Ex parte White

Board of Patent Appeals and Interferences

Jan 31, 2000

08655649 (B.P.A.I. Jan. 31, 2000)

Application for patent filed May 30, 1996. 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for publication in a law journal and (2) is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte THOMAS H. WHITE
____________
Appeal No. 1999-2456
Application No. 08/655,6491
____________
ON BRIEF
____________
Before STAAB, NASE, and BAHR, 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, 2 and 7 to 15, which are all of the
claims pending in this application.
We REVERSE.
Appeal No. 1999-2456 Page 2
Application No. 08/655,649
BACKGROUND
The appellant's invention relates to a device and method
for facilitating the proper function of, and avoiding improper
functioning of, certain air vent intake systems of automobiles
(specification, p. 1). An understanding of the invention can
be derived from a reading of exemplary claims 1 and 11, which
appear 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:
Heintz 3,845,983 Nov. 5,
1974
Easterbrook et al. 5,479,984 Jan. 2,
1996
(Easterbrook)
In addition, the examiner also relied upon the admitted
prior art of an MG automobile (specification, pp. 4 and 7).
Appeal No. 1999-2456 Page 3
Application No. 08/655,649
While the admitted prior art of an MG automobile was not2
set forth in the statement of this rejection, it is clear from
our reading of this rejection that the examiner has relied
upon the admitted prior art of an MG automobile in making this
rejection.
Claims 1, 2 and 7 to 15 stand rejected under 35 U.S.C. §
103 as being unpatentable over Heintz in view of Easterbrook
and the admitted prior art of an MG automobile.2
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the final rejection (Paper No.
6, mailed October 14, 1997) and the answer (Paper No. 13,
mailed November 25, 1998) for the examiner's complete
reasoning in support of the rejection, and to the brief (Paper
No. 12, filed July 16, 1998) and reply brief (Paper No. 14,
filed February 1, 1999) 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
Appeal No. 1999-2456 Page 4
Application No. 08/655,649
claims, to the applied prior art, and to the respective
positions articulated by the appellant and the examiner. Upon
evaluation of 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, 2 and 7 to 15 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. 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).
Appeal No. 1999-2456 Page 5
Application No. 08/655,649
The appellant argues that the applied prior art does not
suggest the claimed subject matter (brief, p. 3). We agree.
All the claims under appeal require "a generally planar
intake cover having a perimeter configuration substantially
the same as the intake opening [of the automobile air vent
system]". However, this limitation is not suggested by the
applied prior art. In that regard, while Heinz does teach the
use of a removable cowling cover for automobiles, Heinz does
not teach or suggest using a cowling cover having a perimeter
configuration substantially the same as the intake opening of
the automobile air vent system. In fact, Heinz specifically
teaches that his cowling cover is a size, shape and contour
for disposition over at least the cowl portion of the
automobile (see for example column 2, line 38 to column 3,
line 4, and Figure 2). It is our view that an artisan in
applying the teachings of Heintz to the admitted prior art MG
automobile would have sized the cowling cover for attachment
to the cowl, not to the size of the grill over the intake
Appeal No. 1999-2456 Page 6
Application No. 08/655,649
We have also reviewed the reference to Easterbrook. The3
examiner applied this reference solely for its suggestion of
replacing the material of the cowling cover of Heinz with a
cowling cover made of a flexible magnetic material. While the
shut-off panel of Easterbrook is a generally planar intake
cover having a perimeter configuration substantially the same
as the outlet register of a forced air system, we see no
suggestion or motivation therein to have changed the size of
the cowling cover of Heinz.
opening. Thus, the applied prior art would not have been
suggestive of the claimed invention. 3
In our view, the only suggestion for modifying the
applied prior art to arrive at the claimed invention would
stem from hindsight knowledge derived from the appellant's own
disclosure. 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 Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-
13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For the reasons set forth above, we cannot sustain the
examiner's rejections of claims 1, 2 and 7 to 15.
Appeal No. 1999-2456 Page 7
Application No. 08/655,649
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1, 2 and 7 to 15 under 35 U.S.C. § 103 is reversed.
REVERSED
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-2456 Page 8
Application No. 08/655,649
ROBERT B. HUGHES
HUGHES & SCHACHT, P.S.
2801 MERIDIAN STREET, SUITE 1
BELLINGHAM, WA 98225-2412
APPEAL NO. 1999-2456 - JUDGE NASE
APPLICATION NO. 08/655,649
APJ NASE
APJ BAHR
APJ STAAB
DECISION: REVERSED
Prepared By: Gloria Henderson
DRAFT TYPED: 18 Jan 00
FINAL TYPED:
Gloria: Please enter the change of address filed
Feb. 1, 1999.