Ex parte Kelly

Board of Patent Appeals and Interferences

Aug 25, 1998

08310493 (B.P.A.I. Aug. 25, 1998)

Application for patent filed September 22, 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not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DANIEL E. KELLY
_____________
Appeal No. 97-0374
Application 08/310,4931
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge and
FRANKFORT and CRAWFORD, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 6 and 7. Claim 1, the only other claim
remaining in the application, stands allowed. Claims 2
through 5 have been canceled.
Appeal No. 97-0374
Application 08/310,493
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Appellant’s invention relates to a display rack for
bottles and the like. Claim 6 is representative of the
subject matter on appeal and a copy of that claim, as it
appears in the appendix to appellant’s brief, is attached to
this decision.
The single prior art reference of record relied upon by
the examiner as evidence of obviousness of the claimed subject
matter is:
Murphy 3,964,810 Jun. 22, 1976
Claims 6 and 7 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Murphy. As indicated on page 2 of the
final rejection, it is the examiner’s position that
Murphy shows all of the claimed invention except for
the shape of the pillars 45 and posts C. To merely
modify the shape is generally considered to be
obvious to one with ordinary skill in the art, as it
would be here, to make the pillars and posts of
Murphy triang-ular in shape. Note, lines 4-6 in
column 7 which indicate stackability.
Reference is made to the final rejection (Paper no. 4,
mailed February 23, 1996) and to the examiner's answer (Paper
Appeal No. 97-0374
Application 08/310,493
3
No. 9, mailed August 5, 1996) for the examiner's reasoning in
support of the above-noted rejection and to appellant’s brief
(Paper No. 8, filed May 8, 1996) for appellant’s arguments
thereagainst.
OPINION
Our evaluation of the obviousness issues raised in this
appeal has included a careful assessment of appellant’s
specification and claims, the applied prior art reference, and
the respective positions advanced by appellant and the
examiner. As a consequence of our review, we will sustain
the examiner's rejection of the appealed claims under 35
U.S.C. § 103. Our reasoning follows.
Appellant’s arguments herein center on the fact that the
examiner has taken the position that it would have been an
obvious matter of design choice to alter the shape of the
Appeal No. 97-0374
Application 08/310,493
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recesses/sockets (50) and the spacer columns or posts (25-27)
of Murphy to be of a triangular configuration, without any
express reason or motivation in the cited Murphy reference for
such a modification. In appellant’s view, the examiner has
not
provided the factual predicate necessary to establish a prima
facie case of obviousness. We do not agree.
In considering the limitation regarding the triangular
shape of the recesses in the lower end of the pillars and of
the posts in appellant’s claim 6, the examiner has noted that
appellant’s specification merely describes these elements of
the invention as “triangular” without any reason given for
this particular shape or any indication that such a shape
solves a particular problem associated with the display rack
therein. Given the lack in appellant’s own disclosure of any
criticality concerning this specific shape of the recesses and
the posts, the examiner has concluded that making the shape of
the recess in the lower end of the pillars and of the posts in
Appeal No. 97-0374
Application 08/310,493
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Murphy triangular would have been an obvious matter of design
choice to one of ordinary skill in the art. In this regard,
we must agree with the examiner.
The triangular shape of the recesses and the posts in
appellant’s invention is apparently merely a preferred shape
used instead of the square shape of those same items in
Murphy, but, like the examiner, it is our opinion that a
triangular shape
would have been an obvious matter of design choice to one of
ordinary skill in the art given the fact that appellant’s
specification provides no indication that the shape in
question
solves any stated problem or provides any unexpected result.
Thus, we consider that the recitations regarding the shape of
the
recesses in the ends of the pillars and of the posts in the
claims on appeal do not serve to patentably distinguish the
Appeal No. 97-0374
Application 08/310,493
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claimed invention over the display rack structure suggested by
the applied prior art. See In re Kuhle, 526 F.2d 553, 555,
188 USPQ 7, 9 (CCPA 1975). We further consider that this
position is bolstered by the disclosure in Murphy (column 3,
lines 18-30) wherein it is expressly noted that neither the
specific shape nor the specific dimensions of the posts
therein “are critical to the invention,” thus suggesting to
those of ordinary skill in the art that other configurations
of the posts, and by inference, the recesses which receive
those posts, would be acceptable and well within the skill of
the art. The only restriction on the shape of the posts in
Murphy is that they must be of uniform cross section
throughout so as to facilitate their formation by a continuous
extrusion process. A triangular shape, as well as a
square or a round shape would clearly permit such a formation
process.
Based on the foregoing, the examiner's rejection of
claims 6 and 7 under 35 U.S.C. § 103 relying on the teachings
Appeal No. 97-0374
Application 08/310,493
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Murphy is sustained.
While we have fully considered the arguments advanced by
appellant in the brief, we are not convinced thereby of any
error in the examiner's position. Like the examiner, we note
that appellant has not expressly indicated in the brief exactly
why it would not have been obvious to the ordinarily skilled
artisan to modify Murphy in the manner posited by the examiner
in the rejection under 35 U.S.C. § 103. Instead, appellant has
merely made the broad assertion that the examiner has not
provided a factual basis to support a prima facie case of
obviousness. As indicated above, we do not agree with this
position.
For the reasons stated in the examiner's answer, as
amplified above, the decision of the examiner rejecting appealed
claims 6 and 7 under 35 U.S.C. § 103 is affirmed.
No time period for taking any subsequent action in
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Application 08/310,493
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connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS
AND
Administrative Patent Judge )
INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 97-0374
Application 08/310,493
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Appeal No. 97-0374
Application 08/310,493
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