Ex parte WARSHAWSKY

Board of Patent Appeals and Interferences

Jan 30, 1998

08248521 (B.P.A.I. Jan. 30, 1998)

Application for patent filed May 24, 1994. 1
GTHIS 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journal and (2) is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEROME WARSHAWSKY
____________
Appeal No. 96-3132
Application No. 08/248,5211
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ON BRIEF
____________
Before ABRAMS, FRANKFORT, 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, 5, 14 and 15, which are all of the claims
pending in this application.
We REVERSE.
Appeal No. 96-3132 Page 2
Application No. 08/248,521
It is not clear to us why the examiner applied these two2
references instead of the admitted prior art (specification, pp.
1-2). While the actual structural details of this admitted prior
art have not been disclosed by the appellant, the examiner has
the authority to issue a requirement for information requiring
applicant to provide the structural details of the admitted prior
art so that the examiner could properly determine patentability
thereover under 35 U.S.C. § 103. See MPEP § 706.02(c).
BACKGROUND
The appellant's invention relates to a zinc-based spray
faucet hose collar weight. Claims 1 and 15 are representative of
the subject matter on appeal and a copy of those claims is
attached to the appendix to the appellant's brief.
The prior art references of record relied upon by the
examiner as evidence of obviousness under 35 U.S.C. § 103 are:
Heimann et al. (Heimann) 4,827,538 May 9, 1989
Hochstrasser 5,090,062 Feb. 25, 1992
Claims 1, 5, 14 and 15 stand rejected under 35 U.S.C. § 103
as being unpatentable over Hochstrasser in view of Heimann.2
Rather than reiterate the conflicting viewpoints advanced by
the examiner and the appellant regarding the § 103 rejection, we
make reference to the final rejection (Paper No. 7, mailed May
Appeal No. 96-3132 Page 3
Application No. 08/248,521
23, 1995) and the examiner's answer (Paper No. 15, mailed April
12, 1996) for the examiner's complete reasoning in support of the
rejection, and to the appellant's brief (Paper No. 14, filed
March 18, 1996) 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. As a consequence of our review, we have made the
determination that the examiner's rejection of the appealed
claims under 35 U.S.C. § 103 is not well founded and will
therefore not be sustained. Our reasoning for this determination
follows.
The test for obviousness is what the combined teachings of
the references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
Appeal No. 96-3132 Page 4
Application No. 08/248,521
Consistent with the appellant's specification (page 2,3
lines 14-18), we have interpreted the phrase from lines 5-7 of
claim 1 "said collar comprises a composition of a zinc-based
alloy wherein said zinc-based alloy is provided in an amount of
about 95 percent by weight" to mean "said collar comprises a
composition of a zinc-based alloy wherein zinc is provided in an
amount of about 95 percent by weight." The appellant should
amend claim 1 to reflect this interpretation.
With regard to the examiner's rejection of claims 1, 5, 143
and 15 under 35 U.S.C. § 103, we share the appellant's view that
the combined teachings of the applied prior art would not have
suggested the claimed invention. In fact, as pointed out by the
appellant (brief, pp. 15-16), the applied prior art fails to
teach or suggest most of the limitations recited in independent
claims 1 and 15. While both applied prior art patents teach a
weight mounted on a flexible hose, they do not teach or suggest
the claimed invention. In particular, it is our determination
that the combined teachings of the applied prior art would not
have suggested the outwardly extending flat surfaces of the upper
and lower portions of the collar weight being spaced apart as
recited in independent claim 1 or the collar portions of the
collar weight being spaced apart as recited in independent claim
15. We also find the examiner's expressed reasoning concerning
the obviousness of substituting zinc for lead to be somewhat
tenuous in that (1) the applied prior art does not teach lead or
Appeal No. 96-3132 Page 5
Application No. 08/248,521
zinc, and (2) very little motivation for the selection of zinc
has been provided. It is our view, after a careful review of the
combined teachings of the applied prior art, that in searching
for an incentive for modifying the weight 68 of Hochstrasser, the
examiner has impermissibly drawn from the appellant's own
teachings and fallen victim to what our reviewing Court has
called "the insidious effect of a hindsight syndrome wherein that
which only the inventor taught is used against its teacher." W.
L. Gore & Assoc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ
303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Since we have determined that the subject matter of independent
claims 1 and 15 would not have been suggested by the combined
teachings of the applied prior art, it follows that we will not
sustain the examiner's rejection of appealed independent claims 1
and 15, or claims 5 and 14 which depend therefrom, under 35
U.S.C. § 103.
Appeal No. 96-3132 Page 6
Application No. 08/248,521
CONCLUSION
To summarize, the decision of the examiner to reject claims
1, 5, 14 and 15 under 35 U.S.C. § 103 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 96-3132 Page 7
Application No. 08/248,521
ALFRED M. WALKER
225 OLD COUNTRY ROAD
MELVILLE, NY 11747-2712
APPEAL NO. 96-3132 - JUDGE NASE
APPLICATION NO. 08/248,521
APJ NASE
APJ FRANKFORT
APJ ABRAMS
DECISION: REVERSED
Prepared By: Delores A. Lowe
DRAFT TYPED: 11 Dec 98
FINAL TYPED: