Ex parte Sommerfeld

Board of Patent Appeals and Interferences

Oct 6, 1998

08512477 (B.P.A.I. Oct. 6, 1998)

Application for patent filed August 8, 1995. According1
to the appellant, the application is a continuation-in-part of
Application No. 08/243,124, filed May 16, 1994, 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journal and (2) is not binding precedent of the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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DEAN R. SOMMERFELD
____________
Appeal No. 97-2147
Application No. 08/512,4771
____________
ON BRIEF
____________
Before CALVERT, NASE, and CRAWFORD, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
Appeal No. 97-2147
Application No. 08/512,477
While the examiner has approved entry of the amendment2
(Paper No. 9, filed September 3, 1996) to claims 13 and 14
presented after final rejection, we note that this amendment
has not been clerically entered.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 4, 7 through 10, 13 and 14. 2
Claims 5, 6, 11 and 12 have been allowed.
We REVERSE.
Appeal No. 97-2147 Page 3
Application No. 08/512,477
BACKGROUND
The appellant's invention relates to a vertical blind.
An understanding of the invention can be derived from a
reading of exemplary claim 1, 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:
Salzmann 4,122,884 Oct. 31,
1978
Helver 4,848,435 July 18,
1989
Marocco 4,875,516 Oct. 24,
1989
Gramling 5,090,267 Feb. 25,
1992
Sandall et al. 2,060,743 May
7, 1981
(Sandall) (United Kingdom)
Claims 1 through 3 and 13 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Sandall in view of Helver and
Salzmann.
Appeal No. 97-2147 Page 4
Application No. 08/512,477
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Sandall in view of Helver, Salzmann and
Marocco.
Appeal No. 97-2147 Page 5
Application No. 08/512,477
Claims 7 through 9 and 14 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Sandall in view of Helver,
Salzmann and Gramling.
Claim 10 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Sandall in view of Helver, Salzmann,
Gramling and Marocco.
Claims 1 through 3 and 13 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Helver.
Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Helver in view of Marocco.
Claims 7 through 9 and 14 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Helver in view of Gramling.
Claim 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Helver in view of Gramling and Marocco.
Appeal No. 97-2147 Page 6
Application No. 08/512,477
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. 7, mailed May 7, 1996), the examiner's answer (Paper No.
13, mailed November 12, 1996) and both supplemental examiner's
answers (Paper No. 15 and 18, mailed January 28, 1997 and
April 2, 1998) for the examiner's complete reasoning in
support of the rejections, and to the appellant's brief (Paper
No. 12, filed October 9, 1996) and reply brief (Paper No. 14,
filed January 8, 1997) 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, 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
Appeal No. 97-2147 Page 7
Application No. 08/512,477
not sustain the examiner's rejection of claims 1 through 4, 7
through 10, 13 and 14 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 the
reference teachings would appear to be sufficient for one of
ordinary skill in the relevant art having the references
before him to make the proposed combination or other
modification. See In re Lintner, 9 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the
claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in
the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual
to combine the relevant teachings of the references to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071,
Appeal No. 97-2147 Page 8
Application No. 08/512,477
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumption or hindsight reconstruction to supply
deficiencies in the factual basis for the rejection. See In
re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968).
The claims under appeal all recite a vertical blind
apparatus comprising, inter alia, an elongated headrail, a
horizontally extending actuator shaft, a plurality of slat
carriages, a plurality of slat carriers, means for turning the
slat carriers in response to turning of the actuator shaft, a
control carriage having a control shaft, a first spur gear on
the
control shaft, a second spur gear meshing with the first spur
gear, a worm gear connected to the second spur gear for
rotating the actuator shaft, and a wand connected to the
Appeal No. 97-2147 Page 9
Application No. 08/512,477
See pages 2-4 of the final rejection.3
control shaft for rotating the control shaft and for drawing
the control carriage along the headrail.
Rejections based on Sandall as primary reference3
We agree with the appellant (brief, pp. 13-15) that the
combined teachings of the applied prior art would not have
been suggestive of the claimed subject matter. In that
regard, we view the examiner's determination that Sandall's
flexible drive cable (i.e., Bowden cable 14) is "flimsy and
subject to failure after repeated use" to be sheer speculation
unsupported by any evidence in the record. Likewise, the
examiner's determination that Helver's system of gear-to-gear
contact is "more substantial" than Sandall's system amounts to
sheer speculation unsupported by any evidence in the record.
In our opinion, the teachings of Helver and Salzmann would not
have provided any suggestion to an artisan to have modified
Sandall's vertical blinds in the manner necessary to arrive at
the claimed subject matter. Accordingly, we do not sustain
Appeal No. 97-2147 Page 10
Application No. 08/512,477
See pages 2-4 of the examiner's answer.4
See Marocco's wand 20 and Salzmann's wand 91.5
the examiner's rejections of claims 1 through 4, 7 through 10,
13 and 14 under 35 U.S.C.
§ 103 utilizing Sandall as the primary reference.
Rejections based on Helver as primary reference 4
We agree with the appellant (reply brief, pp. 3-6) that
the applied prior art would not have been suggestive of the
claimed subject matter. In that regard, Helver does not
disclose or suggest the claimed wand connected to the control
shaft for rotating the control shaft and for drawing the
control carriage along the headrail. The examiner relies on
one of Helver's support stems 18 or one of Helver's slats 20
as being readable on the claimed wand. We do not agree. In
our view, in this art the term "wand" has a well-known
meaning and neither Helver's support stem 18 nor Helver's5
slat 20 would have been considered by an artisan to be a
"wand." In addition, we see no reason in the applied prior
art absent impermissible hindsight to have modified Helver's
Appeal No. 97-2147 Page 11
Application No. 08/512,477
vertical blind assembly to arrive at the claimed invention.
Accordingly, we do not sustain the examiner's rejections of
claims 1 through 4, 7 through 10, 13 and 14 under 35 U.S.C. §
103 utilizing Helver as the primary reference.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 through 4, 7 through 10, 13 and 14 under 35 U.S.C. §
103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-2147 Page 12
Application No. 08/512,477
VERNON J. PILLOTE
1871 JONQUIL CIRCLE
ROCKFORD, IL 61107
APPEAL NO. 97-2147 - JUDGE NASE
APPLICATION NO. 08/512,477
APJ NASE
APJ CRAWFORD
APJ CALVERT
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 02 Oct 98
FINAL TYPED: