Ex parte Adell

Board of Patent Appeals and Interferences

Jul 21, 1998

08492376 (B.P.A.I. Jul. 21, 1998)

Application for patent filed June 19, 1995.1
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not binding precedent of the Board.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. 13
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ROBERT ADELL
_____________
Appeal No. 97-1473
Application 08/492,3761
______________
ON BRIEF
_______________
Before COHEN, ABRAMS and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 9. Claim 10, the only other
claim remaining in the application, has been objected to by
the examiner as being dependent upon a rejected base claim,
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Application 08/492,376
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but has been indicated as being allowable subject to being
rewritten in independent form.
Appellant's invention relates to a lottery number picker
and to a method of assembling a lottery number picker.
Independent claims 1 and 8 are representative of the subject
matter on appeal and a copy of those claims, as found in the
Appendix to appellant's brief, is attached to this decision.
The references of record relied upon by the examiner in
rejecting the appealed claims are:
Albright et al. (Albright) 4,533,143 Aug. 06,
1985
Stebing 5,011,148 Apr. 30,
1991
Adell 5,454,567 Oct. 03,
1995
Claims 1 through 7 stand rejected under the judicially
created doctrine of obviousness-type double patenting as being
unpatentable over claims 1 and 15 of U.S. Patent No. 5,454,567
in view of Albright.
Claim 8 and 9 stand rejected under 35 U.S.C. §103 as
being unpatentable over Stebing in view of Albright.
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The examiner's statement of the rejections and response
to appellant's arguments appears on pages 3 through 5 of the
examiner's answer (Paper No. 8, mailed August 14, 1996).
Appellant's viewpoints concerning the examiner's rejections of
the appealed claims are found in the brief (Paper No. 7, filed
May 17, 1996) and in the supplemental brief (Paper No. 12,
filed April 7, 1998).
0PINION
In arriving at our decision in this appeal, we have
carefully considered appellant's specification and claims, the
applied references, and the respective viewpoints of appellant
and the examiner. As a consequence of our review, we have
made the determinations which follow.
Turning first to the examiner's rejection of claims 1
through 7 under the judicially created doctrine of
obviousness-type double patenting, we understand the
examiner's position to be that the compact case set forth in
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claims 1 and 15 of appellant's prior U.S. Patent No. 5,454,567
is fully responsive to the lottery number picker defined in
claims 1 through 7 on appeal, except that the compact case of
claims 1 and 15 of appellant's prior patent does not include
numbered disks (e.g., 34) which have numbers on both the upper
and lower faces thereof
as required in the claims presently on appeal. To account for
this deficiency the examiner looks to Albright, urging that
Albright teaches that it is known in the lottery picker art to
mark random lottery pieces (e.g., 20) with lottery numbers on
all faces of each of the pieces. In the examiner's opinion,
based on the teachings of Albright, it would have been obvious
to one of ordinary skill in the art to provide lottery numbers
on both faces of the disks set forth in claims 1 and 15 of
appellant's prior U.S. Patent No. 5,454,567 in order to
assemble the lottery number picker more conveniently.
After reviewing claims 1 and 15 of U.S. Patent No.
5,454,567 and the teachings of Albright, we, like appellant,
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are of the view that the examiner has engaged in an
impermissible hindsight reconstruction in attempting to modify
the compact case set forth in patent claims 1 and 15, in light
of the distinctly different random number selection device of
Albright, so as to provide numbers on both faces of the disks
in the compact case of patent claims 1 and 15. While it is
essential that the cubes (20) of Albright, which are suspended
and freely movable in a random manner in the fluid (23) of the
container (2), have numbers on all of the faces of the cubes
so as to provide a complete number
in the window area (5) so that a six digit lottery number may
be selected, we observe that no such requirement is present or
necessary with regard to the disks (34) in the compact case of
appellant's prior U.S. Patent No. 5,454,567. In contrast to
the cubes of Albright, the disks of the '567 patent are
constrained to move in a single plane in the space (32)
between the platform (31) and the cover (35) and thus only one
face of the disks, on the side adjacent the transparent cover
(35), would require a number thereon. Given the distinctly
different structural and functional relationships involved
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with regard to the numbered pieces of the device in Albright
and that of appellant's prior patent claims 1 and 15, we
consider that the combination proposed by the examiner would
not have been obvious to one of ordinary skill in the art
absent the hindsight benefit of appellant's own teachings in
the present application before us on appeal. Accordingly, we
will not sustain the examiner's rejection of claims 1 through
7 under the judicially created doctrine of obviousness-type
double patenting.
Next we look to the examiner's rejection of claims 8 and
9 under 35 U.S.C. § 103 based on the combined teachings of
Stebing
and Albright. In this instance, appellant asserts that
Stebing
discloses circular disks (e.g., 16) which have numbers on only
one side of the disks, and lacks any motivation for numbering
the opposite sides of the disks therein. In addition,
appellant has provided two affidavits from persons skilled in
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the art (i.e., Pat O'Bryan and Tod H. Dereadt, who are said to
be "experts") who have opined, after reviewing both Stebing
and Albright, that appellant's feature of marking numbers on
opposite sides of each disk is not obvious, primarily due to
increased costs in the manufacturing of such disks. In
reaching their opinions, both Mr. O'Bryan and Mr. Dereadt
characterize Stebing as having numbers on only one face of
each disk. See paragraph 8 of the O'Bryan affidavit and
paragraph 7 of Mr. Dereadt's affidavit.
We have carefully reviewed the complete disclosure of the
Stebing patent, and due to the express teaching found at
column 5, lines 26-28, therein, we find appellant's arguments
and the opinions of Mr. O'Bryan and Mr. Dereadt to be entirely
unpersuasive. The teaching at column 5, lines 26-28 of
Stebing indicates that when the base (20) and top surface (22)
of cover (14) of the lottery number picker therein are
