Ex parte Bell

Board of Patent Appeals and Interferences

May 20, 1998

08248775 (B.P.A.I. May. 20, 1998)

Application for patent filed May 25, 1994 under 37 CFR 1.60 as a1
divisional of application 07/910,157 filed July 17, 1992, now patent
5,360,082, issued November 1, 1994.
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(2) is not binding precedent of the Board.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. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL BELL
__________
Appeal No. 96-3379
Application 08/248,7751
__________
ON BRIEF
__________
Before CALVERT, MEISTER and FRANKFORT, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 to
37, 45 to 50 and 71, all of the claims remaining in the
application.
The appealed claims are reproduced in the appendix to
Appeal No. 96-3379
Application 08/248,775
Our understanding of this reference is derived from a translation2
prepared for the PTO. A copy of the translation is enclosed.
2
appellant’s brief.
The prior art relied upon by the examiner in rejecting the
claims on appeal is:
Bernstein 383,432 May 29, 1888
Vinai 4,625,335 Dec. 02, 1986
Weiner et al. (Weiner) 4,674,596 Jun. 23, 1987
Green 4,687,074 Aug. 18, 1987
Lappe 32 16 599 Nov. 17, 19832
(German)
SKY GENIE®, produced by Descent Control, Inc., Fort
Smith, AR (disclosed prior art lowering device, pg. 2 of
the specification).
Disclosed conventional harness per Paper No. 8, page 2
(amendment filed May 25, 1995).
The claims stand rejected under 35 USC § 103 as unpatentable
over the following combinations of references:
(1) Claims 45 to 47 and 49, Weiner in view of Vinai and SKY
GENIE®;
(2) Claims 48 and 50, Weiner in view of Vinai, SKY GENIE®
and Bernstein;
(3) Claims 1 to 13, 17, 20 to 30, 33, 35 to 37 and 71, in
view of Vinai, SKY GENIE® and Green;
(4) Claims 14, 16, 18, 19, 31, 32 and 34, Weiner in view of
Vinai, SKY GENIE®, Green and Lappe;
Appeal No. 96-3379
Application 08/248,775
3
(5) Claims 1 to 37, 45 to 47, 49 and 71, Weiner in view of
the disclosed conventional harness and SKY GENIE®;
(6) Claims 48 and 50, Weiner in view of the disclosed
conventional harness, SKY GENIE®, and Bernstein.
The primary reference, Weiner, discloses a safety system in
which a worker on a roof, standing on a horizontal safety line
60, wears a harness 68 attached to a lanyard 70. The lanyard is
attached by a rope grab 72 to a line 73 hanging from a higher
horizontal safety line 62. While Weiner does not disclose a
harness (“body engagement means”) with two connection means, or
the use of a lowering device, the examiner takes the position as
to rejections (1) to (4), that (answer page 3):
Vinai shows a harness with first(51a) and second
(72s) connecting means to enable attachment of a
plurality of suspension means. Sky Genie shows a
lowering suspension means for lowering a person on
a rope. It would have been obvious to one of
ordinary skill in the art to provide Weiner with a
harness as claimed to enable the attachment of
plural suspension means at separate connecting
points, and a lowering device to facilitate the
lowering of a person after a fall. Furthermore,
to provide any conventional severing means eg. a
knife to sever or disconnect the rope grab means,
would have been an obvious mechanical expedient.
The claimed method of protecting a person, would
have been obvious to one of ordinary skill in the
art in view of the modified system of Weiner.
He takes the same position with regard to rejections (5) and (6),
substituting the disclosed conventional harness for the
Appeal No. 96-3379
Application 08/248,775
4
disclosure of Vinai. Appellant, on the other hand, admits that
the individual elements of his system, i.e., the safety line,
rope grab, harness assembly, lanyard and lowering device, “have
been commercially available and in use in the industry for years”
(brief, page 3), but argues that it would not have been obvious
to employ both a rope grab device and a lowering device in a
single system, “to provide a fall prevention system that enables
self-rescue” (brief, page 15; original emphasis).
Under 35 USC § 103, the teachings of the references can be
combined only if there is some suggestion or incentive to make
the combination. ACS Hospital Systems, Inc. v. Montefiore
Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984). While there is no requirement that the prior art contain
an express suggestion to combine, there must be some suggestion,
either from the references themselves or in the knowledge
generally available to one of ordinary skill in the art.
Motorola Inc. v. Interdigital Technology Corp., 121 F.3d 1461,
1472, 43 USPQ2d 1481, 1489 (Fed. Cir. 1997).
In the present case, after fully considering the arguments
of appellant and the examiner, we conclude that the subject
matter recited in the claims on appeal would not have been
Appeal No. 96-3379
Application 08/248,775
5
obvious over the prior art applied.
Although, as appellant acknowledges, the two-connection
harness and lowering devices such as the SKY GENIE® are known in
the art, we do not consider that there is any suggestion in the
art for combining them with the lanyard-rope grab safety system
disclosed by Weiner. The examiner argues that (answer, page 6):
If after a fall, with the system of Weiner, the problem
at hand to be resolved is the lowering of the user to a
safe place, a skilled mechanic in the safety art would
have appreciated the use of commercially available
lowering devices to accomplish this task, also if a
separate (second) connecting point to the harness for
the lowering device would be desirable over the single
connecting point disclosed by Weiner, a skilled
mechanic would have appreciated the use of commercially
available harness which comprises multiple connecting
points, e.g. Vinai, and appellant's disclosed prior art
harness in resolving the problem.
However, we find no suggestion in the disclosure of the prior art
Weiner system of the possible problem (lowering of the user)
postulated by the examiner. In fact, as appellant points out,
Weiner discloses at column 3, lines 23 to 25, that “In the event
of a fall on the roof surface, the free end 77 of the additional
line may be grasped to enable the worker to move upwardly on the
slope of the roof.” In view of this disclosure that the worker
can move upwardly after a fall, we see no reason or motivation
for one of ordinary skill to provide the worker with a lowering
Appeal No. 96-3379
Application 08/248,775
There being no prima facie case of obviousness, it is unnecessary to3
consider the declaration of Stefan D. Bright under 37 CFR 1.132 (Paper No. 7,
filed May 25, 1995).
6
device to enable downward movement after a fall. The fact that
the prior art could be modified in the manner suggested by the
examiner does not make the modification obvious unless the prior
art suggested the desirability of the modification. In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir.
1992).
We find nothing in the Bernstein, Green or Lappe references
which would supply the deficiencies noted with regard to the
combination of Weiner in view of SKY GENIE® and either Vinai or
the disclosed conventional harness.
Accordingly, a prima facie case of obviousness has not been
made, and the rejections will not be sustained.3
Conclusion
The examiner’s decision to reject claims 1 to 37, 45 to 50
and 71 is reversed.
REVERSED
Appeal No. 96-3379
Application 08/248,775
7
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Caesar, Rivise, Bernstein
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