Ex parte Vaughan

Board of Patent Appeals and Interferences

Feb 27, 2001

08968871 (B.P.A.I. Feb. 27, 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for publication and is not binding precedent of the Board.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. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STEPHANIE R. VAUGHAN
____________
Appeal No. 2000-1486
Application No. 08/968,871
____________
HEARD: February 8, 2001
____________
Before McQUADE, NASE, and GONZALES, Administrative Patent
Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 21 to 25, which are all of the claims
pending in this application.
We REVERSE.
BACKGROUND
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Application No. 08/968,871
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The appellant's invention relates to an exercise device
for providing buoyancy for deep water exercise. A copy of the
claims under appeal is set forth 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:
Homewood 1,128,682 Feb. 16,
1915
Lennon 4,804,326 Feb. 14,
1989
Alston 4,905,991 March 6,
1990
Claims 21 to 25 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Lennon in view of Alston and Homewood.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 25,
mailed March 10, 2000) for the examiner's complete reasoning
in support of the rejection, and to the brief (Paper No. 24,
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Application No. 08/968,871
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filed November 22, 1999) and reply brief (Paper No. 26, filed
May 10, 2000) for the appellant's arguments thereagainst.
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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
not sustain the examiner's rejection of claims 21 to 25 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).
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Application No. 08/968,871
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A critical step in analyzing the patentability of claims
pursuant to 35 U.S.C. § 103 is casting the mind back to the
time of invention, to consider the thinking of one of ordinary
skill in the art, guided only by the prior art references and
the then-accepted wisdom in the field. See In re Dembiczak,
175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
Close adherence to this methodology is especially important in
cases where the very ease with which the invention can be
understood may prompt one "to fall victim to the insidious
effect of a hindsight syndrome wherein that which only the
invention taught is used against
its teacher." Id. (quoting W.L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed.
Cir. 1983),, cert. denied, 469 U.S. 851 (1984)).
Most if not all inventions arise from a combination of
old elements. See In re Rouffet, 149 F.3d 1350, 1357, 47
USPQ2d 1453, 1457 (Fed. Cir. 1998). Thus, every element of a
claimed invention may often be found in the prior art. See id.
However, identification in the prior art of each individual
part claimed is insufficient to defeat patentability of the
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whole claimed invention. See id. Rather, to establish
obviousness based on a
combination of the elements disclosed in the prior art, there
must be some motivation, suggestion or teaching of the
desirability of making the specific combination that was made
by the appellant. See In re Dance, 160 F.3d 1339, 1343, 48
USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Claim 21, the sole independent claim on appeal reads as
follows:
An exercise device for providing buoyancy for deep
water exercise, said device comprising a resilient
tubular body member being open at one end thereof for
receiving a user's appendage and the other end of said
body member having a loop member for limiting movement of
said body member upon the user's appendage, said tubular
body member being formed of buoyant material comprised of
foam material shaped for having thin marginal portions
adjacent said one end and adjacent said loop member for
minimizing interference with other appendages of the user
and including a cover material of elasticized fabric,
said tubular body member being in the form of a generally
closed oval in cross-section when in repose and generally
cylindrical in use for elastically conforming to a user's
appendage for minimizing slippage thereon and for further
minimizing interference with an adjacent appendage.
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Lennon discloses a swimming instruction and training aid.
As shown in Figure 1, the swimming instruction and training
aid is worn about the ankle and leg of a swimmer. The
swimming instruction and training aid comprises an
approximately cylindrical sleeve of resilient cellular
neoprene material surfaced on both sides with a nylon or
similar fabric. The sleeve is provided with slits so that it
can be easily fitted over the foot, placed on the ankle, and
remain in position there without movement and consequent
distraction. Lennon teaches that the swimming instruction and
