Ex parte VOISIN

Board of Patent Appeals and Interferences

Sep 16, 1997

08097759 (B.P.A.I. Sep. 16, 1997)

Application for patent filed July 26, 1993.1
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(2) is not binding precedent of the Board.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 CARROLL J. VOISIN, JR.
_____________
Appeal No. 95-4673
Application 08/097,7591
______________
ON BRIEF
_______________
Before FRANKFORT, McQUADE, and NASE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4673
Application 08/097,759
2
This is a decision on appeal from the examiner's final
rejection of claims 10 through 20. Subsequent to the Notice of
Appeal (Paper No. 9) and in response to an amendment filed
January 13, 1995 (Paper No. 10), the examiner, in an advisory
action mailed February 24, 1995 (Paper No. 11), has indicated
that the rejection of claims 10 through 20 on non-reference
grounds (i.e., under 35 U.S.C. § 112, second paragraph) has
been overcome and that claims 13 and 17 through 20 are now
objected to as being allowable subject to being rewritten in
independent form. Accordingly, the appeal as to claims 13 and
17 through 20 is dismissed, leaving only claims 10 through 12
and 14 through 16 for our consideration on appeal. Claims 1
through 9 have been canceled.
Appellant's invention relates to a paint can holding
device which can be suspended from a person's belt, support a
paint can from the paint can's handle attachment members, and
provide pivot means for keeping the paint can upright.
Independent claim 10 is representative of the subject matter
on appeal and a copy of that claim, as it appears in the
Appendix to appellant's brief, is attached to this decision.
Appeal No. 95-4673
Application 08/097,759
3
The references of record relied upon by the examiner in
rejections of the appealed claims under 35 U.S.C. § 103 are:
Haney, Jr. (Haney) 2,753,094 July 3, 1956
Kesterson Des. 276,760 Dec. 18, 1984
Hayes 4,527,720 July 9, 1985
Claims 10 through 12 and 14 stand rejected under 35
U.S.C. § 103 as being unpatentable over Hayes in view of
Kesterson.
Claims 14 through 16 stand rejected under 35 U.S.C. § 103
as being unpatentable over Hayes in view of Kesterson as
applied to claim 10 above, and further in view of Haney.
Rather than reiterate the examiner's explanation of the
above-noted rejections and the conflicting viewpoints advanced
by the examiner and appellant regarding those rejections, we
make reference to the examiner's answer (Paper No. 13, mailed
April 21, 1995) for the examiner's full reasoning in support
of the rejections, and to appellant's brief (Paper No. 12,
filed March 13, 1995) for appellant's arguments thereagainst.
Appeal No. 95-4673
Application 08/097,759
4
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims,
to the applied prior art references, and to the respective
positions articulated by appellant and the examiner. As a
consequence of our review, we have made the determination that
the examiner's above-noted rejections of the appealed claims
under 35 U.S.C. § 103 cannot be sustained. Our reasons
follow.
The proper test for obviousness is what the combined
teachings of the references would have suggested to those
having ordinary skill in the art. See Cable Elec. Prods. v.
Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886-87 (Fed.
Cir. 1985); In re Kaslow, 707 F.2d 1366, 1375, 217 USPQ 1089,
1096 (Fed. Cir. 1983); In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). The law followed by our court of
review, and thus by this Board, is that "[a] prima facie case
of obviousness is established when the teachings from the
prior art itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the art." In
re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
Appeal No. 95-4673
Application 08/097,759
5
1976). A rejection based on § 103 must rest on a factual
basis, with the facts being interpreted without hindsight
reconstruction of the invention from the prior art. In making
this evaluation, the examiner has the initial duty of
supplying the factual basis for the rejection he/she advances.
The examiner may not, because he/she doubts that the invention
is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual
basis. See In re Warner, 379 F.2d 1011, 1016-17, 154 USPQ
173, 177-78 (CCPA 1967).
In this case, essentially for the reasons stated by
appellant in the brief (pages 5-9), we find that the
examiner's rejection of claims 10 through 12 and 14 through 16
under 35 U.S.C. 103 is not sustainable. Like appellant, we are
of the opinion that the examiner has inappropriately relied
upon hindsight and improperly used appellant's own disclosure
and teachings as a guide through the prior art references and
the individual features thereof in attempting to combine only
a selected one of those features (i.e., the notches) in a
modification of the Hayes paint can holder so as to arrive at
the claimed subject matter.
Appeal No. 95-4673
Application 08/097,759
6
Unlike the examiner, we see nothing in the combined
teachings of Hayes and Kesterson which would have led one of
ordinary skill in the art to replace the bail receiving
arrangement at the ends of each of the support arms of the
support member (12) of Hayes with notches like those seen in
the design patent to Kesterson. In this regard, we also share
appellant's view that neither Hayes nor Kesterson teaches or
suggests opposed notches in support arms of a paint can holder
which are (1) sized to receive the can handle attaching
members protruding from opposite sides of the paint can and
(2) positioned on the support arms to permit the paint can to
pivot about the attaching members when the attaching members
are received in said opposed notches, as is required in
appellant's independent claim 10 on appeal.
Our review of the Haney patent applied by the examiner
against dependent claims 14 through 16 does nothing to change
our view regarding the basic combination of references to
Hayes and Kesterson. That is, there is nothing in Haney which
supplies the above-noted deficiencies of the examiner's basic
combination of references.
Appeal No. 95-4673
Application 08/097,759
7
Based on the foregoing, the decision of the examiner
rejecting claims 10 through 12 and 14 through 16 under 35
U.S.C. § 103 is reversed.
REVERSED
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOHN P. McQUADE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 95-4673
Application 08/097,759
8
APPENDIX
10. A holder attachable to a belt worn by a person to
hold a can having a sidewall, a bottom and a removable top lid
to form a liquid containing chamber and having attaching means
protruding from opposite sides of said sidewall to which a
handle is pivotally attached, said holder comprising:
(a) a can holding member comprising:
(i) a rigid back plate, and
(ii) rigid support arms extending from said back
plate to form a gap between said support arms of
sufficient distance to allow said can sidewall to pass
between said arms, said support arms having opposing
notches sized to receive said attaching means and
positioned on said support arms to permit said can
to pivot about said attaching means when said
attaching means are received in said opposing
notches; and
(b) a belt suspension member having two ends, said first
end of said belt suspension member being attachable to said
belt and said second end of said belt suspension member being
pivotally attachable to said back plate.
Appeal No. 95-4673
Application 08/097,759
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WILLIAM D. KIESEL
P.O. BOX 15928
Baton
Appeal No. 95-4673
Application 08/097,759
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Rouge, LA 70895