Ex Parte Veal

Board of Patent Appeals and Interferences

May 23, 2003

09499124 (B.P.A.I. May. 23, 2003)

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for publication and is not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT CARL VEAL
____________
Appeal No. 2003-0388
Application No. 09/499,124
____________
ON BRIEF
____________
Before FRANKFORT, STAAB, 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 1 to 7,
which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/499,124
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BACKGROUND
The appellant's invention relates to the field of boat trailers. More specifically,
the invention comprises a skid assembly which may be attached to the frame of a boat
trailer just forward of the wheels to prevent the boat trailer wheel from dropping abruptly
off the end of a ramp, thereby causing the trailer to become stuck (specification, p. 1).
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:
Herndon 3,933,372 Jan. 20, 1976
Des Roches 5,195,767 Mar. 23, 1993
Eggleston 5,806,871 Sep. 15, 1998
Claims 1 to 4, 6 and 7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Eggleston in view of Des Roches.
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable over
Eggleston in view of Des Roches and Herndon.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the final
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Application No. 09/499,124
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rejection (Paper No. 4, mailed April 26, 2001) and the answer (Paper No. 11, mailed
August 7, 2002) for the examiner's complete reasoning in support of the rejections, and
to the brief (Paper No. 10, filed April 29, 2002) 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 not sustain the examiner's rejection of
claims 1 to 7 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.
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Application No. 09/499,124
Page 4
1 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).
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).
In the rejections under 35 U.S.C. § 103 before us in this appeal (final reejction,
pp. 2-6), the examiner (1) set forth the teachings of the applied prior art (i.e., Eggleston,
Des Roches and Herndon); (2) ascertained the differences between the claimed subject
matter and Eggleston;1 and (3) with respect to the independent claims on appeal (i.e.,
claims 1 and 6) concluded that it would have been obvious to one skilled in the art "to
modify the device of Eggleston to include a means for adjusting and fixing the vertical
distance between the front part of the skid plate and the frame as taught by Des
Roches."
The appellant (brief, pp. 5-7) argues that the applied prior art does not suggest
the claimed subject matter. We agree.
All the claims under appeal require at least a first skid plate to be attached to the
trailer frame so that (1) the vertical separation between the forward portion of the first
skid plate and the trailer frame can be adjusted and fixed, and (2) the vertical separation
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Application No. 09/499,124
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2 We have also reviewed the Herndon reference additionally applied in the rejection of claim 5 but
find nothing therein which makes up for the deficiencies of Eggleston and Des Roches discussed above.
between the rearward portion of the first skid plate and the trailer frame can be adjusted
and fixed. However, these limitations are not suggested by the applied prior art. In that
regard, while Eggleston does teach a first skid plate attached to the trailer frame so that
the vertical separation between the rearward portion of the first skid plate and the trailer
frame can be adjusted and fixed, Eggleston does not teach or suggest making the
vertical separation between the forward portion of the first skid plate and the trailer
frame adjustable. To supply this omission in the teachings of Eggleston, the examiner
relied on the teachings of Des Roches to render that difference obvious to an artisan.
However, Des Roches is directed not to an adjustable skid plate on a boat trailer but to
adjustable guide rails on a boat trailer to assist in unloading a boat from the trailer into
the water and loading a boat from the water onto the trailer. In our view, the only
suggestion for modifying Eggleston in the manner proposed by the examiner to meet
the above-noted limitations stems from hindsight knowledge derived from the
appellant's own disclosure, not the teachings of the applied prior art.2 The use of such
hindsight knowledge to support an obviousness rejection under 35 U.S.C. § 103 is, of
course, impermissible. See, for example, W. L. Gore and 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). It follows that we cannot sustain the examiner's rejections of claims 1 to 7.
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CONCLUSION
To summarize, the decision of the examiner to reject claims 1 to 7 under
35 U.S.C. § 103 is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 2003-0388
Application No. 09/499,124
Page 7
JOHN WILEY HORTON
BOOTH & HORTON, P.A.
P.O. DRAWER 840
TALLAHASSEE, FL 32302
JVN/jg