Ex parte Byers

Board of Patent Appeals and Interferences

Jun 29, 1998

08370867 (B.P.A.I. Jun. 29, 1998)

Application for patent filed January 10, 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(2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THOMAS L. BYERS

_____________
Appeal No. 97-3000
Application 08/370,8671
______________
ON BRIEF
_______________
Before STONER, Chief Administrative Patent Judge, and COHEN and
FRANKFORT, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 97-3000
Application 08/370,867
Claim 1 has been amended (subsequent to the final2
rejection) in a paper filed December 13, 1996 (Paper No. 7). As
indicated in the advisory action mailed January 10, 1997 (Paper
No. 8) the rejection of claims 1 through 8 under 35 U.S.C. § 112,
second paragraph, in the final rejection has been overcome by the
above-noted amendment.
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 15, all of the claims pending in
this application.2
Appellant's invention relates to a frame for pictorial
matter, such as hobby cards and photographs. As best seen in
Figures 3 through 9 and 14, the frame includes front and back
viewing panels (16) of clear plastic formed as window modules
(18) and (20) respectively, top and bottom edge members (50), and
opposite side edge members (90). Each of the top, bottom and
opposite side edge members includes a channel (e.g., 78, 104)
along its inner side for closely receiving therein respective
top, bottom, and opposite side areas of the window modules (18,
20). When assembled together with the viewing panels, the ends
of the top and bottom edge members are secured to the ends of the
opposite side edge members via securing posts (68, 70) on the top
Appeal No. 97-3000
Application 08/370,867
3
and bottom edge members which are received in holes (112, 114) at
the ends of the side edge members. Claim 1 is representative of
the subject matter on appeal and a copy of that claim is attached
to this decision.
The prior art references of record relied upon by the
examiner as evidence of obviousness of the claimed subject matter
are:
Waller et al. (Waller) 2,823,472 Feb. 18, 1958
Abatiell 3,426,913 Feb. 11, 1969
Lyman 4,271,618 June 9, 1981
Astolfi 4,989,353 Feb. 5, 1991
Claims 1 through 4, 9, 12, 14 and 15 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Lyman.
Claims 5 through 7 and 10 stand rejected under 35
U.S.C. § 103 as being unpatentable over Lyman in view of Astolfi.
Claims 8 and 11 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Lyman in view of Waller.
Appeal No. 97-3000
Application 08/370,867
4
Claim 13 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Lyman in view of Abatiell.
Reference is made to the examiner's answer (Paper
No. 11, mailed March 11, 1997) for the examiner's reasoning in
support of the above-noted rejections and to appellant's brief
(Paper No. 10, filed February 11, 1997) for appellant's arguments
thereagainst.
OPINION
Our evaluation of the obviousness issues raised in this
appeal has included a careful assessment of appellant's
specification and claims, the applied prior art references, and
the respective positions advanced by appellant and the examiner.
As a consequence of our review, we find that we are unable to
sustain any of the examiner's rejections of the appealed claims.
Our reasoning follows.
Appeal No. 97-3000
Application 08/370,867
5
In rejecting claims 1 through 4, 9, 12, 14 and 15 under
35 U.S.C. § 103 relying on Lyman, the examiner has recognized
that Lyman fails to disclose, teach or suggest a photographic
display or frame for pictorial matter which includes "separate
left and right edge members defining channels or top and bottom
edge members defining channels receiving the left, right, top and
bottom sides of the panels" (answer, page 3). To address these
differences between the applied prior art and the claimed subject
matter, the examiner has urged that
[i]t would have been obvious to one having
ordinary skill in the art at the time the
invention was made to integrate the side, top
and bottom edge members into the front and
back viewing panels, since it has been held
that omission of an element and its function
in a combination where the remaining elements
perform the same functions as before involves
only routine skill in the art.
It is apparent to us from the examiner's foregoing
statement of "obviousness" that the examiner has misapplied the
above-noted precept of patent law concerning elimination of an
element and its function (set forth in cases such as In re
Larson, 340 F.2d 965, 969, 144 USPQ 347, 350 (CCPA 1965) and In
Appeal No. 97-3000
Application 08/370,867
6
re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975)) by
attempting to apply this legal precedent to the claimed invention
instead of to the prior art photographic display of Lyman. It is
well settled that for the Patent and Trademark Office (PTO) to
establish a case for obviousness in the first instance, it is
necessary for the examiner to ascertain whether or not the
reference teachings of the applied prior art would appear to be
sufficient for one of ordinary skill in the relevant art having
the references before him to make the proposed substitution,
combination, or other modification. See, e.g., In re Lalu,
747 F.2d 703, 705, 223 USPQ 1257, 1258 (Fed. Cir. 1984). Stated
another way, obviousness can only be established by combining or
modifying the teachings of the prior art to produce the claimed
invention where there is some teaching, suggestion, or motivation
to do so found either in the references themselves or in the
knowledge generally available to one of ordinary skill in the
art at the time of appellant's invention. See, e.g., In re Fine,
837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988);
Ashland Oil, Inc. v. Delta Resins and Refractories, Inc.,
Appeal No. 97-3000
Application 08/370,867
7
776 F.2d 281, 297 n.24, 227 USPQ 657, 667 n.24 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984).
In the present case it is clear to us that the applied
prior art patent to Lyman has no teachings that are relevant to,
or in any way establish the obviousness of, the left and right
side edge members, the top and bottom edge members, or the means
for securing the ends of the top and bottom edge members to the
ends of the respective left and right side edge members, as set
forth in appellant's independent claim 1 on appeal, or the same
structure defined in somewhat different language in independent
claims 9 and 12 on appeal. Given this determination, it follows
that we will not sustain the examiner's rejection of claims 1
through 4, 9, 12, 14 and 15 under 35 U.S.C. § 103 as being
unpatentable over Lyman.
A review of the patents to Astolfi, Waller and
Abatiell, applied by the examiner against dependent claims 5
Appeal No. 97-3000
Application 08/370,867
8
through 8, 10, 11 and 13 on appeal, reveals nothing which
would supply that which we have noted above to be lacking in
the basic teachings of the Lyman reference. Accordingly, the
rejections of these claims under 35 U.S.C. § 103 will likewise
not be sustained.
To summarize:
We have not sustained any of the examiner's rejections
of the appealed claims under 35 U.S.C. § 103, and the decision of
the examiner is, therefore, reversed.
REVERSED
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
Appeal No. 97-3000
Application 08/370,867
9
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 97-3000
Application 08/370,867
10
Robert M. Hessin
Dougherty Hessin Beavers & Gilbert
Two Leadership Square
211 North Robinson
Suite 1400
Oklahoma City, OK 73102
Appeal No. 97-3000
Application 08/370,867
- A1 -
APPENDIX
1. A frame for pictorial matter, comprising:
front and back viewing panels each formed of clear
plastic with inside and outside surfaces, and being interlocked
together to have opposite left and right sides, and top and
bottom sides forming an outer periphery, said viewing panel being
capable of containing said pictorial matter therebetween;
left and right side edge members each formed to have a
smooth outer sided, front side, rear side and inner side while
defining a channel along the inner side, said left and right
sides of the viewing panel being closely contained within the
respective channels of said left and right side edge members;
top and bottom edge members each formed to have a
smooth outer side, front side, rear side and inner side while
defining a channel along the inner side, said top and bottom
sides of the viewing panel being closely contained within the
respective channels of said top and bottom edge members; and
means for securing the ends of top and bottom edge
members to the ends of respective left and right side edge
members to form the corners of a rectangular frame.