Ex parte Stone

Board of Patent Appeals and Interferences

Dec 15, 1997

08063919 (B.P.A.I. Dec. 15, 1997)

Application for patent filed May 18, 1993. According to1
appellant, the application is a continuation-in-part of
application 07/978,130, filed November 18, 1992; which is a
continuation-in-part of Application 29/001,639, filed
November 18, 1992.
1
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(2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JOHN W. STONE
__________
Appeal No. 96-1511
Application 08/063,9191
__________
ON BRIEF
__________
Before CALVERT, STAAB, and McQUADE, Administrative Patent Judges.
McQUADE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 96-1511
Application 08/063,919
Claim 1 has been amended subsequent to final rejection.2
2
This appeal is from the final rejection of claims 1 through
5, 7 through 12 and 16 through 20, all of the claims pending in
the application.2
The invention relates to “a holder device for securely
retaining a writing implement, such as a pen, pencil, marker and
the like, to a support surface, such as at a location nearby to a
telephone, copy machine, notebook, etc.” (specification, page 5).
Claim is 1 illustrative and reads as follows:
1. A holder device mountable on a support surface of a
support and adapted to removably secure elongated writing
implements thereto, the holder device comprising:
a base portion having opposite lateral edges and adapted to
mount on said support surface; and
a pair of resilient wing portions each jointed to said base
portion longitudinally along a junction location, said wing
portions extending away from said base portion and converging
toward one another to terminate in a free wing edge so that said
wing portions and said base portion define a longitudinally
extending channel sized to receive an elongated writing
implement, said channel having opposite open ends and a
longitudinal mouth located between said wing edges whereby said
writing implement may be inserted through said mouth and retained
within said channel, and including a longitudinal groove formed
proximate to each respective junction location in said channel,
said grooves operative to permit deflection of said wing portions
away from one another thereby to reduce bending moments of force
on said base portion when said writing implement is inserted
through said mouth.
Appeal No. 96-1511
Application 08/063,919
Some of these rejections were carried forward from the3
final rejection (Paper No. 9) into the main answer (Paper No. 13)
and some were entered for the first time in the main answer.
Certain rejections made in the final rejection were not carried
forward into the main answer and are assumed to have been
withdrawn by the examiner (see Ex parte Emm, 118 USPQ 180, 181
(Bd. App. 1957)).
3
The references relied upon by the examiner as evidence of
obviousness are:
Copell 2,161,855 Jun. 13, 1939
Frank 3,154,281 Oct. 27, 1964
Wolsh 3,228,640 Jan. 11, 1966
Andre 4,614,321 Sep. 30, 1986
Engvall 5,178,354 Jan. 12, 1993
(filed Jan. 21, 1992)
Clay 461,277 Feb. 15, 1937
(British Patent Document)
The claims on appeal stand rejected under 35 U.S.C. § 103 as
follows:3
a) claims 1, 2 and 8 as being unpatentable over Engvall in
view of Andre;
b) claims 1, 2 and 7 as being unpatentable over Engvall in
view of Copell;
c) claim 11 as being unpatentable over Engvall in view of
either Andre or Copell, and further in view of Clay;
d) claim 11 as being unpatentable over Frank in view of
either Andre or Copell, and further in view of Clay;
Appeal No. 96-1511
Application 08/063,919
4
e) claims 12 and 19 as being unpatentable over Wolsh in view
of Clay;
f) claims 16 and 18 as being unpatentable over Wolsh in view
of Clay, and further in view of Andre;
g) claims 16 and 17 as being unpatentable over Wolsh in view
of Clay, and further in view of Copell;
h) claim 20 as being unpatentable over Engvall in view of
Clay;
i) claims 1, 3 through 5, 8 through 10, 12, 16, 18 and 19 as
being unpatentable over Frank in view of Andre;
j) claims 1, 3 through 5, 7, 9, 10, 12, 16, 17 and 19 as
being unpatentable over Frank in view of Copell;
k) claims 1, 3 through 5, 8, 9, 11, 12, 16 and 18 through 20
as being unpatentable over Wolsh in view of Andre; and
l) claims 1, 3 through 5, 7, 9, 11, 12, 16, 17, 19 and 20 as
being unpatentable over Wolsh in view of Copell.
Reference is made to the appellant’s main and reply briefs
(Paper Nos. 11 and 14) and to the examiner’s main and
supplemental answers (Paper Nos. 13 and 15) for the respective
positions of the appellant and the examiner with regard to the
propriety of these rejections.
Appeal No. 96-1511
Application 08/063,919
5
Having carefully considered the content of the claims on
appeal, the scope of the applied prior art and the respective
viewpoints advanced by the appellant and the examiner, we shall
not sustain any of the examiner’s rejections.
