Ex parte MEOLI et al.

Board of Patent Appeals and Interferences

Sep 28, 1998

08609550 (B.P.A.I. Sep. 28, 1998)

Application for patent filed March 1, 1996. 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journal and (2) is not binding precedent of the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. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte RUDY B. MEOLI JR. and ARMANDO PADILLA
____________
Appeal No. 98-0972
Application No. 08/609,5501
____________
ON BRIEF
____________
Before McCANDLISH, ABRAMS and STAAB, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-0972
Application No. 08/609,550
2
This is an appeal from the decision of the examiner
finally rejecting claims 1-22, which constitute all of the
claims of record in the application.
Appeal No. 98-0972
Application No. 08/609,550
3
The appellants’ invention is directed to a hammock.
The subject matter before us on appeal is illustrated by
reference to claim 1, which has been reproduced in an appendix
to the Brief (Paper No. 8).
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Nickerson 369,546 Sep. 6, 1887
Palmer 468,576 Feb. 9, 1892
Lloyd 631,747 Aug. 22, 1899
Austrian patent (Haase) 49,143 Jul. 1911
THE REJECTIONS
Claims 21 and 22 stand provisionally rejected under the
judicially created doctrine of obviousness-type double
patenting over claims 20 and 21 of copending Application
Serial No. 08/609,551.
Claims 1 and 3-10 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Haase in view of Palmer and Lloyd.
Appeal No. 98-0972
Application No. 08/609,550
A rejection of claims 21 and 22 under 35 U.S.C. § 112,2
second paragraph, also was listed in the Answer. However,
according to Paper No. 7, this rejection was overcome by the
amendment filed April 29, 1997 (Paper No. 6). We therefore
shall consider it as having been withdrawn.
4
Claim 2 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Haase in view of Palmer, Lloyd and
Nickerson.
Claims 11, 12 and 14-19 stand rejected under 35 U.S.C. §
103 as being unpatentable over Haase in view of Lloyd.
Claims 13 and 20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Haase in view of Lloyd and Palmer.
The rejections are explained in Paper No. 4 (the final
rejection).2
The appellants’ arguments are set forth in the Brief.
OPINION
The Double Patenting Rejection
No terminal disclaimer has been filed, and no arguments
have been made disputing the examiner’s position with regard
to this rejection. We therefore shall sustain it.
The Rejections Under 35 U.S.C. § 103
Appeal No. 98-0972
Application No. 08/609,550
5
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 USC § 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 (BPAI 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 appellants’ 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).
Independent claim 1 stands rejected as being unpatentable
over Haase in view of Palmer and Lloyd. This claim is
directed to the combination of a body supporting member and a
pair of spreader bars positioned at opposite ends thereof.
Appeal No. 98-0972
Application No. 08/609,550
In light of the description of the spreader bars provided3
in the specification, we interpret the language regarding
curvature to mean that the spreader bar is “flat” when viewed
from its ends, as shown in Figure 3, for example.
6
The examiner finds in Haase all of the subject matter recited
in this claim except for the spreader bars being split into
upper and lower bar members, and being “curved horizontally
and longitudinally relative to said body supporting member.” 3
It is the examiner’s position, however, that it would have
been obvious to one of ordinary skill in the art to split each
of the spreader bars of Haase in view of the teaching of
Palmer, and to alter the curve of those bars to that required
by the claim, in view of the teaching of Lloyd.
Lloyd discloses a wire mesh hammock having a spreader bar
(9) that functions to “extend the hammock at each end” (page
2, line 29). Each is described as “a flexible spreader,
preferably a flat spring or steel strip,” which is “secured to
the edges of the hammock” by clips (page 2, line 28 et seq.).
As shown in Figure 1 of the Lloyd drawings, the spreader bar
is curved “horizontally and longitudinally,” as is required by
claim 1. However, the mere fact that the prior art structure
could be modified does not make such a modification obvious
Appeal No. 98-0972
Application No. 08/609,550
7
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).
Here, we fail to perceive any teaching, suggestion or
incentive in any of the three references cited against claim 1
which would have led one of ordinary skill in the art to
modify the Haase spreader bars in the manner proposed by the
examiner, inasmuch as the function of extending the hammock at
each end already is being performed by Haase’s vertically
curved spreader bars. Why, then, would one of ordinary skill
in the art have been motivated to make such a change, which
simply would result in a different curvature being imparted to
the spreader bar without any apparent change or improvement in
function. 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).
Appeal No. 98-0972
Application No. 08/609,550
8
It is our view that the only suggestion for the proposed
change is found in the hindsight accorded one who first viewed
the appellants’ disclosure, and therefore a prima facie case
of obviousness has not been established by the applied
references. In view of this, we will not sustain the
rejection of claim 1 or, it follows, of claims 3-10, which
depend therefrom.
Claim 2 also depends from claim 1. It stands rejected on
the basis of the same three references, taken further with
Nickerson, which was cited for its teaching regarding the use
of apertures and channels. Nickerson fails to alleviate the
deficiency discussed above, however, and therefore we also
will not sustain the rejection of claim 2.
Haase in view of Lloyd forms the basis for the examiner’s
rejection of independent claim 11. This claim contains the
same requirement regarding the curvature of the spreader bars
as was present in claim 1, and we reach the same conclusion
with regard to the outcome: A prima facie case of obviousness
is not established by the teachings of these two references,
Appeal No. 98-0972
Application No. 08/609,550
9
and we will not sustain the rejection. The same is true with
regard to dependent claims 12 and 14-19.
Claims 13 and 20 also depend from claim 11, and they
stand rejected as being unpatentable over Haase, Lloyd and
Palmer. Palmer discloses spreader bars having the same
vertical curvature that is present in Haase, and therefore it
fails to cure the deficiency discussed above with regard to
claim 1. Again, a prima facie case of obviousness has not
been established, and the rejection of these claims will not
be sustained.
SUMMARY
The provisional rejection of claims 21 and 22 under the
judicially created doctrine of obviousness-type double
patenting is sustained.
None of the rejections under 35 U.S.C. § 103 are
sustained.
The decision of the examiner is affirmed-in-part.
Appeal No. 98-0972
Application No. 08/609,550
10
No period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
HARRISON E. McCANDLISH, Senior )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LAWRENCE J. STAAB )
Administrative Patent Judge )
Chris Papageorge
14625 S Vermont #5
Gardena, CA 90247