Ex parte FLIS

Board of Patent Appeals and Interferences

Jul 24, 1998

08342759 (B.P.A.I. Jul. 24, 1998)

Application for patent filed November 21, 1994.1
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not binding precedent of the Board.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. 15
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ALBERT J. FLIS
__________
Appeal No. 97-3551
Application No. 08/342,7591
__________
ON BRIEF
__________
Before ABRAMS, FRANKFORT and CRAWFORD, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1-7, which constitute all of the
claims of record in the application.
Appeal No. 97-3551
Application No. 08/342,759
2
Appeal No. 97-3551
Application No. 08/342,759
3
The appellant's invention is directed to a golf club
holder.
The subject matter before us on appeal is illustrated by
reference to claim 1, which has been reproduced in an appendix
to the Brief.
THE REFERENCES
The reference relied upon by the examiner to support the
final rejection is:
Very 4,746,014 May
24, 1988
An additional reference relied upon by this panel of the
Board is:
Jacoby 4,029,136 Jun. 14,
1977
THE EXAMINER’S REJECTION
Claims 1-7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Very.
The rejection is explained in the Examiner's Answer.
Appeal No. 97-3551
Application No. 08/342,759
4
The opposing viewpoints of the appellant are set forth in
the Brief.
Appeal No. 97-3551
Application No. 08/342,759
5
OPINION
The Examiner’s Rejection
In rejections under 35 U.S.C. § 103, the examiner bears
the initial burden of presenting a prima facie case of
obviousness (see In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d
1955, 1956 (Fed. Cir. 1993)), which is established when the
teachings of the prior art itself would appear to have
suggested the claimed subject matter to one of ordinary skill
in the art (see In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529,
1531 (Fed. Cir. 1993)).
All of the claims before us require, inter alia, inner
and outer telescoping tubes and a spring disposed around the
inner tube, and all but claim 5 further include at least two
stops engaged by the spring. In formulating the rejection,
the examiner has combined the teachings of the two embodiments
disclosed in Very. This reference was discussed in the
appellant’s specification. It is directed to the same problem
as the appellant’s invention, and the manner in which it
solves the problem has much in common with the appellant’s
invention. In Very’s first embodiment (Figures 1 and 2), an
Appeal No. 97-3551
Application No. 08/342,759
6
inner elongated cylinder (1) is slidably received in an outer
elongated cylinder (2), which is of “slightly greater”
diameter (column 3, lines 41 and 42). Both cylinders are
closed at their lower ends by a bottom wall (5 & 10). A coil
spring (3) is interposed between the two bottom walls, biasing
them apart, with the strength of the spring being such that
when a golf club is placed inside the inner tube, it
telescopes downward within the outer one. When the golf club
is removed, the inner tube is moved upwardly by the spring,
with the extent of movement being limited by a cord (4).
Very’s second embodiment (Figures 3 and 4) utilizes only one
tube, which is slidable up and down with respect to the golf
bag divider plates. The tube is provided with an annular stop
ring (4), and a coil spring (3) is wrapped around the tube at
a point between the lower divider plate (9) and the stop ring,
biasing the tube upwardly into contact with the upper divider
plate (8) when no club is present. When a club is placed in
the tube, it moves downwardly.
The examiner’s position is that these two teachings would
have suggested to one of ordinary skill in the art that the
spring and cord interposed between the two bottom walls in the
Appeal No. 97-3551
Application No. 08/342,759
7
first embodiment of the Very invention be replaced by a coil
spring installed about the inner elongated tube, “motivated by
the teaching of being able to shift the location of the spring
without a change in function” (Answer, page 4). We do not
agree. The mere fact that the prior art structure could be
modified does not make such a modification obvious absent
suggestion of the desirability of doing so. See In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). Very
discloses two different ways of solving the same problem. The
fact that all of the elements needed to construct the
appellant’s claimed invention can be found in the two Very
embodiments is not enough to establish a prima facie case of
obviousness. There must be some reason why one of ordinary
skill in the art would have selected certain elements from
each embodiment and combined them in such a manner as to meet
the terms of the claims on appeal. In our opinion, this is
where the rejection fails. We cannot perceive any teaching,
suggestion or incentive which would have led one of ordinary
skill in the art to combine the teachings in the manner
proposed by the examiner, that is, to substitute a spring
Appeal No. 97-3551
Application No. 08/342,759
This patent was cited by the appellant on page 2 of the2
appellant’s specification.
8
wrapped around the inner tube for the one beneath it and, in
the case of claims 1-4, 6 and 7, to add stops on the
cylinders, other than the hindsight accorded one who first
viewed the appellant’s disclosure. This, of course, is
improper. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1784 (Fed. Cir. 1992).
The rejection of claims 1-7 as being unpatentable over
Very is not sustained.
New Rejection By The Board
Pursuant to our authority under 35 CFR § 1.196(b), we
enter the following new rejection:
Claim 5 is rejected under 35 U.S.C. § 103 as being
unpatentable over Very in view of Jacoby.2
This claim merely requires the presence of a first
elongated cylinder, a second elongated cylinder received in
the first, and a spring disposed about the second one. The
embodiment of Very shown in Figures 3 and 4 discloses the
second cylinder and the spring. What is lacking is the first
cylinder within which the second one is “receivable.”
Appeal No. 97-3551
Application No. 08/342,759
9
Very teaches that his invention is adapted for
installation in a golf bag (column 4, lines 33-35). We take
official notice of the fact that golf club bags in the shape
of elongated cylindrical tubes were well known in the art at
the time of the appellant’s invention. In this regard, we
point out that Jacoby discloses in Figure 1 a golf club
carrier having a cylindrical body “like a conventional golf
bag” (column 1, lines 52 and 53). Interestingly, the Jacoby
device contains spring-biased elongated cylindrical tubes for
holding golf clubs, the purpose of which is the same as the
inventions of both Very and the appellant.
In view of the foregoing, it is our opinion that it would
have been obvious to one of ordinary skill in the art to
install the golf club holder disclosed in Figures 3 and 4 of
Very in a cylindrical golf bag. In such case, the “first
elongated cylinder” recited in claim 5 reads on the golf bag,
and the second elongated cylinder which is “receivable” in the
first reads on the tubes of Very which are installed in the
golf bag, and around which the springs are positioned. Thus,
a prima facie case of obviousness is established with respect
to the subject matter of claim 5.
Appeal No. 97-3551
Application No. 08/342,759
10
SUMMARY
The standing rejection of claims 1-7 is not sustained and
the examiner’s decision therefore is reversed.
A new rejection of claim 5 is entered by the Board.
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)).
37 CFR
§ 1.196(b) provides that, “A new ground of rejection shall not
be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 97-3551
Application No. 08/342,759
11
Appeal No. 97-3551
Application No. 08/342,759
12
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED, 1.196(b)
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge)
Appeal No. 97-3551
Application No. 08/342,759
13
Fay, Sharpe, Beall, Fagan, Minnich and McKee
1100 Superior Avenue
Suite 700
Cleveland, OH 44114