Ex Parte Graute et al

Board of Patent Appeals and Interferences

Sep 20, 2010

11120677 (B.P.A.I. Sep. 20, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte BERNHARD GRAUTE,
ECKHARD HELLMER, and JOERG KEMPE
______________

Appeal 2009-012889
Application 11/120,677
Technology Center 1700
_______________

Before CHARLES F. WARREN, PETER F. KRATZ, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL1
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1-9 in the Office Action mailed August 19,
2008, and refusing to allow claims 7 and 8 as amended in the Amendment

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012889
Application 11/120,677
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filed December 8, 2008 (Amendment) which was entered in the Advisory
Action mailed December 15, 2008. The Amendment canceled claims 4 and
5 leaving claims 1-3 and 6-9 for consideration. 35 U.S.C. §§ 6 and 134(a)
(2002); 37 C.F.R. § 41.31(a) (2008).
We reverse the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a system comprising a
laundry process machine and a pedestal, and is representative of the claims
on appeal:
1. A system, comprising:
a laundry processing machine comprising a bottom panel of a stamped
predetermined three-dimensional configuration;
a pedestal comprising a bottom panel of a stamped three-dimensional
configuration substantially similar to the configuration of the bottom panel
of the laundry processing machine.
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1-3 and 6-9 over
Langer (US 5,957,557) in view of Ewert (EP 0 943 721 A1),2 further in view
of Fahrion (US 5,667,065). App. Br. 3; Ans. 4.
Opinion
We agree with Appellants that the Examiner erred in concluding that
the teachings of Langer, Ewert, and Fahrion rendered obvious the appealed
claims. App. Br. 4-5; Reply Br. 3-4. The Examiner submits that the
teachings of the references would have led one of ordinary skill in the art to

2 We have not considered the translation of Ewert made of record in the
Communication mailed July 7, 2009 (Communication). The record shows
that the Examiner does not rely on this document with respect to Ewert.
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Application 11/120,677
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combine the same, and thence to replace legs 56 of Langer’s pedestal pallet
54 with Fahrion’s support pallet 12, for a cardboard wall box arrangement,
as the bottom panel of pedestal pallet 54, and to use Fahrion’s cover pallet
16 as a substantially similar or identical bottom panel under bottom panel 4
of Ewert’s washing machine as used with Langer’s washing machine, so that
the geometrically similar pallets enhance stacking of Langer’s washing
machine on top of modified pallet 54 in the manner taught by Fahrion,
which would lower production costs. Ans. 4-8, citing Langer, e.g., Fig. 9;
Ewert, e.g., Fig. 1; and Langer, e.g., Fig. 1.
We determine that, as Appellants contend, one of ordinary skill in the
art would not have been motivated by the combined teachings of the
references to make the modifications in Langer’s pallet and washing
machine as the Examiner contends, because Langer does teach using legs to
stack the appliance units. App. Br. 4-5; Reply Br. 3-4. Indeed, the
Examiner points to no suggestion in Langer to use a pedestal with a
geometrically similar bottom panel to the laundry machine bottom panel to
stack and hold the appliance units together, and points to no suggestion in
Fahrion that the geometrically similar pallets disclosed therein can be used
for Langer’s purposes. See, e.g., KSR Int'l. Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (“[I]t can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine elements
in the way the claimed new invention does.”); In re Rouffet, 149 F.3d 1350,
1358 (Fed. Cir. 1998) (“hindsight” is inferred when the specific
understanding or principal within the knowledge of one of ordinary skill in
the art leading to the modification of the prior art in order to arrive at
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Application 11/120,677
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appellant’s claimed invention has not been explained); In re Fritch, 972 F.2d
1260, 1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed.
Cir. 1984) (“The mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious unless
the prior art suggested the desirability of the modification.”).
Accordingly, in the absence of a case of obviousness, we reverse the
ground of rejection of claims 1-3 and 6-9 under 35 U.S.C. § 103(a) over the
combination of Langer, Ewert, and Fahrion.
The Primary Examiner’s decision is reversed.

REVERSED

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