Ex Parte Warkentin

Board of Patent Appeals and Interferences

Sep 30, 2003

09938479 (B.P.A.I. Sep. 30, 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publication and is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte REGINALD P. WARKENTIN
____________
Appeal No. 2003-2047
Application No. 09/938,479
____________
ON BRIEF
____________
Before KRATZ, MOORE, and POTEATE, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner’s final
rejection of claims 8-17, which are all of the claims pending in
this application.
BACKGROUND
Appellant’s invention relates to a chart recorder including
a housing including a digitizer and multiple movable arms having
digitizer detectable elements mounted in the housing. An
understanding of the invention can be derived from a reading of
exemplary claim 8, which is reproduced below.
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8. A chart recorder, comprising:
a housing;
a backing plate installed in the housing;
multiple movable arms, each having an indicating
tip, each movable arm, being mounted in the housing for
movement in an arc adjacent the backing plate in
response to sensing of a physical parameter by the
chart recorder;
a digitizer mounted in the housing, the digitizer
having a digitizing grid; and
a respective digitizer detectable element mounted
on each movable arm.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Rodgers et al. (Rodgers) 4,210,775 Jul. 01, 1980
Louis et al. (Louis) 4,414,634 Nov. 08, 1983
Claims 8-17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Louis in view of Rodgers.
OPINION
Upon careful review of the respective positions advanced by
appellant and the examiner with respect to the rejections that
are before us for review, we find ourselves in agreement with
appellant’s viewpoint in that the examiner has failed to carry
the burden of establishing a prima facie case of obviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-1472,
223 USPQ 785, 787-788 (Fed. Cir. 1984). Accordingly, we will
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not sustain the examiner’s rejection.
The examiner relies on Louis for disclosing a chart recorder
including a housing having multiple movable arms. The examiner
acknowledges (final rejection, page 3) that Louis does not
disclose:
“a backing plate installed in the housing,” “a
digitizer mounted in the housing, the digitizer having
a digitizing grid: and a respective digitizer
detectable element mounted on each movable arm,” as
stated in claim 8.
The examiner (final rejection, page 3) refers to Rodgers for
disclosing a digitizing system with a grid for determining the
position of a pen, the pen having a pen tip extending through a
coil and a communication link to transmit position data.
According to the examiner (answer, pages 3 and 4), it would
have been obvious to one of ordinary skill in the art at the time
of the invention to furnish Louis with a backing plate configured
for mounting a digitizing grid together with the grid and a pen
tip extending through a coil for each arm based on the teachings
of Rodgers. The examiner finds a suggestion for this
reconstruction of the chart recorder of Louis based on
description of prior art in Rodgers at column 1, lines 20-25
wherein it is noted that it is known in the prior art that
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electrically transmittable signals denoting the position of a pen
or pointer can be sent or recreated at a local or remote
utilization device. According to the examiner, the proposed
modification of Louis would allow for remote reading of the flow
chart (meter).
Appellant (brief, pages 5-8) argues that Rodgers at column
2, lines 32-37 makes it clear that the digitizer apparatus
disclosed is for use in “systems using light pens, trackballs,
and joy sticks for CRT (cathode ray tube) cursor control” and
would not have suggested a modification of the disparate complex
chart recorder of Louis that includes linear and rotational
sensors and a calculator to perform fluid flow calculations
(drawing figure 9) in a manner so as to arrive at the appellant’s
claimed subject matter.
We agree with appellant. It is well settled that the mere
fact that prior art may be modified to reflect features of the
claimed invention does not make the modification obvious unless
the desirability of such modification is suggested by the prior
art. Rejections based on § 103(a) must rest on a factual basis
based on the teachings of the prior art. See In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968). Our reviewing court has repeatedly cautioned
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against employing hindsight by using the appellant’s disclosure
as a blueprint to reconstruct the claimed invention from the
isolated teachings of the prior art. See, e.g., Grain Processing
Corp. v. American Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d
1788, 1792 (Fed. Cir. 1988).
From our perspective, the examiner’s proposed combination of
Louis and Rodgers appears to be premised on impermissible
hindsight reasoning. In this regard, the examiner has not fairly
established that one of ordinary skill in the art of designing
and building chart recorders of the type described in Louis would
have found in the teachings of Rodgers concerning low cost
application digitizers for monitoring the position of a pen or
other instrument relative to a grid, a suggestion for modifying
the chart recorder of Louis in the manner proposed by the
examiner.
On the record of this appeal, it is our view that the
examiner has not carried the burden of establishing a prima facie
case of obviousness with respect to the subject matter defined by
the appealed claims. Consequently, we reverse the stated
rejection.
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CONCLUSION
The decision of the examiner to reject claims 8-17 under
35 U.S.C. § 103 as being unpatentable over Louis in view of
Rodgers is reversed.
REVERSED
PETER F. KRATZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JAMES T. MOORE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LINDA R. POTEATE )
Administrative Patent Judge )
PFK/sld
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