Ex parte Hargaden et al.

Board of Patent Appeals and Interferences

Feb 26, 1998

08214013 (B.P.A.I. Feb. 26, 1998)

Application for patent filed March 16, 1994. According to1
appellant, this application is a continuation of Application
07/916,957 filed July 20, 1992, now abandoned.
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAMES F. HARGADEN
__________
Appeal No. 96-1882
Application No. 08/214,0131
__________
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 claim 5, which is the only claim remaining of record in
the application, all others having been canceled.
Appeal No. 96-1882
Application No. 08/214,013
2
The appellant's invention is directed to a portable toilet
seat. The claim before us on appeal is reproduced in an appendix
to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Barnes 654,301 Jul. 24, 1900
French patent (Cocu) 628,635 Oct. 26, 1927
THE REJECTION
Claim 5 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Cocu in view of Barnes.
The rejection is explained in the Examiner's Answer.
The opposing viewpoints of the appellant are set forth in
the Brief.
OPINION
The claim stands rejected as being obvious in view of the
combined teachings of Cocu and Barnes. The test for obviousness
is what the combined teachings of the prior art would have
suggested to one of ordinary skill in the art. See In re Keller,
642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In
establishing a prima facie case of obviousness under 35 U.S.C.
Appeal No. 96-1882
Application No. 08/214,013
3
§ 103, it is incumbent upon the examiner to provide a reason why
one of ordinary skill in the art would have been led to modify a
prior art reference or to combine reference teachings to arrive
at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973
(Bd. Pat. App. & Int. 1985). To this end, the requisite
motivation must stem from some teaching, suggestion or inference
in the prior art as a whole or from the knowledge generally
available to one of ordinary skill in the art and not from the
appellant's disclosure. See, for example, Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1052
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The claim defines in detail the structure of the appellant’s
portable toilet seat, including a body having a centrally located
aperture, first and second spaced inner support walls disposed
concentrically about the aperture and defining an unobstructed
receiving groove therebetween to accommodate the upper rim of a
bucket, and first and second sets of radial support members
extending, respectively, from the edge of the aperture to the
first inner support wall, and from the second inner support wall
to the outer edge of the body.
Cocu discloses a toilet seat made of solid wood. It is
provided on its underside with an annular groove for receiving
Appeal No. 96-1882
Application No. 08/214,013
4
the upper edge of a container. However, Cocu does not disclose
the concentrically disposed first and second support walls and
the radially disposed first and second radial support members
that are required by the claim.
The Barnes reference discloses a toilet seat that is made of
“hard rubber” for the purpose of overcoming certain problems with
wooden seats. The body has an arcuate upper surface and a
concave lower surface. To provide lateral strengthening, the
annular interior chamber is provided with a plurality of radially
oriented webs (7) which span the entire width of the chamber.
It is the examiner’s position that one of ordinary skill in
the art would have found it obvious to construct the claimed
toilet seat in view of the teachings of Cocu and Barnes. We do
not agree.
The mere fact that the prior art structure could be modified
does not make such a modification obvious unless the prior art
suggests the desirability of doing so. See In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). We fail to
perceive any teaching, suggestion or incentive in either
reference which would have led one of ordinary skill in the art
to modify the Cocu toilet seat such that (1) it had a
substantially annular rigid body with an arcuate upper surface
Appeal No. 96-1882
Application No. 08/214,013
We note that the appellant submitted with the Appeal Brief2
evidence of commercial success of his invention (Exhibits A, B
(continued...)
5
and a concave lower surface in place of the solid wooden seat,
(2) annular walls to define the unobstructed edge receiving
groove rather than a cutout groove in the underside of the solid
wood seat, and (3) first and second sets of radially oriented
support members which together span the width of the underside of
the seat except for the continuous groove. From our perspective,
the only suggestion for combining the references in the manner
proposed by the examiner is found in the hindsight accorded one
who first views the appellant’s disclosure, which is improper.
As our reviewing court stated in In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992):
It is impermissible to use the claimed invention as an
instruction manual or "template" to piece together the
teachings of the prior art so that the claimed
invention is rendered obvious. This court has
previously stated that "[o]ne cannot use hindsight
reconstruction to pick and choose among isolated
disclosures in the prior art to deprecate the claimed
invention" (citations omitted).
It is our view that the combined teachings of the two
applied references fail to establish a prima facie case of
obviousness with regard to the subject matter recited in the
claim. Therefore, we will not sustain the rejection.2
Appeal No. 96-1882
Application No. 08/214,013
(...continued)2
and C). The examiner failed even to acknowledge the presence of
this material, much less deal with it. However, since we have
not sustained the rejection, we need not consider this material.
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. 96-1882
Application No. 08/214,013
7
Barry L. Haley
Malin, Haley, DiMaggio & Crosby
One East Broward Boulevard
Suite 1609
Fort Lauderdale, FL 33301