The manner in which the examiner has combined the references
applied in support of the various rejections (see pages 3 through
9 in the main answer) indicates that the proposed combinations
are based on improper hindsight rather than on the teachings,
suggestions and inferences of the references themselves. Thus,
the rejections as set forth by the examiner are fundamentally
unsound.
More particularly, the examiner justifies the proposed
combinations of Engvall or Frank or Wolsh in view of Andre or
Copell (rejections a, b, c, d, f, g, i, j, k and l) by concluding
that it would have been obvious to one of ordinary skill in the
art to modify the holder devices disclosed in the primary
references by incorporating grooves as in Andre or Copell to
provide the holding devices with a more secure retention
capability. Neither Andre nor Copell, however, teaches or
suggests that the grooves in the devices disclosed therein
provide this capability.
Appeal No. 96-1511
Application 08/063,919
6
The examiner justifies the proposed combination of Wolsh in
view of Clay (rejection e) by concluding that it would have been
obvious to one of ordinary skill in the art to modify the truss-
engaging clip portion of Wolsh’s molded plastic pipe-holding
device by configuring it in accordance with the suitcase-engaging
clip portion of Clay’s metallic strip umbrella-holding device “to
better hold the [Wolsh] device adjacent another member” (main
answer, page 5). The examiner does not explain, however, nor do
Wolsh and Clay teach or suggest, why such a modification would
enhance the clip portion of Wolsh’s device.
Finally, the examiner justifies the proposed combination of
Engvall in view of Clay (rejection h) by concluding that it would
have been obvious to one of ordinary skill in the art to modify
the holder device disclosed by Engvall by incorporating lobes as
in Clay to provide the device with a more secure retention
capability. Here again, however, Clay does not teach or suggest
that the lobes on the device disclosed therein provide this
capability.
The following rejections are entered pursuant to 37 CFR
§ 1.196(b).
Claims 1, 2 and 7 through 9 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Copell in view of Engvall.
Appeal No. 96-1511
Application 08/063,919
7
Copell discloses a general purpose holder device for
receiving and holding articles such as “pipes, tooth brushes,
toilet appliances and similar elements” (page 1, column 2, lines
8 through 10). The device consists of a body 10 preferably made
of rubber or a similar material. The body includes an opening 12
for receiving the article and carries a mounting strip 17 which
may be embedded into the surface of an underlying support to
affix the body thereto. The opening 12 may define recesses or
grooves 13 to accommodate oval-shaped articles. As best shown in
Figure 3, Copell’s body has a base portion, a pair of resilient
wing portions joined to the base portion along a junction
location, and a longitudinally extending channel having opposite
open ends and a longitudinal mouth.
Copell’s holder device meets all of the limitations in
claims 1, 2 and 7 through 9 except for those requiring the base
portion to have opposite lateral edges (claim 1) and an adhesive
layer on its bottom surface (claim 2), and the grooves to be
triangular in cross-section (claim 8). In this regard, the base
portion of Copell’s device lacks any apparent opposite lateral
edges and adhesive on its bottom surface, and Copell’s recesses
or grooves 13 are semi-circular in cross-section.
Appeal No. 96-1511
Application 08/063,919
8
The appellant’s arguments that Copell’s recesses or grooves
are not located proximate the respective junction locations
between the wing and base portions and would not permit
deflection of the wing portions away from one another to reduce
bending moments on the base portion as recited in claim 1 (see,
for example, page 8 and 9 in the main brief and page 4 in the
reply brief) are not well taken. Copell’s Figure 3 clearly shows
that grooves 13 are located proximate the respective junction
locations between the wing and base portions as broadly recited
in claim 1. Moreover, it is not apparent, nor has the appellant
pointed out, why such grooves would not function to permit
deflection of the wing portions away from one another to reduce
bending moments on the base portion.
Engvall discloses a holder device adapted to be secured to
an aerosol can to hold an extension tube while not in use. As
described by Engvall,
[w]hile the holder 10 is intended to be affixed to
an aerosol container, and is intended to hold an
extension tube, it will become apparent to those
skilled in the art that the holder may be affixed to
other supporting surfaces, and that the inventive
holder could be adapted to support other types and
kinds of rodlike members, such as broom handles, tool
handles, and others.
With reference now to FIGS. 2-4, the tube holder
10 has a base 14, with an adhesive layer 21 on the
Appeal No. 96-1511
Application 08/063,919
9
underside thereof, for attaching the tube holder to the
surface of the can 5. . . .
A pair of spaced apart, upstanding tube grasping
members 18 and 19, are integrally connected to the top
surface of the base 14. As best seen in FIG. 3, a
spacing 15 between the members 18 and 19 is suitably
dimensioned to receive the rodlike tube 12 therewithin.
