Ex parte Skinkiss

Board of Patent Appeals and Interferences

Jun 14, 2001

08694200 (B.P.A.I. Jun. 14, 2001)

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for publication and is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SHARON B. SKINKISS
____________
Appeal No. 2000-0226
Application No. 08/694,200
____________
ON BRIEF
____________
Before McCANDLISH, Senior Administrative Patent Judge, 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 1 to 4 and 6 to 8, which are all of the
claims pending in this application.
We REVERSE.
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Application No. 08/694,200
BACKGROUND
The appellant's invention relates to a method of, and
apparatus for sealing fireplaces to prevent the loss of
conditioned air from the living quarters through such
fireplaces (specification, p. 1). A copy of claims 1 to 4, 6
and 8 under appeal is set forth in the appendix to the
appellant's brief (Paper No. 11, filed July 21, 1998). A copy
of claim 7 under appeal is set forth on page 3 of the
examiner's answer (Paper No. 12, mailed May 25, 1999).
The prior art of record relied upon by the examiner in
rejecting the appealed claims is:
Knudson 1,830,364 Nov. 3,
1931
Reiner 3,789,825 Feb. 5,
1974
Le Brun 3,888,232 June 10,
1975
Gallagher 4,072,140 Feb.
7, 1978
Fox et al. (Fox) 4,160,442 July 10,
1979
The examiner also relied upon the appellant's admission of
prior art (shown in Figure 1 and described in the
specification at page 4, lines 6-10) relating to a
conventional fireplace (Admitted Prior Art).
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Application No. 08/694,200
Appeal No. 2000-0226 Page 4
Application No. 08/694,200
In the second paragraph of page 5 of the answer, the1
examiner for the first time refers to a well known custom.
This well known custom will be given no consideration since it
was not included in the statement of the rejection. See Ex
parte Raske, 28 USPQ2d 1304, 1305 (Bd. Pat. App. & Int. 1993).
Additionally, it would be inappropriate to consider this new
piece of evidence since that would constitute a new ground of
rejection and 37 CFR § 1.193(a)(2) provides that an examiner's
answer must not include a new ground of rejection.
Claims 1 to 4 and 6 to 8 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over the Admitted Prior Art in
view of Gallagher, Le Brun, Knudson, Fox and Reiner.1
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer for the examiner's
complete reasoning in support of the rejection, and to the
brief 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, and to the respective
positions articulated by the appellant and the examiner. Upon
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Application No. 08/694,200
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 4 and 6 to 8 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 references 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).
The two independent claims on appeal read as follows:
1. A method of sealing the fire box of a fireplace
wherein a natural draft of air flows into said fire box
through a frontal opening and exits through an exhaust
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Application No. 08/694,200
flue, and wherein said frontal opening includes
structural means, extending across said frontal opening,
that closes-off said frontal opening when said fireplace
is in use, comprising the steps of
a) providing a frameless, thin, sheet of air
impermeable, pliable material,
b) placing said sheet of material over said
structural means when said fireplace is not in use
thereby permitting the natural draft of air through said
fire box to draw said sheet of material against said
structural means thereby blocking the flow of air there
through.
3. In a domestic fireplace having a fire box, exhaust
means for the removal of smoke and combustion gases from
said fire box and at least one frontal opening for the
introduction of combustible material into said fire box
and means for closing-off said frontal opening when said
fire box is in use whereby a natural draft of air may
flow into said fire box through said means for closing-
off said frontal opening and exiting said fire box
through said exhaust means, the improvement comprising
sealing means for blocking the flow of draft air through
said means for closing-off said frontal opening when said
fireplace is not in use, said sealing means comprising a
frameless thin sheet of air impermeable, pliable material
positioned across said means for closing-off said frontal
opening whereby said natural draft of air draws said
sheet of material against said means for closing-off said
frontal opening.
In the rejection before us in this appeal, the examiner
first sets forth the teachings of the Admitted Prior Art
(answer, p. 4). Next, the examiner briefly sets forth the
teachings of the patents to Gallagher, Le Brun, Knudson, Fox
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Application No. 08/694,200
and Reiner (answer, p. 5). Thereafter, the examiner
determined (answer, p. 5) that
[t]o cover the conventional fireplace closure
framework shown in applicant's Fig. 1 with a piece of air
impermeable thin, pliable material such as conventional
polyethylene to further seal the fireplace opening and
hold the pliable material in place by a conventional
securing means such as tape, adhesive or clips would have
been obvious to one of ordinary skill in the art
especially when viewed with the above prior art [i.e.,
Gallagher, Le Brun, Knudson, Fox and Reiner].
The appellant argues (brief, pp. 8-12) that the applied
prior art does not disclose, teach or suggest the use of a
frameless sheet of thin pliable material positioned across the
means for closing-off the frontal opening of the fireplace
(i.e., the door assembly 11) whereby the natural draft of air
draws the sheet of material against the means for closing-off
the frontal opening. We agree.
Obviousness is tested by what the combined teachings of
the applied prior art would have suggested to those of
ordinary skill in the art. See In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). But it "cannot be
Appeal No. 2000-0226 Page 8
Application No. 08/694,200
established by combining the teachings of the prior art to
produce the claimed invention, absent some teaching or
suggestion supporting the combination." ACS Hosp. Sys., Inc.
v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933
(Fed. Cir. 1984). And "teachings of references can be
combined only if there is some suggestion or incentive to do
so." Id. Here, the applied prior art contains none. None of
the applied prior art suggests providing a frameless sheet of
thin pliable material positioned across the means for closing-
off the frontal opening of the fireplace. Instead, the patent
to Le Brun teaches (column 4, lines 45-49; Figure 2) placing
the fireplace shutoff behind the conventional removable
screen, not in front of the conventional removable screen
(i.e., the means for closing-off the frontal opening of the
fireplace).
Instead, it appears to us that the examiner relied on
hindsight in reaching his obviousness determination. However,
our reviewing court has said, "To imbue one of ordinary skill
in the art with knowledge of the invention in suit, when no
prior art reference or references of record convey or suggest
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Application No. 08/694,200
that knowledge, is to fall victim to the insidious effect of a
hindsight syndrome wherein that which only the inventor taught
is used against its teacher." W. L. Gore & Assoc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
Since all the limitations of claims 1 and 3 are not
taught or suggested by the applied prior art, we will not
sustain the
35 U.S.C. § 103 rejection of independent claims 1 and 3, and
of dependent claims 2, 4 and 6 to 8.
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Application No. 08/694,200
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 4 and 6 to 8 under 35 U.S.C. § 103 is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2000-0226 Page 11
Application No. 08/694,200
RALPH J. SKINKISS
3670 BRAMBLEBUSH ROAD
MORROW, OH 45152
Appeal No. 2000-0226 Page 12
Application No. 08/694,200
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