Ex Parte Yang

Board of Patent Appeals and Interferences

Aug 20, 2004

09957058 (B.P.A.I. Aug. 20, 2004)

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is not binding precedent of the Board.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. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte FU-HSIUNG YANG
____________
Appeal No. 2004-1520
Application No. 09/957,058
____________
ON BRIEF
____________
Before OWENS, TIMM, and PAWLIKOWSKI, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims 1-6 which are all the claims pending in the application. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 134.
Appeal No. 2004-1520
Application No. 09/957,058
Page 2
INTRODUCTION
The claims are directed to a golf bag. Claim 1 is illustrative:
1. A golf bag comprising a bag body for receiving golf clubs and a sliding means fixed at
the lower end of the bag body, a cylinder container formed on the top of the sliding means and
connected with the lower end of said bag body; characterized in that:
one side of the bottom of the sliding means is provided with two wheel seats
parallel to each other for mounting two freely rolling rear wheels
connected by an axel;
another side opposite to said one side of the sliding means is provided with at
least one eccentric wheel as a front wheel having a diameter smaller then
[sic, than] the rear wheels;
the lower edges of the eccentric front wheel and the rear wheels are set to be
co-planar;
wherein the golf bag, when placed on the ground, stays stably in an
upstanding condition, with its longitudinal axis in a substantially vertical
direction;
when the golf bag is in the upstanding condition, users can grasp the upper
end of the bag body and push the bag body so as to drive the front wheel
and rear wheels in a pushing condition; and
alternatively, users can slant the golf bag by taking the rear wheels as a pivot
and lifting the front wheel away from ground, then grasp the upper end
of the bag body and pull the bag body so as to drive the rear wheels in a
pulling condition.
Appeal No. 2004-1520
Application No. 09/957,058
Page 3
As evidence of unpatentability, the Examiner relies upon the following prior
art references:
Howard 2,582,435 Jan. 15, 1952
Berfield et al. (Berfield) 4,799,699 Jan. 24, 1989
Yang 5,924,709 July 20, 1999
Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
Yang in view of Berfield. Howard is added to reject claims 5-6.
We affirm. In so doing, we adopt the well articulated findings of fact and
conclusions of law advanced by the Examiner in the Answer. We add the following for
emphasis.
OPINION
In conformance with the grouping of the claims by Appellant, we consider the
issues as they apply to claims 1, 5, and 6. 37 CFR § 1.192(c)(7)(2003). With regard to
these claims, Appellant has not convinced us of any reversible error on the part of the
Examiner.
Because many of the issues are the same for both rejections, we will start with a
general discussion applicable to both rejections. First, we note that the quality of the
Examiner’s findings of fact are of the highest variety (Answer, pp. 4-5 and 7). They are
soundly supported by the Examiner’s citations to the references (Id.). We agree with the
Examiner that Yang describes a golf bag having all the required structure of the golf bag
Appeal No. 2004-1520
Application No. 09/957,058
Page 4
1Claim 1 requires one eccentric wheel. Claims 5 and 6, which are dependent on claim 4
which is, in turn, dependent on claim 1, require two eccentric front wheels.
of claim 1 except that it does not have one or more front eccentric wheels as claimed
(Answer, pp. 4-5).1 We also agree with the Examiner’s conclusions of obviousness
(Answer, pp. 5 and 7). These conclusions are based on the conventional nature of
providing one or two front wheels in combination with larger rear wheels to provide
increased maneuverability (Id.). Berfield and Howard, as applied by the Examiner,
provide the required evidence of obviousness.
Appellant argues that the Examiner has used hindsight reconstruction in
fashioning the rejections (Brief, pp. 9-10). In making this argument, Appellant alleges
that the Examiner has disregarded portions of Berfield and Howard that teach away from
the invention and that, instead, the Examiner is picking and choosing individual features
from the references and lumping them together to yield the features of the claimed
invention (Brief, pp. 9-11 and 14).
We agree that it is improper for an examiner to rely upon an appellant’s
disclosure of invention in the determination of obviousness. In order to guard against
such an impermissible reconstruction, a finding of a reason, suggestion or motivation to
modify the teaching of the primary reference must be located and that reason, suggestion
or motivation must originate in the prior art. This is not to say that the references must
fit together like pieces of a puzzle or that the secondary reference cannot include a
Appeal No. 2004-1520
Application No. 09/957,058
Page 5
description of other concepts or structures. Nor do the references need to expressly
articulate the reason, suggestion, or motivation for making the combination for there to
be a prima facie case of obviousness. The reason, suggestion, or motivation may “come
from knowledge of those skilled in the art that certain references, or disclosures in the
references, are known to be of special interest or importance in the particular field. It
may also come from the nature of a problem to be solved, leading inventors to look to
references relating to possible solutions to that problem.” Pro-Mold & Tool Co. v. Great
Lakes Plastics, Inc., 73 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir.
1996)(citations omitted).
The Examiner has provided a sound basis, originating in the prior art, which
supports a conclusion of obviousness. Berfield and Howard both disclose movable
objects or carriers with a combination of large back wheels and one or two smaller front
eccentric wheels in accordance with the requirements of the claims. Of that there is no
real question (Brief and Reply Brief in their entirety). Howard further describes using
legs 14 to support the carrier or alternatively using small wheels 71 (Howard, col. 5, ll.
45-55 and col. 7, ll. 25-30). Howard expressly indicates that the use of front wheels has
an advantage in that the wheel configuration provides a construction that is freely
movable, very easy to steer, and which is safe and stable (Howard, col. 7, ll. 25-46). The
use of such wheel configurations on other carriers which have to be moved from place to
place, such as golf bags, would have been obvious to one of ordinary skill in the art. The
