Ex Parte Zaltron

Board of Patent Appeals and Interferences

Aug 31, 2004

09760567 (B.P.A.I. Aug. 31, 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for publication and is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RENATO ZALTRON
____________
Appeal No. 2004-1922
Application No. 09/760,567
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-8 and
13-22, which are all of the claims pending in this application.
We REVERSE.
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Application No. 09/760,567
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BACKGROUND
The appellant's invention relates to a trekking stick with a shock absorber. An
understanding of the invention can be derived from a reading of exemplary claim 1,
which appears 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:
Schwarting 619,235 Feb. 7, 1899
Hyman 3,730,544 May 1, 1973
Allsop et al. (Allsop) 4,244,602 Jan. 13, 1981
Palinkas 6,328,294 B1 Dec. 11, 2001
(filed Nov. 2, 1999)
The following rejections stand under 35 U.S.C. § 103(a):
(1) Claims 14-18 on the basis of Allsop in view of Schwarting.
(2) Claims 1-7, 13 and 19-22 on the basis of Allsop in view of Schwarting and Hyman.
(3) Claim 8 on the basis of Allsop in view of Schwarting, Hyman and Palinkas.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejections, we make reference to the Answer
(Paper No. 15) and the final rejection (Paper No. 9) for the examiner's reasoning in
support of the rejections, and to the Brief (Paper No. 14) for the appellant's arguments
thereagainst.
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1The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness under 35 U.S.C. § 103, it is incumbent
upon the examiner to provide a reason why one of ordinary skill in the art would have been led to modify a
prior art reference or to combine reference teachings to arrive at the claimed invention. Ex parte Clapp,
227 USPQ 972, 973 (BPAI 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
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 make the determinations which follow.
(1)
Independent claim 14 and dependent claims 15-18 stand rejected under
35 U.S.C. § 103(a) as being obvious1 in view of the combined teachings of Allsop and
Schwarting. In arriving at this conclusion, the examiner has found all of the subject
matter recited in claim 14 to be disclosed or taught by Allsop, except for a means for
activating and deactivating the shock-absorbing member. However, the examiner is of
the view that to modify the Allsop device by adding this feature would have been
obvious to one of ordinary skill in the art in view of the teachings of Schwarting “so as to
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allow the [Allsop] stick to act strictly rigid when desired” (Paper No. 9, page 3). We do
not agree, for the reasons set forth below.
Allsop is directed to a shock-absorbing ski pole. It is explained in the patent that
in the course of skiing, substantial impact is transmitted through a skier’s poles to the
hands, arms and shoulders, a situation which is undesirable, and that the invention
solves this problem by providing means to absorb these impacts while retaining the
“feel” through the poles that a skier desires (columns 2 and 3). In furtherance of this
aim, Allsop provides in the hand grip member a shock absorbing system comprising
cylinder and piston means (16 and 18) interposed between the grip (24) and the shaft
(14) of the ski pole (Figure 3). The piston is biased within the cylinder by a spring (20)
and the cylinder is provided with a bleed orifice (33) to control exiting of air from the
cylinder during compression caused by the impact of the end of the pole with the skiing
surface. A guide pin (26) coacting with slots (52) prevents relative rotation between the
piston and the cylinder. See columns 6 and 7. Allsop does not disclose or teach that
the shock absorbing system be equipped with means for selective activation and
deactivation; it is activated all of the time.
Schwarting discloses a crutch having a foot terminating at its distal end in a ring
(15) that carries a plurality of teeth (16) which provide traction on slippery surfaces.
Mounted for longitudinal movement within the ring is a retractable plug (18) that is
spring-biased to an extended position beyond the teeth. A rotatable and longitudinally
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slidable sleeve (15) surrounds the lower portion of the crutch, and operating in
conjunction with a pin (23) and a slot (12) having branches (13 and 14), allows the
retractable plug to be locked in the extended position or to be movable longitudinally
outwardly (page 1, column 2). There is no teaching in Schwarting that the spring
absorbs shocks applied to the crutch by impact with the walking surface, but only it
outwardly toward its extended position.
The mere fact that the prior art structure could be modified does not make such a
modification obvious unless the prior art suggests the desirability of doing so. In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the present
case, we fail to perceive any teaching, suggestion or incentive in either reference which
would have led one of ordinary skill in the art to provide the Allsop ski pole with the
rotatable sleeve deactivating arrangement disclosed in Schwarting, for to equip the
Allsop device with a mechanism that deactivates the shock absorbing means would
render it incapable of operating in the manner intended and solving the problem to
which it is directed, and would seem to provide no advantages. Moreover, Allsop
desires to prevent rotational movement between the grip and the ski pole (column 6,
lines 57-61), and if the Schwarting system were installed, this feature would be disabled
and the grip portion of the Allsop pole would have to be extensively reconstructed. In
our view, these factors would be disincentives for the artisan to make the examiner’s
proposed modification.
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It therefore is our conclusion that the combined teachings of Allsop and
Schwarting fail to establish a prima facie case of obviousness with regard to the subject
matter recited in claim 14, and we will not sustain the rejection of claim 14 or of claims
15-18, which depend therefrom.
(2)
Claims 1-7, 13 and 19-22 stand rejected as being unpatentable over Allsop and
Schwarting, applied as in the rejection of claim 14, taken further in view of Hyman,
which was cited for teaching the use of a cam to inhibit the movement of a pin between
two portions of a slot.
Independent claim 1 recites the same structure that was set forth in claim 14, and
includes greater detail of the construction of the means for activating and deactivating
the shock-absorbing member. This being the case, the same problems in combining
Allsop and Schwarting that we discussed in the rejection of claim 14 et al. also are
present in this rejection. Further consideration of the teachings of Hyman, which is
directed to a collapsible ski pole, do not alleviate those problems, and on the same
basis we therefore will not sustain the rejection of independent claim 1 or of dependent
claims 2-7 and 13.
We reach the same conclusion, for the same reasons, with regard to the rejection
of independent claim 19 and dependent claims 20 and 21. As was the case with the
other independent claims, claim 19 includes a shock-absorbing member and means for
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activating and deactivating it. It is our view, as stated above, that no suggestion exists
for combining Allsop and Schwarting in the manner proposed by the examiner, a
conclusion that also applies to claim 19. This being the case, we will not sustain the
rejection of claims 19-22.
(3)
Claim 8, which depends from claim 1, adds the requirement that the shock-
absorbing member be a molded spring made of polyurethane, which is not taught by
Allsop or Schwarting. The examiner added Palinkas to the other two references for its
teaching of such a spring, but Palinkas does not alleviate the problems in combining
Allsop and Schwarting, and we therefore will not sustain the rejection of claim 8.
CONCLUSION
None of the three rejections is sustained.
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The decision of the examiner is reversed.
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
NEA/lbg
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Application No. 09/760,567
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R. NEIL SUDOL
COLEMAN, SUDOL, SAPONE P.C.
714 COLORADO AVE.
BRIDGEPORT, CT 06605-1601