Ex parte Ferrigan

Board of Patent Appeals and Interferences

Mar 12, 1998

08135883 (B.P.A.I. Mar. 12, 1998)

Application for patent filed October 13, 1993.1
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(2) is not binding precedent of the Board.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. 23
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte PAUL J. FERRIGAN
__________
Appeal No. 97-0746
Application 08/135,8831
__________
ON BRIEF
__________
Before McCANDLISH, Senior Administrative Patent Judge, and
MEISTER and FRANKFORT, Administrative Patent Judges.
McCANDLISH, Senior Adminstrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 6. No other claims are pending
Appeal No. 97-0746
Application 08/135,883
The recitation “and the like” and similar expressions ordinarily are2
regarded as being indefinite. See Ex parte Caldwell, 1906 Dec. Comm’r
Pats. 58 (Comm’r Pats. 1905) and Ex parte Kristensen, 10 USPQ2d 1701
(Bd. Pat. App. & Int. 1989). However, in the present case, it is
apparent that when the expression “and the like” is read in light of
appellant’s specification, it refers to other body panels.
2
in the application.
The subject matter here claimed is “[a] rack for storing
removable automobile hardtops and the like . . .” (claim 1,2
line 1). According to claim 1, the only independent claim on
appeal, the rack comprises a pair of L-shaped members each
pivotably mounted on a lower end of a vertical frame to
facilitate independent arcuate movement of forward portions of
the L-shaped members about a common axis and in substantially
vertical and parallel planes from horizontal positions to
vertical positions.
A copy of the appealed claims is appended to appellant’s
brief.
The following references are relied upon by the examiner
as evidence of anticipation and obviousness in support of his
rejections under 35 U.S.C. § 102(b) and 35 U.S.C. § 103:
Appeal No. 97-0746
Application 08/135,883
3
Plumly 3,132,875 May 12, 1964
Grant 3,230,908 Jan. 25, 1966
Pfister 4,153,264 May 08, 1979
Ferrigan et al. (Ferrigan) 5,221,066 Jun. 22, 1993
The grounds of rejection are as follows:
1. Claims 1 and 2 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Pfister.
2. Claims 1 and 2 additionally stand rejected under 35
U.S.C. § 103 as being unpatentable over “Pfister (fig. 7) in
view of Pfister (fig. 1)” (answer, page 3).
3. Claim 4 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Pfister in view of Grant.
4. Claims 1 through 6 stand rejected under 35 U.S.C. §
103 as being unpatentable over Plumly in view of Ferrigan and
Grant.
Reference is made to the examiner’s answer for details of
these rejections.
We have carefully considered the issues raised in this
appeal together with the examiner’s remarks and appellant’s
arguments. As a result, we conclude that none of the
rejections of the appealed claims is sustainable.
Appeal No. 97-0746
Application 08/135,883
4
In support of his § 102(b) rejection, the examiner relies
on the embodiment shown in Figures 1-6 of the Pfister patent.
As noted on page 4 of his answer, he reads appellant’s L-
shaped members on Pfister’s two L-shaped shaft assemblies each
having shaft elements 42 and 82. He also reads appellant’s
vertical frame on Pfister’s structural member 12 which is
described in the patentee’s specification as a “vertical frame
member” (specification, column 2, line 47). However, Pfister
discloses that his L-shaped shaft assemblies are fixed by a
clamp 44 to a
mid region of his vertical frame member 12 (see, for example,
Figure 1 of Pfister’s patent drawings), not to the lower end
of the vertical frame as required by appealed claim 1.
Accordingly, Pfister is not a proper anticipatory
reference for the subject matter of claim 1 and of claim 2,
which depends from claim 1. Compare Kloster Speedsteel AB v.
Crucible Inc., 793 F.2d 1565, 1571, 230 USPQ 81, 84 (Fed.
Cir. 1986) (The absence from the reference of any element of a
claim negates anticipation of that claim by the applied
Appeal No. 97-0746
Application 08/135,883
5
reference). We therefore must reverse the § 102 (b) rejection
of claims 1 and 2.
With regard to the examiner’s § 103 rejection of claims 1
and 2 based on Figures 1 and 7 of the Pfister patent, the
examiner is understood to conclude that it would have been
obvious to replace Pfister’s one piece cross shaft 142 with a
two piece assembly corresponding to the patentee’s embodiment
of Figure 1 “to enable independent adjustment” (answer, page
5). Pfister’s separate shaft assemblies (42, 82), however, are
not employed to provide “independent adjustment” as suggested
by the examiner. Instead, these shaft assemblies are separable
to enable the wheel assemblies 40L and 40R to be collapsed for
storage in the manner shown in Figure 5 of Pfister’s drawings.
In any event, even if Pfister’s embodiment of Figure 7 were
modified in the
manner proposed by the examiner, the modified structure still
would not meet the terms of claim 1 because in both of the
patentee’s embodiments, the cross shaft structure is fixed to
the mid region of the vertical frame 12, not to the lower end
thereof as required by claim 1.
Appeal No. 97-0746
Application 08/135,883
6
In the final analysis, the only way the examiner could
have arrived at his conclusion of obviousness in light of the
Pfister patent is through hindsight based on appellant’s
teachings. Hindsight analysis, however, is clearly improper.
In re Deminski, 796 F.2d 436, 443, 230 USPQ 313, 316 (Fed.
Cir. 1986). Accordingly, we must reverse the § 103 rejection
of claims 1 and 2 based on the Pfister patent.
With regard to the § 103 rejection of claim 4 based on
the combined teachings of Pfister and Grant, Grant is relied
on by the examiner for a teaching of a pin and slot
arrangement to facilitate limited relative rotation between
two telescoping tubular members. This rejection also must be
reversed inasmuch as Grant does not rectify the foregoing
deficiencies of Pfister.
With regard to the rejection of the appealed claims based
on the combined teachings of Plumly, Ferrigan and Grant, we
cannot
Appeal No. 97-0746
Application 08/135,883
7
agree with the examiner’s conclusion that the teachings of
Ferrigan would have made it obvious to replace Plumly’s U-
shaped frame member 12 with “independent wheel frames with
wheel [sic, wheels] attached as claimed to facilitate storage”
(answer, page 4).
In the first place, Plumly expressly discloses in column
3, lines 4-10, that his handle and post unit 42, 44 is
pivotable to a collapsed position over frame 12 for storing
the dolly. Accordingly, there would be no reason to replace
Plumly’s frame 12 with independently pivotable members for
accomplishing a purpose already achieved with the patentee’s
structure. Furthermore, to select Ferrigan’s teaching of
providing independently pivotable frame members, but not
Ferrigan’s teaching of pivoting the frame members about
angularly intersecting axes, and then to combine that selected
teaching with Plumly’s teachings in such a way to pivot the
members about a common axis amounts to a piecemeal
reconstruction of appellant’s claimed invention based on the
impermissible hindsighted benefit of appellant’s own
disclosure. For these reasons we must reverse the 103
rejection of claims 1 through 6 based on the combined
Appeal No. 97-0746
Application 08/135,883
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teachings of Plumly, Ferrigan and Grant.
The examiner’s decision rejecting the appealed claims is
reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CHARLES E. FRANKFORT )
Administrative Patent Judge )
Appeal No. 97-0746
Application 08/135,883
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Appeal No. 97-0746
Application 08/135,883
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