Ex parte GARFINKLE

Board of Patent Appeals and Interferences

Feb 27, 1998

08369712 (B.P.A.I. Feb. 27, 1998)

Application for patent filed January 6, 1995. According1
to appellant, this application is a continuation-in-part of
Application 08/125,522 filed September 22, 1993, now U.S. Patent
No. 5,402,897 issued April 4, 1995.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte BENJAMIN L. GARFINKLE
__________
Appeal No. 97-1085
Application 08/369,7121
__________
ON BRIEF
__________
Before ABRAMS, FRANKFORT and STAAB, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner finally
rejecting claims 1 through 9, which constitute all of the claims
of record in the application.
Appeal No. 97-1085
Application 08/369,712
2
The appellant's invention is directed to an article support
and display device. The subject matter before us on appeal is
illustrated by reference to claim 1, a copy of which can be found
in an appendix to the Brief on Appeal.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Fast et al. (Fast ‘189) 5,123,189 Jun. 23, 1992
Fast et al. (Fast ‘766) 5,235,766 Aug. 17, 1993
THE REJECTION
Claims 1 through 9 stand rejected under 35 U.S.C. § 103 as
being unpatentable over either of the Fast patents.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Appeal Brief.
OPINION
In reaching our decision on the issues raised in this
appeal, we have carefully assessed the claims, the prior art
applied against the claims, and the respective views of the
Appeal No. 97-1085
Application 08/369,712
3
examiner and the appellant as set forth in the Examiner’s Answer
and the Appeal Brief.
The claims all stand rejected 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)).
Independent claim 1 is directed to an article support and
display device for use with a support fixture, which has two
components. The first is “at least two spaced apart merchandise
pegs” supported at their proximal ends by the support fixture and
having free distal ends to receive merchandise. In view of the
explanation of the invention in the appellant’s disclosure, we
have interpreted “spaced apart” to mean spaced laterally apart,
rather than vertically. The second component is a planar sheet
material “having a length greater than the distance between said
spaced apart merchandise pegs and a width proximate the distance
between said support fixture and the distal ends of said
merchandise pegs.” The planar sheet is provided at its proximate
Appeal No. 97-1085
Application 08/369,712
4
end with a means for attaching it to the support fixture, and at
its distal end with a tag molding for receiving and displaying
product information.
It is the examiner’s view that the subject matter recited in
the claims would have been obvious in view of the teachings of
either of the Fast references, recognizing that “[t]he width of
the baffle is considered as an obvious matter of engineering
choice” (Answer, page 3). The appellant argues that the claim
requires two spaced apart merchandise pegs, which is not present
in either of the applied references, and that the planar sheet
material must have a particular relationship with respect to the
pegs, which also is not taught by the applied references.
We agree with the appellant. Neither Fast reference is
concerned with the problem addressed by the appellant, that is,
the movement of air in the space adjacent to the claimed device.
In both of the references, a single merchandise peg is disclosed,
with a single sheet of planar material associated therewith.
Thus, it is our view that one of ordinary skill in the art would
not have been taught by either Fast reference to utilize a single
planar sheet with a plurality of merchandise pegs. Furthermore,
while the planar sheets shown in these references appear to meet
the width limitation of claim 1, they certainly do not meet the
Appeal No. 97-1085
Application 08/369,712
5
length limitation, for that requires the presence of more than
one merchandise peg. From our perspective, the only suggestion
for modifying the Fast systems in such a manner as to meet the
terms of claim 1 is found in the luxury of the hindsight accorded
one who first viewed the appellant’s disclosure. It is well
settled that the teachings of the prior art must suggest making
the modification which the examiner proposes. See In re Fritch,
972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
It is our conclusion that the teachings of either of the two
applied Fast references fail to establish a prima facie case of
obvious with respect to the subject matter of independent claim 1
or, it follows, of dependent claims 2 through 6.
Independent claim 7 contains the same two limitations
discussed above, and thus we reach the same result with respect
to claims 7 through 9.
The rejection is not sustained.
Appeal No. 97-1085
Application 08/369,712
6
The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge)
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge)
Appeal No. 97-1085
Application 08/369,712
7
Malcolm B. Wittenberg
Crosby, Heafey, Roach & May
1999 Harrison Street
P.O. Box 2084
Oakland, CA 94604-2084