Ex parte Thurber et al.

Board of Patent Appeals and Interferences

Apr 15, 1999

08517183 (B.P.A.I. Apr. 15, 1999)

Application for patent filed August 21, 1995. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JOHN M. THURBER and ROBERT D. BAGBY
____________
Appeal No. 1998-1930
Application No. 08/517,1831
____________
ON BRIEF
____________
Before MEISTER, NASE, and CRAWFORD, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
Appeal No. 1998-1930
Application No. 08/517,183
In the amendment after the final rejection (Paper No. 8,2
filed May 9, 1997) the appellants canceled claims 15 and 16
and added new claims 25 and 26.
DECISION ON APPEAL
This is an appeal from the refusal of the examiner to
allow claims 2 to 8, 11 to 14, 18 and 20 to 26, as amended
subsequent to the final rejection. These claims constitute2
all of the claims pending in this application.
We REVERSE.
Appeal No. 1998-1930 Page 3
Application No. 08/517,183
The examiner's statement of the rejection (answer, p. 4)3
does not include pending claims 25 and 26 but does include
canceled claims 15 and 16. However, the body of the rejection
(answer, p. 12) does refer to claims 25 and 26. Accordingly,
we consider claims 25 and 26 to be before us in this appeal.
BACKGROUND
The appellants' invention relates to a fishing rod. An
understanding of the invention can be derived from a reading
of exemplary claims 21 and 24, which appear in the appendix to
the appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Muk Kim 5,090,149 Feb. 25,
1992
Evers Des. 346,754 May 10, 1994
Claims 2 to 8, 11 to 14, 18 and 20 to 26 stand rejected3
under 35 U.S.C. § 103 as being unpatentable over Muk Kim in
view of Evers.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellants regarding the above-noted
Appeal No. 1998-1930 Page 4
Application No. 08/517,183
rejection, we make reference to the examiner's answer (Paper
No. 11, mailed September 24, 1997) for the examiner's complete
reasoning in support of the rejection, and to the appellants'
brief (Paper No. 10, filed July 10, 1997) and reply brief
(Paper No. 12, filed November 28, 1997) for the appellants'
arguments thereagainst.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellants' specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellants 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
not sustain the examiner's rejection of claims 2 to 8, 11 to
14, 18 and 20 to 26 under 35 U.S.C. § 103. Our reasoning for
this determination follows.
Appeal No. 1998-1930 Page 5
Application No. 08/517,183
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). The test for obviousness
is what the combined teachings of the references would have
suggested to one of ordinary skill in the art. See In re
Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir.
1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). Furthermore, the conclusion that the claimed
subject matter is 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, 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
Appeal No. 1998-1930 Page 6
Application No. 08/517,183
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).
With this as background, we analyze the prior art applied
by the examiner in the rejection of the claims on appeal.
Muk Kim discloses a pipe for a fishing rod. As shown in
Figure 1, the pipe includes a cylinder 1 having an outer
surface, and a flexible rectangular wrapper 9 positioned about
the outer surface. The wrapper has a predetermined design
thereon and is covered with a transparent preservative
coating. Muk Kim teaches (column 2, lines 45--48) that in the
preferred embodiment the wrapper 9 carries a predetermined
design 3 which displays pictures of fish which are dyed on the
wrapper.
Appeal No. 1998-1930 Page 7
Application No. 08/517,183
In our view, Evers does not disclose a fishing rod (see4
page 5 of the brief) or a fishing body (see pages 4-5 of the
answer).
Evers depicts an ornamental design for a rod measurer and
weigher. As shown in Figures 1-6, the rod measurer and4
weigher includes a simulation of a fish.
The examiner determined (answer, p. 5) that
[i]t would have been obvious to a person of ordinary
skill in the art at the time the invention was made to
modify the mark or design on the wrapper or cylindrical
body of Muk Kim such that it represents the torso of a
selected species of fish in view of Evers in order to
provide both a pleasing ornamental design which is
realistic and an indicator as to what species of fish the
rod is intended to be used in catching.
The appellants argue (brief, pp. 5-6 and 10) that the
applied prior art does not suggest the claimed subject matter.
We agree. In our view, the above-noted determination of the
examiner has not been supported by any evidence that would
have led an artisan to arrive at the claimed invention. In
our opinion, the only suggestion for modifying Muk Kim in the
manner proposed by the examiner stems from hindsight knowledge
Appeal No. 1998-1930 Page 8
Application No. 08/517,183
The use of such hindsight knowledge to support an5
obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-
13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
derived from the appellants' own disclosure. The examiner's5
use of impermissible hindsight is made clear from the above-
noted determination of obviousness since one of the examiner's
reasons (i.e., to provide an indicator as to what species of
fish the rod is intended to be used in catching) for modifying
Muk Kim is clearly not found in the applied prior art but is
found only the appellants' disclosure. With regard to the
other reason (i.e., to provide a pleasing ornamental design
which is realistic) for modifying Muk Kim, it is our belief
that an artisan would not have been motivated from the
combined teachings of Muk Kim and Evers to have modified Muk
Kim's fishing rod to contain a simulation of a fish mounted
about Muk Kim's cylinder 1. It follows that we cannot sustain
the examiner's rejection of claims 2 to 8, 11 to 14, 18 and 20
to 26.
Appeal No. 1998-1930 Page 9
Application No. 08/517,183
CONCLUSION
To summarize, the decision of the examiner to reject
claims 2 to 8, 11 to 14, 18 and 20 to 26 under 35 U.S.C. § 103
is reversed.
REVERSED
JAMES M. MEISTER )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 1998-1930 Page 10
Application No. 08/517,183
WOOD, PHILLIPS, VAN SANTEN,
CLARK & MORTIMER
500 WEST MADISON STREET
SUITE 3800
CHICAGO, IL 60661
APPEAL NO. 1998-1930 - JUDGE NASE
APPLICATION NO. 08/517,183
APJ NASE
APJ CRAWFORD
APJ MEISTER
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 13 Apr 99
FINAL TYPED:
THREE PERSON CONF.