Ex parte Lang et al.

Board of Patent Appeals and Interferences

Feb 19, 1998

07945430 (B.P.A.I. Feb. 19, 1998)

Application for patent filed September 14, 1992. 1
According to appellants, the application is a continuation-
in-part of Application 07/705,560, filed May 24, 1991, abandoned;
which is a continuation-in-part of Application 07/613,285, filed
November 15, 1990, 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(2) is not binding precedent of the Board.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. 33
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte FRANK J. LANG
and
ROBERT W. CHADFIELD
_____________
Appeal No. 96-3035
Application 07/945,4301
______________
HEARD: February 4, 1998
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and COHEN
and Staab, Administrative Patent Judges.
Appeal No. 96-3035
Application 07/945,430

Our understanding of the French and German documents is2
derived from a reading of translations thereof prepared in the
United States Patent and Trademark Office. Copies of these
translations are appended to this opinion.
2
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claim 8,
the sole claim remaining in the application.
Appellants’ invention pertains to a dispensing imple-
ment for applying semi-solid material by rubbing contact. An
understanding of the invention can be derived from a reading of
claim 8, with a copy thereof appearing in “APPENDIX A” appended
to appellants’ brief.
As evidence of obviousness, the examiner has applied
the documents listed below:2
Cardia 387,213 Sep. 12, 1990
(European Patent Application)
von Schuckmann 3,118,893 Nov. 11, 1982
(Germany)
Goncalves 2,556,941 Jun. 28, 1985
(France)
The following rejection is before us for review.
Appeal No. 96-3035
Application 07/945,430

In our evaluation of the applied teachings, we have3
considered all of the disclosure of each teaching for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968).
3
Claim 8 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Goncalves (French document) in view of Cardia
(European document) and von Schuckmann (German document).
The full text of the examiner's rejection and response
to the argument presented by appellants appears in the answer
(Paper No. 27), while the complete statement of appellants’
argument can be found in the brief (Paper No. 26).

OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the board has carefully
considered appellants’ specification and claims, the attach-
ments to appellants’ brief including the statement (declaration)
of Robert W. Chadfield dated September 1, 1994, the applied
teachings, and the respective viewpoints of appellants and the3
Appeal No. 96-3035
Application 07/945,430

4
examiner. As a consequence of our review, we make the
determination which follows.
We reverse the examiner’s rejection of claim 8 under
35 U.S.C. § 103.
Our reading of both appellants’ disclosure and the
Goncalves reference (French document) makes us aware that the
presently claimed dispensing implement and the device disclosed
in the reference each differ from earlier known devices wherein
a screw activating knob is at the lower or remote end of the
device (appellants’ Figures 1 and 2 and Figure 1 of Goncalves)
by having the knob positioned at an upper part of the device or
dispensing implement.
However, as did the examiner, we readily perceive
differences between the claimed dispensing implement and the
device taught by Goncalves. The claimed invention requires a
cap 34 arranged for removable attachment to a cap holder 36 on
the tubular plastic body 20 of the implement (Figure 3), while
the reference device (Figure 3) has its cap 105 releasably
secured to the decorative body 104. Additionally, the claimed
Appeal No. 96-3035
Application 07/945,430

5
implement requires a tube 29 having one open end and one closed
end, with the closed end being arranged to engage the knob 22 of
the screw 23 and prevent relative rotary motion between the screw
with respect to the body 20, and with the open end of the tube
abutting but rotatable with respect to a knurled collar ring 28
on the body 20. On the other hand, Goncalves teaches (transla-
tion, page 13 and Figure 3) a decorative body 104 configured as
a tubular element, “open at both ends,” with its upper edge 120
constituting a support element for the annular bearing surface
110 of the sheath 102.
Turning to the additional references relied upon by the
examiner, we find that the Cardia disclosure (European document)
reveals a dispensing container characterized in part by an outer
tubular body 3 having a closed bottom 2 and an integral rod 5
and hollow rod 18 with threading 17 (Figure 3). As to the von
Schuckmann reference (German document), a deodorant stick is
disclosed therein having a covering cap 7 screwed on to the
protruding segment 2N of the housing tube 2 (Figure 1).
We certainly understand the examiner’s point of view as
to the asserted obviousness of altering the device of Goncalves,
Appeal No. 96-3035
Application 07/945,430

6
as articulated in the rejection. However, it is clear to us,
from a combined assessment of the applied prior art teachings,
that the proposed alterations would not only significantly modify
the device of Goncalves but would require motivation from appel-
lants’ own teaching (impermissible hindsight) to make same. In
other words, it is our opinion that the applied art itself would
not have provided a suggestion for the selective and significant
modification of the Goncalves device. In particular, we note
that with the device of Goncalves, the patentee expressly calls
for a tubular element (body 104) open at both ends (translation,
page 13). As readily perceived from the Goncalves document
(translation, pages 15 and 16), the reason for a tubular element
is that the wall 110 of sheath 102 is intended to rest on the
upper edge 120 of the body 104 while the plate 128 through its
outer portion 129 is intended to be stopped against the set-back
121 of the body 104 (Figure 3). In light of the above, it is
apparent to us that the proposed addition of a closed bottom tube
for the device of Goncalves would clearly defeat the patentee’s
intended assembly procedure for the device. For the above
reasons, we determine that the applied prior art evidence does
not establish a prima facie case of obviousness relative to the
claimed invention. Under this circumstance, it follows that we
Appeal No. 96-3035
Application 07/945,430

7
need not address appellants’ showing of commercial success (the
statement of Robert W. Chadfield).
In summary, this panel of the board has reversed the
rejection of claim 8 under 35 U.S.C. § 103.
The decision of the examiner is reversed.
REVERSED
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Appeal No. 96-3035
Application 07/945,430

8
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