The spacing 15 has at the top edges of the members 18
and 19, a width H which is just slightly less than the
outside diameter of the tube 12. As shown in FIG. 3,
the members 18 and 19 are inclined slightly toward one
another, and are composed of resilient material [column
4, line 45 through column 5, line 3].
As best illustrated in Figure 2, the base 14 has a
rectangular shape defined by a pair of relatively long opposite
lateral edges and relatively short opposite end edges.
It would have been obvious to one of ordinary skill in the
art to modify the holder device disclosed by Copell by providing
it with a rectangular base portion having opposite lateral edges
and adhesive on its bottom surface as taught by Engvall in order
to adapt the device for adhesive connection to an underlying
support surface. The resulting holder device would meet all of
the limitations in claims 1, 2, 7 and 9.
It also would have been an obvious matter of design choice
within the skill of the art to make Copell’s semi-circular
recesses 13 triangular in cross-section as recited in claim 8.
The triangular recess cross-section has not been disclosed or
Appeal No. 96-1511
Application 08/063,919
10
established by the appellant as solving a stated problem or
presenting a novel or unexpected result (see In re Kuhle,
526 F.2d 553, 555, 188 USPQ 7, 8-9 (CCPA 1975)) and would serve
Copell’s objective of adapting the holder device to receive oval-
shaped articles.
Claim 10 is rejected under 35 U.S.C. § 103 as being
unpatentable over Copell in view of Engvall, and further in view
of Frank.
The Copell holder device as modified in view of Engvall does
not meet the limitation in claim 10 requiring that each wing
portion uniformly taper from the base portion to its free wing
edge.
Frank discloses a holder device for articles such as
electronic components. The device is made of a resilient
material and includes a body or base portion 16 and two arms or
wing portions 22 extending upwardly from the body portion to
receive the article. As shown in Figure 2, the arms or wing
portions taper from the body portion to their free edges.
It would have been obvious to one of ordinary skill in the
art in view of Frank to so taper the wing portions of the Copell
holder device as modified in view of Engvall, thereby arriving at
Appeal No. 96-1511
Application 08/063,919
11
the subject matter recited in claim 10, in order to achieve the
self-evident advantages of wing portions which require less
material and are easier to flex.
Claim 11 is rejected under 35 U.S.C. § 103 as being
unpatentable over Copell in view of Engvall, and further in view
of Clay.
The Copell holder device as modified in view of Engvall does
not meet the limitation in claim 11 requiring the wing portions
to terminate in enlarged longitudinally extending lobes.
Clay discloses a holder device “for attaching umbrellas, and
other suitable articles to suitcases and similar articles” (page
1, lines 6 through 8). The device is made of a resilient strip
of sheet metal and includes a base portion and two arm or wing
portions extending upwardly from the base portion to receive the
article. As shown in Figures 1 and 2, wing portions terminate in
enlarged lobes or beads 13, 14 to prevent damage to the articles
(see page 2, lines 94 through 96).
It would have been obvious to one of ordinary skill in the
art in view of Clay to terminate the wing portions of the Copell
holder device as modified in view of Engvall in lobes, thereby
arriving at the subject matter recited in claim 11, in order to
prevent damage to the articles held thereby. The record does not
Appeal No. 96-1511
Application 08/063,919
12
support the appellant’s contention (see page 13 in the main
brief) that holder devices such as those disclosed by Copell do
not require lobes to prevent damage to the articles.
Claim 20 is rejected under 35 U.S.C. § 103 as being
unpatentable over Copell in view of Engvall, and further in view
of Frank and Clay.
The Copell holder device as modified in view of Engvall
meets all of the limitations in claim 20 except or that requiring
each wing portion to taper in cross-section with each free wing
edge formed as an enlarged longitudinally extending lobe.
For the reasons discussed above, it would have been obvious
to one of ordinary skill in the art to modify the holder device
of Copell as modified in view of Engvall by tapering its wing
portions in view of Frank and by terminating same in lobes in
view of Clay, thereby arriving at the holder device recited in
claim 20.
In summary:
a) the decision of the examiner to reject claims 1 through
5, 7 through 12 and 16 through 20 under 35 U.S.C. § 103 is
reversed; and
b) new 35 U.S.C. § 103 rejections of claims 1, 2, 7 through
11 and 20 are entered pursuant to 37 CFR 1.196(b).
Appeal No. 96-1511
Application 08/063,919
13
This decision contains new grounds of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997). 37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR 1.196(b)
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 96-1511
Application 08/063,919
14
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Timothy J. Martin, P.C.
Carl Schaukovitch
9250 W. 5th Avenue, Suite 200
Lakewood, CO 80226