Ex parte DESUTTER

Board of Patent Appeals and Interferences

May 28, 1998

08248307 (B.P.A.I. May. 28, 1998)

Application for patent filed May 24, 1994. According to appellant,1
this application is a continuation-in-part of Application 08/027,898, filed
March 8, 1993 (abandoned).
1
Paper No. 16
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(2) is not binding precedent of the Board.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 MARGARET J. DESUTTER
______________
Appeal No. 97-0520
Application 08/248,3071
_______________
ON BRIEF
_______________
Before MCCANDLISH, Senior Administrative Patent Judge, and
MEISTER and ABRAMS, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Margaret J. DeSutter (the appellant) appeals from the final
rejection of claims 1-9 and 15-22. Claim 10, the only other
claim remaining in the application, stands withdrawn from further
Appeal No. 97-0520
Application 08/248,307
Both the appellant and the examiner agree that the amendment filed on2
February 23, 1996 (Paper No. 8), which added claims 24 and 25, has not been
entered. We observe, however, that the clerk inadvertently entered this
amendment.
2
consideration by the examiner under the provisions of 37 CFR
§ 1.142(b) as being directed to a nonelected species.2
We REVERSE.
The appellant’s invention pertains to (1) a direction-
indicating holder for a sign which is used to direct people to
a location associated with information on the sign and (2) to a
method of providing a directional indication to people that
utilizes such a holder and sign. Independent claims 1 and 22 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:
Carmack 2,834,133 May 13, 1958
Nahon 3,696,532 Oct. 10, 1972
Bevan 3,826,026 July 30, 1974
The claims on appeal stand rejected under 35 U.S.C. § 103
in the following manner:
(1) claims 1-4, 6, 7, 9, 15-18 and 20-22 as being
unpatentable over Carmack in view of Bevan and
(2) claims 1, 5, 7, 8, 15 and 19 as being unpatentable over
Carmack in view of Nahon.
Appeal No. 97-0520
Application 08/248,307
The appellant’s brief is defective in that there is no grouping of the3
claims as expressly required by 37 CFR § 1.192(c)(7).
3
The examiner’s rejections are explained on pages 3-5 of the
answer. The arguments of the appellant and examiner in support
of their respective positions may be found on pages 5-13 of the
brief and pages 5 and 6 of the answer.3
OPINION
Having carefully considered the respective positions
advanced by the appellant in the brief and the examiner in the
answer, it is our conclusion that neither of the above-noted
rejections is sustainable. In rejecting claims under 35 U.S.C.
103 the examiner bears the initial burden of presenting a prima
facie case of obviousness. In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993); In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that
burden is met does the burden of coming forward with evidence or
argument shift to the applicant. Id. If the examiner fails to
establish a prima facie case, the rejection is improper and will
be overturned. In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988).
Appeal No. 97-0520
Application 08/248,307
4
Here, the examiner proposes to modify the sign of Carmack
in view of the teachings of either Bevan (rejection (1)) or Nahon
(rejection (2)). The primary reference to Carmack does not teach
a direction-indicating holder for an informational sign. Instead,
Carmack teaches a highway sign per se that has two converging
side edges which indicates a direction. In an attempt to over-
come this deficiency the examiner has relied on the teachings of
Bevan and Nahon and, while these two references teach holders for
signs, neither teach a holder that has a shape which indicates a
direction as expressly required by independent claims 1, 7, 15
and 22. That is, Bevan teaches a rectangular holder for a sign
that is intended to be mounted on the door of an automobile and
Nahon teaches a rectangular holder for memos.
In essence, what the examiner is proposing to do is to
single out the concept of a holder for a sign from the teachings
of Bevan and Nahon and incorporate it into the primary reference
Carmack in such a manner that these rectangular holders are
reshaped to included converging side edges that indicates a
direction, even though all that Carmack teaches is a highway sign
per se that has two converging side edges which indicates a
direction. There is simply nothing in the combined teachings of
Carmack and either Bevan or Nahon which would suggest such a
Appeal No. 97-0520
Application 08/248,307
5
modification. 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). While the examiner
opines that such a modification would provide a means for the
changing the information on the sign of Carmack, the mere fact
that this is the case 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).
From our perspective, the examiner has impermissibly relied
upon the appellant’s own teachings in arriving at a conclusion of
obviousness. As the court in Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988)
Appeal No. 97-0520
Application 08/248,307
6
stated, "it is impermissible to use the claims as a frame and the
prior art references as a mosaic to piece together a facsimile of
the claimed invention."
The examiner’s rejections of the appealed claims under
35 U.S.C. § 103 are reversed.
REVERSED
HARRISON E. MCCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
JAMES M. MEISTER ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
NEAL E. ABRAMS )
Administrative Patent Judge )

Appeal No. 97-0520
Application 08/248,307
7
ARMSTRONG, TEASDALE, SCHLAFLY & DAVIS
One Metropolitan Square
St. Louis, MO 63102-2740
JMM/cam