Ex parte Shiek

Board of Patent Appeals and Interferences

Jun 3, 1999

08290678 (B.P.A.I. Jun. 3, 1999)

Application for patent filed August 15, 1994. According1
to the appellant, the application is a continuation of
Application No. 08/023,300, filed February 26, 1993, now
abandoned, which was a continuation of Application No.
07/728,742, filed July 12, 1991, now abandoned.
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for publication in a law journal and (2) is not binding precedent of the Board.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 JAMES W. SHIEK, SR.
____________
Appeal No. 1999-0266
Application No. 08/290,6781
____________
ON BRIEF
____________
Before CALVERT, McQUADE, 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 3, 6, 7, 9 to 13 and 18 to 20, which are
all of the claims pending in this application.
Appeal No. 1999-0266
Application No. 08/290,678
We REVERSE.
Appeal No. 1999-0266 Page 3
Application No. 08/290,678
BACKGROUND
The appellant's invention relates to a support and
utility belt. An understanding of the invention can be
derived from a reading of exemplary claim 9, which appears in
the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Welsand 1,600,027 Sep. 14,
1926
Creper 2,185,834 Jan. 2,
1940
Schrieber 3,052,236 Sep.
4, 1962
Taigen 4,964,401 Oct. 23,
1990
The appealed claims stand finally rejected on the
following grounds:
(1) Claims 3, 7, 9 to 11, 13 and 18 to 20 under 35 U.S.C. §
103 as being unpatentable over Taigen in view of Creper or
Schrieber; and
Appeal No. 1999-0266 Page 4
Application No. 08/290,678
(2) Claims 6 and 12 under 35 U.S.C. § 103 as being
unpatentable over Taigen in view of Creper or Schrieber, and
further in view of Welsand.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejections, we make reference to the final rejection (Paper
No. 25, mailed May 12, 1996) and the examiner's answer (Paper
No. 28, mailed November 18, 1996) for the examiner's complete
reasoning in support of the rejections, and to the appellant's
brief (Paper No. 27, filed September 23, 1996) for the
appellant's arguments thereagainst.
OPINION
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, to the second
declaration of John Schiek dated March 26, 1996 (attached to
Paper No. 23, filed March 29, 1996) and to the respective
positions articulated by the appellant and the examiner.
Upon evaluation of all the evidence before us, it is our
Appeal No. 1999-0266 Page 5
Application No. 08/290,678
conclusion that the examiner has not established obviousness
with respect to the claims under appeal. Accordingly, we will
not sustain the examiner's rejections under 35 U.S.C. § 103.
Our reasoning for this determination follows.
The evidence of nonobviousness submitted by the appellant
must be considered en route to a determination of
obviousness/nonobviousness under 35 U.S.C. § 103. See
Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871
(Fed. Cir. 1983). Accordingly, we must carefully evaluate
both the combined teachings of the applied prior art and the
objective evidence of nonobviousness supplied by the
appellant. See In re Oetiker, 977 F.2d 1443, 1445-46, 24
USPQ2d 1443, 1444-45 (Fed. Cir. 1992); In re Piasecki, 745
F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984).
The teachings of the applied prior art relied upon by the
examiner as establishing obviousness of the claimed invention
are set forth on pages 2-4 of the final rejection which we
incorporate by reference.
Appeal No. 1999-0266 Page 6
Application No. 08/290,678
Although the appellant argues that Creper or Schreiber
would not have suggested the modification of Taigen as set
forth by the examiner (final rejection, pp. 2-4), we do not
agree. Creper teaches that his belt is provided with reduced
side sections to accommodate the belt to movement of the
wearer (column 2, lines 10-17). Schreiber teaches that his
belt is provided with reduced side portions to embrace the
sides of the wearer and provide a comfortable conformation to
the body contours (column 3, lines 25-28). In view of the
teaching of either Creper or Schreiber, we consider that it
would have been prima facie obvious to one of ordinary skill
to have made the belt of Taigen with reduced side sections in
order to better fit the wearer as suggested and taught by
either Creper or Schreiber.
Having determined that a prima facie case of obviousness
has been established, we now evaluate the evidence directed to
secondary considerations to determine whether it is sufficient
to rebut the prima facie case. In re Piasecki, supra.
Appeal No. 1999-0266 Page 7
Application No. 08/290,678
As to this objective evidence of nonobviousness the2
examiner states (answer, p. 6) that she "finds no faults with
the secondary evidence presented."
The objective evidence of nonobviousness supplied by the
appellant establishes the following: (1) Commercial Success2
as set forth in paragraphs 2-15 of the second declaration of
John Schiek; (2) Copying by the appellant's competitors as set
forth in paragraphs 16-20 of the second declaration of John
Schiek; and
(3) Customer and expert response as set forth in paragraph 21
of the second declaration of John Schiek.
It is well settled that, to consider objective evidence
of nonobviousness, the appellant has the burden of showing
that there is a nexus, i.e., a legally and factually
significant connection, between the proven success and the
claimed invention. In re Paulsen, 30 F.3d 1475, 1482, 31
USPQ2d 1671, 1676 (Fed. Cir. 1994). We consider that
appellant has carried that burden here. The invention in
issue is a relatively simple one, involving a support belt
which is conventional except for the presence of reduced side
Appeal No. 1999-0266 Page 8
Application No. 08/290,678
sections. Since the support belt does not appear to include
any feature distinguishing it from conventional support belts
other than the claimed reduced side sections, it seems evident
that the claimed invention was the reason for the commercial
success and copying of the invention set forth in the second
declaration of John Schiek, in other words, that there was a
nexus between the claimed invention and the commercial success
and copying of the appellant's support belt.
Accordingly, we conclude that the evidence of secondary
considerations submitted by the appellant is sufficient to
overcome the prima facie case of obviousness as to the claimed
subject matter. Rejections (1) and (2) will therefore not be
sustained.
Appeal No. 1999-0266 Page 9
Application No. 08/290,678
CONCLUSION
To summarize, the decision of the examiner to reject
claims 3, 6, 7, 9 to 13 and 18 to 20 under 35 U.S.C. § 103 is
reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-0266 Page 10
Application No. 08/290,678
JUDY KRUGER
BRACEWELL & PATTERSON, L.L.P.
SOUTH TOWER PENNZOIL PLACE
711 LOUISIANA ST. SUITE 2900
HOUSTON, TX 77002
APPEAL NO. 1999-0266 - JUDGE NASE
APPLICATION NO. 08/290,678
APJ NASE
APJ CALVERT
APJ McQUADE
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 03 Jun 99
FINAL TYPED: