Ex parte Broome

Board of Patent Appeals and Interferences

Apr 29, 1998

08531077 (B.P.A.I. Apr. 29, 1998)

Application for patent filed September, 20 1995.1
Paper No. 9
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(2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte MICHAEL D. BROOME
______________
Appeal No. 97-2968
Application 08/531,0771
_______________
ON BRIEF
_______________
Before COHEN, MEISTER and FRANKFORT, Administrative Patent
Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Michael D. Broome (the appellant) appeals from the final
rejection of claims 1 and 4-15, the only claims remaining in the
application.
We REVERSE.
Appeal No. 97-2968
Application 08/531,077

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The appellant’s invention pertains to a roll-up divider for
compartmentalizing a room. Independent claims 1 and 6 are
further illustrative of the appealed subject matter and copies
thereof may be found in the appendix to the appellant’s brief.
The references relied on by the examiner are:
Moss 4,084,683 Apr. 18, 1978
Roller 4,298,048 Nov. 3, 1981
Claims 1 and 13 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Roller.
Claims 4-12, 14 and 15 stand rejected under 35 U.S.C. § 103
as being unpatentable over Roller in view of Moss.
The examiner’s rejections are explained on pages 3-6 of the
answer. The arguments of the appellant and examiner in support
of their respective positions may be found on pages 5-11 of the
brief and pages 6-8 of the answer.
OPINION
Initially, we note that on pages 10 and 11 of the brief the
appellant raises questions as to the propriety of the examiner’s
requirement for correction of the drawing. However, under
35 U.S.C. § 134 and 37 CFR § 1.191, appeals to the Board of
Patent Appeals and Interferences are taken from the decision of
the primary examiner to reject claims. We exercise no general
Appeal No. 97-2968
Application 08/531,077

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supervisory power over the examining corps and decisions of
primary examiners to require corrections to the drawings are not
subject to our review. See Manual of Patent Examining Procedure
(MPEP) §§ 1002.02(c) and 1201 (6th ed., Rev. 3, Jul. 1997); cf.
In re Mindick, 371 F.2d 892, 894, 152 USPQ 566, 568 (CCPA 1967)
and In re Deters, 515 F.2d 1152, 1156, 185 USPQ 644, 648 (CCPA
1975). Thus, the relief sought by the appellant would have
properly been presented by a petition to the Commissioner under
37 CFR § 1.181.
We have carefully reviewed the appellant's invention as
described in the specification, the appealed claims, the prior
art applied by the examiner and the respective positions advanced
by the appellant in the brief and by the examiner in the answer.
As a consequence of this review, we will not sustain either of
the above-noted rejections.
Considering first the rejection of claims 1 and 13 based
on Roller alone, the answer states that:
What Roller does not show is the polyurethane coating
upon the belt. However, since there are other coating
compositions that are known in the art that would
perform equally as well, as also stated within the
specification of the instant application on page 7
lines 23-28, it is the position of the examiner that it
would have been a mere [matter of] design choice to
produce the belt having a polyurethane coating in order
to increase the resistance to heat transfer and damage
Appeal No. 97-2968
Application 08/531,077

