Ex parte Urban

Board of Patent Appeals and Interferences

Jan 22, 1998

08139616 (B.P.A.I. Jan. 22, 1998)

Application for patent filed October 18, 1993. According1
to the appellant, the application is a continuation of
Application No. 07/882,147, filed May 11, 1992, now abandoned.
Claim 15 has been amended subsequent to the final2
rejection by an amendment filed on November 28, 1994 (Paper No.
23).
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journal and (2) is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ERNST-GUNTHER URBAN
____________
Appeal No. 95-2941
Application No. 08/139,6161
____________
HEARD: January 13, 1998
____________
Before CALVERT, FRANKFORT, 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 8 through 17, which are all of the claims
pending in this application.2
Appeal No. 95-2941
Application No. 08/139,616
We REVERSE.
Appeal No. 95-2941 Page 3
Application No. 08/139,616
BACKGROUND
The appellant's invention relates to a winding machine with
an adhesive strip applicator. An understanding of the invention
can be derived from a reading of exemplary claim 8 which appears
in the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Kataoka 3,784,122 Jan. 8, 1974
Dowd 4,133,495 Jan. 9, 1979
Nowisch 4,422,588 Dec. 27, 1983
Welp et al. (Welp) 4,775,110 Oct. 4, 1988
Claims 8 through 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Nowisch in view of Kataoka, Welp and
Dowd.
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the § 103 rejection, we
make reference to the examiner's answer (Paper No. 24, mailed
February 21, 1995) for the examiner's complete reasoning in
support of the rejection, and to the appellant's brief (Paper No.
Appeal No. 95-2941 Page 4
Application No. 08/139,616
22, filed November 28, 1994) and reply brief (Paper No. 26, filed
March 20, 1995) 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. As a consequence of our review, we have made the
determination that the examiner's rejection of the appealed
claims under 35 U.S.C. § 103 is not well founded and will
therefore not be sustained. Our reasoning for this determination
follows.
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).
With regard to the examiner's rejection of claims 8 through
17 under 35 U.S.C. § 103, we share the appellant's view that the
Appeal No. 95-2941 Page 5
Application No. 08/139,616
combined teachings of the applied prior art would not have
suggested the claimed invention. Specifically, it is our
determination that the combined teachings of the applied prior
art would not have suggested the carriage as recited in
independent claims 8 and 15. In that regard, both independent
claims 8 and 15 require the carriage to include (1) a pressing
roller for transferring a two-sided adhesive strip to a web at
the arc of the support roller, and (2) a cutter behind the
pressing roller for cutting through the two-sided adhesive strip
and web. It is our view, after a careful review of the combined
teachings of the applied prior art, that in searching for an
incentive for modifying the winding device of Nowisch, the
examiner has impermissibly drawn from the appellant's own
teachings and fallen victim to what our reviewing Court has
called "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, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). Since we have determined that the subject matter of
independent claims 8 and 15 would not have been suggested by the
combined teachings of the applied prior art, it follows that we
will not sustain the examiner's rejection of appealed independent
Appeal No. 95-2941 Page 6
Application No. 08/139,616
claims 8 and 15, or claims 9 through 14, 16 and 17 which depend
therefrom, under 35 U.S.C. § 103.
Appeal No. 95-2941 Page 7
Application No. 08/139,616
CONCLUSION
To summarize, the decision of the examiner to reject claims
8 through 17 under 35 U.S.C. § 103 is reversed.
REVERSED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 95-2941 Page 8
Application No. 08/139,616
ANDREW WILFORD
THE FIRM OF KARL F. ROSS
5676 RIVERDALE AVE.
P.O. BOX 900
RIVERDALE (BRONX), NY 10471-0900
APPEAL NO. 95-2941 - JUDGE NASE
APPLICATION NO. 08/139,616
APJ NASE
APJ CALVERT
APJ FRANKFORT
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 20 Jan 98
FINAL TYPED:
HEARD: 13 Jan 98