we explained that it would also be reasonable to find
that the simple diversion of the coins themselves in Sharrard
constitutes a “warning device” since it indicates to the operator
that the operator is underage. Accordingly, we find unpersuasive
appellants’ allegation that our decision “lacked any discussion
of the motivation or suggestions justifying the necessary
combination of references needed to reach claim 15” [Request for
Rehearing-page 3].
Appellants’ request for rehearing has been granted to the
extent that we have reconsidered our decision of January 17, 2003
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Application No. 08/877,711
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but it is denied with respect to making any changes therein
and/or entering any claim amendment.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
DENIED
ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
)
LEE E. BARRETT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
MAHSHID D. SAADAT )
Administrative Patent Judge )
EK/RWK
Appeal No. 2001-0678
Application No. 08/877,711
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R DARRYL BURKE
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