training aid provides only a relatively small buoyant force.
Alston discloses a swim weight sleeve system for use in
aquatic exercises and training applications by swimmers. As
shown in Figure 1, a sleeve 1 includes a rubberized sleeve
material 2 containing an adjustable quantity of weights 3 and
adapted to snugly fit around the forearms and/or calves of a
swimmer. Sleeve 1 is adapted to stretch over the hand or foot
of a swimmer and retract to substantially its original size to
provide a snug fit conforming to the shape of the forearm or
calf of the swimmer. Securing straps 5, provided at each end
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of sleeve 1, ensure a secure fit of the sleeves. A
wrap-around weighted sleeve 6 is shown in Figure 2. Alston
teaches that a suitable material for the sleeves 1 and 6 is
1/8 inch, closed cell neoprene rubber incorporating stretchy,
nylon fabric bonded to one or both sides.
A non-weighted sleeve 10 that absorbs water to serve as
weight during swimming is shown in Figure 3 of Alston. Alston
teaches that the sleeve 10 is non-weighted when dry, and
contains water absorbent material 11 such as polyester
quilting or a foamed rubber, such as urethane rubber. The
outer covering 12 of sleeve 10 is formed of a suitable porous
material to permit passage of water to the primary absorbing
material 11 or the covering 12 may be formed of the same
material as adsorbent material 11 if desired. An elasticized
band 13 is featured at one end of the sleeve 10, and a
securing strap 14 is featured at the opposite end to prevent
the sleeve 10 from slipping during rigorous swimming actions.
Homewood discloses a swimming aid. The swimming aid
comprises an elastic sleeve which can be an armlet 2 as shown
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in Figures 1 and 2, or a legging 5 as shown in Figures 3 and
4. Homewood teaches that a loop 6 may be attached to one end
of the legging 5 in order to retain the legging in place.
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Lennon and claim 21,
it is our opinion that the differences are: (1) a loop member
for limiting movement of the body member upon the user's
appendage, (2) the tubular body member being formed of buoyant
material comprised of foam material shaped for having thin
marginal portions adjacent the one end and adjacent the loop
member, (3) a cover material of elasticized fabric, and (4)
the tubular body member being in the form of a generally
closed oval in cross-section when in repose.
With regard to the first three differences noted above,
the examiner determined (answer, pp. 3-4) that each of these
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differences would have been obvious based upon the combined
teachings of Lennon, Alston and Homewood. With regard to the
fourth difference noted above, the examiner determined
(answer, p. 4) that it would have been obvious to make the
device of Lennon to "have a closed oval cross section [when in
repose] since it has been held a change of shape of a prior
art device does not present a patentable difference. In re
Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)."
The appellant argues (brief, pp. 5-9; reply brief, pp. 1-
2) that the applied prior art does not suggest the claimed
subject matter. We agree. In our view, the combined
teachings of the applied prior art would not have led an
artisan to arrive at the claimed invention. In that regard,
it is our opinion that differences (2) and (4) are not
suggested by the applied prior art. Specifically, we see no
motivation, suggestion or teaching in Alston of the
desirability of making the tubular body member of Lennon to be
formed of foam material shaped for having thin marginal
portions adjacent each end. Additionally, we believe it was
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inappropriate in this instance for the examiner to have
determined that the limitation that the tubular body member is
in the form of a generally closed oval in cross-section when
in repose was obvious without any evidence providing some
motivation, suggestion or teaching of the desirability of
making that change to Lennon.
In our view, the only suggestion for modifying Lennon to
arrive at the claimed invention in the manner proposed by the
examiner stems from hindsight knowledge derived from the
appellant's own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C.
§ 103 is, of course, impermissible. See, for example, In re
Dembiczak, supra; W.L. Gore & Assocs., Inc. v. Garlock, Inc.,
supra.
For the reasons set forth above, the decision of the
examiner to reject claim 21, and claims 22 to 25 dependent
thereon, under 35 U.S.C. § 103 is reversed.
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CONCLUSION
To summarize, the decision of the examiner to reject
claims 21 to 25 under 35 U.S.C. § 103 is reversed.
REVERSED
JOHN P. McQUADE )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
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WILLIAM H. HOLT
1423 POWHATAN STREET
UNIT 2 FIRST FLOOR
ALEXANDRIA, VA 22314
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