“A rejection based on section 103 clearly must rest on a factual2
basis, and these facts must be interpreted without hindsight reconstruction of
the invention from the prior art. . . . [The examiner] may not . . . resort
to speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in . . . [the] . . . factual basis.” In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968)).
4
caused by the resulting frictional forces created by
the curtain and belt winding and unwinding against each
other. [Page 4.]
We will not support the examiner’s position. As stated on
page 7 of the specification the polyurethane coating on the belt
“grips to the vinyl material so as to limit slippage of the
curtain relative to belts 35" (lines 22-23). The examiner
recognizes this. Nevertheless, the examiner takes the position
that because other coating compositions are “known” in the art
that would perform “equally as well” (apparently because the
appellant further states on page 7, lines 25 and 26 of the
specification that “other coating compositions which adhere to
vinyl could be substituted”), the particular coating composition
can be dismissed as a matter of design choice. The problem is,
however, that the examiner has provided no evidence whatsoever to
support the position that there are other compositions known in
the art which would perform equally as well as polyurethane as
the examiner asserts. The appellant does not state that such2
other compositions were known in the art as the examiner appears
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to imply but, instead, more broadly states that other coating
compositions which possessed the property of “adhering” to the
vinyl could be substituted. This latter statement by appellant
can be construed to mean nothing more than if other compositions
were discovered which possessed the property of “adhering,” then
they too can be utilized.
The examiner also notes that Roller in line 44 of column 4
states that the belts may be “Vinyl Coated Polyester” and urges
that vinyl is “inclusive” of polyurethane. However, the mere
fact that, as a broad proposition, polyurethane might be
considered to be a vinyl does not provide a sufficient factual
basis for establishing the obviousness of the particular “vinyl,”
i.e., polyurethane, within the meaning of 35 U.S.C. § 103. This
being the case we will not sustain the rejection of claims 1 and
13 under 35 U.S.C. § 103 as being unpatentable over Roller.
Turning to the rejection of claims 4-12, 14 and 15 based on
the combined teachings of Roller and Moss, it is the examiner’s
position that it would have been obvious to form the rollers 58
of Roller as crowned rollers in view of the teachings of Moss “in
order to insure proper guiding and centering of the belt material
around the belt take-up member” (answer, page 5). In support of
this position the answer states that:
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The Roller reference uses a regular cylindrical shape
which may allow axial slippage of the belts with
respect to the rollers, however, Moss discloses a
‘crowned’ roller shape that aids in the correct
positioning of the flat elongated belt-type material as
stated in column 4 line 15 through column 5 line 25.
Therefore, it would have been obvious to one of
ordinary skill in the art at the time the invention was
made to modify the roller of Roller by shaping it in
the form of a ‘crowned roller’, as taught by Moss, in
order to insure proper guiding and centering of the
belt material around the belt take-up member. [Page 8.]
We will not support the examiner’s position. The mere fact
that the substitution of crowned rollers such as that taught by
Moss at 84 for the straight rollers 58 of Roller would result in
proper guiding and centering of the belt does not serve as a
proper motivation or suggestion to combine the teachings of these
references. Instead, it is the teachings of the prior art which
must provide the motivation or suggestion to combine the
references. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783-84 (Fed. Cir. 1992). Here, we find no such
suggestion. While the examiner is correct in noting that Moss
utilizes crowned rollers 84 for correcting the position of the
belt-like material 70 (i.e., ribbon) as it passes through a high
speed band printer, we must point out that this correction is
done in the context of correcting misalignment of the ribbon due
to (1) forces caused by the proximity of the paper 41 as it
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passes along a horizontal path through the printing station or
(2) vector forces of the print hammers striking against the
ribbon during the printing operation (see column 4, lines 34-43).
Absent the appellant’s own teachings, we are at a loss to
understand why one of ordinary skill in the art would have been
motivated to single out the crowned roller “shape” from the
disparate teachings of Moss and incorporate it into the device of
Roller for the purpose of facilitating winding of Roller’s belts
30 about belt take-up member 46. The examiner may not pick and
choose from any one reference only so much of it as will support
a given position, to the exclusion of other parts necessary to
the full appreciation of what such reference fairly suggests to
one of ordinary skill in the art. See Bausch & Lomb, Inc. v.
Barnes-Hind/Hydrocurve, Inc., 796 F.2d 443, 448, 230 USPQ 416,
419 (Fed. Cir. 1986), cert. denied, 484 U.S. 823 (1987) and In re
Kamm, 452 F.2d 1052, 1057, 172 USPQ 298, 301-02 (CCPA 1972).
Since we are of the opinion that the examiner has
impermissibly relied on the appellant’s own teachings in arriving
at a conclusion of obviousness, we will not sustain the rejection
of claims 4-12, 14 and 15 under 35 U.S.C. § 103 as being
unpatentable over Roller in view of Moss.
Appeal No. 97-2968
Application 08/531,077

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The examiner’s rejections of claims 1 and 4-15 under
35 U.S.C. § 103 are reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )

Appeal No. 97-2968
Application 08/531,077

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Lawrence A. Steward
Baker & Daniels
300 North Meridian Street
Suite 2700
Indianapolis, IN 46204
JMM/cam