Appeal No. 2004-1520
Application No. 09/957,058
Page 6
reason or motivation is that expressed in Howard: To provide free movement, steering
ability, and stability to the golf bag in the upright position. The reason for using wheels
is evident from the express teachings of the prior art as well as from the nature of the
problem to be solved. See Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 73 F.3d
1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996).
Nor can we agree that the other teachings in the references with regard to other
structures such as the adjustable dolly of Berfield or the foldable mechanisms of Howard
somehow teach away from the use of wheels on a golf bag of the construction disclosed
by Yang or that the Examiner has failed to consider the prior art as a whole (Brief, pp.
10-12 and 13-14). Nor do we agree with Appellant that the Examiner is espousing a
combination in which the front wheels of Berfield and Howard are bodily incorporated
into the golf bag of Yang (Reply Brief, pp. 5-7). The purpose of the inclusion of prior
art in an obviousness rejection is to provide evidence of what those of ordinary skill in
the art knew at the time the invention was made. The references serve as a spring board
used by the decision maker to step back in time and into the shoes of one of ordinary
skill in the art at the time of the invention. Panduit Corp. v. Dennison Mfg. Co., 810
F.2d 1561, 1566-67, 1 USPQ2d 1593, 1595-96 (Fed. Cir.), cert. denied, 481 U.S. 1052
(1987). From the prior art a certain amount of knowledge can be imputed to one of
ordinary skill in the art. How that knowledge is stated is of no matter: It need not be
conveyed directly nor must it be the main topic of discussion within a particular prior art
Appeal No. 2004-1520
Application No. 09/957,058
Page 7
reference. See Merck & Co v. Biocraft Laboratories, 874 F.2d 804, 807, 10 USPQ2d
1843, 1847 (Fed. Cir. 1989) (A reference may be relied upon for all that it would have
reasonably suggested to one having ordinary skill in the art, including non-preferred
embodiments); In re Heck, 699 F.2d 1331, 1333, 216 USPQ 1038, 1039 (Fed. Cir.
1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA
1968))(Use of a patent as a reference is not limited to what the patentee describes as
their own invention.). Nor do the reference disclosures need to fit together like pieces of
a puzzle. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981)(“The
test for obviousness is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested to those of
ordinary skill in the art.”); In re Bascom, 43 CCPA 837, 230 F.2d 612, 614, 109 USPQ
98, 100 (1956)(“[T]he proper inquiry should not be limited to the specific structure
shown by the references, but should be into the concepts fairly contained therein, and the
overriding question to be determined is whether those concepts would suggest to one
skilled in the art the modification called for by the claims.”). What is important is that
the prior art establishes that there was a reason, suggestion or motivation to make what is
claimed and that one of ordinary skill in the art would have had a reasonable expectation
of success in so carrying it out. See In re Dow Chem., 837 F.2d 469, 473, 5 USPQ2d
Appeal No. 2004-1520
Application No. 09/957,058
Page 8
1529, 1531 (Fed. Cir. 1988). Berfield and Howard establish the obviousness of using
large back wheels and small eccentric front wheels on articles meant to be movable.
Appellant also argues, with respect to the combination of Yang and Berfield that
“a person ordinarily skilled in the art, seeking to solve a problem of supporting and
moving an elongated unstable golf bag, would not reasonably be expected or motivated
to look to bases for a drum-shaped stable tank.” (Brief, p. 12). In so far as Appellant is
arguing that Berfield is from a non-analogous art, we note that if the reference is within
the field of the inventor’s endeavor or reasonably pertinent to the particular problem
with which the inventor was involved, the reference is deemed to be analogous prior art
and thus properly within the scope of prior art relevant to a determination of
obviousness. In re Deminski, 796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986);
In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979). Berfield is
reasonably pertinent to the problem of maneuverability of objects meant to be moved
and is, therefore, relevant to the determination of obviousness.
With regard to claim 5, Appellant further argues that the Examiner cannot
disregard portions of Howard inconsistent with the teachings of Yang (Brief, p. 14), but
those of ordinary skill in the art are just that: Of ordinary skill. That those of ordinary
skill in the art possessed the knowledge to use wheels together with legs or large rear
wheels in combination with smaller front wheels based on the amount of
Appeal No. 2004-1520
Application No. 09/957,058
Page 9
maneuverability desired is not only evident from the prior art as a whole, but evident
from the disclosure of Howard specifically (Howard, col. 7, ll. 26-46).
With regard to claim 6, Appellant argues that Howard does not disclose or teach
that the two front wheels project outside of the platform (Brief, p. 14). But Howard
indicates that the wheels are to be located at the most advantageous point beneath the
platform or plate 60 and mounted to support the frame A. The location of the wheels is
thus a matter of routine optimization within the skill of the ordinary artisan. Moreover,
Berfield shows the front wheel as projecting to the outside of the outer edge as claimed.
Berfield, therefore, is evidence that such a projecting placement was known in the art.
One of ordinary skill in the art would have placed the front wheels so they project to the
outside of the outer edge when that placement offered optimal support.
As a final point, we note that Appellants base no arguments upon objective
evidence of non-obviousness such as unexpected results. We conclude that the
Examiner has established a prima facie case of obviousness with respect to the subject
matter of claims 1-6 which has not been sufficiently rebutted by Appellant.
CONCLUSION
To summarize, the decision of the Examiner to reject claims 1-6 under 35 U.S.C.
§ 103(a) is affirmed.
Appeal No. 2004-1520
Application No. 09/957,058
Page 10
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).
AFFIRMED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF
) PATENT
CATHERINE TIMM ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
CT/jrg
Appeal No. 2004-1520
Application No. 09/957,058
Page 11
INTELLECTUAL PROPERTY / TECHNOLOGY LAW
PO BOX 14329
RESEARCH TRIANGLE PARK, NC 27709