Ex parte Walling

Board of Patent Appeals and Interferences

Aug 31, 1999

08309577 (B.P.A.I. Aug. 31, 1999)

Application for patent filed September 21, 1994.1
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not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte LARRY H. WALLING
__________
Appeal No. 1997-2107
Application No. 08/309,5771
__________
ON BRIEF
__________
Before GARRIS, WARREN and SPIEGEL, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
Appeal No. 1997-2107
Application No. 08/309,577
2
of claims 1 and 9 which are all of the claims remaining in the
application.
The subject matter on appeal relates to a method of
applying a filler material to a fill hole with a size and a
shape in a surface comprising the steps of placing on said
surface a putty application tool having an aperture
approximately equal to said size and said shape of said hole,
positioning the tool such that its aperture is substantially
aligned over the hole, inserting the filler material into the
hole through the aperture of the tool, removing excess filler
material from the tool, and removing the putty application
tool from the surface before the filler material dries. This
appealed subject matter is adequately illustrated by
independent claim 1 which reads as follows:
1. A method for applying a filler material to fill a
hole with a size and a shape in a surface, comprising the
steps of:
providing a putty application tool with an aperture, said
aperture being approximately equal to said size and said shape
of said hole;
placing said putty application tool on said surface such
that said putty application tool is slidable thereon;
positioning said putty application tool such that said
aperture is substantially aligned over said hole;
Appeal No. 1997-2107
Application No. 08/309,577
3
inserting said filler material into said hole through
said aperture of said putty application tool;
removing excess filler material disposed on said putty
application tool; and
removing said putty application tool from said surface
before said filler material dries.
The reference set forth below is relied upon by the
examiner as evidence of obviousness:
Hardman 4,351,508 Sep. 28,
1982
Claims 1 and 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Hardman.
We refer to the Brief and to the Answer for a complete
exposition of the respective viewpoints expressed by the
appellant and the examiner concerning the above noted
rejection.
OPINION
The rejection before us cannot be sustained. As
correctly indicated by the appellant, Hardman contains no
teaching or suggestion of the independent claim step of
Appeal No. 1997-2107
Application No. 08/309,577
4
"removing said putty application tool from said surface before
said filler material dries." On the contrary, again as
correctly indicated by the appellant, patentee explicitly
discloses leaving his dam or tool in place until the filling
compound or material is set and dried (e.g., see the paragraph
bridging columns 4 and 5 and lines 22 through 35 in column 5).
The examiner describes her position concerning the step
on page 5 of the Answer with the following language:
With respect to the instant step of removing the
tool before the filler material dries, it is noted
that this was a generally well known and
conventional technique in the art at the time of
appellant's invention to allow for quicker repeated
use of the tool, and thus one having ordinary skill
in the art would have readily recognized this as an
alternative in the process of Hardman to allow for
quicker plugging of more apertures, as was generally
well known and conventional in the art at the time
of appellant's invention.
As reflected by our earlier remarks, however, Hardman
contains disclosure which reflects that the removal step under
consideration "was a generally well known and conventional
technique in the art at the time of appellant's invention" as
asserted by the examiner. Rather, the only disclosure on the
record before us which teaches such a technique appears in the
appellant's own specification.
Appeal No. 1997-2107
Application No. 08/309,577
5
These circumstances lead us to the determination that the
examiner's conclusion of obviousness is based upon
impermissible hindsight derived from the appellant's own
disclosure rather than some teaching, suggestion or incentive
derived from the applied prior art. It follows that the
examiner's § 103 rejection of claims 1 and 9 as being
unpatentable over Hardman is improper and cannot be sustained.
Appeal No. 1997-2107
Application No. 08/309,577
6
The decision of the examiner of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
bae
Appeal No. 1997-2107
Application No. 08/309,577
7
Blakely, Sokoloff, Taylor & Zafman
12400 Wilshire Boulevard
7th Floor
Los Angeles, CA 90025