transparent "disc 16 preferably has two faces 50 with symbols
apparent," that is,
opposite faces (50) of the disc seen in Figure 6 of Stebing
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would have symbols (e.g., numbers) on those faces and such
numbers/symbols would be viewable from the top surface (22)
and from the base side of the lottery number picker. Given
this teaching in Stebing, we find the examiner's use of the
Albright patent to be mere surplusage and sustain the § 103
rejection of claims 8 and 9 on the basis of Stebing alone. As
has been made clear by our reviewing Courts on numerous
occasions, anticipation or lack of novelty is the ultimate or
epitome of obviousness. See, in this regard, In re Fracalossi,
681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982); In re
Pearson, 494 F.2d 1399, 1402, 181 USPQ 641 (CCPA 1974).
Under the provisions of 37 CFR § 1.196(b), we enter the
following new ground of rejection against claims 1 through 7
on appeal.
Claims 1 through 7 are rejected under the judicially
created doctrine of obviousness-type double patenting as being
unpatentable over claims 1 through 4, 11, 13 and 15 of U.S.
Patent No. 5,454,567 in view Stebing. The compact case of the
enumerated claims in the '567 patent is the same as that set
forth in claims 1 through 7 on appeal, with the exception that
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the claims of appellant's prior patent are silent as to
whether the numbered disks set forth therein actually include
numbers on both of the opposite sides or faces of the disks.
However, given that the case as defined in these claims is
completely trans-parent, that is, it has a first transparent
cover, a transparent platform, and a second transparent cover,
we consider that the teachings of Stebing at column 5, lines
26-28 (noted above) would have made it obvious to one of
ordinary skill in the art to provide the numbered disks of the
case defined in claims 1 through 4, 11, 13 and 15 of the '567
patent with identical numbers on the opposite faces of each
disk.
While we recognize that the lottery number picker of the
enumerated claims in appellant's prior patent is intended to
receive a thin card in the lower space therein, we also note
that the lottery number picker does not include such a card in
the lower space during its manufacture, shipping or
distribution, and that the insertion of such a card, even
after purchase, is entirely optional with the purchaser.
Thus, in at least some cases, the card would not be inserted
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in the lower space and the numbered disks would be usable and
viewable from both faces of the lottery number picker, and as
suggested in Stebing should
therefore advantageously include a number/symbol on the
opposite faces of each disk. It matters not that the reason
for combining the teachings as noted above is not the same as
appellant's reason for the noted modification. The law is
clear that the
purpose proposed as to the reason why an artisan would have
found the claimed subject matter to have been obvious under 35
U.S.C. § 103 need not be identical to the purpose or problem
which the patent applicant indicates to be the basis for having
made the invention. See In re Beattie, 974 F.2d 1309, 1312, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992) and In re Dillon, 919 F.2d
688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Moreover, it
is not required that the prior art teachings relied upon
disclose the same advantage that appellant alleges, all that is
required is that there is a reasonable suggestion to do what the
claimed subject matter encompasses. See In re Kronig, 539 F.2d
1300, 1304, 190 USPQ 425, 428 (CCPA 1976) and Ex parte Obiaya,
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227 USPQ 58 (BPAI 1985). In the present case, we find a
reasonable suggestion to do what appellant's now claimed subject
matter encompasses.
Regarding the requirement of appellant's claim 7 on appeal
that the numbered disks be "about 6mm in diameter and about
1.5mm thick," we consider such sizing to be a mere matter of
design choice, especially since appellant's specification (page
5)
indicates that such sizing is only exemplary and since we find
nothing in the specification which indicates that this sizing
solves any particular problem or provides some unexpected
result.
To summarize our decision, we have reversed the examiner's
rejection of claims 1 through 7 under the judicially created
doctrine of obviousness-type double patenting as being
unpatentable over claims 1 and 15 of U.S. Patent No. 5,454,567
in view of Albright. We have affirmed the examiner's rejection
of claims 8 and 9 under 35 U.S.C. §103 based on Stebing and
Albright. In addition, pursuant to 37 CFR § 1.196(b), we have
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entered a new ground of rejection against claims 1 through 7 on
appeal under the judicially created doctrine of obviousness-type
double patenting as being unpatentable over claims 1 through 4,
11, 13 and 15 of U.S. Patent No. 5,454,567 in view Stebing.
In accordance with the foregoing, it is clear that the
decision of the examiner has been affirmed-in-part.
In addition to affirming the examiner’s rejection of one or
more claims, this decision contains a new ground of rejection
pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by
final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997),
1203 Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR § 1.196(b) provides, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for rehearing
within two months from the date of the original
decision . . . .
37 CFR § 1.196(b) also provides that the appellant, WITHIN
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Application 08/492,376
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TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (37 CFR
§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Should appellant elect to prosecute further before the
Primary Examiner pursuant to 37 CFR § 1.196(b)(1), in order to
preserve the right to seek review under 35 U.S.C. §§ 141 or 145
with respect to the affirmed rejection, the effective date of
the affirmance is
deferred until conclusion of the prosecution before the examiner
unless, as a mere incident to the limited prosecution, the
affirmed rejection is overcome.
If the appellant elects prosecution before the examiner and
this does not result in allowance of the application,
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abandonment or a second appeal, this case should be returned to
us for final action on the affirmed rejection, including any
timely request for reconsideration thereof.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 97-1473
Application 08/492,376
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Alex Rhodes
Suit 460
30100 Telegraph Road
Bingham Farms, MI 48025